Ex Parte LITSCHER et al

Patent Trials and Appeals BoardApr 26, 2019

14746094 - (D) (P.T.A.B. Apr. 26, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/746,094 06/22/2015 104919 7590 04/30/2019 Fay Kaplun & Marcin, LLP -- BSC 150 Broadway, suite 702 New York, NY 10038 FIRST NAMED INVENTOR Eric LITSCHER 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. 10121/03533(03-4911US03) 9920 EXAMINER BACHMAN, LINDSEY MICHELE ART UNIT PAPER NUMBER 3771 NOTIFICATION DATE DELIVERY MODE 04/30/2019 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): okaplun@fkmiplaw.com fkmiplaw@yahoo.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ERIC LITSCHER, VINCENT A. TUR TURRO, and ROY H. SULLIV AN 1 Appeal2018-007817 Application 14/746,094 Technology Center 3700 Before JILL D. HILL, LEE L. STEPINA, and ARTHUR M. PESLAK, Administrative Patent Judges. STEPINA, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Eric Litscher et al. ("Appellants") appeal under 35 U.S.C. Â§ 134(a) from the Examiner's decision rejecting claims 24--26 and 28-37. We have jurisdiction under 35 U.S.C. Â§ 6(b). We REVERSE. 1 Appellants' Appeal Brief identifies Boston Scientific Scimed, Inc. as the real party in interest. Appeal Br. 2. Appeal2018-007817 Application 14/746,094 CLAIMED SUBJECT MATTER Appellants' invention relates to an endoscopic hemostatic clipping apparatus. Claims 24 and 30 are independent. Claim 24, reproduced below with emphasis added, is illustrative of the claimed subject matter: 24. A multi clip magazine for surgical procedures, compnsmg: a substantially cylindrical shell; a proximal end of the shell adapted for connection with a clip deployment apparatus; a central lumen for containing a clip chain rotatable therein, wherein the clip chain comprises hemostatic clips; and a distal end of the shell having a protrusion on an inner wall of the shell defining a reduced cross-section portion smaller than a cross-sectional at a proximal end configured to permit distal passage therethrough of only a distal-most one of a clip in the clip chain such that the jaws of the distal-most one of the clip revert to the open configuration to receive a target tissue there between. Appeal Br. 10 (Claims App.). REFERENCE The prior art relied upon by the Examiner in rejecting the claims on appeal is: Yoon us 5,366,459 Nov. 22, 1994 REJECTION Claims 24--262 and 28-37 are rejected under 35 U.S.C. Â§ 102(b) as being anticipated by Yoon. 2 The Examiner's inclusion of claim 27 in the heading is understood to be a typographical error in that claim 27 is canceled. See Final Act. 3--4; Appeal Br. 11 (Claims App.). 2 Appeal2018-007817 Application 14/746,094 OPINION In rejecting the claims as anticipated by Yoon, the Examiner finds that the above italicized limitation is met because the distal end of Yoon' s shell has protrusions 1063 having a reduced cross-section that is "capable of allowing only a single clip in the clip chain through." Final Act. 4. Appellants argue that Yoon' s element 1063 is not a protrusion that is configured as recited, because Yoon element 1063 is a collapsible guide component that maintains the distal-most suture tie device in a loaded position. Appeal Br. 6. According to Appellants, Yoon does not disclose that guide component 1063 has "a structure appropriate to permit passage therethrough of only a distal-most clip while remaining sufficiently strong to resist collapsing such that it would be capable of restricting advancement of the remainder of the clip chain." Id.; see also Reply Br. 4. In response, the Examiner states that because Yoon' s "element 1063 functions to hold the distal most clip in a desired position. This prevents distal passage of another clip because another clip cannot pass distally if the distal most clip is held in place by element 1063." Ans. 3. The Examiner notes that Appellants' argument with respect to "restricting movement of the proximal portion of the clip chain" is not directed to a recited limitation. Id. Appellants' have the better position. Although we appreciate that Yoon' s collapsible guides 1063 "maintain the locking/tying member suture tie device at an appropriate position" (Yoon, 34:55-56), the Examiner does not explain adequately how this prevents another locking/tying member (clip) from passing distally. Guides 1063 are shown in Figure 58 of Yoon, reproduced below. 3 Appeal2018-007817 Application 14/746,094 1050 1056\ 1060. ~~~:a:q~,1063 MÂ£,;,----..... 1062Â·Â· 1063 FIGÂ« 58 Fig. 58 of Yoon is a sectional side view showing further details of the distal end of the applicator. Yoon, 6:30-31. Yoon discloses that "guides 1063 extend distally toward the center of the tubular (member) 1050 to direct the distal-most suture tie device to a loading position between the needles 1056 and 1058." Yoon, 34:50-53. Thus, in the loaded position of the clip of Yoon, the clip is held between the ends 1060, 1062 of needles 1056, 1058 and guides 1063. In such a configuration, the ends 1060, 1062 of needles 1056, 1058 appear to restrict forward or distal movement, whereas the guides 1063 appear to prevent rearward or proximal movement. Specifically, as the clip passes collapsible guides 1063, the guides are collapsed toward the tubular member, and then return to a non-collapsed state when the clip is in the loaded position. The guides do not, however, appear to be include any structure that would "restrict[] advancement of the remainder of the clip chain." Appeal Br. 6. The Examiner does not point to any disclosure or provide any technical reasoning that establishes that Yoon's collapsible guide 1063 allows only a single clip to pass through. The Examiner's finding that Yoon's collapsible 4 Appeal2018-007817 Application 14/746,094 guide 1063 defines a reduced cross-section portion that "is capable of allowing only a single clip in the clip chain through," (Final Act. 4) is not supported by a preponderance of the evidence. Accordingly, we do not sustain the Examiner's rejection of claims 24-- 26 and 28-37 as anticipated by Yoon. DECISION The Examiner's decision rejecting claims 24--26 and 28-37 is reversed. REVERSED 5