Ex Parte Stanfield et al

Patent Trial and Appeal Board

Jan 25, 2019

13708616 (P.T.A.B. Jan. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/708,616 12/07/2012 Ryan Stanfield
89554 7590 01/29/2019
Christopher & Weisberg, P.A.
1232 N. University Drive
Plantation, FL 33322
UNITED ST A TES OF AMERICA
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.
21819W-1057U 9761
EXAMINER
SCHALL, MATTHEW WAYNE
ART UNIT PAPER NUMBER
3774
NOTIFICATION DATE DELIVERY MODE
01/29/2019 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):
ptomail@cwiplaw.com
rs.patents.five@medtronic.com
cwdocketing@cardinal-ip. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RYAN STANFIELD, JOHN WOODARD, and GILL BEARNSON
Appeal2018-003356
Application 13/708,616
Technology Center 3700
Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and
BRANDON J. WARNER, Administrative Patent Judges.
WARNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
World Heart Corporation ("Appellant") 1 appeals under 35 U.S.C.
§ 134(a) from the Examiner's decision rejecting claims 1-5, 7, 8, and 21-30,
which are all the pending claims. See Appeal Br., Cover Page. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
World Heart Corporation is the applicant, as provided in 37 C.F.R.
§ 1.46, and is identified as the real party in interest. See Appeal Br. 1.
Appeal2018-003356
Application 13/708,616
CLAIMED SUBJECT MATTER
Appellant's disclosed invention "relate[s] to a device for coupling a
conduit to a vessel of the human body." Spec. ,r 2. Claim 1, reproduced
below, is the sole independent claim and is representative of the subject
matter on appeal.
1. A cannula ring comprising:
a body portion including a substantially cylindrical
member defining a tubular member having a substantially
cylindrical wall defining a lumen wherein at least a portion of
the wall is solid; and
a plurality of anchor arms coupled with the body portion
at a coupled end, each of the plurality of anchor arms
connecting to the coupled end within a respective one of the
plurality of openings, the plurality of anchor arms being
configured to be positioned in a first, collapsed state and a
second, deployed state, the anchor arms each include a length
extending from the coupled end to a free end, wherein the free
end is radially displaced from the body portion while in the
second, deployed state relative to their positions while in the
first, collapsed state;
wherein the body portion has a constant diameter as the
anchor arms move from the first state to the second state; and
wherein each of the anchor arms, along its length, is
adjacent the body portion when in the first state.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Kocur
Marseille
Reichenbach
US 6,350,277 Bl
US 2009/0023975 Al
US 2012/0010455 Al
2
Feb.26,2002
Jan.22,2009
Jan. 12,2012
Appeal2018-003356
Application 13/708,616
REJECTIONS
The following rejections are before us for review:
I. Claims 1-5, 7, 8, and 21-30 stand rejected under 35 U.S.C.
§ 112, second paragraph, as being indefinite. Final Act. 2-3.
II. Claims 1-5, 7, 8, 29, and 30 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Marseille. Id. at 3.
III. Claims 21-24 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Marseille and Reichenbach. Id. at 4.
IV. Claims 25-28 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Marseille and Kocur. Id. at 5.
ANALYSIS
Rejection I- Claims 1-5, 7, 8, and 21-30 as indefinite
Independent claim 1 recites, in relevant part, "the plurality of
openings." Appeal Br. 11, Claims App. The Examiner determined that this
limitation lacks proper antecedent basis. See Final Act. 3. Appellant does
not contest this ground of rejection. See Appeal Br. 3 (stating only that
Appellant "will amend Claim 1 to include a proper antecedent basis, should
prosecution be re-opened[,] or consent [to] an Examiner's Amendment
should the case be allowed"). As such, we summarily sustain the rejection
of claims 1-5, 7, 8, and 21-30 under 35 U.S.C. § 112, second paragraph, as
being indefinite. See Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008)
( explaining that summary affirmance without consideration of the
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Appeal2018-003356
Application 13/708,616
substantive merits is appropriate where an appellant does not contest a
ground of rejection). 2
Rejection II- Claims 1-5, 7, 8, 29, and 30 as anticipated by Marseille
Independent claim 1 recites, inter alia, that "the plurality of anchor
arms [connect] to the coupled end within a respective one of the plurality of
openings." Appeal Br. 11, Claims App. Appellant argues that Marseille
fails to disclose that the anchor arms are connected within a plurality of
openings. See Appeal Br. 5-8; Reply Br. 4. We agree with Appellant.
In rejecting independent claim 1, the Examiner found that Marseille
discloses, in relevant part, "a cannula ring comprising a body portion (7 5)
and a plurality of expandable and collapsible anchor arms (72) [and] (76)
connecting to the coupled end, extending along the body[,] and capable of
expanding while the body stays in a collapsed state." Final Act. 3 (citing
Marseille, Figs. 3--4D). According to the Examiner, "[a]s shown in
2 We note that claim 1 also recites, in relevant part, "a plurality of
anchor arms coupled with the body portion at a coupled end, each of the
plurality of anchor arms connecting to the coupled end within a respective
one of the plurality of openings." Appeal Br. 11, Claims App. Based on
Appellant's disclosure, we understand this language to mean that the anchor
arms are coupled with the body portion at a coupled end of each anchor arm,
such that each anchor arm is connected at its coupled end within a respective
one of a plurality of openings in the body portion. See, e.g., Spec. ,r,r 28-32
(referring to first end 114 (coupled end) and second end 116 (free end) of
each anchor arm 112); Figs. IA-ID (depicting same); claim 1 (further
reciting that "the anchor arms each include a length extending from the
coupled end to a free end, wherein the free end is radially displaced from the
body portion"). If such an interpretation is inconsistent with Appellant's
intended claim scope, Appellant may wish to consider a clarifying
amendment.
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Appeal2018-003356
Application 13/708,616
Figure 4A, there are openings (75) located between (74) and (72). The
anchor arms (72) [and] (76) are connected to the body of the cannula ring
within these openings when looking at the circumferential or radial location
of the attachment." Ans. 2.
Appellant persuasively asserts, however, that Marseille's "flared tip
portion (72) defines the gap (75), [and,] thus[,] the flared tip portion (72) is
not necessarily disposed within the gap (75), as claimed." Appeal Br. 8
(boldface and italics omitted); see also id. ( asserting that "the flared tip
portion [(72)] itself is defined by the wall (76) and thus is permanently a part
of the cannula (70)" (boldface and italics omitted)). Given that Marseille's
gap 7 5 is defined by flared tip portion 72 and ring member 7 4 (see Marseille,
Fig. 4A; ,r 33), we do not see how flared tip portion 72 would be connected
within gap 75. In other words, Marseille's arm (i.e., flared tip portion 72)
appears to be a unitary part of Marseille's body portion (i.e., elongate
body 70a of cannula 70), and this arm defines the extent of an opening
(gap 7 5), but this structure does not appear to be connected within the
identified opening. Thus, the Examiner has not established a finding
supported by a preponderance of the evidence that Marseille discloses, either
expressly or inherently, a "plurality of anchor arms connecting to the
coupled end within a respective one of the plurality of openings," as recited
in claim 1.
Accordingly, based on the record before us-because an anticipation
rejection requires a finding in a single reference of each and every limitation
as set forth in the claims-we do not sustain the rejection of independent
claim 1, and its dependent claims 2-5, 7, 8, 29, and 30, under 35 U.S.C.
§ 102(b) as anticipated by Marseille.
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Appeal2018-003356
Application 13/708,616
Rejections III and IV- Claims 21-28 as unpatentable over
Marseille and one of Reichenbach and Kocur
Regarding Rejections III and IV, we note that these rejections are
premised on the same purported disclosure from Marseille discussed above
in connection with Rejection II, and further that the Examiner relied on
Reichenbach (Rejection III) and Kocur (Rejection IV) for teaching
additional features, but not to cure the above-noted deficiency of Marseille.
See Final Act. 4--5. Accordingly, for the same reasons, we likewise do not
sustain the rejections of claims 21-28 under 35 U.S.C. § 103(a).
DECISION
We AFFIRM the Examiner's decision rejecting claims 1-5, 7, 8, and
21-30 under 35 U.S.C. § 112, second paragraph, as being indefinite.
We REVERSE the Examiner's decision rejecting claims 1-5, 7, 8, 29,
and 30 under 35 U.S.C. § 102(b) as anticipated by Marseille.
We REVERSE the Examiner's decision rejecting claims 21-24 under
35 U.S.C. § 103(a) as being unpatentable over Marseille and Reichenbach.
We REVERSE the Examiner's decision rejecting claims 25-28 under
35 U.S.C. § 103(a) as being unpatentable over Marseille and Kocur.
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
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