Ex Parte Witzmann et al

Patent Trial and Appeal Board

Apr 26, 2016

12553100 (P.T.A.B. Apr. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/553,100 0910312009
69289 7590
COLOPLAST A/S
Attention: Corporate Patents
Holtedam 1
DK-3050 Humlebaek,
DENMARK
04/28/2016
FIRST NAMED INVENTOR
Michael M. Witzmann
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.
2008013-US 5918
EXAMINER
CHENG, JACQUELINE
ART UNIT PAPER NUMBER
3735
NOTIFICATION DATE DELIVERY MODE
04/28/2016 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):
patent@coloplast.com
dkbvd@coloplast.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL M. WITZMANN,
EMILY C. DALEY, and SARAH J. DEITCH
Appeal2014-004067
Application 12/553, 100
Technology Center 3700
Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
JACQUELINE T. HARLOW, Administrative Patent Judges.
PERCURIAM.
DECISION ON APPEAL
This is an appeal 1 under 35 U.S.C. § 134 involving claims to a system
for surgical treatment of urinary incontinence and method of use. The
Examiner rejected the claims on the grounds of anticipation and
obviousness. We have jurisdiction under 35 U.S.C. § 6(b). We reverse.
1 Appellants identify the Real Party in Interest as Coloplast A/S (see Br. 3).
Appeal2014-004067
Application 12/553, 100
Statement of the Case
Background
Appellants' invention relates to "a system for surgical treatment of
urinary incontinence ... that might alleviate difficulties in placement,
positioning, fixation, and anchoring, with desired anatomical tensioning"
(Spec. 11 :8-12).
The Claims
Claims 1-11 and 13-18 are on appeal. Independent claim 1 is
representative and reads as follows (emphasis added):
1. A system configured to treat urinary incontinence, the
system comprising:
an implant configured to support a urethra;
a tensioning member connected to the implant;
an elongated fixation member connected to the
tensioning member; and
an anchor connected to the elongated fixation member,
the anchor comprising a body extending between a
penetration end and an introducer end, a cuff configured to
slide relative to the body, and a plurality of expandable body
segments coupled between the cuff and the penetration end;
wherein movement of the cuff toward the penetration
end radially expands the expandable body segments.
The Issues
A. The Examiner rejected claims 1---6 and 8-10 under 35 U.S.C. § 102(b)
as being anticipated by Bouffier2 (Ans. 2--4).
B. The Examiner rejected claim 7 under 35 U.S.C. § 103(a) as obvious
over Bouffier and Benderev3 (Ans. 5).
2 Bouffier, US 7,229,404 B2, issued June 12, 2007.
3 Benderev, US 2003/0225424 Al, published Dec. 4, 2003.
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Application 12/553, 100
C. The Examiner rejected claims 11 and 13-18 under 35 U.S.C. § 103(a)
as obvious over Bouffier and Mamo4 (Ans. 5-10).
Because the same issues are dispositive for all three rejections, we
will consider all of the rejections together. The Examiner finds that Bouffier
teaches an implant having "a tensioning member connected to the implant
(opening (2 6) (Figure 1) )" and an anchor having "a cuff configured to slide
relative to the body (sliding component (46) (Figure 1))" (Ans. 2).
The issue with respect to these rejections is: Does the evidence of
record support the Examiner's findings that Bouffier teaches "a tensioning
member connected to the implant" and "a cuff configured to slide relative to
the body"?
Findings of Fact
1. Figure 1 of Bouffier is reproduced below:
4 Mamo et al., WO 2005/122954 Al, published Dec. 29, 2005.
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Application 12/553, 100
Figure 1 of Bouffier shows
[an] anchoring system (40) [that] preferably includes a cage-
forming component represented by general reference number
(42) which includes an upper part (43) and a lower part (44),
the upper part ( 43) being fitted with a sliding component ( 46)
to facilitate pulling of the traction component (30) which acts
on the elongated sling component (20), in order to effect by
means of said pulling the translation of one end (22 or 24) of
the elongated sling component in order to support said organ
and subsequently keep it in the correct position.
(Bouffier 7:7-16; see also Ans. 2, 5-8, Br. 8-9, 12-13.)
2. Figure 4 of Bouffier is reproduced below:
46 62
43 \(
47 '-f FIG.4
Figure 4 of Bouffier shows
a sliding component ( 46) which could for example be formed
by a hollow, tubular component (47), one end of which (47a)
is designed to be joined to or continuous with (as shown) said
upper part ( 43) of the cage ( 42) and, at the same time, to form
said sliding component ( 46), in particular by presenting a
surface which forms the displacement or sliding pulley
around which the previously mentioned traction wire (30) is
designed to slide, as shown in FIG. 1. The end (47a) here is
continuous with the upper end ( 43) which also contains a
throat (62) forming a surface over which the sliding
component ( 46) can move. The end ( 4 7 a) contains a hole ( 60)
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Appeal2014-004067
Application 12/553, 100
which is coaxial with the hollow tubular component ( 47), the
whole here constituting a single unit which includes the upper
end (43) of the cage (42).
(Bouffier 8:2-16; see also Br. 9-10, 14.)
Principles of Law
"The protocol of giving claims their broadest reasonable interpretation
during examination does not include giving claims a legally incorrect
interpretation. This protocol is solely an examination expedient, not a rule
of claim construction." In re Skvorecz, 580 F.3d 1262, 1267 (Fed. Cir.
2009).
Analysis
Claims 1-6 and 8-10
Appellants contend that "[ t ]he opening 26 of Bouffier is not a
tensioning member" (Br. 8).
The Examiner finds that "the opening (26) taught by Bouffier is
interpreted like an aperture, which is part of the support and provides a
surface for traction component (30) to join to the support, and thus opening
(26) serves as a tensioning member" (Ans. 10).
We find that Appellants have the better position. The Examiner
broadly interprets "a tensioning member" as read on by Bouffier' s opening
26. While we interpret claims using the broadest reasonable interpretation,
that reasonable interpretation must be consistent with the language of the
claim itself. Claim 1 requires "a tensioning member connected to the
implant," a limitation that is reasonably interpreted as being an element that
is distinguished from the implant in order to be "connected" to the implant.
The opening 26 is formed within Bouffier's support 20 that is the implant
and is not an element that is distinguished from support 20 in order to be
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Application 12/553, 100
connected to the support 20 (FF 1 ). Thus, we do not find it reasonable to
interpret an "opening" as satisfying the claimed limitation of "a tensioning
member connected to the implant" of claim 1.
Appellants contend that "Bouffier does not teach or suggest a cuff
configured to slide relative to the body" (Br. 9 (emphasis removed)).
The Examiner asserts that
sliding relative to the body is not limited to sliding a
component directly attached to the anchor body (as illustrated
in Figures 6 and 6a of this application), but includes any
movement of the component in relation to the anchor body.
As shown in Figures 1 and 3 of Bouffier, the sliding
component ( 46) does move relative to the anchor body when
it facilitates pulling the traction wire (30) because the cage
forming element (42) bows outwardly and the sliding
component ( 46) moves vertically.
(Ans. 10.)
We find that Appellants have the better position. Bouffier teaches "a
sliding component (46) ... is designed to be joined to or continuous with (as
shown) said upper part ( 43) of the cage ( 42) ... which forms the
displacement or sliding pulley" (FF 2). The Examiner's broad interpretation
of "slide relative to the body" as "any movement of the component in
relation to the anchor body" would read this limitation out of the claim.
Thus, we do not find it reasonable to treat this aspect of Bouffier' s teaching
to meet the claimed limitation "a cuff configured to slide relative to the
body" of claim 1, and as similarly recited in claims 11 and 15.
Accordingly, we reverse the rejection of claim 1 as being anticipated
by Bouffier. Because claims 2-6 and 8-10 depend on claim 1, we reverse
the rejection of these claims as well.
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Application 12/553, 100
Claim 7
The rejection of claim 7 relies upon the underlying anticipation
rejection over Bouffier. Having reversed the rejection of claim 1, we reverse
this obviousness rejection further including Benderev, because the Examiner
failed to establish that Benderev alone or in combination with Bouffier
suggests "a tensioning member" and "a cuff configured to slide relative to
the body," as are required by claim 1.
Claims 11 and 13-18
Since Mamo is not relied upon to teach sliding a cuff relative to the
body, we reverse the rejection of claims 11 and 15 for the reasons set forth
above. Because claims 13 and 14 depend on claim 11 and claims 16 and 17
depend on claim 15, we reverse the rejection of these claims as well. We
note that claim 18 depends on claim 1, instead of claim 11 or claim 15.
Therefore, reverse the rejection of this claim as well.
SUMMARY
In summary, we reverse the rejection of claims 1---6 and 8-10 under
35 U.S.C. § 102(b) as being anticipated by Bouffier.
We reverse the rejection of claim 7 under 35 U.S.C. § 103(a) as
obvious over Bouffier and Benderev.
We reverse the rejection of claims 11 and 13-18 under 35 U.S.C.
§ 103(a) as obvious over Bouffier and Mamo.
REVERSED
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