Ex Parte Poehlmann et al

Patent Trials and Appeals Board

Mar 28, 2019

14021716 - (D) (P.T.A.B. Mar. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/021,716 09/09/2013
59538 7590 04/01/2019
Wagenknecht IP Law Group, PC
12396 WORLD TRADE DRIVE
SUITE 312
SAN DIEGO, CA 92128
FIRST NAMED INVENTOR
Stefanie Poehlmann
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.
10155-100414 3117
EXAMINER
SCHWIKER, KATHERINE H
ART UNIT PAPER NUMBER
3771
NOTIFICATION DATE DELIVERY MODE
04/01/2019 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):
office@wageniplaw.com
docketing@wageniplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEPANIE POEHLMANN and
ALEXANDRE AMID0 1
Appeal2018-004904
Application 14/021, 716
Technology Center 3700
Before JENNIFER D. BAHR, JEREMY M. PLENZLER, and
BRENT M. DOUGAL, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1 and 3-13. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM-IN-PART.
1 BIOTRONIK AG (Appellant) is the applicant as provided in 37 C.F.R.
§ 1.46 and is identified as the real party in interest.
Appeal2018-004904
Application 14/021, 716
THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below with paragraphing added, is illustrative of
the claimed subject matter.
1. An implant with an open-worked, hollow cylindrical main
structure consisting essentially of
circumferential meandering structures joined by a
multiplicity of crosspieces,
wherein the implant adopts a compressed state and an
expanded state, characterized in that radial expansion of the
main structure increases compression of the crosspieces to
increase density of the crosspieces in at least in one portion of
the implant that is straight in a longitudinal direction of the
implant when expanded, and
further characterized in that the meandering
structures and adjacent meandering structures comprise
complementary structures that fit into one another to directly
mesh the meandering structures with the adjacent meandering
structures in the implant's expanded state and
further wherein the meandering structures and adjacent
meandering structures are free from direct contact with one
another in the implant's compressed state.
REJECTIONS
The following rejections are before us for review:
(1) claims 9-13 under 35 U.S.C. § 112, second paragraph, as indefinite;
(2) claims 1, 3, 5, and 6 under 35 U.S.C. § I02(b) as anticipated by
Palmaz (US 5,102,417, issued Apr. 7, 1992);
(3) claim 4 under 35 U.S.C. § I03(a) as unpatentable over Palmaz and
Kantor (US 2006/0030932 Al, published Feb. 9, 2006);
(4) claim 7 under 35 U.S.C. § I03(a) as unpatentable over Palmaz and
Goto (US 2006/0224229 Al, published Oct. 5, 2006); and
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(5) claims 8-10, 12, and 13 under 35 U.S.C. § I03(a) as unpatentable
over Palmaz and Kao (US 2007/0219613 Al, published Sept. 20,
2007). 2
DISCUSSION
Rejection (1)
The Examiner rejected claims 9 and 12, as well as claims 10 and 11
depending from claim 9 and claim 13 depending from claim 12, under
35 U.S.C. § 112, second paragraph, on the basis that the transitional phrase
"consisting essentially of' in claim 1, from which claims 9 and 12 depend,
limits the scope of the claims to circumferential meandering structures and a
multiplicity of crosspieces" and elements that do not materially affect the
basic and novel characteristics of the claimed invention. Final Act. 2-3, 3-
4. According to the Examiner, the "protrusion" of claim 9 and the
"recesses" and "protrusions" of claim 12 affect the basic and novel
characteristics of the claimed invention and, thus, would be excluded by the
"consisting essentially of' language of claim 1. Id. at 3, 4. For the reasons
that follow, the Examiner's position is not well-founded.
Claim 9 recites lateral protrusions of the meandering structures.
Br. 17 (Claims App.). In other words, as recited in claim 9, the lateral
protrusions are parts of the meandering structures, or further define the
meandering structures. See Br. 8 ( explaining that "claim 9 more narrowly
characterizes the path of the meandering structure of claim 1 "). Claim 9
does not recite the protrusions as further elements in addition to those
2 The Examiner withdrew the rejection of claim 11 under 35 U.S.C. § I03(a)
as unpatentable over Palmaz and Kao. Ans. 3; see Final Act. 10.
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specified in claim 1 (i.e., the meandering structures and the crosspieces) and,
thus, the protrusions are not excluded from the scope of the claim by the
"consisting essentially of' language of claim 1.
Similarly, claim 12 recites that "the complementary structures,"
which, according to claim 1, are components of the "meandering structures,"
"are recesses extending from opposing faces of protrusions." Id. In other
words, the "protrusions" and "recesses" recited in claim 12 are not further
elements in addition to those specified in claim 1 (i.e., the meandering
structures and the crosspieces) and, thus, are not excluded from the scope of
the claim by the "consisting of' language of claim 1.
Accordingly, we do not sustain the rejection of claim 9 or claim 12
under 35 U.S.C. § 112, second paragraph, nor do we sustain the rejection of
claims 10, 11, and 13 under 35 U.S.C. § 112, second paragraph, on the basis
of their dependence from claim 9 or claim 12.
The Examiner also presents two additional bases for rejecting claim
10 under 35 U.S.C. § 112, second paragraph, namely, that "[t]here is
insufficient antecedent basis for [the limitation 'the entire lateral protrusion']
in the claim," and that "[i]t is unclear what the limitation 'the entire lateral
protrusion open to the meandering structure' is referring to." Final Act. 3.
Appellant points to "the recitation of 'a portion of a lateral protrusion' of
claim 9" and submits that "'the entire lateral protrusion open to the
meandering structure' refers to an entire region of the lateral protrusion
facing the adjacent meandering structure." Br. 9.
In response, the Examiner points out, correctly, that claim 10 does not
refer to the entire lateral protrusion facing the adjacent meandering structure,
but, rather, refers to the entire lateral protrusion open to the meandering
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structure. Ans. 5. According to the Examiner, "[i]t is not clear from the
claim language or the [S]pecification that 'open to the meandering structure'
means 'facing the adjacent meandering structure."' Id. In fact, the
Examiner determines that "one of ordinary skill in the art would not interpret
'open to the meandering structure' as 'facing the meandering structure,'"
and "maintains that 'the entire lateral protrusion open to the meandering
structure' is unclear." Id.
"As the statutory language of 'particular[ity]' and 'distinct[ness]'
indicates, claims are required to be cast in clear - as opposed to ambiguous,
vague, indefinite -terms." In re Packard, 751 F.3d 1307, 1313 (Fed. Cir.
2014) (citation omitted). "It is the applicants' burden to precisely define the
invention, not the PTO's." In re Morris, 127 F.3d 1048, 1056 (Fed. Cir.
1997). Moreover,
[W]hen the USPTO has initially issued a well-grounded
rejection that identifies ways in which language in a claim is
ambiguous, vague, incoherent, opaque, or otherwise unclear in
describing and defining the claimed invention, and thereafter
the applicant fails to provide a satisfactory response, the
USPTO can properly reject the claim as failing to meet the
statutory requirements of§ 112(b) [i.e., the successor to 35
U.S.C. § 112, second paragraph]).
In re Packard, 751 F.3d at 1311.
In this case, the Examiner set forth a well-grounded rejection
identifying ways in which the language of claim 10 is unclear, and, further,
cogently explains why Appellant's response fails to satisfactorily address the
concerns addressed by the Examiner. Appellant fails to apprise us of error
in the Examiner's position in rejecting claim 10 as indefinite. Accordingly,
we sustain the rejection of claim 10 under 35 U.S.C. § 112, second
paragraph.
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Rejection (2)
Appellant argues claims 1, 3, 5, and 6 together in contesting the
rejection of these claims as anticipated by Palmaz. Br. 10-12. We decide
the appeal of this rejection based on claim 1, and the remaining claims stand
or fall with claim 1. See 3 7 C.F .R. § 41.3 7 ( c )( 1 )(iv) (permitting the Board to
select a single claim to decide the appeal as to a single ground of rejection of
a group of claims argued together).
The Examiner finds that Palmaz discloses an implant as claimed
including, in pertinent part, circumferential meandering structures (grafts or
prostheses 70) joined by a multiplicity of crosspieces (connector
members 102), characterized in that radial expansion of the main structure
increases compression of the crosspieces to increase the density of the
crosspieces in a portion of the implant that is straight when expanded. Final
Act. 6. The Examiner also finds that Palmaz's meandering structures (grafts
or prostheses 70) comprise complementary structures that fit into one
another to directly mesh meandering structures with adjacent meandering
structures. Id. The Examiner provides annotated versions of Figures 7 and
10 of Palmaz to illustrate the connecting crosspieces and the complementary
structures of Palmaz's implant. Id. at 7. The annotated Figure 7 (disposed
in the center) and two annotated versions of Figure 10 (one above and one
below annotated Figure 7) are reproduced below.
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t .. ·
\ ~·
The first annotated version of Figure 10 includes annotations
identifying the structures the Examiner considers to be "[ c ]onnecting
crosspieces with increased compression and density;" the annotated Figure 7
includes an annotation (pointing to connector members 102) identifying the
structures the Examiner considers to be "[ c ]onnecting crosspieces"; and the
second annotated version of Figure 10 includes annotations identifying the
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structures the Examiner considers to be the "[c]omplementary structures."
Id.
Appellant does not dispute that Palmaz' s connector members 102 will
be compressed to increase density when they bend as illustrated in Figure
IO. See Br. 11-12. Rather, Appellant first argues that Palmaz's connector
members 102 flexibly bend or compress during bending of the prosthesis,
and that "Palmaz fails to disclose that compression and increase in density of
crosspieces is due to radial expansion in a portion of the implant that is
straight in the longitudinal direction." Id. at 11. According to Appellant, "at
best Palmaz's bending of crosspieces during radial expansion occurs at
bends within the passageway, and therefore does not occur in a portion of
the implant that is straight in the longitudinal direction." Id.
The Examiner finds, and we agree, that, while Palmaz's implant bends
if implanted into a curved passageway, Figure 10, which shows the implant
in a straight expanded configuration, supports the Examiner's finding that
radial expansion of the main structure increases compression of the
crosspieces ( connector members 102) to increase the density of the
crosspieces in a portion of the implant that is straight during the expansion.
Ans. 6-7. Figures 7 and 10 of Palmaz both illustrate the implant in a
straight configuration. Figure 7 depicts the implant before it has been
expanded, and Figure 10 is a perspective view of the graft of Figure 7 after it
"has been expanded and deformed" radially outwardly. Palmaz 6:8-9; see
id. 12: 64---65 ( describing Figure 10 as showing the graft or prosthesis "in its
expanded, and deformed configuration"); see also id. 5:4---6, 18-20
( describing the invention as directed to "expandable and deformable" tubular
prostheses that "are expanded and deformed radially outwardly into contact
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with the body passageway"); compare id., Fig. 10, with id., Fig. 9
(illustrating the prosthesis when passing through a curved portion of a body
passageway (id. 12:33-38). Palmaz notes that "should it be desired to
implant graft, or prosthesis 70' on a curved portion of a body passageway 80,
such implantation and expansion would be permitted by the connector
members 100." Id. 12:66-13:2. However, radial expansion of the graft or
prosthesis causes bending, and thus compression and increased density, of
the connector members, as shown in Figure 10, even without bending of the
graft or prosthesis by disposition in a curved passageway.
Appellant next argues that Palmaz's tubular members 71 "do not have
complementary structures that fit into one another to directly mesh adjacent
meandering structures." Br. 12. Rather, Appellant argues, Palmaz connects
tubular members 71 solely using connector members 100, 102, and "any
'working contact' between tubular members (71) is by way of the connector
members (100, 102) and not through fitting tubular members (71) into one
another to directly mesh with one another." Id.
We agree with, and adopt, the Examiner's analysis determining that
the claim language "directly mesh" does not require that the meandering
structures directly contact one another. See Ans. 8-9; Spec. 16: 15-19
( describing Figs. 19-22 as showing adjacent circumferential portions
meshing together because "a central portion having a lateral protrusion ...
of a first basic meander ... becomes engaged, in a sub-region of the
meander shape, with a portion of an adjacent second basic meander
protruding in the distal direction"); Figs. 20, 22 (showing no contact
between adjacent meandering structures 11 in the expanded state); see also
Spec. 10:5-6, 12-13 (describing Figures 20 and 22 as showing the implant
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Application 14/021, 716
in the expanded state). Thus, Appellant's argument is unavailing because it
is not commensurate with the scope of claim 1.
For the above reasons, Appellant does not apprise us of error in the
Examiner's rejection of claim 1 as anticipated by Palmaz. Accordingly, we
sustain the rejection of claim 1, as well as claims 3, 5, and 6, which fall with
claim 1, as anticipated by Palmaz.
Rejections (3) and (4)
Appellant does not present any arguments specifically contesting the
rejections of claims 4 and 7 under 35 U.S.C. § 103(a). See Br. passim.
Accordingly, we also sustain the rejection of claim 4 as unpatentable over
Palmaz and Kantor and the rejection of claim 7 as unpatentable over Palmaz
and Goto.
Rejection (5)
Claims 8-10
Appellant does not present any arguments specifically contesting the
rejection of claims 8-10 under 35 U.S.C. § 103(a). See Br. passim.
Accordingly, we sustain the rejection of claims 8-10 as unpatentable over
Palmaz and Kao.
Claims 12 and 13
Claim 12 depends from claim 1, and further recites "wherein the
complementary structures are recesses extending from opposing faces of
protrusions." Br. 17 (Claims App.). According to Appellant, recesses 49
and 51 shown in Figure 24 provide support for this limitation. See id. at 6
(citing Spec. 17:4--9). Appellant's Figure 24 is reproduced below.
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F!G. 24
Figure 24 is "a perspective view, from the side without the respective
connecting crosspieces, of crosspieces of adjacent basic meanders of a ninth
exemplary embodiment of an implant ... in the compressed state."
Spec. 10:19-22. Figure 24 depicts recesses 49 and 51 formed in opposing
faces at apexes 47 and 48, respectively. See id. at 17:4--13.
The Examiner finds that Palmaz is silent regarding this feature, but
finds that Kao teaches a similar implant having recesses extending from
opposing faces of protrusions ( one protrusion comprising angled retaining
member 206 and coupling member 204, and the other protrusion comprising
angled retaining member 214 and coupling member 212). Final Act. 12
(citing Kao, Figs. 1 lA, 1 lB). The Examiner determines it would have been
obvious to modify Palmaz to have the complementary features be recesses
extending from opposing faces of protrusions as taught by Kao to "prevent[]
the adjacent structures from separating or moving relative to one another and
to prevent the structures from collapsing once positioned in the vessel." Id.
at 13 (citing Kao ,r,r 85, 86). Appellant argues that Kao's coupling members
"are not recesses extending from opposing faces of protrusions. Rather, they
are protrusions with angled retaining members (206)." Br. 15.
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In response, the Examiner explains that "[t]he limitation 'the
complementary structures are recesses extending from opposing faces of
protrusions' is interpreted such that the recesses extend from opposite faces
of protrusions (i.e. the complementary structures comprise protrusions and
opposing recesses)." Ans. 11. With reference to an annotated portion of
Figure 1 lB of Kao provided on page 13 of the Answer, the Examiner finds
that Kao' s "recesses extend from opposing faces of protrusions" because
"the recesses can be seen to be placed opposite to and facing one another."
Id. at 11-12 (including annotated Figure 1 lB). The annotated portion of
Kao's Figure 1 lB provided by the Examiner is reproduced below.
The Examiner's annotated drawing is an enlarged view of angled
retaining members 206 and 214 facing one another, with arrows pointing
generally toward the intersection of angled retaining member 206 and
coupling member 204 and the intersection of angled retaining member 214
and coupling member 212 to identify the "[r]ecesses." Id. at 12. The
intersections identified by the Examiner do not appear to be "recesses."
However, even if we understand the Examiner to be attempting to identify
the open areas bounded by angled retaining member 206 and coupling
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member 204 and by angled retaining member 214 and coupling member 212
as the "recesses," the Examiner does not specifically identify, nor is it
sufficiently apparent, what structure of Kao corresponds to the claimed
"opposing faces," from which such "recesses" extend.
Thus, the Examiner fails to establish a sustainable case that the subject
matter of claim 12, or claim 13, which depends from claim 12, would have
been obvious. Accordingly, we do not sustain the rejection of claims 12 and
13 as unpatentable over Palmaz and Kao.
DECISION
The Examiner's decision rejecting claims 9, 11, 12, and 13 under
35 U.S.C. § 112, second paragraph, is REVERSED.
The Examiner's decision rejecting claim 10 under 35 U.S.C. § 112,
second paragraph, is AFFIRMED.
The Examiner's decision rejecting claims 1, 3, 5, and 6 under
35 U.S.C. § 102(b) is AFFIRMED.
The Examiner's decision rejecting claims 4 and 7-10 under
35 U.S.C. § 103(a) is AFFIRMED.
The Examiner's decision rejecting claims 12 and 13 under
35 U.S.C. § 103(a) is REVERSED.
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
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