Ex Parte LattoufDownload PDFPatent Trial and Appeal BoardDec 29, 201713871505 (P.T.A.B. Dec. 29, 2017) Copy Citation United States Patent and Trademark Office 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 13/871,505 04/26/2013 Omar M. Lattouf 44733-703.301 1633 21971 7590 01/03/2018 WILSON, SONSINI, GOODRICH & ROSATI 650 PAGE MILL ROAD PALO ALTO, CA 94304-1050 EXAMINER HOUSTON, ELIZABETH ART UNIT PAPER NUMBER 3731 NOTIFICATION DATE DELIVERY MODE 01/03/2018 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): patentdocket @ wsgr.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte OMAR M. LATTOUF Appeal 2016-000784 Application 13/871,505 Technology Center 3700 Before KEVIN F. TURNER, JILL D. HILL, and JEFFREY A. STEPHENS, Administrative Patent Judges. STEPHENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 seeks our review under 35 U.S.C. § 134(a) from the Examiner’s Non-Final Office Action rejecting claims 1 and 4-12, which are all the claims pending in the application.2 We have jurisdiction under 35 U.S.C. § 6(b). 1 The real party in interest is identified as Trans Cardiac Therapies, Inc. App. Br. 3. 2 Citations refer to the Non-Final Office Action dated March 26, 2015 (“Non-Final Act.”), the Appeal Brief filed June 26, 2015 (“App. Br.”), the Examiner’s Answer dated September 24, 2015 (“Ans.”), the first Reply Brief filed October 12, 2015 (“Reply Br.”), the subsequent Examiner’s Answer Appeal 2016-000784 Application 13/871,505 We reverse. Claimed Subject Matter Claim 1, the sole independent claim, illustrates the claimed subject matter and is reproduced below. 1. A method for accessing a left ventricle of a heart, said method comprising: placing a valve structure having a tissue-penetrating securing element through a passageway in an apical wall of the heart; penetrating the securing element into tissue surrounding the valve structure in the apical wall to secure the valve structure in the passageway; and introducing a tool through the valve structure into the left ventricle: wherein the valve structure has an exit flush with an inner surface of the left ventricle and an entrance flush with an outer surface of the heart. Rejection* * 3 1. Claims 1 and 4-12 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Mortier (US 2003/0032979 Al, published Feb. 13, 2003), dated October 23, 2015 (“Second Ans.”), and the Reply Brief filed November 18, 2015 (“Second Reply Br.”). 3 The first Examiner’s Answer contains a new ground of rejection of claims 1 and 4-12 under 35 U.S.C. § 112, first paragraph, for failing to comply with the written description requirement. Ans. 7-8. The subsequent Examiner’s Answer states that all rejections from the Non-Final Action are maintained and restates the applicable rejections, without including the new ground of rejection based on the written description requirement. Second Ans. 2-7. “Thus, Appellant[] assume[s] that the New Rejection Grounds have been withdrawn.” Second Reply Br. 1. On this record, we agree with Appellant that the rejection under 35 U.S.C. § 112, first paragraph, has apparently been withdrawn. Under these circumstances, the related objection to the 2 Appeal 2016-000784 Application 13/871,505 Snow (US 5,797,933, issued Aug. 25, 1998), and Wolf (US 2002/0165606 Al, published Nov. 7, 2002). Non-Final Act. 3-7. DISCUSSION The dispositive issue on appeal is whether one of ordinary skill in the art would have had reason to modify Mortier’s device to include Wolfs valve. The Examiner finds Mortier’s insertion tube 630 is a valve structure but does not have “an exit flush with an inner surface of the left ventricle and an entrance flush with an outer surface of the heart,” as recited in claim 1. Non-Final Act. 3—4. The Examiner finds Wolf “teaches a valve for use in the left ventricle wherein the entrance and exit are flush with the inner surface and outer surface of the heart.” Id. at 4. “Therefore,” the Examiner reasons, “because these two valve[] structures were art-recognized equivalents at the time the invention was made, one of ordinary skill in the art would have found it obvious to substitute the valve structure disclosed by Wolf for the structure disclosed by Mortier.” Id. The Examiner also determines that using Wolfs valve is a simple substitution of one known element for another or the mere application of a known technique to a piece of prior art ready for improvement, that Appellant claims a combination that only unites old elements with no change in the respective functions of those Specification, see Non-Final Act. 2-3, is a petitionable matter that is not before us because petitionable matters are not generally within the jurisdiction of the Board. See 37 C.F.R. § 1.113(a) (“Petition may be taken to the Director in the case of objections or requirements not involved in the rejection of any claim (§ 1.181).”); In reMindick, 371 F.2d 892, 894 (CCPA 1967) (holding Examiner’s refusal to enter an amendment not reviewable on appeal); In re Hengenhold, 440 F.2d 1395 (CCPA 1971); see also MPEP §§ 706.01, 1002, 1201. 3 Appeal 2016-000784 Application 13/871,505 old elements, and that the combination yields predictable results. Id. at 4-5. In the Answer, the Examiner further explains: It would have been obvious to one having ordinary skill in the art at the time the invention was made to use a valve such as that disclosed by Wolf between the left ventricle and the outer surface of the heart since Mortier already discloses using a valve between the claimed locations, and since it has been held that rearranging parts of an invention involves only routine skill in the art. Second Ans. 8-9 (citing In reJapikse, 181 F.2d 1019 (CCPA 1950)). Appellant argues that there would have been “no motivation for combining Wolf with Mortier/Snow.” App. Br. 12. In particular, Appellant contends: One skilled in the art would not look to the use of an intracoronary bypass conduit, as taught by Wolf, to modify a transapical access cannula, as taught b[y] Mortier. Nothing in Mortier suggests that making its entrance/exit flush with tissue would have any value, and nothing in Wolf suggests that its valve placement would have any relevance to locating an access device through a transapical wall. Id. (emphasis omitted). Appellant also emphasizes that claim 1 is a method claim, and contends that Wolfs procedure for bypassing oxygenated blood from a side of the left ventricle (not the apex) into a coronary artery is fundamentally different from the claimed method and cannot be considered a mere rearrangement of parts. Reply Br. 4. We concur with Appellant’s argument that the Examiner has not articulated sufficient reasoning for replacing Mortier’s insertion tube with Wolfs valve. Mortier teaches an insertion tube 630 placed at the apex of the heart. Mortier Fig. 71, paras. 197-198. A stylet 640 is disposed within the tube to limit bleeding through the lumen and is removed to allow a catheter to be advanced therethrough. Id. Even if Mortier’s insertion tube with stylet 4 Appeal 2016-000784 Application 13/871,505 could be considered a valve, because it can control the flow of blood in and out of the heart, see Second Ans. 8, there is insufficient evidence in the record that such a valve would have been an art-recognized equivalent to Wolfs valve that is used to provide a bypass around a stenosis or occlusion in a coronary artery. See Wolf Abstract, Figs. 1A-1B. There is no indication in Wolf that the valve is intended for or suitable for insertion of a tool therethrough. Therefore, there is insufficient evidence or reasoning that use of Wolf s valve in the location of Mortier’s tube for receiving a tool would have been a simple substitution of art-recognized equivalents, the mere application of a known technique to prior art ready for improvement, the combination of prior art elements with no change in the respective functions of those elements, or the mere rearrangement of parts. In view of the foregoing, we do not sustain the rejection of claim 1 as unpatentable over Mortier, Snow, and Wolf. For the same reasons, we do not sustain the rejection of claims 4-12, which depend from claim 1 and are rejected on the same ground.4 DECISION We reverse the Examiner’s rejection of claims 1 and 4-12. REVERSED 4 Because our determination that there is insufficient reason to combine Mortier and Wolf is dispositive as to all claims on appeal, we need not reach Appellant’s additional arguments. 5 Copy with citationCopy as parenthetical citation