Ex Parte Sogard et al

Patent Trial and Appeal Board

Feb 3, 2016

12348711 (P.T.A.B. Feb. 3, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/348,711 0110512009
94173 7590 02/04/2016
Fish & Richardson PC (BOSTON SCIENTIFIC)
P.O.BOX 1022
Minneapolis, MN 55440
FIRST NAMED INVENTOR
David J. Sogard
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.
S63.2H-15948-US01 3613
EXAMINER
VAN SELL, NATHAN L
ART UNIT PAPER NUMBER
1783
MAILDATE DELIVERY MODE
02/04/2016 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 DAVID J. SOGARD, JASON P. HILL,
SCOTT SMITH, PATRICK A. HA VERKOST, and
SUSAN A. SHOEMAKER
Appeal2014-004201
Application 12/348,711
Technology Center 1700
Before LINDA M. GAUDETTE, KAREN M. HASTINGS, and
N. WHITNEY WILSON, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134 from the Examiner's June
19, 2013 decision finally rejecting claims 1-3 and 5-11. 2 We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
1 Appellants identify the Real Party in Interest as Boston Scientific Scimed,
Inc., which is a subsidiary of Boston Scientific Corporation (Appeal Br. 3).
2 Appellants appeal the rejection of claims 1-3 and 5-11 (Appeal Br. 5;
Reply Br. 1). Claims 12-15 were also rejected in the Final Action.
Appellants sought to cancel those claims in an Amendment after Final, and
have not appealed their rejection (Appeal Br. 5). The record does not show
that this amendment was entered. Because Appellants did not appeal the
rejection of claims 12-15, we summarily affirm their rejection.
Appeal2014-004201
Application 12/348,711
We affirm-in-part.
CLAIMED SUBJECT MATTER
Appellants' invention is directed to a composite biomaterial having a
continuous metal sheet with a polymer layer over at least one surface of the
continuous metal sheet and arcuate members, which: ( 1) define a
fenestration pattern and (2) elastically stretch to allow the continuous metal
sheet to bend, without buckling, in more than one axis (Spec. 45, Abstract).
Claims 1 and 7 are representative and are reproduced below from the Claims
Appendix of the Appeal Brief (key claim limitations shown in italics):
1. A valve frame, comprising:
a first frame member including a leaflet connection
region, where a distal end of the first frame member defines
a distal cross-sectional area and a proximal end of the first
frame member defines a proximal cross-sectional area larger
than the distal cross-sectional area;
a second frame member having a distal end connected to
the proximal end of the first frame member, where the distal
end of the second frame member and the proximal end of the
first frame member define a circular proximal cross-
sectional area;
a third frame member connected to a middle portion of
the first frame member, where a proximal end of the third
frame member defines a circular proximal cross-sectional
area approximately equal to the circular proximal cross-
sectional area defined by the distal end of the second frame
member and the proximal end of the first frame member;
a fourth frame member defining a fourth circular cross-
section, the fourth frame member connected to the distal end
of the first frame member; and
at least one valve leaflet connected to the first frame
member.
2
Appeal2014-004201
Application 12/348,711
7. A valve frame, comprising:
a first frame member having a distal end defining a distal
cross-sectional area and a proximal end defining a proximal
cross-sectional area larger than the distal cross-sectional
area;
a second frame member having a distal end connected to
the proximal end of the first frame member, where the distal
end of the second frame member and the proximal end of the
first frame member define a circular proximal cross
sectional area;
a third frame member connected to a middle portion of
the first frame member, where a proximal end of the third
frame member defines a circular proximal cross-sectional
area approximately equal to the circular proximal cross-
sectional area defined by the distal end of the second frame
member and the proximal end of the first frame member;
a first valve leaflet connected only to the first frame
member, the first valve leaflet including a first inflow
surface and a first outflow surface opposite the first inflow
surface, and being configured to shift between an open
position and a dosed position; and
a sinus defined by a volume between the first outflow
surface of the first valve leaflet in the open position and the
circular proximal cross-sectional area defined by the distal
end of the second frame member and the proximal end of the
first frame member.
REJECTION
Claims 1-3 and 5-15 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Osbome3 in view of Bates. 4
3 U.S. 2004/0117004 Al, published June 17, 2004.
4 U.S. 2005/0267560 Al, published Dec. 1, 2005.
3
Appeal2014-004201
Application 12/348,711
Appellants' arguments focus on limitations recited in independent
claims 1 and 7 (Appeal Br. 13-19; Reply Br. 2---6). Accordingly, our
discussion will focus on claims 1 and 7.
DISCUSSION
The Examiner finds that Osborne teaches each of the elements of
claims 1 and 7 with the exception that the reference "fails to disclose [that]
the proximal cross-sectional area of the valve portion [created by a frame] is
larger than the distal cross-sectional area of the valve portion" (Final Act. 3-
5). The Examiner finds that Bates discloses the claimed element missing
from Osborne because Bates teaches that the frame may be formed in
bulbous shapes (id. at 5). The Examiner concludes that it would have been
obvious to modify the frame shape of Osborne, per Bates, "for the benefit of
increasing compliance of the frame" (id.).
The Examiner provides a table which equates features illustrated in
Osborne's Figure 68 with limitations recited in claims 1 and 7 (Ans. 8). The
Examiner's table and annotated Figure 68 are reproduced below:
Figure 68 as labeled by Examiner Limitation in the Instant Claim
Valve Portion First frame member and leaflet
1 sl Stent Section Second Frame Member
2nc Stent Section Third Frame Member
3ra Stent Section Fourth Frame Member
4
Appeal2014-004201
Application 12/348,711
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The Examiner's annotated version of Osborne's Figure 68 depicts the distal
and proximal orientation of Osborne's stent, numerically labelled stent
sections and a valve portion with inflow and outflow surfaces.
With regard to claim 1, Appellants argue that Osborne's "third frame
member could never be understood as connected to the first frame member"
(Appeal Br. 17). Appellants' argument, however, is based on mispairing of
the Examiner's finding for each recited frame member to each stent & valve
feature of Osborne (e.g., "the valve portion (or what the Examiner chooses
to label as thefourthframe member)" (id., emphasis added)). Accordingly,
we agree with the Examiner (Ans. 7) that Appellants' argument is
unpersuasive.
Appellants further argue that Osborne's valve portion (i.e., "a first
frame member") "is connected to the proximal end of the third stent section,
or fourth frame member, and not to the distal end of the third stent section"
(Reply Br. 5). This is not persuasive because claim 1 does not require the
first frame member to be connected to the distal end of the fourth frame
member. Instead, claim 1 recites that the fourth frame member is connected
to the distal end of the first frame member. Thus, Appellants have attempted
to distinguish the claim from the prior art based on a limitation which is not
5
Appeal2014-004201
Application 12/348,711
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rejection of claim 1 and, likewise, affirm the rejection of dependent claims 2,
3, 5, and 6. See, In re Self, 671 F.2d 1344, 1348 (CCPA 1982).
With regard to claim 7, Appellants argue that Osborne's Figure 68
shows that the valve portion (i.e., "first frame member") is connected at least
to the first and second stent sections (i.e., "second frame member" and "third
frame member", respectively) and would, therefore, fail to meet the
limitation requiring that the first valve leaflet is connected only to the first
frame member (Appeal Br. 13-16; Reply Br. 2-3, 5---6). We note that the
Examiner finds that that Osborne's valve portion includes the "[fJirst frame
member and leaflet" (Ans. 8, emphasis added). However, Osborne also
discloses that valve portion legs 127, 128 are connected to other stent
sections (i-f 192; Fig. 68) and that leaflets 78, 79 are attached to these legs
(i-f 167; Fig. 40). The Examiner, therefore, erred in finding that the "material
comprising [Osborne's] leaflets are attached to [the first] frame member
only" (id. at 6-7, emphasis added, citing Osborne, Fig. 68; i-fi-f 192, 171 ).
Therefore, we agree that Appellants have identified reversible error in
the Examiner's findings. Accordingly, we reverse the Examiner's§ 103(a)
rejection of claim 7 and, likewise, reverse the rejection of dependent claims
8, 9, 10, and 11.
5 We note that Appellants present arguments for the first time in the Reply
Brief filed February 5, 2014, directed specifically to the Examiner's findings
first outlined on page 3 of the Final Office Action (Reply Br. 4). It is
generally improper for Appellants to discuss for the first time in the Reply
Brief matters that could have been raised in the Appeal Brief. 37 CPR
§ 41.41(b)(2) (2013).
6
Appeal2014-004201
Application 12/348,711
CONCLUSION
We AFFIRM the rejection of claims 1-3, 5, and 6 under
35 U.S.C. § 103(a) as obvious over Osborne in view of Bates.
We REVERSE the rejection of claims 7-11 under 35 U.S.C. § 103(a)
as obvious over Osborne in view of Bates.
We AFFIRM the rejection of claims 12-15 under 35 U.S.C. § 103(a)
as obvious over Osborne in view of Bates, as Appellants present no
arguments regarding same.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See
37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
7