Ex Parte McLawhorn et alDownload PDFPatent Trial and Appeal BoardJun 19, 201713827826 (P.T.A.B. Jun. 19, 2017) Copy Citation 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 Copy with citationCopy as parenthetical citation