Ex Parte Bell et al

Patent Trial and Appeal Board

Aug 22, 2016

13443266 (P.T.A.B. Aug. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/443,266 04/10/2012 Stephen Graham Bell
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.
1208.010 5594
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 STEPHEN GRAHAM BELL and GIUSEPPE AMAT0 1
Appeal2014-005685
Application 13/443,266
Technology Center 3700
Before JOHN C. KERINS, BRANDON J. WARNER, and
AMANDA F. WIEKER, Administrative Patent Judges.
WIEKER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Stephen Graham Bell and Giuseppe Amato ("Appellants") appeal
under 35 U.S.C. § 134(a) from the Examiner's November 21, 2013 non-final
rejection of claims 1-3, 26, 27, and 30-43 ("Non-Final Act."). We have
jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
1 According to Appellants, the Real Party in Interest is Insightra Medical,
Inc. Appeal Br. 2.
Appeal2014-005685
Application 13/443,266
CLAIMED SUBJECT MATTER
The invention concerns hernia repair implants. Spec. 1. Claim 1 is
illustrative of the subject matter on appeal, and recites:
1. Hernia repair implant comprising:
a first layer made of mesh for facing a body structure
having a hernia defect to cover the defect while promoting tissue
growth into the first layer from the body structure;
a second layer opposed to the first layer and made of anti-
adhesion material to prevent growth of tissue into the second
layer from body structures contacting the second layer;
at least a first elongated fixation strap having a first end
connected to at least one of the first or second layers at a first
radial distance and a second end opposed to the first end and
disposed radially distant from periphery of the first layer, the first
elongated fixation strap having a configuration in which the first
elongated fixation strap extends lengthwise away from and
coplanar with one of the first and second layers to which the
fixation strap is connected; and
at least a first elongated centering strap having a first end
connected to at least one of the first or second layers at a second
radial distance, the second radial distance being fhrther from the
periphery of the first layer than the first radial distance at which
the first end of the first elongated fixation strap is connected, the
first elongated centering strap having a configuration in which
the first elongated centering strap extends lengthwise away from
and coplanar with one of the first and second layers to which the
centering strap is connected.
Appeal Br. 7 (Claims App.) (emphases added). Independent claim 43
similarly requires fixation and centering straps that "extend[] lengthwise
coplanar with" a plane defined by an implant's major surface. Id. at 10
(Claims App.).
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Appeal2014-005685
Application 13/443,266
REJECTIONS
The claims stand rejected as follows:
I. Claims 1-3, 26, 27, and 30-43 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description
requirement.
II. Claims 1-3, 37-39, and 43 under 35 U.S.C. § 102(b) as
anticipated by Crawley (US 2009/0240267 Al, pub. Sept. 24,
2009).
III. Claims 26, 27, 31, 32, 34, 36, and 40 under 35 U.S.C. § 103(a)
as unpatentable over Crawley.
IV. Claim 30 under 35 U.S.C. § 103(a) as unpatentable over
Crawley and Criscuolo (US 2011/0130774 Al, pub. June 2,
2011).
V. Claims 33 and 35 under 35 U.S.C. § 103(a) as unpatentable
over Crawley and Browning (US 2008/0200751 Al, pub. Aug.
21, 2008). 2
VI. Claim 41under35 U.S.C. § 103(a) as unpatentable over
Crawley and Darios (US 7,404,819 Bl, iss. July 29, 2008).
VII. Claim 42 under 35 U.S.C. § 103(a) as unpatentable over
Crawley and Anderson (US 2004/0039453 Al, pub. Feb. 26,
2004).
2 The Examiner's rejection lists incorrectly the publication number for
Browning. Non-Final Act. 9. The Examiner provides the correct
publication number in the Answer. Ans. 3.
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Appeal2014-005685
Application 13/443,266
ANALYSIS
Written Description - Claims 1-3, 26, 27, and 30-43
Appellants argue claims 1-3, 26, 27, and 30-43 as a group. Appeal
Br. 4; Reply Br. 1-2. We treat claim 1 as representative, and claims 2, 3, 26,
27, and 30-43 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(iv).
The Examiner finds that the originally filed Specification does not
provide adequate written descriptive support for a fixation strap and a
centering strap, each of which "extends lengthwise away from and coplanar
with one of the first and second layers," as claimed. Non-Final Act 4.
Appellants contend that Figure 4 and Figure 6 "plainly and
unambiguously show[] to the skilled artisan exactly what is claimed."
Appeal Br. 4. Specifically, Appellants argue that Figure 4 depicts fixation
strap 40 "extending away from the edge of the layer to which the strap is
connected, and thus [strap 40] is coplanar with the layer." Id.; see also
Reply Br. 2. Appellants also argue that Figure 6 depicts "all straps lying flat
against the mesh body, meaning that at least the bottom of the surfaces of
each strap touch and thus are coplanar with the mesh body." Appeal Br. 4;
see also Reply Br. 1-2 ("[I]f two things lie in the same plane (as the bottom
surface of the strap and [the] top surface of the layer do), then they are
coplanar.").
To satisfy the written description requirement of 35 U.S.C. § 112, first
paragraph, Appellants' Specification "must 'clearly allow persons of
ordinary skill in the art to recognize that [the inventor] invented what is
claimed' ... [by] reasonably convey[ing] to those skilled in the art that the
inventor had possession of the claimed subject matter as of the filing date."
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Application 13/443,266
Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)
(en bane) (citation omitted).
Appellants do not direct us to any textual portion of the Specification
that provides support for the "coplanar" arrangement reflected in the claims,
and we find none. Further, we find that Figures 4 and 6, to which
Appellants direct our attention, do not provide adequate written descriptive
support sufficient to demonstrate that the inventor had possession of the
claimed subject matter as of the filing date of this application.
During examination, "claims ... are to be given their broadest
reasonable interpretation consistent with the specification," and "claim
language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art." In re Bond, 910 F.2d 831,
833 (Fed. Cir. 1990). Therefore, the words of the claim must be given their
plain meaning unless the plain meaning is inconsistent with the
specification. In re Zietz, 893 F.2d 319, 321 (Fed. Cir. 1989). An
appropriate definition of "coplanar," in the context of the claim language, is
"lying or acting in the same plane." See Ans. 3 (providing Merriam-Webster
Dictionary definition); see also Merriam-Webster Dictionary, accessed at
http://www.merriam-webster.com/dictionary/coplanar, last viewed Aug. 16,
2016. Appellants provide neither evidence nor argument to support a
different construction of this term and, as noted above, Appellants'
Specification provides no guidance as to the meaning of this term in the
context of the disclosed invention.
With this interpretation in mind, we tum to Figures 4 and 6, which
Appellants contend provide support for the disputed claim limitations.
Figure 4 depicts centering straps 34 extending perpendicularly outward from
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Appeal2014-005685
Application 13/443,266
mesh implant 26, in an arrangement that plainly is not "coplanar," as
claimed and construed. See Spec., Fig. 4; see also Ans. 5. Furthermore,
although fixation straps 40 are depicted as generally extending outward from
implant 26, both the implant and straps are shown to be curved and
undulating. See Spec., Fig. 4; see also Ans. 5. As such, this Figure alone
does not provide sufficient clarity such that a person of ordinary skill in the
art would recognize that the inventor had possession of a fixation strap that,
as a whole, lays in the same plane as one layer of the implant. See Ans. 5.
Figure 6 depicts a plan view of mesh implant 48 with centering straps
44 and fixation straps 46. Spec. 5, 13-14. We are unpersuaded by
Appellants' argument that Figure 6 depicts "all straps lying flat against the
mesh body, meaning that at least the bottom of the surfaces of each strap
touch and thus are coplanar with the mesh body." Appeal Br. 4; see also
Reply Br. 1-2. As noted by the Examiner, Figure 6 is presented in two
dimensions, and lacks any depiction of the critical third dimension. Ans. 4--
5. Accordingly, Figure 6 alone does not depict a view of the connection
between the implant and the straps that would permit a person of ordinary
skill in the art to determine whether the straps are located immediately
adjacent the implant's surface, e.g., "flat against the mesh body," as argued
by Appellants, or spaced therefrom. Furthermore, even if it were clear from
Figure 6 that the straps lay flat against the implant, this would not establish
that the straps and implant are coplanar, as construed. Such a showing
would establish only that the surfaces of the strap and implant lay in abutting
planes. See, e.g., Reply Br. 1-2 ("[I]f two things lie in the same plane (as
the bottom swface of the strap and [the] top swface of the layer do), then
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Appeal2014-005685
Application 13/443,266
they are coplanar.") (emphases added). This does not establish that the
objects themselves lay in the same plane, i.e., are coplanar, as claimed.
Finally, Appellants' Figures 4 and 6 depict implants 26 and 48,
respectively, without depicting first and second layers, as claimed. Spec.,
Figs. 4, 6. Indeed, the Specification discloses that the implants "may be a
single layer or have a multilayer construction." See and compare id. at 8
(discussing Figures 2-5), 13 (stating that the Figure 6 implant is "such as the
one shown in Figures 2-5"), with Reply Br. 2 (arguing that the implant
shown in Figure 4 is "made of the claimed layers"). Therefore, although the
implants depicted in Figures 4 and 6 may comprise multiple layers, they do
not necessarily contain multiple layers and do not necessarily contain the
specific layers claimed. As such, we are unpersuaded by Appellants'
argument that "element 40 in figure 4 plainly is extending away from the
edge of the layer to which the strap is connected, and thus is coplanar with
the layer," because it is unclear what "layer" is referenced. Appeal Br. 4.
For these reasons, we affirm the Examiner's rejection of claims 1-3,
26, 27, and 30-43 as failing to comply with the written description
requirement of 35 U.S.C. § 112, first paragraph.
Anticipation by Crawley- Claims 1-3, 3 7-3 9, and 43
and
Obviousness over Crawley, Alone or in Combination with
Additional Prior Art- Claims 26, 27, 30-36, and 40-42
As discussed above, independent claims 1 and 43 recite fixation and
centering straps that are "coplanar" with one layer of an implant, or with a
plane defined by an implant's major surface. Appeal Br. 7, 10 (Claims
App.). The Examiner finds that Crawley discloses a hernia repair implant
comprising first and second layers, fixation straps (outer elements 12), and
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Application 13/443,266
centering straps (inner elements 12), wherein the fixation and centering
straps are "configured to extend 'coplanar' as shown in FIG. 5B," when
optional bundling means 18 either are not provided or are dissolved. Non-
Final Act. 5---6.
Appellants contend that Crawley's elements 12 are not coplanar with
one of the implant's layers. Appeal Br. 4--6. Appellants contend that these
elements are "angled up and away" from the implant. Id. at 5---6.
We agree with Appellants that Crawley does not depict fixation and
centering straps that are coplanar with the implant. Crawley discloses that
when bundling means 18 dissolves or absorbs, it "will release the hollow
members [12] to allow them to better conform to the shape of the defect into
which they were inserted." Crawley i-f 36. Crawley's Figure 5B depicts
elements 12 unrestrained by bundling means 18 and shows that these
elements are capable of extending toward implant 52. Id., Fig. 5B. Crawley
does not establish, however, that elements 12 would lay in the same plane as
implant 52, as required by the broadest reasonable interpretation of the term
"coplanar," as discussed above. See supra at 7 (finding the "coplanar"
limitations unsupported by the Specification).
Consequently, we cannot affirm the Examiner's rejection of claims 1
or 43, or the rejections of claims 2, 3, 26, 27, and 30-42, which claims
depend from claim 1, as anticipated or obvious over the asserted prior art.
We reverse these rejections.
DECISION
The Examiner's rejection of claims 1-3, 26, 27, and 30-43 as failing
to comply with the written description requirement of 35 U.S.C. § 112, first
paragraph is AFFIRMED;
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Application 13/443,266
the Examiner's rejection of claims 1-3, 37-39, and 43 as anticipated
by Crawley under 35 U.S.C. § 102(b) is REVERSED; and
the Examiner's rejections of claims 26, 27, 30-36, and 40-42 as
unpatentable under 35 U.S.C. § 103(a) are REVERSED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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