Ex Parte Bell et al

Patent Trial and Appeal Board

Mar 17, 2016

12183930 (P.T.A.B. Mar. 17, 2016)

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).
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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.
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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
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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
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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
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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.
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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
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