BOSTON SCIENTIFIC SCIMED, INC.

Patent Trials and Appeals Board

Aug 18, 2021

2021000252 (P.T.A.B. Aug. 18, 2021)

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.
15/278,793 09/28/2016 Jeffrey V. BEAN 10121/14705 ( 11-00097US 8477
104919 7590 08/18/2021
Fay Kaplun & Marcin, LLP -- BSC
150 Broadway, suite 702
New York, NY 10038
EXAMINER
BUI, VY Q
ART UNIT PAPER NUMBER
3771
NOTIFICATION DATE DELIVERY MODE
08/18/2021 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):
fkmiplaw@yahoo.com
okaplun@fkmiplaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JEFFREY V. BEAN

Appeal 2021-000252
Application 15/278,793
Technology Center 3700
____________

Before DANIEL S. SONG, MICHAEL J. FITZPATRICK, and
JEREMY M. PLENZLER, Administrative Patent Judges.

FITZPATRICK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant, Boston Scientific Scimed, Inc.,1 appeals under 35 U.S.C.
§ 134(a) from the Examiner’s final decision rejecting claims 26–30, 33–39,
and 42–45. Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 “Appellant” refers to the applicant as defined in 37 C.F.R. § 1.42.
Appellant identifies itself as the real party in interest. Appeal Br. 2.
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STATEMENT OF THE CASE
The Specification
The present invention relates to a device for inserting a
medical apparatus into a living body which includes a handle and
an elongated sheath extending from the handle to a distal end
configured for insertion to a target location in the living body in
combination with a clasp positioned within a distal portion of the
elongated sheath and configured to temporarily attach to an
endoscopic device and a spring retention mechanism movable
from a first resting configuration maintaining a first closed
position of the clasp to a second compressed configuration
moving the clasp to an open position.
Spec. ¶3.
The Claims
Claims 26–30, 33–39, and 42–45 are rejected. Final Act. 1. The only
other pending claims, namely, claims 32, 41, and 46, are objected to. Claim
26 is representative and reproduced below.
26. A tissue clipping system, comprising:
an elongated sheath extending from a proximal end to a
distal end configured for insertion to a target location in the
living body;
a tissue clip comprising first and second legs extending
from a distal portion of a base portion, each of the first and
second legs including first and second elongated portions
coupled to one another via a first joint to permit angling of the
first and second elongated portions relative to one another; and
a clasp positioned within a distal portion of the elongated
sheath and configured to releasably grasp a proximal portion of
the base portion of the tissue clip, the clasp comprising first and
second arms configured to be movable from a closed
configuration to an open configuration, the tissue clip being
configured so that, when received in the sheath in an insertion
configuration, the first leg extends distally from the base
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portion and the second leg extends proximally from the base
portion.
Appeal Br. 10.
The Examiner’s Rejections
The following rejections are before us:
(1) claim 28 under 35 U.S.C. § 112(b) as indefinite (Final Act. 2):
and
(2) claims 26–30, 33–39, and 42–45 under 35 U.S.C. § 102(b) as
anticipated by, or alternatively under 35 U.S.C. § 103 as unpatentable over,
US 6,656,206 B2, issued Dec. 2, 2003 (“Corcoran”) (id. at 3).2
DISCUSSION
Rejection 1
Claim 28 depends from claim 26. Appeal Br. 11. Both of these
claims recite “an insertion configuration.” Id. at 10–11 (emphasis added).
The Examiner determined that claim 28 was indefinite because “[i]t is not
clear if the limitation ‘an insertion configuration’ in claim 28 (line 3) is the
same as [the] limitation ‘an insertion configuration’ in claim 26 (lines 11–
12).” Final Act. 2. Appellant does not argue against the rejection of claim
28. See generally Appeal Br.3 Accordingly, we summarily affirm the
rejection.

2 Although the Final Action initially lists the rejected claims as only claims
26–30, 33, 34, 36–39, 42, and 43 (Final Act. 3 ¶8), the rejection additionally
includes claims 35, 44, and 45 (id. at 3 ¶9, 6 ¶¶15–6).
3 In a response submitted after the Final Action, Appellant attempted to
amend claim 28 from reciting “an insertion configuration” to reciting “the
insertion configuration.” Feb. 19, 2020, Amendment. The Examiner
refused to enter the amendment. March 2, 2020, Advisory Act.
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Rejection 2
Appellant argues all of the rejected claims together under the same
subheading. Appeal Br. 4–9; see 37 C.F.R. § 41.37(c)(1)(iv) (“Under each
heading identifying the ground of rejection being contested, any claim(s)
argued separately or as a subgroup shall be argued under a separate
subheading that identifies the claim(s) by number.”). We select claim 26 as
representative. See 37 C.F.R. § 41.37(c)(1)(iv) (“When multiple claims
subject to the same ground of rejection are argued as a group or subgroup by
appellant, the Board may select a single claim from the group or subgroup
and may decide the appeal as to the ground of rejection with respect to the
group or subgroup on the basis of the selected claim alone.”).
Corcoran discloses “an occlusion device for the closure of physical
anomalies like vascular or septal apertures, such as patent ductus arteriosus,
patent foramen ovale, atrial septal defects, or ventricular septal defects.”
Corcoran 1:10–14. The Examiner found that claim 26, which is directed to
“[a] tissue clipping system,” reads on Corcoran’s occlusion device. Final
Act. 3 (citing Corcoran Fig. 7 (ref. 80), Fig. 9 (ref. 110)). Figure 7 depicts
occlusion device 80 within catheter 82, which corresponds to claim 26’s
“insertion configuration.” Corcoran 2:66–67. Figure 9 shows alternative
occlusion device 110 inserted into a septal anomaly. Id. at 3:5–6.
Appellant asserts that Corcoran’s occlusion device lacks “a tissue
clip” as recited in claim 26. Appeal Br. 5. In support of that assertion,
Appellant proposes a construction for “tissue clip” that would require
pulling separated tissue together. See id. (“[A]s would be understood by
those skilled in the art, a tissue clip is a device that grips two or more
separated portions of tissue to pull these portions of tissue toward one
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another -- e.g., gripping separated edges of a wound and drawing them into
contact with one another to close the wound.”). However, Appellant does
not cite to any evidence in support of its proposed construction. Johnston v.
IVAC Corp., 885 F.2d 1574, 1581 (Fed. Cir. 1989) (“Attorneys’ argument is
no substitute for evidence.”); In re Pearson, 494 F.2d 1399, 1405 (CCPA
1974) (“Attorney’s argument in a brief cannot take the place of evidence.”).
“[D]uring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification.” In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000). The Specification does not even use the
phrase “tissue clip.”4 The Specification repeatedly refers to “safety clip
126” but that structure clearly does not correspond to the recited “tissue
clip.” See, e.g., Spec. ¶7, Fig. 1 (ref. 126). It appears that “hemostasis
closure device 200” is the structure described in the Specification that may
correspond to the claim’s “tissue clip.” See Spec. ¶12. In any event, the
Appeal Brief does not point us to any evidence, intrinsic or extrinsic, to
support its proposed construction of “tissue clip.”
In contrast, the Examiner provides extrinsic evidence in the form of a
dictionary definition for “clip” being “any of various devices that grip, clasp
or hook.” Ans. 4 (citing https://merriam-webster.com/dictionary/clip); see

4 Notwithstanding that “tissue clip” does not appear in Appellant’s own
Specification as filed, Appellant argues that “the word clip does not appear
in the entire Corcoran reference.” Appeal Br. 5. That argument is not
persuasive of Examiner error. See In re Schaumann, 572 F.2d 312, 317
(CCPA 1978) “([A]lthough appellants would have us hold that Hildebrandt
fails as an anticipation because it does not contain a description of the
subject matter of the appealed claims, ipsissimis verbis, we cannot
countenance a result which so obviously exhalts [sic] form over
substance.”).
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also Phillips v. AWH Corp., 415 F.3d 1303, 1318 (Fed. Cir. 2005) (“Within
the class of extrinsic evidence, the court has observed that dictionaries and
treatises can be useful in claim construction.”). And, applying that
construction, the Examiner finds that Corcoran’s occlusion device grips the
septal wall as shown in Figure 9 and that it does not merely “cover[]” the
septal wall as argued by Appellant. Ans. 4; see Appeal Br. 5 (arguing that
Corcoran “purport[s] to prevent flow through an opening (e.g., a septal
defect) by blocking (covering) the opening”).
The Examiner’s finding is adequately supported by Corcoran. See
Corcoran 11:5–9 (“Due to this pre-tensioning or pre-shaping, the fixation
devices 114, 118 urge the attached sheets 116, 118 toward the septal wall
112. In this manner, the occlusion device 110 is held securely against both
sides of the septal wall 112.”). In sum, we are not persuaded that Corcoran
fails to disclose a tissue clipping system or tissue clip.
Appellant argues that Corcoran does not disclose “first and second
legs extending from a distal portion of a base portion,” as recited in
claim 26. Appeal Br. 6. This is so, Appellant explains, because Corcoran’s
fixation devices/sheets (i.e., the asserted “legs”) cannot extend from the
same location and instead must “be separated from one another by a distance
along the center section 84 (e.g., by a distance roughly equivalent to the
thickness of a portion of [septal wall] tissue through which the opening
extends).” Id. However, the claims do not preclude such separation. The
issue is whether Corcoran’s legs “extend[] from a distal portion of a base
portion,” as recited in claim 26.
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The Examiner’s finding that Corcoran’s legs extend in the recited
manner is best explained in reference to Corcoran Figure 7, which is
reproduced below as rotated ninety degrees and annotated by Examiner.

Final Act. 4; see also Ans. 6 (reproducing identical figure). Figure 7 of
Corcoran, reproduced above as rotated ninety degrees and annotated by the
Examiner, shows Corcoran’s occlusion device 80 inserted within catheter
82. Corcoran 9:37–38. The Examiner has annotated the figure to show that
Corcoran’s entire “center section 84” can correspond to the claim’s “base
portion.” Final Act. 4. The Examiner has also annotated the figure to show
that a majority of Corcoran’s “center section 84” can correspond to the
claim’s “a distal portion of a base portion.” Final Act. 4.
Appellant does not directly challenge, let alone show error, in the
Examiner’s interpretation of “a distal portion of a base portion” and
application of it to Corcoran Figure 7. Nor do we find error. As discussed
above, Appellant would require the legs to extend from the same exact spot
but claim 26 does not recite such a requirement. Claim 26 recites that they
extend “from a distal portion of a base portion.” As with “tissue clip,” the
phrase “a distal portion of a base portion” does not appear in the
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Specification as filed. Instead, the Specification describes the legs extending
from the base portion generally. See Spec. ¶12 (“The device 200 comprises
a base portion 202 having first and second legs 204, 206 extending distally
therefrom.”). Further, the Specification employs a narrower term, “distal
end” (emphasis added), in connection with other structures. For example,
the Specification describes “a distal end 106” of device 100. Spec. ¶6; see
also id. at Fig. 2 (ref. 106). The Specification also describes “a distal end of
the withdrawal mechanism 134 connecting to a proximal end of an elongated
sheath 108 via a coupler 136.” Id. ¶7. And claim 26 itself recites “an
elongated sheath extending from a proximal end to a distal end.”
The Specification notes “that the terms ‘proximal’ and ‘distal,’ as
used herein, are intended to refer to a direct[ion] toward (proximal) and
away from (distal) a user of the device.” Spec. ¶5. The Examiner’s
interpretation of “a distal portion of a base portion” as implied by the
application of it to Corcoran Figure 7 is not unreasonably broad in view of
the Specification and the plain and ordinary meaning of the word “portion.”
Finally, Appellant argues that claim 26 “requires: . . . the first and
second arms extend in opposite directions within the sheath (i.e., one
extending proximally while the other extends distally).” Appeal Br. 6.
Appellant does not elaborate how Corcoran allegedly fails to meet such a
requirement. If Appellant is pointing out that, in Corcoran, the only legs
extending from the exact same spot extend in the same direction, that
argument does not show error for reasons already discussed. The
Examiner’s rejection relies on one half of Corcoran’s fixation device/sheet
86, 88 extending distally and one half of Corcoran’s fixation device/sheet
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90, 92 extending proximally. Final Act. 3–4; Ans. 5. That Corcoran’s tissue
clip includes additional structures (legs) is not precluded by the claim.
We have considered Appellant’s arguments, but they do not apprise us
of error in the Examiner’s rejection of claim 26. Accordingly, we affirm the
rejection of claim 26 as well as that of claims 27–30, 33–39, and 42–45,
which fall therewith. 37 C.F.R. § 41.37(c)(1)(iv).

DECISION SUMMARY
In summary:

Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
28 112(b) Indefiniteness 28
26–30, 33–
39, 42–45
102; 103 Corcoran 26–30, 33–
39, 42–45

Overall
Outcome
26–30, 33–
39, 42–45

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)(1)(iv) (2019).
AFFIRMED