Ex Parte Bell et alDownload PDFPatent Trial and Appeal BoardMar 17, 201612183930 (P.T.A.B. Mar. 17, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/183,930 07/3112008 Stephen G. Bell 24955 7590 03/21/2016 ROGITZ & AS SOCIA TES Jeanne Gahagan 750B STREET SUITE 3120 SAN DIEGO, CA 92101 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. 1208.009 6446 EXAMINER HOUSTON, ELIZABETH ART UNIT PAPER NUMBER 3731 NOTIFICATION DATE DELIVERY MODE 03/21/2016 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): Noelle@rogitz.com eofficeaction@appcoll.com J ohn@rogitz.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte STEPHEN G. BELL, WAYNE A. NODA, and GIUSEPPE AMAT0 1 Appeal2014-002335 Application 12/183,930 Technology Center 3700 Before JOHN C. KERINS, BRANDON J. WARNER, and AMANDA F. WIEKER, Administrative Patent Judges. WIEKER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Stephen G. Bell et al. ("Appellants") appeal under 35 U.S.C. § 134(a) from the Examiner's final rejection of claims 91-98. We have jurisdiction over the appeal under 35 U.S.C. § 6(b ). We REVERSE. 1 According to Appellants, the Real Party in Interest is Insightra Medical, Inc. App. Br. 2. Appeal2014-002335 Application 12/183,930 CLAIMED SUBJECT MATTER The invention concerns "a surgical implant system for repairing abdominal hernias." Abstract. Claims 91 and 96 are illustrative of the subject matter on appeal, and recite: 91. A device for securing an engagement member extending from an implant to a ventral wall comprising: a passer configured to penetrate at least a portion of the ventral wall in a generally circular path when advanced, said passer having a connector adapted to couple to the engagement member after penetrating the wall, and said passer adapted to pull the engagement member through the path when retracted, a finger ring being located on a distal end segment of the passer and configured to at least partially surround a finger of an operator such that tactile feel of the operator can guide the delivery device to an anatomical position. 96. A kit for the repair of a ventral wall hernia compnsmg: an implant member and at least a first engagement member defining a first end distanced from the implant member, a second engagement member also extending from the implant and defining a second end distanced from the implant member; and a template configured to aid a person in marking an intended position of the engagement members of the implant, the template being positionable on the abdomen of a patient over an actual or intended incision, an outline being on the template and corresponding to the implant, respective locations of the engagement members being indicated on the template, whereby a person can place the template on the patient and mark the respective locations of the engagement members on the skin of the patient such that after the template is removed from the patient, the marks guide placement of the engagement members through the ventral wall of the patient. App. Br. 9-10, Claims Appendix (emphasis added). 2 Appeal2014-002335 Application 12/183,930 REJECTIONS The claims stand rejected as follows: I. Claims 91-95 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. II. Claims 91and92 under 35 U.S.C. § 102(b) as anticipated by Todt (US 2,738,790, iss. Mar. 20, 1956). III. Claims 91-94 under 35 U.S.C. § 102(b) as anticipated by Koike (US 5,716,367, iss. Feb. 10, 1998). IV. Claims 91and92 under 35 U.S.C. § 102(b) as anticipated by Claren (US 5,899,909, iss. May 4, 1999). V. Claim 95 under 35 U.S.C. § 103(a) as unpatentable over Claren and Neisz (US 2004/0068159 Al, pub. Apr. 8, 2004). VI. Claims 96 and 97 under 35 U.S.C. § 103(a) as unpatentable over Reddy (US 5,337,736, iss. Aug. 16, 1994) and Leahy (US 5,640,977, iss. June 24, 1997). VII. Claim 98 under 35 U.S.C. § 103(a) as unpatentable over Reddy, Leahy, and Benderev (US 2005/0004576 Al, pub. Jan. 6, 2005). ANALYSIS Written Description- Claims 91-95 The Examiner finds that "[t]he originally filed specification does not support a finger ring 'configured to at least partially surround a finger.'" Final Act. 4. The Examiner finds that the Specification describes a "loop," and finds that "[b]oth a 'loop' and a 'ring' extend 360 degrees, so it would not 'partially surround a finger of an operator."' Ans. 3. 3 Appeal2014-002335 Application 12/183,930 Appellants contend that Figure 9 A and page 20 of the Specification adequately disclose a ring that "at least partially surround[s] a finger," by showing and describing finger ring 250, which surrounds a finger. App. Br. 3--4. Appellants contend that a ring need not "be a completely enclosed object." Reply Br. 1. We are persuaded by Appellants' argument. See Spec. 20:3-9, Fig. 9A (showing a ring extending at least partially around a finger). The Examiner's finding that the Specification supports adequately only a finger ring that extends 360° is unsupported by the record. Therefore, we reverse the Examiner's rejection of claims 91-95 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Anticipation by each of Todt, Koike, and Claren- Claims 91-94 The Examiner finds that each of Todt, Koike, and Claren discloses a finger ring. Final Act. 5-6. Although the claim recites that the finger ring is "located on a distal end segment of the passer," the Examiner finds that the claim does not define a reference point to which the "distal end segment" refers. Id. at 2. Therefore, the Examiner finds that "the distal end can be considered either end." Ans. 3. The Examiner does not make any findings that Todt, Kokie, or Claren disclose a finger ring at a distal location. Appellants contend that each of Todt, Koike, and Claren discloses a finger ring located at a proximal end of the device, rather than a distal end as claimed. App. Br. 6-7. Appellants contend that "[a]s used by skilled artisans, 'distal' in the present context is the part of an instrument that goes 4 Appeal2014-002335 Application 12/183,930 first into the patient, not the opposite part. This is precisely how the examiner's own references use the term." Reply Br. 2 (emphasis omitted) (citing Koike Abstract, 5:5-10). "During examination, 'claims ... are to be given their broadest reasonable interpretation consistent with the specification, and ... claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art."' In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2012) (citation omitted). Here, we are persuaded that the Examiner's interpretation is unreasonably broad, and is divorced from the understanding that would be reached by one of ordinary skill in the art. We agree with Appellants that one of ordinary skill in the art would understand the term "distal" to refer to the end of the device that is farthest from the operator, or, in other words, "the part of an instrument that goes first into the patient." Reply Br. 2. This is consistent with Appellants' use of the term in the Specification and with the use of the terms "distal" and "proximal" in prior art relied on by the Examiner. Spec. 3:4--6 ("[A]s the passer is advanced, the distal end penetrates tissue in a circular path."), 3:27-28 ("The kit may further include a passer with a distal end that is configured to penetrate a portion of the ventral wall."), Figs. 5A-5C; Koike Abstract (identifying the "distal end" as the end opposite finger ring 45), 5:5-10 ("[A] finger ring 45 provided on a proximal end of the shaft 41."). Therefore, we reverse the Examiner's rejection of claims 91 and 92 under 35 U.S.C. § 102(b) as anticipated by Todt, the Examiner's rejection of claims 91-94 under 35 U.S.C. § 102(b) as anticipated by Koike, and the Examiner's rejection of claims 91and92 under 35 U.S.C. § 102(b) as 5 Appeal2014-002335 Application 12/183,930 anticipated by Claren, each of which is based on this untenable claim interpretation. Obviousness over Claren and Neisz- Claim 95 The Examiner's rejection of claim 95 under 35 U.S.C. § 103(a) as unpatentable over Claren and Neisz depends on the Examiner's rejection of claim 91 as anticipated by Claren. Claren fails to disclose a finger ring located on a distal end segment, as discussed above. Neisz does not cure this deficiency. Therefore, the obviousness rejection over Claren and Neisz must also be reversed. Obviousness over Reddy and Leahy- Claims 96 and 97 The Examiner finds that Reddy discloses a hernia repair kit comprising implant member 134 and first and second engagement members 130/132. Final Act. 7. The Examiner finds that implant 134 is "implanted via trocar ports 120, 122, 144 indicating locations of the engagement members," but finds that Reddy is silent as to how the locations of the trocar ports are determined. Id. The Examiner finds that Leahy teaches a laparoscopy kit comprising a template that indicates trocar port locations. Id. (citing Leahy, Fig. 7). The Examiner concludes that it would have been obvious to modify Reddy' s kit with Leahy' s template, to reduce trauma and assist non-expert surgeons. Id. at 8. Appellants argue that Leahy' s template indicates the locations of "incision and puncture sites in general" and, when combined with Reddy, would indicate only the locations of trocar ports 120, 122 and puncture hole 6 Appeal2014-002335 Application 12/183,930 144 through which tools are passed, not the "respective locations of the engagement members," as claimed. App. Br. 7; Reply Br. 3. We are persuaded by Appellants' argument. The Examiner has not explained persuasively how Reddy' s trocar ports "indicat[ e] locations of the engagement members during the implantation." Final Act. 7. The citations provided by the Examiner (i.e., Figures 8-14 and column 2, lines 15-30) show only that trocar ports are established, and instruments are passed and manipulated therethrough. These citations do not establish that the trocar ports indicate the locations of an implant's engagement members. Further, we agree with Appellants that Leahy' s template indicates only the locations of trocar and cannula puncture sites. See Leahy 5:8-15. Leahy provides no teaching of a template that indicates the location of an implant's engagement members. 2 Therefore, we do not sustain the Examiner's rejection of claims 96 and 97 under 35 U.S.C. § 103(a) as unpatentable over Reddy and Leahy. Obviousness over Reddy, Leahy, and Benderev - Claim 98 The Examiner's rejection of claim 98 under 35 U.S.C. § 103(a) as unpatentable over Reddy, Leahy, and Benderev depends on the Examiner's rejection of claim 96 as unpatentable over Reddy and Leahy. Reddy and Leahy fail to render obvious a template that indicates the locations of 2 Even if engagement members may be passed through a single incision, as the Examiner argues, the Examiner has not identified a teaching in Reddy or Leahy that would render obvious a template that indicates the locations of engagement members. Ans. 5. 7 Appeal2014-002335 Application 12/183,930 engagement members, as discussed above. Benderev does not cure this deficiency. Therefore, the obviousness rejection over Reddy, Leahy, and Benderev must also be reversed. DECISION The rejection of claims 91-95 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement is REVERSED. The rejection of claims 91and92 under 35 U.S.C. § 102(b) as anticipated by Todt is REVERSED. The rejection of claims 91-94 under 35 U.S.C. § 102(b) as anticipated by Koike is REVERSED. The rejection of claims 91and92 under 35 U.S.C. § 102(b) as anticipated by Claren is REVERSED. The rejection of claim 95 under 35 U.S.C. § 103(a) as unpatentable over Claren and N eisz is REVERSED. The rejection of claims 96 and 97 under 35 U.S.C. § 103(a) as unpatentable over Reddy and Leahy is REVERSED. The rejection of claim 98 under 35 U.S.C. § 103(a) as unpatentable over Reddy, Leahy, and Benderev is REVERSED. REVERSED 8 Copy with citationCopy as parenthetical citation