Ex Parte ReydelDownload PDFPatent Trial and Appeal BoardJul 15, 201612386095 (P.T.A.B. Jul. 15, 2016) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 12/386,095 04/14/2009 Boris Reydel 10121/11502 (09-00118US2) 8840 30636 7590 07/15/2016 FAY KAPLUN & MARCIN, LLP 150 BROADWAY, SUITE 702 NEW YORK, NY 10038 EXAMINER HOLWERDA, KATHLEEN SONNETT ART UNIT PAPER NUMBER 3731 MAIL DATE DELIVERY MODE 07/15/2016 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte BORIS REYDEL ____________ Appeal 2014-007143 Application 12/386,095 Technology Center 3700 ____________ Before EDWARD A. BROWN, JAMES P. CALVE, and SEAN P. O’HANLON, Administrative Patent Judges. O’HANLON, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Boris Reydel (Appellant1) appeals under 35 U.S.C. § 134 from the August 13, 2013 Final Office Action (“Final Act.”) rejecting claims 20 and 38.2 We have jurisdiction over this appeal under 35 U.S.C. § 6(b). 1 According to Appellant, the real party in interest is Boston Scientific Scimed, Inc. App. Br. 2. 2 Claims 1–9, 11–16, 18, 19, and 53–55 are allowed (see Final Act. 3), and claims 10, 17, 21–37, and 39–52 are canceled (see July 18, 2013 Amendment 3, 5–7). Appeal 2014-007143 Application 12/386,095 2 SUMMARY OF DECISION We AFFIRM. SUMMARY OF INVENTION Appellant’s “invention relates to an endoscopic tissue-fastening device and related fastener and methods for use, and more particularly, a device which allows segments of the fastener to be independently attached to the tissue.” Spec. ¶ 1. Independent claims 20 and 38 are reproduced below from the Claims Appendix of the Appeal Brief: 20. A method for securing tissue, comprising guiding a housing to a target region in a living body, the housing releasably holding a fastener in an insertion configuration with first and second free ends of first and second segments of the fastener positioned proximally of a spring, wherein the spring is coupled between first ends of the first and second segments, the first and second segments extending away from the spring; moving the fastener relative to the housing to secure a portion of tissue on a first side of the fastener with only the first free end; moving, after the first free end has been secured, the fastener relative to the housing to secure a portion of tissue on a second side of the fastener with the second free end; and detaching the fastener from the housing. 38. A fastener comprising: a first segment extending from a first end to a tissue piercing free end; a second segment extending from a first end to a tissue piercing free end, wherein the first segment secures tissue independently of the second segment; and a spring coupled between the first ends of the first and second segments; Appeal 2014-007143 Application 12/386,095 3 wherein the fastener is insertable through a housing which holds the fastener in an insertion configuration with the free ends of the first and second segments are positioned proximally of the spring, the fastener being movable relative to the housing from the insertion configuration to an initial deployment configuration in which only the first segment extends distally from the housing so that the free end of the first segment may be inserted into a first portion of tissue, the fastener being movable relative to the housing from the initial deployment configuration to a second deployment configuration in which the second segment extends distally from the housing so that the free end of the second segment may be inserted into a second portion of tissue. REJECTIONS Claim 20 is rejected under 35 U.S.C. § 102(b) as being anticipated by Kuhns (US 7,485,124 B2, iss. Feb. 3, 2009). Claim 38 is rejected under 35 U.S.C. § 102(b) as being anticipated by Drews (US 7,556,647 B2, iss. July 7, 2009). ANALYSIS Claim 20 The Examiner finds Kuhns to disclose all of the elements of independent claim 20, including, inter alia, a fastener (fastener 105)3 having two segments (barbs 107, 108), each having a free end (free ends of barbs 107, 108), and positioned proximally to a spring (“[tip] 106 and halves of [barbs] 107, 108 connected to [tip] 106”). Final Act. 2; see also id. at 4. The Examiner also finds Kuhns to disclose all of the recited method steps. Id. at 2 (citing Kuhns, Figs. 19–23). 3 Parentheticals refer to the terminology of the cited references. Appeal 2014-007143 Application 12/386,095 4 Appellant first argues that “Kuhns fails to teach or suggest a spring ‘coupled between first ends of the first and second segments, the first and second segments extending away from the spring’” because “the portion of the fastener 105 between the barbs 107, 108 does not flex and does not constitute a spring.” App. Br. 4. Furthermore, according to Appellant, “such flexing would be unnecessary as the barbs themselves flex.” Id.; see also Reply Br. 2–4. We find this argument to be unpersuasive because Appellant does not address the spring of Kuhns as determined by the Examiner, which is “[tip] 106 and halves of [barbs] 107, 108 connected to [tip] 106.” See Final Act. 2. That is, the Examiner considers the flexing portions of barbs 107, 108 to be part of Kuhns’s spring. Appellant’s arguments do not apprise us of any error in this interpretation, and are, therefore, unpersuasive. Appellant next argues that “Kuhns fails to teach or suggest a method comprising the steps of ‘moving the fastener relative to the housing to secure a portion of tissue on a first side of the fastener with only the first free end’” because “the expansion of the first and second barbs . . ., as depicted in Figures 20 – 211 [sic], is not analogous to ‘moving the fastener relative to the housing to secure a portion of tissue on a first side of the fastener.’” App. Br. 6–7; see also Reply Br. 5. We find Appellant’s arguments to be unpersuasive. As noted by both the Examiner and Appellant, retraction of Kuhns slider 60 releases barb 107 from its constrained position. See, e.g., App. Br. 6–7; Ans. 6. This release causes barb 107 to fixedly engage with tissue 126. See Kuhns, 17:45–50. As neither slider 60 nor shaft 92 moves with barb 107, barb 107 moves Appeal 2014-007143 Application 12/386,095 5 relative to slider 60 and shaft 92. See id. at Figs. 18–22. Thus, the Kuhns fastener moves relative to the housing to secure a portion of tissue. Appellant’s arguments fail to apprise us of any Examiner error. Moreover, Appellant’s argument is inconsistent with how “moving the fastener” is used in the application. A comparison of steps 2 and 3 of figure 1 appears to show staple segment 310 being deployed by keeping staple 300 in place while moving tube 100 downwardly away from staple 300. Finally, Appellant argues that “the fastener 105 of Kuhns is not moved relative to the shaft 92 or second slider 70 to cause the barbs 107, 108 to engage the tissue.” App. Br. 8. Appellant contends that “the Examiner’s assertion that the barb 108 moves relative to the second slider 70 is unfounded as the barb 108 must be axially separated from the second slider 70 in order to permit any movement thereof.” Id. Continuing, Appellant argues “Kuhns does not move the fastener 105 relative to the shaft 92 or second slider 70 to deploy each of the barbs 107, 108. Rather, Kuhns is directed to the movement of the second slider 70 relative tot [sic] he [sic] fastener 105 to cause a deployment thereof.” Id. We find this argument unpersuasive for the reasons presented above with respect to Kuhns’s barb 107. Accordingly, we sustain the Examiner’s rejection of claim 20 as being anticipated by Kuhns. Claim 38 The Examiner finds that Drews discloses all of the elements of independent claim 38. Final Act. 2–5 (citing Drews, Figs. 14, 34–36). More Appeal 2014-007143 Application 12/386,095 6 specifically, the Examiner finds Drews to disclose a fastener (attachment device 2) having first (leg 6b) and second (leg 6a) segments, each extending from a first end to a free end, and a spring (“curved portion which biases the two legs back towards one another after the base torque applied in fig. 35 has been removed”) coupled between the segments. Id. at 2–3. The Examiner further finds that “[t]he claim is not drawn to the combination of the fastener and the housing. Rather, the claim is drawn only to a fastener which is capable of being used with a housing.” Id. at 5. Thus, the Examiner finds the second “wherein” clause of claim 38 (“wherein the fastener is insertable . . . into a second portion of tissue” (App. Br. 20)) to be “a recitation of intended use,” and, because the Drews fastener is capable of such use, “the fastener of Drews meets this functional limitation.” Final Act. 3. Appellant argues that the limitations within the second “wherein” clause “are structural as they dictate a size, shape, and orientation of the fastener such that the fastener may be inserted through a housing in the claimed manner.” App. Br. 11. Appellant continues: A fastener formed with a different structure, as is the case with Drews, would be incapable of being operated in the claimed manner. That is, the device of Drews is formed such that the base 4 is positioned proximally of the free ends of the first and second legs 6a, 6b. The modification proposed by the Examiner seeks to position the attachment device 2 so that the base is positioned distally of the free ends of the first and second legs 6a, 6b in order to meet the limitation of “wherein the fastener is insertable through a housing which holds the fastener in an insertion configuration with the free ends of the first and second segments are positioned proximally of the spring,” as recited in claim 38. However, it is noted that this Appeal 2014-007143 Application 12/386,095 7 configuration would require that the base 4 be inserted into the mass 68 prior to the legs 6a, 6b and would impede the required application of torque to the base 4 to permit movement of the legs 6a, 6b from the first to the second configuration. Id. (citations omitted). The Examiner answers by reiterating that only a fastener, and not the combination of a fastener and a housing, is claimed, and stating: The examiner is not proposing any modification to the prior art of Drews. . . . [I]t is the examiner’s position that the fastener of Drews meets all of the structural limitations of the claim and is capable of being inserted into a housing in the claimed manner. Appellant argues that the limitations of the last 9 lines of claim 38 are structural as they dictate a size, shape, and orientation of the fastener, but fails to point out any structural limitations within the claim which are not met by the fastener of Drews. Ans. 7–8. It is well established that claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function, and in order to satisfy the functional limitations in an apparatus claim, the prior art apparatus must be capable of performing the claimed function. See, e.g., In re Schreiber, 128 F.3d 1473, 1477–78 (Fed. Cir. 1997). The second “wherein” clause defines the fastener as being “insertable through a housing” and “movable relative to the housing” (App. Br. 20), and thus describes how the fastener is used rather than defining any structure of the fastener. As such, we find this language to be a recitation of intended use. We find Appellant’s argument that this language is structural unpersuasive because Appellant has not convincingly explained how the recited use “dictate[s] a size, shape, and orientation of the fastener” (see App. Br. 11); Appeal 2014-007143 Application 12/386,095 8 the claim does not define any particular size or shape of the housing, and thus the requirement that the fastener be “insertable through a housing” does not provide any limitation of the size or shape of the fastener. Furthermore, whether or not the fastener could be inserted through a housing would depend on the size and shape of the housing, but it appears the housing could have a wide range of sizes so long as large enough to receive the fastener. It also seems the fastener could have a range of sizes relative to a given housing, so long as the fastener fits inside the housing. Nor do we find persuasive Appellant’s assertions that the Drews fastener would be incapable of such use. Appellant asserts that orienting the Drews fastener such that the free ends are positioned proximal to the spring would require the base to be inserted into the subject prior to the legs, but Appellant has not convincingly set forth why this would necessarily be so. We note that Appellant does not define (or even use) “proximal” in the Specification, but even construing the term to mean positioned towards or in the direction of the user-end of the insertion tool (as intimated by Appellant), Appellant has not convincingly identified or explained what recited structure is purportedly missing from the Drews fastener that would make it incapable of being used as claimed. Accordingly, we sustain the Examiner’s rejection of claim 38 as being anticipated by Drews. DECISION The Examiner’s decision to reject claims 20 and 38 is affirmed. Appeal 2014-007143 Application 12/386,095 9 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation