Ex Parte HAMMER et al

Patent Trials and Appeals BoardJul 9, 2019

14209171 - (D) (P.T.A.B. Jul. 9, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/209,171 03/13/2014 30452 7590 07/09/2019 EDWARDS LIFESCIENCES CORPORATION LEGAL DEPARTMENT ONE EDWARDS WAY IRVINE, CA 92614 FIRST NAMED INVENTOR Tai HAMMER 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. V ALTECH-9013US02 6758 EXAMINER ABOUELELA, MAY A ART UNIT PAPER NUMBER 3791 MAIL DATE DELIVERY MODE 07/09/2019 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte T AL HAMMER, MEIR KUTZIK, TAL REICH, and ALEXEI KOIFMAN Appeal2018-008374 Application 14/209, 171 Technology Center 3700 Before EDWARD A. BROWN, BENJAMIN D. M. WOOD, and MICHAEL J. FITZPATRICK, Administrative Patent Judges. FITZPATRICK, Administrative Patent Judge. DECISION ON APPEAL Valtech Cardio, Ltd. ("Appellant") 1 appeals under 35 U.S.C. Â§ 134(a) from the Examiner's final decision rejecting claims 1-8, 14--16, 19-22, 24, 25, and 53-55. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We reverse. 1 Appellant is the applicant, as provided in 3 7 C.F .R. Â§ 1.46, and is identified as the real party in interest. Appeal Br. 3. Appeal2018-008374 Application 14/209, 171 STATEMENT OF THE CASE The Specification The disclosure is directed to "apparatus and techniques for percutaneous medical procedures, such as those involving the use of a guidewire." Spec. 1: 10-12. The Rejected Claims Claims 1-8, 14--16, 19-22, 24, 25, and 53-55 are rejected. Final Act. 1. Claims 9-13, 17, 18, 23, and26-52 are canceled, and no other claims are pending. Id. at 2. Claim 1 is representative and reproduced below. 1. Apparatus for use with a guidewire, the apparatus comprising a guidewire feeder, which comprises: a first housing, shaped to define a first channel through which the guidewire is slidable; a second housing, shaped to define a second channel through which the guidewire is slidable in at least a first direction toward the first housing; a guidewire-engaging element, which is disposed within the second housing, and which is configured to inhibit the guidewire from sliding through the second channel in a second direction away from the first housing, and to allow the guidewire to slide through the second channel in the first direction toward the first housing; and a tubular member, which is (a) shaped to define a lumen therethrough, through which the guidewire is slidable, and (b) coupled to the second housing and slidably coupled to the first housing, such that the second housing is slidable toward and away from the first housing, wherein the guidewire feeder is arranged such that oscillation of the second housing toward and away from the first housing advances the guidewire in the first direction through the first channel of the first housing, by: 2 Appeal2018-008374 Application 14/209, 171 movement of the second housing toward the first housing sliding a portion of the guidewire that is disposed within the tubular member in the first direction, with the tubular member, into the first housing, and movement of the second housing away from the first housing sliding the tubular member in the second direction out of the first housing and over the portion of the guidewire, while the guidewire remains stationary with respect to the first housing. Appeal Br. 14--15 (emphasis added). The Appealed Rejections The following rejections are before us for review: 1. claims 1-8, 14--16, 19, 20, 25, and 53-55 under 35 U.S.C. Â§ I02(b) (pre-AIA) as anticipated by Greelis2 (Final Act. 2); and 2. claims 21, 22, and 24 under 35 U.S.C. Â§ I03(a) (pre-AIA) as unpatentable over Greelis and Von Oepen3 (id. at 7). DISCUSSION Rejection I-Anticipation by Greelis Claim 1 recites the following: wherein the guidewire feeder is arranged such that oscillation of the second housing toward and away from the first housing advances the guidewire in the first direction through the first channel of the first housing, by: movement of the second housing toward the first housing sliding a portion of the guidewire that is disposed within the tubular member in the first direction, with the tubular member, into the first housing, and 2 US 5,346,498, issued Sept. 13, 1994 ("Greelis"). 3 US 2007/0270755 Al, published Nov. 22, 2007 ("Von Oepen"). 3 Appeal2018-008374 Application 14/209, 171 movement of the second housing away from the first housing sliding the tubular member in the second direction out of the first housing and over the portion of the guidewire, while the guidewire remains stationary with respect to the first housing. Appeal Br. 14--15. Independent claim 25 recites similar claim language. Id. at 18. To meet this claim language from both claim 1 and claim 25, the Examiner cites to Greelis at column 7, lines 25 through 27; column 8, lines 5 through 13; column 10, lines 38 through 42; column 11, lines 21 through 25; and Figures 1-3. Final Act. 3--4; see also Ans. 4 (citing Greelis 11:13-25). The cited text and figures of Greelis do not, however, meet the claim language in question. In Greelis, a guidewire is advanced ( and retracted) by spinning a drive wheel with one's thumb. Greelis 9:22-24. That is, the drive wheel 81 is spun in place to advance or retract the guidewire. Id.; see also id. at Fig. 1 (ref. 81 and arrow B). The Examiner reads claim 1 's "second housing" onto Greelis' s "fitting 37 and controller 53," and claim 1 's "first housing" onto Greelis's "fitting 23." Final Act. 3. However, Greelis does not disclose that oscillation of any of these structures toward and away from one another "advances the guidewire," as recited in claim 1. Rather, Greelis discloses that spinning of the drive wheel 81 advances ( or retracts) the guidewire. Accordingly, we reverse the anticipation rejection of independent claims 1 and 25. For the same reason, we likewise reverse the anticipation rejection of claims 2-8, 14--16, 19, 20, and 53-55, all of which depend from either claim 1 or claim 25. 4 Appeal2018-008374 Application 14/209, 171 Rejection 2-0bviousness over Greelis and Von Oepen Claims 21, 22, and 24 ultimately depend from claim 1. In rejecting these claims under 35 U.S.C. Â§ 103(a), the Examiner does not rely on Von Oepen to cure the deficiency in the anticipation rejection of independent claim 1. Thus, for the same reason as above, we reverse the rejection of claims 21, 22, and 24. DECISION The Examiner's rejection of claims 1-8, 14--16, 19, 20, 25, and 53-55 under 35 U.S.C. Â§ 102(b) as anticipated by Greelis is reversed. The Examiner's rejection of claims 21, 22, and 24 under 35 U.S.C. Â§ 103(a) as unpatentable over Greelis and Von Oepen is reversed. REVERSED 5