Ex Parte Reydel

Patent Trial and Appeal Board

Jul 15, 2016

12386095 (P.T.A.B. Jul. 15, 2016)

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).
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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;
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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.
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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
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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
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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
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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);
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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.
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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