Ex Parte Lattouf

Patent Trial and Appeal Board

Dec 29, 2017

13871505 (P.T.A.B. Dec. 29, 2017)

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.
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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
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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