Ex Parte Frion et al

Patent Trial and Appeal Board

Dec 13, 2012

11943289 (P.T.A.B. Dec. 13, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte DUANE FRION, REBECCA MCCARVILLE, ANDREW T.
SCHIEBER, NATHANIEL ZENZ-OLSON, DIANE FEEHAN,
EDWARD MATTHEES, and CHARLES L. EUTENEUER
__________

Appeal 2012-002444
Application 11/943,289
Technology Center 3731
__________

Before ERIC GRIMES, STEPHEN WALSH, and ERICA A. FRANKLIN,
Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the rejection of
claims directed to an ocular implant and delivery system. The Patent
Examiner rejected the claims for obviousness. We have jurisdiction under
35 U.S.C. § 6(b). We reverse.
Appeal 2012-002444
Application 11/943,289

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STATEMENT OF THE CASE
Claims 17, 19-21, 23, 24, 26-30, 48-50, and 60-69 are on appeal.
Claim 17 is representative and reads as follows:
17. An ocular implant and delivery system comprising:
a cannula comprising a distal cutting portion, a distal exit port adapted
to be inserted into a Schlemm's canal portion of an eye, and a distal stop
element;
an ocular implant disposed within the cannula and comprising a
plurality of openings through a longitudinal side of the implant;
a pusher disposed within the cannula and engaged with the ocular
implant; and
a proximal control operably connected to the pusher and adapted to be
operated from exterior to an eye to move the implant when the distal exit
port of the cannula is within the eye.

The Examiner rejected claims 17, 19-21, 23, 24, 26-30, 48-50, and 60-
69 under 35 U.S.C. § 103(a) as unpatentable over Klemm,1 Lynch,2 Ritch,3
and Kobayashi.4

DISCUSSION
Klemm described a “Stent Delivery System.” (Klemm, Title; see
also, Ans. 4-7.) Lynch described a “Stent Device And Method For Treating
Glaucoma.” (Lynch, Title; see also Ans. 7.) The Examiner made findings
concerning the Klemm and Lynch disclosures, including that Klemm
describes an implant and delivery system (Ans. 4-7), and that “Lynch

1 Kurt R. Klemm et al., US 5,458,615, Oct. 17, 1995.
2 Mary G. Lynch et al., US 6,464,724 B1, Oct. 15, 2002.
3 Robert Ritch et al., US 5,092,837, March 3, 1992.
4 Kenichi Kobayashi et al., US 2007/0270945 A1, filed May 17, 2007.
Appeal 2012-002444
Application 11/943,289

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discloses an ocular implant to be inserted in Schlemm’s canal” (id. at 7,
citing Lynch, Fig. 2). The rejection states:
It would have been obvious to combine the ocular stent
implant taught by Lynch with the system disclosed by Klemm
because an ocular stent implant facilitates the normal
physiologic pathway for drainage of aqueous humor into and
through Schlemm's canal (Lynch, column 4, lines 30-32). The
motivation for the modification would have been to treat
glaucoma (Lynch, column 4, lines 26-29).

(Ans. 8.)
Appellants contend that the rejection “has not articulated any rational
basis for the obviousness of this combination to a skilled artisan and has
therefore not met his burden of stating a prima facie case for the obviousness
of claim 17.” (App. Br. 6.)
We agree with Appellants that because Lynch had already described
treating glaucoma, and the only stated reason for using Klemm’s delivery
system instead of Lynch’s was to treat glaucoma, the rejection failed to
articulate a rational basis for changing Lynch’s delivery system, which the
rejection did not even discuss. “Rejections on obviousness grounds cannot
be sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006),
cited with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417-18
(2007).

Appeal 2012-002444
Application 11/943,289

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SUMMARY
We reverse the rejection of claims 17, 19-21, 23, 24, 26-30, 48-50,
and 60-69 under 35 U.S.C. § 103(a) as unpatentable over Klemm, Lynch,
Ritch, and Kobayashi.

REVERSED

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