Ex Parte Chawla

Patent Trial and Appeal Board

Feb 19, 2016

13176127 (P.T.A.B. Feb. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/176, 127 07/05/2011 Surendra K. Chawla
23413 7590 02/23/2016
CANTOR COLBURN LLP
20 Church Street
22nd Floor
Hartford, CT 06103
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
CSU0005US 4018
EXAMINER
BUI, VYQ
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
02/23/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
usptopatentmail@cantorcolbum.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SURENDRA K. CHAWLA
Appeal2016-002729
Application 13/176,127
Technology Center 3700
Before LINDA E. HORNER, LISA M. GUIJT, and ERIC C. JESCHKE,
Administrative Patent Judges.
HORNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Surendra K. Chawla (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner's decision rejecting claims 1, 3-6, 9-13, and 21-25. 1
We have jurisdiction under 35 U.S.C. § 6(b).
1 Claims 2, 7, 8, 14-20, and 26-30 are canceled. Although the Examiner
characterizes claim 4 as "withdrawn from consideration," the rejection on
appeal includes claim 4 among the rejected claims. As such, we consider the
rejection of claim 4 in this decision. We further note that claim 5 depends
from claim 4. Appeal Br. 11, Claims App. In further prosecution of this
application, if claim 4 is deemed to be drawn to non-elected subject matter,
the Examiner may wish to consider withdrawing claim 5 from consideration
by virtue of its dependency from claim 4.
Appeal2016-002729
Application 13/176,127
We REVERSE and enter NEW GROUNDS OF REJECTION
pursuant to our authority under 37 C.F.R. § 41.50(b).
CLAIMED SUBJECT MATTER
Appellant's claimed subject matter relates to "an instrument for the
placement of a valve repair device." Spec. para. 1. Claims 1, 9, and 25 are
independent claims. Each of these independent claims is reproduced below.
1. A valve repair instrument, comprising:
an elongated body, said elongated body having two ends;
said first end having a plurality of extension members
configured to maintain the muscle portion of a valve repair
device in an expanded position for attachment to the papillary
muscle, at least one of said extension members having an eyelet
for receiving a retention chord for removably attaching the
muscle portion to the first end;
said second end being configured to maintain a leaflet
portion of a valve repair device for attachment to a valve leaflet,
at least one end of said second end having an eyelet for receiving
a retention chord for removably attaching the leaflet portion of
the second end.
9. A valve repair instrument comprising:
a tubular member; and
a shaft mounted for movement within said tubular
member, said shaft having a distal end, said distal end having at
least one eyelet to maintain a muscle portion of a valve repair
device in an expanded configuration for attachment to the
papillary muscle, said distal end being retracted into said tubular
member after attachment of said muscle portion, at least one end
of a proximal end portion having an eyelet for receiving a
retention chord for removably attaching a leaflet portion to the
proximal end portion.
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Application 13/176,127
25. A valve repair instrument comprising:
a tubular member; and
a shaft mounted for movement within said tubular
member, said shaft having a distal end, said distal end being
configured to maintain a muscle portion of a valve repair device
in an expanded configuration for attachment to the papillary
muscle, said muscle portion being removeably [sic] attached to
said distal end by at least one chord, said distal end being
detachable.
REJECTIONS
Appellant appeals from the Final Action, dated January 2, 2015
("Final Act."), which contained the following rejections:
1. Claims 9-13 and 21-24 under pre-AIA 35 U.S.C. § 112, second
paragraph, as being indefinite.
2. Claims 1, 3-6, 9-13, and 21-25 underpre-AIA 35 U.S.C. § 102(b)
as anticipated by, or, in the alternative, under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over, Hauck (US 6,575,971 B2; issued
June 10, 2003).
Appellant filed an Appeal Brief on July 29, 2015 ("Appeal Br."),
accompanied by an Amendment seeking to amend claim 9 to overcome the
indefiniteness rejection. The Examiner initially refused entry of the
Amendment, and subsequently entered the Amendment. See Advisory
Action, dated August 10, 2015 (refusing entry of Amendment) and
Examiner's Answer, dated December 31, 2015 ("Ans.") 2 (stating that "[t]he
amendment of claim 9 after 'Final Rejection' (01/02/2015) has been
entered"). Although the Examiner did not explain in the Examiner's Answer
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Application 13/176,127
the status of the first ground of rejection, we understand that the first ground
of rejection has been overcome by entry of the amendment of claim 9. As
such, we limit our review of the Examiner's decision to the second ground
of rejection.
ANALYSIS
Independent claims 1 and 9
Independent claims 1 and 9 recite a valve repair instrument having
"an eyelet for receiving a retention chord for removably attaching" a leaflet
portion to the instrument. Appeal Br. 11-12, Claims App. The Examiner
found, in relevant part, that Hauck discloses an instrument having an
elongated body or tubular member 11 having an "arm 4 including a side port
or an eyelet in the proximal portion of[] Hauck's device." Final Act. 3--4
(citing Hauck, Fig. 6).2 The Examiner found that this sideport 4 is capable
of being used to receive a retention chord for removably attaching the leaflet
portion, as called for in claims 1 and 9, and thus Hauck' s instrument
"comprises all structural limitations" as claimed and is capable of being used
as a valve repair instrument. Ans. 3.
Appellant argues that the Examiner erred in rejecting the claims
subject to the second ground of rejection because Hauck's device does not
have a second end configured to maintain a leaflet portion of a valve repair
device for attachment to a valve leaflet and having an eyelet for receiving a
2 This finding underlies both the anticipation and alternative obviousness
determinations made by the Examiner. Final Act. 3.
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Application 13/176,127
retention chord for removably attaching the leaflet portion. Appeal Br. 6-9;
Reply Br. 2-3.
Hauck discloses a guide catheter 11 comprising a catheter sheath 1, a
lumen 2, a handle 25, and a sideport 4 for injection of solutions into the
catheter. Hauck, col. 7, 11. 31-36; Fig. 6. We disagree with the Examiner's
finding that sideport 4 is structurally the same as an eyelet. In particular, as
noted by Appellant, the ordinary meaning of "eyelet" is "a small hole
designed to receive a cord or used for decoration (as in embroidery)." Reply
Br. 2 (citing Merriam Webster Online Dictionary, http://www.merriam-
webster.com/dictionary/eyelet). As shown in Appellant's Figures, eyelets 32
pass completely through arms 30 of handle 12 so that chords 52 can pass
through eyelets 32 to attach leaflet portion 36 to handle 12. See Spec.,
Fig. 3. By contrast, sideport 4 in Hauck is an opening that provides a
passageway for mJection of fluids into lumen 2 of guide catheter 11. It is
not a hole designed to receive a cord that would be capable of being used to
attach a leaflet portion to the catheter. For these reasons, we do not sustain
the Examiner's rejection of independent claims 1 and 9, and their respective
dependent claims 3-6, 10-13 and 21-24, as anticipated by, or, in the
alternative, as unpatentable over, Hauck.
Independent claim 25
Independent claim 25 does not call for an eyelet for receiving a
retention chord for removably attaching a leaflet portion to the instrument.
As such, Appellant's arguments as to error in the second ground of rejection
do not apply to the rejection as set forth for the subject matter of claim 25.
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Application 13/176,127
Instead, claim 25 calls for a valve repair instrument comprising a tubular
member and a shaft mounted for movement within the tubular member. The
Examiner found that Hauck's guide catheter 11 corresponds to the claimed
tubular member and Hauck' s leaflet fastening applicator 7 corresponds to
the claimed shaft. Final Act. 3.
Independent claim 25 further calls for "said shaft having a distal end,
said distal end being configured to maintain a muscle portion of a valve
repair device in an expanded configuration for attachment to the papillary
muscle, said muscle portion being removeably [sic] attached to said distal
end by at least one chord, said distal end being detachable." The Examiner
found that Figure 13 of Hauck shows an embodiment in which shaft (leaflet
fastening applicator) 7 includes extension members (splits) 15A and 15B
having retaining portions (grasping electrodes) 42A and 42B with eyelets
/"1 "1 '- Al Al A. "1 Al Al~ "1 • "1 • "1 • T 7 1, rri"1 T"""i • r'" • "1 "1 "1
~n01esJ 44A ana 44ti msposea merem. 1a.~ ine bxammer rauea, nowever,
to make any findings in the grounds of rejection as to whether Hauck's
grasping electrodes 42A and 42B having holes 44A and 44B therein, are
"configured to maintain a muscle portion of a valve repair device in an
expanded configuration for attachment to the papillary muscle" and whether
"said distal end [is] detachable" as required by claim 25. For these reasons,
the Examiner has failed to set forth adequate findings to support a
determination of anticipation or unpatentability of claim 25 in view of
3 Hauck discloses, with reference to Figure 13, that holes 44A and 44B are
"suitable for inserting a suture, a staple, a hook or the like to fasten the
portions of the opposing heart valve leaflets." Hauck, col. 8, 11. 46-52.
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Application 13/176,127
Hauck. For this reason, we do not sustain the Examiner's rejection of claim
25 as anticipated by, or, in the alternative, as unpatentable over, Hauck.
NEW GROUNDS OF REJECTION
We enter a new ground of rejection of claims 9-13 and 21-25 under
pre-AIA 35 U.S.C. § 112, first paragraph, as failing to comply with the
written description requirement, and a new ground of rejection of claim 25
under pre-AIA 35 U.S.C. § 112, second paragraph, as being indefinite for
failing to particularly point out and distinctly claim the subject matter that
Appellant regards as the invention.
Written Description Rejection
To satisfy the written description requirement, the disclosure of the
application relied upon must reasonably convey to those skilled in the art
that the inventor had possession of the claimed invention as of the filing
date. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir.
2010) (en bane). For the reasons that follow, we find that the Specification
fails to describe the invention of claims 9 and 25 in sufficient detail to
demonstrate Appellant had possession of the claimed invention.
Independent claim 9 recites a valve repair instrument comprising a
tubular member and a shaft. Claim 9 further recites "said shaft having a
distal end ... at least one end of a proximal end portion having an eyelet for
receiving a retention chord for removably attaching a leaflet portion to the
proximal end portion." We understand claim 9 to recite that at least one end
of a proximal end portion of the shaft has the claimed eyelet.
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Application 13/176,127
Upon review of the original disclosure, we fail to discern disclosure of
a valve repair instrument in which an end of a proximal end portion of the
shaft includes at least one eyelet for receiving a retention chord for
removably attaching a leaflet portion to the proximal end portion of the
shaft. The Specification does not describe any embodiments in which a
proximal end portion of the shaft has the claimed eyelet for removably
attaching a leaflet portion to a proximal end of the shaft. Instead, the
Specification describes that the handle, or tubular member, of the instrument
has eyelets for removably attaching a leaflet portion to the handle. See, e.g.,
Spec. paras. 37-38, Fig. 3 (first embodiment describing leaflet portion 36
removably attached to handle 12 by chords 52 at eyelets 32); id., paras. 46-
47, Fig. 9 (second embodiment describing leaflet portion 36 removably
attached to handle 62 by chords 86 at eyelets 82), id., para. 48--49, Fig. 10
(third embodiment describing leaflet portion 36 removably attached to
handle 102 by chords 126 at eyelets 122). For these reasons, we find that the
original disclosure fails to convey to those skilled in the art that Appellant
had possession of the subject matter of claim 9 as of the filing date. Claims
10-13 and 21-24, by virtue of their dependency from claim 9, likewise fail
to meet the written description requirement.
Independent claim 25 recites a valve repair instrument comprising "a
tubular member" and "a shaft mounted for movement within said tubular
member, said shaft having a distal end ... said distal end being detachable."
Upon review of the original disclosure, we fail to discern disclosure of a
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Application 13/176,127
valve repair instrument in which the shaft is both mounted for movement
within said tubular member and has a distal end that is detachable.
Appellant points to the embodiment of Figure 10 as support for the
subject matter of claim 25. Appeal Br. 4. The description of this
embodiment in the Specification is of valve repair instrument 100, in which
shaft 104 is detachable from tubular member 118 of handle 102. Spec.,
paras. 48-49, Figs. 10-12. The Specification does not describe with respect
to this embodiment "a shaft mounted for movement within said tubular
member" as called for in claim 25. Unlike the other disclosed embodiments,
e.g., Figures 3 and 9, in which the shaft is slidable within the handle, in the
embodiment of Figure 10, shaft 104 is not moveable within handle 102.
Spec., paras. 48-49, Fig. 10. Instead, shaft 104 is detachable from handle
102. Id., para. 49, Figs. 11, 12.
The subject matter of claim 25 also is not described in discussion of
the first and second embodiments, as depicted in Figures 3 and 9, because in
those embodiments, the distal end of the shaft is not described as being
"detachable." Although shafts 14 and 64 of the first and second
embodiments are mounted for sliding movement within tubular members 28
and 78 of handles 12 and 62, respectively, the shafts are described as being
detachable from the tubular members.
For these reasons, we find that the original disclosure fails to convey
to those skilled in the art that Appellant had possession of the subject matter
of claim 25 as of the filing date.
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Application 13/176,127
Indefiniteness
The recitation in claim 25 of "said distal end being detachable" is
vague. In particular, the claim language does not specify from what the
distal end of the shaft is detachable. It is unclear whether the claim language
is calling for the distal end of the shaft to be detachable from the remainder
of the shaft, or whether, as described in the Specification with reference to
the embodiment of Figure 10, what is intended to be claimed is that the
entire shaft is detachable from the handle (tubular member). For this reason,
we determine that independent claim 25 is indefinite for failing to
particularly point out and distinctly claim the invention.
OTHER MATTERS
We note that claims 22-24 each depends from independent claim 9
and contains identical wording. In other words, dependent claims 23 and 24
are duplicates of dependent claim 22. Should there be further prosecution of
this application, Appellant may wish to amend or delete duplicative
dependent claims 23 and 24.
DECISION
The decision of the Examiner to reject claims 1, 3-6, 9-13, and 21-25
is REVERSED.
We enter NEW GROUNDS OF REJECTION of claims 9-13 and 21-
25 under 35 U.S.C. § 112, first paragraph, as failing to comply with the
written description requirement, and of claim 25 under 35 U.S.C. § 112,
second paragraph, as being indefinite.
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Application 13/176,127
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the Examiner, in which event the proceeding will be
remanded to the Examiner. ...
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same record ....
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a)(l )(iv).
REVERSED; 37 C.F.R. § 41.50(b)
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