Ex Parte McLawhorn et al

Patent Trial and Appeal Board

Jun 19, 2017

13827826 (P.T.A.B. Jun. 19, 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.
8627-3573 (PA-7368-RFB) 6676
EXAMINER
GHAND, JENNIFER LEIGH-STEWAR
ART UNIT PAPER NUMBER
3766
MAIL DATE DELIVERY MODE
13/827,826 03/14/2013
48003 7590
BGL/Cook - Chicago
PO BOX 10395
CHICAGO, IL 60610
06/20/2017
Tyler Evans McLawhorn
06/20/2017 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 TYLER EVANS McLAWHORN and VIHAR C. SURTI
Appeal 2016-005890
Application 13/827,8261
Technology Center 3700
Before JEFFREY N. FREDMAN, JOHN G. NEW, and DAVID COTTA,
Administrative Patent Judges.
COTTA, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a medical
device. The Examiner rejected the claims on appeal under 35 U.S.C. §
102(b) as anticipated and under 35 U.S.C. § 103(a) as obvious.
We affirm.
1 According to Appellants, the real party in interest is Cook Medical
Technologies LLC. App. Br. 2.
Appeal 2016-005890
Application 13/827,826
STATEMENT OF THE CASE
Claims 1—19 are on appeal. Claim 1 is illustrative and reads as
follows:
1. A medical device comprising:
a first longitudinal member having a distal end and a
proximal end;
a mesh having a distal mesh end and a proximal mesh end,
the mesh comprising a nonconductive flexible filament woven to
form a hollow cylindrical mesh with a longitudinal bore, the
proximal mesh end being secured to the distal end of the first
longitudinal member;
a conductive coating on an outer surface of the cylindrical
mesh surface; and
a compression mechanism adapted to move the distal
mesh end between a first position in which the mesh is
unexpanded and a second position in which the distal mesh end
and the proximal mesh end are near one another thereby
expanding the mesh into an expanded state.
App. Br. 7.
The claims stand rejected as follows:
Claims 1—3, 6, 11, 12, and 15 were rejected under 35 U.S.C. § 102(b)
as anticipated by Payne.2
Claims 4 and 13 were rejected under 35 U.S.C. § 103(a) as obvious
over Payne.
Claims 5, 7—10, 14, and 16—19 were rejected under 35 U.S.C. § 103(a)
as obvious over the combination of Payne, Denker,3 and DiUbaldi.4
2 Payne et al., US Patent Publication No. 2008/0154256 Al, published June
26, 2008 (“Payne”).
3 Denker at al., US Patent Publication No. 2007/0106357 Al, published May
10, 2007 (“Denker”).
4 DiUbaldi et al., US Patent Publication No. 2007/0185541 Al, published
Aug. 9, 2007 (“DiUbaldi”).
2
Appeal 2016-005890
Application 13/827,826
Appellants do not appeal from the Examiner’s rejection of claims 4
and 13 as obvious over Payne or from the Examiner’s rejection of claims 5,
7—10, 14, and 16—19 as obvious over the combination of Payne, Denker, and
DiUbaldi. App. Br. 3—5. We therefore summarily affirm these rejections.
See Manual of Patent Examining Procedure § 1205.02 (“If a ground of
rejection stated by the examiner is not addressed in the appellant’s brief,
appellant has waived any challenge to that ground of rejection and the Board
may summarily sustain it, unless the examiner subsequently withdrew the
rejection in the examiner’s answer.”).
ANALYSIS
The Examiner found that Payne disclosed a sterilization device
including all of the elements of independent claim 1, including: a first
longitudinal member having a distal and proximal end, a non-conductive
mesh with distal and proximal ends, a conductive coating on the outer
surface of the mesh, and a compression mechanism adapted to move the
distal mesh between a first unexpanded position and a second position in
which the distal and proximal mesh ends are near one another. Final Act.3
2-3.
Appellants argue that the Examiner relied upon the embodiments of
Figures 7 and 12 neither of which include a mesh comprising a non-
conductive flexible filament, as required by claim 1. App. Br. 3-4.
Appellants acknowledge that the Examiner relies upon Payne’s disclosure of
an “electrode carrier” as meeting this requirement, but contend that Payne’s
electrode carrier is a separate and distinct embodiment from the
5 Office Action, mailed April 29, 2015.
3
Appeal 2016-005890
Application 13/827,826
embodiments of Figures 7 and 12, Id. at 4, Appellants argue that “to
support an anticipation rejection, features from separate and distinct
embodiments, even if those embodiments are disclosed in the same
reference, cannot be combined.” Id. We are not persuaded.
As explained in the Examiner’s Answer, the rejection at issue relies
only on elements disclosed as being within the embodiment of Figure 12.
See, Ans. 8. Payne states:
In another embodiment, the electrode carrier can be placed over
an expandable or self-expandable support member. Referring
to FIG. 12, the support member 400 can have a series of
expandable arms 402 that when housed in an outer sheath are in
a collapsed state. Once the device is inserted into the uterine
cavity, the outer sheath can be withdrawn to expose the
electrode array and allow the support member arms to expand.
Payne 1126. Although the electrode carrier is not shown in Figure 12, the
text accompanying the figure makes clear that the electrode carrier can be
“placed over” the expandable member of Figure 12. All of the elements the
Examiner relies upon in finding that Payne anticipates the claimed device
are thus disclosed as being part of the same embodiment. Accordingly, we
affirm the Examiner’s rejection of claims 1—3, 6, 11, 12, and 15 as
anticipated by Payne.6 *
6 In the Reply Brief, Appellants argue for the first time, that the electrode
carrier is not secured to the distal end of the first longitudinal member. The
Examiner found this element present in Payne, but did not provide any
explanation beyond citing to paragraphs f8)] 126-128. See, Final Act. 2. It is
not apparent to us on what basis the Examiner contends that this element is
present. However, we find that Appellants have waived this argument,
because it was not presented in the Opening Brief, is not responsive to an
argument raised by the Examiner, and no good cause was shown for
consideration (see 37 CFR § 41.41(b)(2)), thereby denying the Board the
benefit of further explanation from the Examiner, including, e.g.,
4
Appeal 2016-005890
Application 13/827,826
SUMMARY
For these reasons and those set forth in the Examiner’s Answer and
Final Office Action, we affirm the Examiner’s decision to reject: claims 1—
3,6, 11, 12, and 15 under 35 U.S.C. § 102(b) as anticipated by Payne;
claims 4 and 13 under 35 U.S.C. § 103(a) as obvious over Payne; and claims
5, 7—10, 14, and 16—19 under 35 U.S.C. § 103(a) as obvious over the
combination of Payne, Denker, and DiUbaldi.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED
explanation as to whether the electrode carrier must necessarily be secured
to the distal end of the longitudinal member in order to pass through a
fallopian tube without becoming dislodged or whether, under our broadest
reasonable interpretation standard, Payne’s manner of attaching the electrode
carrier to the longitudinal member — which appears to involve the use of a
friction fit — is encompassed within the term “secured.” To the extent this
application undergoes further prosecution, and to the extent the Examiner
finds Appellants’ arguments persuasive, we leave it to the Examiner to
determine whether it would have been obvious to secure the electrode carrier
to the distal end of the longitudinal member.
5