Ex Parte Wardle et al

Patent Trial and Appeal Board

Nov 18, 2016

12833852 (P.T.A.B. Nov. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/833,852 07/09/2010
66854 7590
SHAY GLENN LLP
2755 CAMPUS DRIVE
SUITE 210
SAN MATEO, CA 94403
11/22/2016
FIRST NAMED INVENTOR
John Wardle
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.
10502-706.200 7339
EXAMINER
DANG, ANH TIEU
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
11/22/2016 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):
info@shayglenn.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN WARDLE
and ANDREW T. SCHIEBER
Appeal2015-002504
Application 12/833,852
Technology Center 3700
Before STEFAN STAICOVICI, JAMES P. CALVE, and
WILLIAM A. CAPP, Administrative Patent Judges.
CAL VE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the final rejection of
claims 1-9 and 26-34. See Appeal Br. 14. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
Appeal2015-002504
Application 12/833,852
CLAIMED SUBJECT MATTER
Claims 1, 26, and 30 are independent. Claim 1 is reproduced below.
1. An ocular implant delivery system, comprising:
a housing;
a cannula coupled to the housing, the cannula sized and
configured for insertion into Schlemm' s canal of a human eye;
a delivery mechanism disposed on the housing, the
delivery mechanism configured to advance and retract an ocular
implant within the cannula; and
an orientation mechanism disposed on the housing, the
orientation mechanism configured to control rotation of the
cannula with respect to the housing, the orientation mechanism
being further configured to maintain an orientation of the ocular
implant with respect to the cannula when the cannula is rotated.
REJECTIONS 1
Claims 1-9 and 26-29 are rejected under 35 U.S.C. § 103(a) as
unpatentable over De Juan, Jr. (US 2007/0191863 Al, pub. Aug. 16, 2007)
("De Juan"), Mcintyre (US 2006/0178674 Al, pub. Aug. 10, 2006), and
Lynch (US 2003/ 0236484 Al, pub. Dec. 25, 2003).
Claims 30-34 are rejected under 35 U.S.C. § 103(a) as unpatentable
over De Juan, Mcintyre, Lynch, and Cartledge (US 2005/0149114 Al, pub.
July 7, 2005).
1 The Examiner withdrew the rejection of claims 26-34 under 35 U.S.C.
§ 112, second paragraph, for indefiniteness. See Ans. 2.
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Appeal2015-002504
Application 12/833,852
ANALYSIS
Claims 1-9 and 26--29 as unpatentable over De Juan, Mcintyre, Lynch
The Examiner found that De Juan teaches an ocular implant delivery
system comprising a housing (handle component 515), a cannula (advancing
structure 530), a delivery mechanism (knob 550) disposed on the housing
and configured to advance and retract ocular implant 105 within the cannula
as recited in independent claims 1 and 26. Final Act. 6, 10. The Examiner
found that De Juan does not teach an orientation mechanism on the housing,
but Mcintyre teaches a surgical device having a housing (handle 12) with an
orientation mechanism (nosecone 16) configured to control the rotation of a
cannula (tubular guide shaft 20). Id. at 7, 10. The Examiner relied on Lynch
to teach the deploying of stents and shunts in Schlemm' s canal. Id. at 7, 11.
Appellants argue that De Juan's cannula and delivery mechanism are
not configured "to advance and retract an ocular implant within the cannula"
as recited in claims 1 and 26. Appeal Br. 5, 9. Appellants also argue that De
Juan's element 530, which the Examiner equates to a cannula, is a push tube
that pushes implant 105 off of applier 525, either by moving push tube 530
distally while applier 525 is held stationary, or by withdrawing applier 525
while holding push tube 530 stationary. Id. Appellants argue that implant
105 is mounted on applier 525 and is never inside of push tube 530. Id.
Appellants further argue that if implant 105 fit inside of push tube 530, then
push tube 530 could not perform its function of pushing implant 105 off of
applier 525, as De Juan discloses. Id. Appellants also argue that De Juan
cannot retract the implant and thus lacks a cannula and delivery mechanism
configured to advance and retract an ocular implant within the cannula. Id.
at 5---6. We agree.
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Appeal2015-002504
Application 12/833,852
The Examiner's finding that De Juan teaches a cannula and delivery
mechanism configured to advance and retract an ocular implant within the
cannula is not supported by a preponderance of evidence. De Juan teaches
that the cannula (advancing structure 530) is configured to allow applier 525
to advance and retract in advancing structure 530 as shown in Figures 6C-
6G. De Juan teaches that applier 525 is sized to fit through the lumen in the
ocular implant (shunt 105) so shunt 105 is mounted on applier 525. De Juan
i-f 110. Shunt 105 is not advanced or retracted by knob 550 inside advancing
structure 530, which the Examiner found to be the claimed cannula. Instead,
advancing structure 530 moves distally relative to applier 525 and pushes
shunt 105 along applier 525 to the patient's eye. Alternatively, applier 525
can be withdrawn into advancing structure 530 and remove shunt 105 from
applier 525 as advancing structure 530 holds shunt 105 in a fixed location in
the eye. Id. i-fi-1 111, 114.
In both cases, shunt 105 does not advance or retract within advancing
structure 530 (the cannula), as claimed. Instead, advancing structure 530
abuts shunt 105 when shunt 105 is mounted on applier 525, and advancing
structure 530 removes shunt 105 from applier 525. Id. i-f 121, Figs. 6E---6G.
Thus, De Juan does not teach a device configured to advance or retract an
ocular implant within a cannula, as the Examiner found. See Ans. 2.
De Juan's disclosure that a shunt can be placed inside a sheath during
delivery (De Juan i-f 109) does not teach that shunt 105 is disposed inside of
advancing structure 530 (or a cannula), as the Examiner found. See Ans. 3.
This embodiment does not teach a device configured to retract a sheathed
shunt inside a cannula, as claimed, or a device that advances and retracts a
sheathed shunt within a cannula, as claimed. Reply Br. 3.
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Appeal2015-002504
Application 12/833,852
Nor has the Examiner made sutlicient findings to show that De Juan is
configured to retract an ocular implant (shunt 105). See Final Act. 6, 10.
Paragraph 97 of De Juan does not support such a finding by the Examiner.
Ans. 3. De Juan teaches that shunt 105 can be anchored to eye tissue after
being implanted by attaching hairs to shunt 105 and the eye tissue. De Juan
i-f 97. This teaching does not support the Examiner' finding that shunt 105
can be retracted within the delivery device, as claimed, however.
Thus, we do not sustain the rejection of claims 1-9 and 26-29.
Claims 30--34 as unpatentable over De Juan, Mcintyre, Lynch, Cartledge
Independent claim 30 recites an ocular implant and delivery system
having a cannula coupled to a housing, an ocular implant disposed in the
cannula, and a delivery mechanism that advances and retracts the implant in
the cannula. Appeal Br. 17 (Claims App.). The Examiner relied on De Juan
to teach these features, Mcintyre to teach an orientation mechanism, and
Lynch to teach deployment of shunts in Schlemm's canal. Final Act. 12-13.
The Examiner relied on Cartledge to teach keyed connections between a
catheter and other coaxial components of a delivery device. Id. at 13-14.
We agree with Appellants that De Juan and the other references do not
teach or suggest an ocular implant disposed to advance and retract within a
cannula as recited in claim 30. Appeal Br. 12. Cartledge's coaxial keyed
connection does not overcome these deficiencies, either. See id. at 13.
Thus, we do not sustain the rejection of claims 30-34.
DECISION
We reverse the rejection of claims 1-9 and 26-34.
REVERSED
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