Ex Parte Adzich et al

Patent Trial and Appeal Board

Aug 22, 2016

12361148 (P.T.A.B. Aug. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/361,148 01/28/2009 VasoAdzich
24955 7590 08/24/2016
ROGITZ & AS SOCIA TES
Jeanne Gahagan
750B STREET
SUITE 3120
SAN DIEGO, CA 92101
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.
1208.006 7705
EXAMINER
HOUSTON, ELIZABETH
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
08/24/2016 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):
Noelle@rogitz.com
eofficeaction@appcoll.com
J ohn@rogitz.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte V ASO ADZICH, STEPHEN GRAHAM BELL, and
GIUSEPPE AMATO
Appeal2014-007253
Application 12/361,148
Technology Center 3700
Before LINDA E. HORNER, LYNNE H. BROWNE, and
PAUL J. KORNICZKY, Administrative Patent Judges.
BROWNE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Vaso Adzich et al. (Appellants) appeal under 35 U.S.C. § 134 from
the rejection of claims 27-29, 31, 32, 37, 38, and 40-42. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal2014-007253
Application 12/361,148
CLAIMED SUBJECT MATTER
Claim 27, reproduced below, is illustrative of the claimed subject
matter:
27. A device to repair a hole in a muscle wall, comprising:
a resilient fiber body including first and second fiber
portions; and
fortifying structure established by first fiber portions of the
fiber body, the first fiber portions of the fiber body being of
greater thickness than the second fiber portions of the fiber body
and being coupled with the second fiber portions of the fiber
body, the some first fiber portions being engaged with a top
surface of the fiber body but not a bottom surface of the fiber
body opposed to the top surface, and some of the first fiber
portions being engaged with the bottom surface but not the top
surface.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Ralph US 2009/0024147 Al Jan.22,2009
REJECTIONS
I. Claims 27-29, 31, 32, 37, 38, and 40-42 stand rejected under
35 U.S.C. § 112, second paragraph, as indefinite. 1
II. Claims 27-29, 31, 32, 37, 38, and 40-42 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Ralph.
1 Although the statement of the rejection does not include claim 38 (Final
Act. 2-3), claim 38 depends from claim 27, and, thus, is indefinite if claim
27 is indefinite based on this dependency. We consider the omission of
claim 38 from the statement of rejection to be a typographical error.
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Application 12/361,148
Rejection I
DISCUSSION
Claims 27-29, 31, 32, 37, 38, and 40-42
The Examiner notes that "[ c ]laim 27 requires some first fiber portions
being engaged with a top surface of the fiber body and the bottom surface of
the fiber body. However, claim 27 requires the fiber body include the
fortifying structure." Final Act. 3. The Examiner determines that these two
requirements cause confusion because "it is unclear as to how the fiber
portions engage a top surface of themselves, the limitation is confusing and
thus rendered indefinite." Id.
Noting that "the claim recites a fiber body and fortifying structure that
is established by certain portions of the body which are engaged on a surface
of the body," Appellants argue that "[n]othing in the claim recites the
language the examiner uses to create confusion." Appeal Br. 3.
Claim 27 repeatedly states that the first fiber portions are "of the fiber
body." See id. at 7. Thus, we understand claim 27 to require first fiber
portions that are a part of the fiber body. Accordingly, the Examiner is
correct that claim 27 requires the first fiber portions to engage the fiber
body, of which they are already a part. Id. We agree that this causes
confusion as it is unclear how the first fiber portions of the fiber body can
engage the fiber body, as they are already a part of the fiber body.
We sustain the Examiner's decision rejecting claim 27, and claims 28,
29, 31, 32, 37, 38, and 40-42 which depend therefrom, as indefinite.
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Appeal2014-007253
Application 12/361,148
Claims 31, 32, and 37
The Examiner determines that claims 31, 32, and 37 are indefinite for
the additional reason that there is insufficient antecedent basis for the claim
limitation "the strengthening member." Final Act. 3. Rather than contest
this rejection, Appellants contend that the lack of antecedent basis is
harmless error and note that it can be corrected by amendment. See Appeal
Br. 3. Appellants do not explain why one skilled in the art would understand
the claim in light of the Specification, but merely assert that this is so. See
id. Furthermore, the possibility of correction at a later date does not obviate
the ground of rejection. Accordingly, Appellants do not apprise us of error.
We sustain the Examiner's decision rejecting claims 31, 32, and 37 as
indefinite for this additional reason.
Claims 40 and 41
The Examiner determines that claims 40 and 41 are indefinite for the
further reason that there is insufficient antecedent basis for the limitation
"each segment" in these claims. See Final Act. 3.
Appellants argue that"' [ e Jach segment' modifies 'fortifying
structure', which has antecedent basis. Accordingly, as introduced in these
claims, 'each segment' refers to every segment of the previously-recited
fortifying structure." Appeal Br. 4.
Appellants' argument is not responsive to the rejection. The rejection
does not contest the antecedent basis of the claim limitation "fortifying
structure." Final Act. 3. Further, segments are not commonly understood
components of fortifying structures such that one skilled in the art would
understand them to be a part of the fortifying structure. Moreover,
Appellants do not explain why one skilled in the art in this instance would
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Application 12/361,148
understand segments to be a necessary part of the fortifying structure such
that recitation of a fortifying structure provides antecedent basis for the
claimed segments. Thus, Appellants do not apprise us of error.
We sustain the Examiner's decision rejecting claims 40 and 41 as
indefinite for this additional reason.
Claim 41
The Examiner determines that claim 41 is indefinite for the further
reason that "[ c ]laim 41 further requires the fortifying structure have a tighter
weave than the strands of the fiber body. However, claim 27 requires the
fiber body include the fortifying structure. [Thus,] it is unclear as to how the
fortifying structure can have a tighter weave than itself." Final Act. 3.
Appellants contend that the claim is definite based on "the plain
meaning of the claims." Appeal Br. 4. However, as discussed supra, claim
27 from which claim 41 depends defines the fortifying structure as part of
the fiber body. See id. at 7, 8. Thus, the Examiner is correct that "it is
unclear ... how the fortifying structure can have a tighter weave than itself."
Final Act. 3.
We sustain the Examiner's decision rejecting claim 41 as indefinite
for this additional reason.
Claim 42
The Examiner determines that claim 42 is indefinite for the further
reason that "[ c ]laim 42 requires the fiber body define opposed surfaces and
the fortifying structure is on at least one of the surfaces. However, claim 27
requires the fiber body include the fortifying structure. [Thus,] it is unclear
as to how the fortifying structure is on at least one surface of itself." Final
Act. 3.
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Application 12/361,148
Again Appellants contend that the claim is definite based on "the
plain meaning of the claims." Appeal Br. 4. However, as discussed supra,
the fortifying structure is a part of the fiber body. See id. at 7-8. Thus, the
Examiner is correct that "it is unclear ... how the fortifying structure is on at
least one surface of itself." Final Act. 3.
We sustain the Examiner decision rejecting claim 42 as indefinite for
this additional reason.
Rejection II
Appellants argue claims 27-29, 31, 32, 37, 38, and 40-42 together.
See Appeal Br. 4---6. We select independent claim 27 as the representative
claim and claims 28, 29, 31, 32, 37, 38, and 40-42 stand or fall with claim
27.
The Examiner finds that Ralph discloses all of the limitations of claim
27 except for "some of the first fiber portions being engaged with the bottom
surface but not the top surface." See Final Act. 4--5; Appeal Br. 7. The
Examiner further finds that Ralph "suggests more than one fortifying
structure may engage the second fiber portions to form multiple layers."
Final Act. 4--5 (citing Ralph i-f 62). Based on these findings, the Examiner
determines that it would have been obvious "to provide Ralph's apparatus
with a second fortifying structure engaged with the bottom surface of the
second fiber portions to form multiple layers. Doing so would provide the
mesh body the strength and other physical characteristics necessary to carry
out its intended purpose (for example, see paragraph 7)." Id. at 5.
Appellants argue that "[t]he examiner incorrectly alleges that
paragraph 62 of Ralph 'suggests' more than one strengthening member to
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Application 12/361,148
engage the mesh to form multiple layers." Appeal Br. 4; see also Reply Br.
2.
Ralph states:
Implantable meshes can also be comprised of at least two
sheets of mesh optionally adhered to one another, for example,
laminated together or adhered to one another at predetermined
discreet points of contact such as at points 32a and 32b in
FIG.12. The layers in a laminated construction can be multiple
layers of the same mesh or they can be comprised of layers of
different mesh materials.
Ralph i-f 62 (emphasis added). Thus, Ralph contemplates more than two
layers and layers of different mesh materials.
Appellants further argue that:
There is no reason from Ralph to suppose that the goals in
paragraph 7 of Ralph would be met any better than they are by
the structures shown in Ralph were Ralph to be modified in an
untaught way to sandwich the thinner layer in figure 12 between
two thicker layers. There is thus no rational underpinning on the
evidence of record to modify figure 12 to arrive at Claim 27 other
than [t]he fact that the examiner wishes to do so because Claim
27 leads her in that direction, which of course is improper
hindsight.
Appeal Br. 5---6.
As discussed supra, the Examiner reasons that the proposed
modification "would provide the mesh body the strength and other physical
characteristics necessary to carry out its intended purpose." Final Act. 5.
Given that the proposed rejection adds another fortifying structure, we agree
that the proposed modification would increase the strength of Ralph's device
which is one of the objects of Ralph's device. See Ralph i-f 7 (teaching that
the meshes "can be combined with other and different meshes . . . to form
implantable devices"). Thus, the Examiner's reasoning has rationale
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underpinning. To the extent that Appellants are arguing that the rejection is
based on improper hindsight, Appellants do not identify any knowledge
relied upon by the Examiner that was gleaned only from Appellants'
disclosure and that was not otherwise within the level of ordinary skill at the
time of the invention, thereby obviating AppeHants' assertion of hindsight
See Jn re McLaughlin, 443 F.2d 1392 (CCPA 1971).
For these reasons, we sustain the Examiner's decision rejecting claim
27, and claims 28, 29, 31, 32, 37, 38, and 40-42, which fall therewith.
DECISION
The Examiner's rejections of claims 27-29, 31, 32, 37, 38, and 40-42
are AFFIRMED.
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
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