Ex Parte McGuckin, Jr. et al

Patent Trial and Appeal BoardApr 20, 2016

12288217 (P.T.A.B. Apr. 20, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/288,217 10/17/2008 67339 7590 04/20/2016 IPHORGAN LTD, 195 ARLINGTON HEIGHTS ROAD SUITE 125 BUFFALO GROVE, IL 60089-1768 FIRST NAMED INVENTOR James F. McGuckin, Jr. 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. AMD 0814 US 6327 EXAMINER ALEMAN, SARAH WEBB ART UNIT PAPER NUMBER 3731 MAILDATE DELIVERY MODE 04/20/2016 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 JAMES F. McGUCKIN, JR., JAMES ERICH BRESSLER, and DAVID M. SCHALLER Appeal2013-006347 Application 12/288,217 Technology Center 3700 Before CHARLES N. GREENHUT, JILL D. HILL, and MICHAEL L. WOODS, Administrative Patent Judges. HILL, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING STATEMENT OF THE CASE James F. McGuckin, Jr., James Erich Bressler, and David M. Schaller (Appellants) filed a request for rehearing on March 25, 2016 (hereinafter "Request"), in response to our Decision on Appeal mailed January 28, 2016 (hereinafter "Decision"), affirming the Examiner's rejection of the claims under 35 U.S.C. Â§ 251. Appeal2013-006347 Application 12/288,217 ISSUES RAISED ON REQUEST FOR REHEARING I. Did the Patent Trial and Appeal Board ("Board") err in finding that Middleman's cannula is advanced for filter delivery, and does such an error change the outcome of the Decision? II. Did the Board misunderstand that Middleman fails to teach ( 1) a wire curved to place a filter centrally in a vein, and (2) rotation of the device and cannula to a more centered position? ANALYSIS 37 C.F.R. Â§ 41.52 (2012) states in relevant part: (a) ( 1) Appellant may file a single request for rehearing within two months of the date of the original decision of the Board .... The request for rehearing must state with particularity the point believed to have been misapprehended or overlooked by the Board. Arguments not raised [in the brief before the Board], and [e]vidence not previously relied upon [in the brief and the reply brief(s)] are not permitted in the request for rehearing except as permitted by paragraphs (a)(2) through (a)(4) of this section .... (2) Appellant may present a new argument based upon a recent relevant decision of either the Board or a Federal Court. (3) New arguments responding to a new ground of rejection made pursuant to Â§ 41.50(b) are permitted. (Emphasis added). Appellants are required to state with particularity the points believed to have been misapprehended or overlooked by the Board. 37 C.F.R. Â§ 41.52(a)(l). The Request for Rehearing does not explicitly identify any 2 Appeal2013-006347 Application 12/288,217 such points. The Board, however, has identified two points for further consideration, based on arguments presented in the Request. ISSUE! Appellants argue that the Board mischaracterized Middleman in finding that, although Middleman's cannula is not a pusher, "it is nonetheless advanced for filter delivery and is curved by the wire 24 to place the filter centrally in the vein." Request 6 (citing Decision 4) (emphasis omitted). According to Appellants, Middleman's cannula ( 1) does not "advance a filter for delivery," and (2) "is not curved by the wire 24 to place the filter centrally in the vein." Id. at 7. Our finding in the Decision that Middleman's cannula (pusher) is "advanced for filter delivery and is curved by the wire 24 to place the filter centrally in the vein" is in error and mischaracterizes its disclosure. Indeed, Middleman does not disclose that its cannula (pusher) is advanced for filter delivery. This misstatement in the Decision, however, does not change the outcome, because the Examiner's determination of obviousness only relies on Middleman for (1) "teaching the concept of a tubular device with a pre- bent wire fixedly attached within a tubular structure, wherein movement of the tubular device within the sheath causes bending of a sheath within a body lumen," and (2) rotating the device (including the bent portion) about its longitudinal axis to achieve a desired placement. Ans. 7-8. It is Roussigne that the Examiner relies on for disclosing advancing a filter for delivery centrally in the vein. Id. (citing Roussigne, Fig. 8, col. 6, 11. 53-54). 3 Appeal2013-006347 Application 12/288,217 ISSUE II Appellants argue that Middleman's cannula 22 "is not curved by wire 24 to place a filter centrally in the vein," and that Middleman's device 20 is not "rotated to a more centered position." Request 7. Appellants note, referring to Figures 15A-15C, that Middleman's distal segment 30 curves not to center the device 20 in the vein 172, but to direct the device 20 toward the vein branch 176. Id. at 8. Appellants argue that this action by Middleman offsets the device, rather than moving it "to a more centered position within the vessel." See id. Appellants also note that Middleman is directed to steering a cannula to reach a destination, whereas Roussigne is directed to action taken after the destination is reached. Id. The Examiner addressed this argument, explaining that (1) Roussigne broadly describes directing a distal end of the device toward the vessel centerline for filter deployment, (2) Middleman discloses rotating the device about its longitudinal axis to achieve a desired placement of its distal end, and (3) both references disclose moving the distal end to a desired location, such that one skilled in the art "would have found it obvious to rotate the modified Roussigne assembly about its longitudinal axis to obtain the desired placement of the distal end of the sheath for optimizing deployment of the filter." Ans. 8 (citations omitted). Without being apprised by Appellants as to why the above findings and conclusion of the Examiner are in error, we are not persuaded that there were any points misapprehended or overlooked. We conclude that Appellants have not shown any determinative points that we misapprehended or overlooked in our Decision. 4 Appeal2013-006347 Application 12/288,217 DECISION Appellants' Request for Rehearing is granted to the extent that we have reconsidered our Decision in light of the arguments in Appellants' Request. We have carefully considered the arguments raised by Appellants in the Request for Rehearing, and we grant Appellants' request solely to clarify our holding. Appellants' Request is denied to the extent that we do not modify the outcome of the Decision. This Decision on Appellants' Request for Rehearing is deemed to incorporate our earlier Decision (dated January 28, 2016) by reference. See 37 C.F.R. Â§ 41.52(a)(l). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). DENIED 5