Ex Parte Lau et al

Patent Trials and Appeals Board

Mar 18, 2019

13215576 - (D) (P.T.A.B. Mar. 18, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/215,576 08/23/2011
30452 7590 03/19/2019
EDWARDS LIFESCIENCES CORPORATION
LEGAL DEPARTMENT
ONE EDWARDS WAY
IRVINE, CA 92614
FIRST NAMED INVENTOR
Jackie Lau
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.
ECV-6389 2470
EXAMINER
TON, MARTIN TRUYEN
ART UNIT PAPER NUMBER
3771
MAIL DATE DELIVERY MODE
03/19/2019 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 JACKIE LAU, JOHN PETERSON, GRACE KIM,
JOHN F. MIGLIAZZA, and TRAVIS OBA
Appeal2018-003688
Application 13/215,576 1
Technology Center 3700
Before WILLIAM V. SAINDON, MICHAEL L. HOELTER, and
RICHARD H. MARSCHALL, Administrative Patent Judges.
MARSCHALL, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's rejection of claims 27--40. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We REVERSE.
1 According to Appellants, the real party in interest is Edwards Lifesciences
Corporation. Appeal Br. 2.
Appeal2018-003688
Application 13/215,576
THE CLAIMED SUBJECT MATTER
The claimed subject matter "relates generally to devices and
procedures related to heart valve replacement, and, more particularly, to a
color-coded prosthetic valve system." Spec. ,r 2. Claims 1, 17, and 18 are
independent. Claim 1 is reproduced below.
27. A color-coded prosthetic heart valve delivery system
compnsmg:
an implantable heart valve; and
a valve holder attachable to the heart valve with sutures
so as to be stationary with respect to the heart valve until the
sutures are severed and the valve holder and valve are detached,
the valve holder having a first color and being adapted to
remain attached to the heart valve during delivery, the heart
valve being inoperable until the valve holder is detached
therefrom;
a valve delivery deployment mechanism integrated with
the valve holder so as to be detached from the heart valve with
the valve holder, the mechanism including a movable part that
is movable with respect to the valve holder to convert the heart
valve to a delivery configuration, wherein the valve holder and
a proximal end of the movable part are visible on the inflow
end of the valve, wherein the movable part comprises an
adapter sutured to a proximal end of a post that translates
through a central bore in the holder and through the valve to
convert the heart valve to the delivery configuration, the adapter
having a second color distinct from the first color, and the valve
holder, the post, and the adapter each has a color that is in
contrast to one another such that the holder is visually
distinguishable from the post and the adapter, and the post is
visually distinguishable from the adapter; and
a flexible delivery handle having a distal end adapted to
engage and move the movable part and convert the heart valve
to its delivery configuration, the handle having a grip in the
second color to facilitate the valve deployment operation.
Appeal Br. 14 (Claims App.).
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Application 13/215,576
THE REJECTIONS
Appellants appeal from the following rejections:
1. Claims 27-30 under 35 U.S.C. § I03(a) as unpatentable over
Stobie, 2 Kieturakis, 3 Henke, 4 and Treace. 5
2. Claims 31 and 32 under 35 U.S.C. § I03(a) as unpatentable over
Stobie, Kieturakis, Henke, Treace, and Ranalletta. 6
3. Claim 33 under 35 U.S.C. § I03(a) as unpatentable over Stobie,
Kieturakis, Henke, Treace, and Lemmon. 7
4. Claims 34--38 under 35 U.S.C. § I03(a) as unpatentable over
Stobie, Kieturakis, Ranalletta, and Treace.
5. Claim 39 under 35 U.S.C. § I03(a) as unpatentable over Stobie,
Kieturakis, Ranalletta, Treace, and Lemmon.
6. Claim 40 under 35 U.S.C. § I03(a) as unpatentable over Stobie,
Kieturakis, Ranalletta, Treace, and Henke.
ANALYSIS
Independent Claim 2 7
Independent claim 27 requires a "valve holder," "post," and "adapter,"
where each of the three parts "has a color that is in contrast to one another."
Appeal Br. 14 (Claims App.). Claim 27 also requires a handle grip having
the same "second color" as the adapter. Id. The Examiner found that Stobie
2 U.S. Patent No. 6,966,925 B2, issued November 22, 2005 ("Stobie").
3 U.S. Patent No. 5,607,443, issued March 4, 1997 ("Kieturakis").
4 U.S. Patent No. 6,668,751 Bl, issued December 30, 2003 ("Henke").
5 U.S. Patent No. 4,281,419, issued August 4, 1981 ("Treace").
6 U.S. Patent No. 7,922,711 B2, issued April 12, 2011 ("Ranalletta").
7 U.S. Patent Publication No. 2005/0085904 Al, published April 21, 2005
("Lemmon").
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Application 13/215,576
discloses the majority of limitations of claim 27, including the adapter and
handle, but does not disclose the coloring requirements of claim 27,
including a handle grip having the same color as the adapter. Final Act. 4--5.
As to the requirement that the handle grip and adapter be the same color, the
Examiner found that Henke discloses "a system including a handle having a
grip in a certain color, and having an operative member to be coupled with
the handle in the same color." Id. at 6 (citing Henke, 1:63-2:6); see also
Ans. 3 ("[T]he Henke reference teaches coloring the grip of a tool to then
match it with the same color of an operable portion.").
Appellants argue that Henke merely discloses colored handles that
indicate the characteristics of the tool, such as a putty knife blade. Appeal
Br. 7. According to Appellants, "Henke says nothing about how the colored
handles interact with other colored parts." Id.
We agree with Appellants that the Examiner erred in finding that
Henke discloses a handle grip having a color that matches the color of the
operative member in Henke. The Examiner relies upon portions of Henke
that describe a colored handle having a first colored member that indicates
an operating characteristic of an operative member. Henke, 1 :63-2:4; Final
Act. 6 (citing Henke, 1:63-2:6). Henke further indicates that the "operating
member is connected with the handle and has the operating characteristic as
indicated by the color of the first member." Id. at 2:4--6. Henke discloses a
putty knife in one embodiment, having a colored handle and a blade that
corresponds to the "operating member" referred to in the relevant portions of
Henke the Examiner cites. See id. at 3 :44--51. Henke does not describe the
operating member or blade as having any color in the cited portions of
Henke, much less a color that matches the handle color as the Examiner
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Application 13/215,576
found. The fact that the handle color indicates a physical characteristic of
the blade, such as its flexibility, does not suggest any blade color, or a
relationship between the color of the handle and color of the blade.
The Examiner's erroneous finding regarding Henk.e's disclosure
formed part of the basis for the Examiner's determination that it would have
been obvious to color a grip in Stobie's handle to match the color of Stobie's
movable part. See Final Act. 6. 8 The Examiner's analysis does not
otherwise reveal any alternative rationale that accounts for the "same color"
requirement of claim 27. See id. at 4--7. Accordingly, we do not sustain the
rejection of claim 27.
Independent Claim 34
Independent claim 34 requires an "adapter having a second color" and
"ajar clip having a movement indicator thereon in the second color."
Appeal Br. 16 (Claims App.). The specification describes the movement
indicator as a blue arrow indicating the direction of rotation of the handle,
and a matching blue adapter. Spec. ,r,r 40, 41, 43 (referring to "blue arrow
movement indicator 44 of the clip 3 6"), 4 7 (blue adapter and clip), Figs.
lOA-lOC. The Examiner found that Stobie discloses the majority of the
limitations of claim 34, including the adapter and handle, but does not
disclose the coloring requirements of claim 34, including a movement
indicator having the same color as the adapter. Final Act. 11-12. As to that
limitation, the Examiner found that Ranalletta discloses a "movement
8 The Examiner incorrectly referred to the claimed "movable part" in this
determination. See Final Act. 6. Claim 27 requires the handle grip to have
the same color as the claimed adapter, which is one part of the movable part.
Appeal Br. 14 (Claims App.).
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Appeal2018-003688
Application 13/215,576
indicator being a rotation arrow (Figure 1; 48), in a color matching that of
another part of the mechanism (Figure 1; 30), that indicate the direction of
movement of a moveable part coupled to the mechanism (Column 14, Lines
46-63)." Id. at 13. The Examiner determined that it would have been
obvious to apply this teaching of Ranalletta to Stobie, and further
determined that it would have been obvious to "make the movement
indicator the second color" because "the specification of the instant
application lacks any criticality of the color of the movement indicator being
in the second color." Id.
Appellants argue that Ranalletta merely "discloses concentric circles
centered on one part to present a target for the user to guide a separate male
connector." Appeal Br. 11. According to Appellants, Ranalletta does not
disclose matching the color of the directional indicator at all, and instead
discloses "color contrasting of one directional arrow of the system." Id. at
12. The Examiner does not respond directly to this argument in the Answer.
See Ans. 5---6.
We agree with Appellants that the Examiner erred in finding that
Ranalletta discloses a movement indicator having a color that matches the
color of Ranalletta's film member 30. Final Act. 13. Ranalletta may
suggest colored directional indicia 48 (i.e., arrows) when it describes
providing the arrows in a "visually distinct manner." See Ranalletta, 14:55-
63. Ranalletta does not, however, describe matching the color of the arrows
to film member 30, as the Examiner found. See Final Act. 13. Ranalletta
describes planar surface portion 32 and conical surface portion 34 of film
member 30 being "visually distinct from each other" and from an adjacent
surface, with all three surfaces having different colors "to present a target-
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Application 13/215,576
like appearance to a user." Ranalletta, 14:48-55. Ranalletta's description of
differing colors between elements of film member 30 and an adjacent
surface does not indicate that the color of arrows 48 have the same color as
any portion of film member 30.
Because the Examiner did not support adequately the finding that
Ranalletta discloses a movement indicator and another part having the same
color, the Examiner's related obviousness determination lacks an adequate
foundation. The Examiner determined that it would have been obvious to
"include a movement indicator [ on Stobie' s clip] as in the Ranalletta
reference," and the Examiner's mistaken findings regarding Ranalletta's
disclosure fatally undermine that determination. See Final Act. 13. The
Examiner does find that the specification "lacks any criticality of the color
of the movement indicator being in the second color," as further support for
the determination that it would have been obvious to make the movement
indicator the same color as the adapter. Id. The Examiner does not direct us
to, nor are we aware of, case law that suggests that a limitation need not be
addressed unless the specification states that it is critical. Even if it were,
the finding lacks support because the specification does describe the
importance of matching the color of the movement indicator to the adapter.
See Spec. ,r,r 43, 47 (describing color coding, including blue arrow matching
blue handle and blue adapter, which clarifies the direction of rotation to a
user). Based on the foregoing, we do not sustain the rejection of claim 34.
Dependent Claims
The Examiner's rejections of the dependent claims rely upon the same
findings that we discussed above in the context of independent claims 27
and 34, and do not rely on additional references in a manner that remedies
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Application 13/215,576
the deficiencies noted above. See Final Act. 7-11, 14--17. Accordingly, we
do not sustain the rejection of dependent claims 28-33 and 35--40 for the
same reasons discussed above.
DECISION
We reverse the decision of the Examiner to reject claims 27--40.
REVERSED
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