Ex Parte Clerc et al

Patent Trial and Appeal Board

Sep 20, 2016

13097520 (P.T.A.B. Sep. 20, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/097,520 04/29/2011
11050 7590 09/22/2016
SEAGER, TUFTE & WICKHEM, LLP
100 South 5th Street
Suite 600
Minneapolis, MN 55402
FIRST NAMED INVENTOR
Claude Clerc
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.
2001.1443101 6679
EXAMINER
IWAMAYE, ANDREW MICHAEL
ART UNIT PAPER NUMBER
3774
NOTIFICATION DATE DELIVERY MODE
09/22/2016 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):
BSC.USPTO@stwiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CLAUDE CLERC, CHRIS THOMPSON,
CHRISTOPHER DUBOIS, BARRY WEITZNER, and
GARY JORDAN
Appeal2014-008610
Application 13/097,520
Technology Center 3700
Before EDWARD A. BROWN, GEORGE R. HOSKINS, and
ARTHUR M. PESLAK, Administrative Patent Judges.
PESLAK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Claude Clerc et al. ("Appellants") appeal under 35 U.S.C. § 134(a)
from the Examiner's final decision rejecting claims 1--4 and 7-10. 1 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants submit Boston Scientific Scimed, Inc. is the real party in
interest. Appeal Br. 3.
Appeal2014-008610
Application 13/097,520
THE CLAIMED SUBJECT MATTER
Claim 1, the only independent claim on appeal, is reproduced below:
1. A single stent for repairing post-anastomosis surgery leaks,
compnsmg:
a single elongated tube, the single elongated tube is woven,
braided or knit, the single elongated tube having a proximal flare-
shaped flange, a proximal cylindrical segment, an enlarged
middle section, a distal cylindrical segment and a distal flare-
shaped flange, the enlarged middle section has a diameter that is
larger than the proximal flare-shaped flange and the distal flare-
shaped flange, the proximal flare-shaped flange and the proximal
cylindrical segment when taken together form an inverted bell
shape, and the distal cylindrical segment and the distal flare
shaped flange when taken together form an inverted bell shape,
the enlarged middle section has a symmetrical shape, the single
stent having an interior surface and an exterior surface and
wherein the exterior surface of the elongated tube is covered with
a polymer.
REJECTIONS
1) Claims 1--4 and 7-10 are rejected under 35 U.S.C. § 112, first
paragraph, written description requirement.
2) Claims 1--4 and 7-10 are rejected under 35 U.S.C. § 102(b) as
anticipated by Case (US 2007/0100435 Al, pub. May 3, 2007).
3) Claims 1--4 and 7-10 are rejected under 35 U.S.C. § 102(e) as
anticipated by Bloom (US 2009/0248132 Al, pub. Oct. 1, 2009).
4) Claims 1--4 and 7-10 are rejected under 35 U.S.C. § 102(e) as
anticipated by Shokoohi (US 2009/0182404 Al, pub. July 16,
2009).
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Application 13/097,520
DISCUSSION
Rejection 1: Claims 1--4 and 7-10: 35 U.S. C. § 112, First Paragraph
Claim 1 recites that "the proximal flare-shaped flange and the
proximal cylindrical segment when taken together form an inverted bell
shape, and the distal cylindrical segment and the distal flare shaped flange
when taken together form an inverted bell shape." (Emphasis added). The
Examiner rejects claim 1 under 35 U.S.C. § 112, first paragraph, because the
recitation "'inverted bell shape' ... is not supported by the originally filed
[S]pecification and therefore adds new matter." Final Act. 3. Appellants
contend that Figures 3-7 of the application provide support for the phrase
"inverted bell shape." Appeal Br. 9. The phrase "inverted bell shape" is not
found in Appellants' Specification. Appellants acknowledge that the
Specification does not provide a special definition of "inverted bell shape"
(id. at 11 ), but submit two examples of inverted bell shapes to illustrate the
ordinary meaning of inverted bell shape (id. at 14). The Examiner responds
that "bells come in all shapes and sizes" and the recitation of inverted bell
shape "encompasses all types and shapes of bells that are not shown and
supported by the originally filed Figures." Ans. 2. For the following
reasons we sustain this rejection.
The Federal Circuit has explained that:
The test for determining compliance with the written description
requirement is whether the disclosure of the application as originally
filed reasonably conveys to the artisan that the inventor had possession
at that time of the later claimed subject matter, rather than the presence
or absence of literal support in the specification for the claim language .
. . . The content of the drawings may also be considered in determining
compliance with the written description requirement.
In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983) (citations omitted).
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Appeal2014-008610
Application 13/097,520
As the Specification does not describe an "inverted bell shape," we next look
to the drawings filed with Appellants' application to determine whether they
evidence possession of the now-claimed subject matter.
The two examples of inverted bell shapes submitted by Appellants are
a bell-shaped curve plotted on a graph and a photograph of an actual bell.
Appeal Br. 14. Both examples are closed at the bottom and open at the top
in the inverted position. Id. In both examples, the open end flares outward
from the sidewalls on what would be the bottom of the bell if each were not
inverted. The sidewalls are smooth and curve continuously from the flared
ends to a closed surface that is of a significantly smaller diameter than at the
open end. See id.
Figures 3-7 of the application, relied on by Appellants for support of
the recitation of an inverted bell shape, depict a significantly different shape
than the bell shapes of Appellants' examples. In Appellants' Figure 3, for
example, proximal flare-shaped flange 20 is cylindrical and does not have
ends that flare outward. Proximal cylindrical segment 18 is also cylindrical.
The sidewalls of the embodiment shown in Figure 3 are not smooth but,
rather, include a transition portion with sharp edges between the transition
portion and proximal cylindrical segment 18 and proximal flange 20. As a
result of the transition portion with sharp edges, the sidewalls do not
continuously curve toward the top surface in Figure 3. Each of Appellant's
Figures 4--7 also illustrates a similar geometry.
Claim 1 recites that both the proximal flare shaped flange and
cylindrical segment and the distal flare shaped flange and cylindrical
segment form an inverted bell shape. However, in the orientation of the
stent shown in Figure 3, proximal flare-shaped flange 20 and proximal
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Appeal2014-008610
Application 13/097,520
cylindrical segment 24, even if those elements could be construed to form a
bell shape, would be inverted, but distal flare-shaped flange 24 and distal
cylindrical segment 22 would not also be inverted, as required by claim 1. If
the orientation of the stent in Figure 3 were rotated 180°, then the distal
flare-shaped flange 24 and distal cylindrical segment 22, even if those
elements could be construed to form a bell shape, would be inverted, but the
proximal end would not also be inverted, as recited in claim 1. If the
orientation of the stent in Figure 3 were rotated 90° into a horizontal
position, neither the proximal end nor the distal end would form an inverted
bell shape.
We, thus, sustain the rejection of claims 1--4 and 7-10 under 35
U.S.C. § 112, first paragraph, because the Specification and drawing figures
of Appellants' application would not reasonably convey to a skilled artisan
that Appellants had possession of the claimed stent including both a
proximal flare-shaped flange and cylindrical segment and a distal flare-
shaped flange and cylindrical segment forming an "inverted bell shape," due
to the lack of any description of an inverted bell shape and the differences
noted above between Figures 3-7 and the ordinary meaning of an inverted
bell shape. Further, the Specification and Figures 3-7 do not provide
support for both the distal end and proximal end of the claimed stent being
formed as an "inverted bell shape."
Rejection 2: Claims 1--4 and 7-10: Anticipation by Case
The Examiner finds that Case discloses all the limitations of these
claims including the inverted bell shape formed at the distal and proximal
ends of the stent. Final Act. 4--7. Appellants contend, inter alia, that Case
does not disclose "an inverted bell shape geometry." Appeal Br. 13. The
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Appeal2014-008610
Application 13/097,520
Examiner determines "the shape formed by the cylindrical segment and flare
shaped flange of Case to be an inverted bell shape." Ans. 3.
The Examiner relies on an annotated version of Case's Figure 4 to
support this rejection. Final Act. 5. The notated flare-shaped flanges and
cylindrical segments of Case's structure taken together are generally
cylindrical and lack the characteristics of an inverted bell shape as described
above. Id. Consequently, the Examiner's finding that Case discloses an
inverted bell shape on both its proximal and distal ends is not supported by a
preponderance of the evidence, and we do not sustain the rejection of claims
1--4 and 7-10 as anticipated by Case.
Rejection 3: Claims 1-4 and 7-10: Anticipation by Bloom
The Examiner finds that Bloom discloses all the limitations of these
claims including the inverted bell shape formed at the distal and proximal
ends of the stent. Final Act. 7-9. Appellants dispute that finding. Appeal
Br. 14--17. The Examiner relies on an annotated version of Bloom's Figure
30 to support this rejection. Id. at 8. The Examiner identifies the smaller
diameter right and left end portions of the stent shown in Bloom's Figure 30
as the cylindrical segments and flared shaped flanges on the distal and
proximal ends. Id. The right and left ends of Bloom's stent are generally
cylindrical and lack the characteristics of an inverted bell shape described
above. Id. Consequently, the Examiner's finding that Bloom discloses an
inverted bell shape on both its distal and proximal ends is not supported by a
preponderance of the evidence, and we do not sustain the rejection of claims
1--4 and 7-10 as anticipated by Bloom.
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Appeal2014-008610
Application 13/097,520
Rejection 4: Claims 1--4 and 7-10: Anticipation by Shokoohi
The Examiner finds that Shokoohi discloses all the limitations of these
claims including the inverted bell shape formed at the distal and proximal
ends of the stent. Final Act. 10-12. Appellants contend that Shokoohi does
not disclose a stent with a middle section having "a diameter that is larger
than the proximal flare-shaped flange and the distal flare-shaped flange" or
the claimed inverted bell shapes. Appeal Br. 18-20. With respect to the
middle section of Shokoohi' s stent, the Examiner asserts that Shokoohi
discloses the recited limitation because the enlarged middle section has "a
diameter that is larger than the axial lengths of the proximal flared-shaped
flange and the distal flare-shaped flange." Ans. 6.
The Examiner relies on an annotated version of Shokoohi' s Figure 2A
to support this rejection. Final Act. 11. The Examiner identifies the top and
bottom end portions of Shokoohi' s stent as the respective cylindrical
segments and flared shaped flanges. Id. The Examiner has, however,
identified a primarily cylindrical structure with slightly flared ends lacking
the characteristics of an inverted bell shape described above. Consequently,
the Examiner's finding that Shokoohi discloses an inverted bell shape at
both its proximal and distal ends is not supported by a preponderance of the
evidence
With respect to the claimed enlarged middle section, Shokoohi' s
Figure 2A appears to show that the diameter of the middle section is smaller
than the diameter of the flared ends of the distal and proximal flanges. Case,
Fig. 2A. The Examiner's position that Shokoohi' s middle section is
enlarged because the axial length of the flanges is smaller than the diameter
of the middle section is based on an improper interpretation of the claim
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Appeal2014-008610
Application 13/097,520
language. Appellants direct us to Figure 3 of the application which
Appellants explain shows that the diameter of middle section 16 is larger
than the diameter of both proximal flange 20 and distal flange 24. Reply Br.
12. Appellants also note that the Specification discloses the diameter of the
middle section 16 is 39 mm, the diameter of the proximal flange 20 is 30
mm, and the diameter of distal flange 24 is 22 mm. Id. (citing Spec. i-fi-127,
28). Consequently, the recitations in claim 1 of an "enlarged middle
section" having "a diameter that is larger than the proximal flare-shaped
flange and the distal flare-shaped flange" relate to the relative diameters of
the middle section and the flare-shaped flanges. The Examiner's assertion
that Shokoohi discloses the recited enlarged middle section with a diameter
larger than the proximal and distal flanges because the diameter of the
middle section is larger than the axial length of the flanges is not supported
by a preponderance of the evidence in light of our construction of claim 1.
We also note that the Examiner's finding is speculative because Shokoohi
does not describe the dimensions of the middle section or flanges of the stent
in Figure 2A. See Shokoohi i-fi-171-72. For the foregoing reasons, we do not
sustain the rejection of claims 1--4 and 7-10 as anticipated by Shokoohi.
SUMMARY OF DECISION
The Examiner's decision rejecting claims 1--4 and 7-10 under 35
U.S.C. § 112, first paragraph, is affirmed.
The Examiner's decision rejecting claims 1--4 and 7-10 as anticipated
by Case is reversed.
The Examiner's decision rejecting claims 1--4 and 7-10 as anticipated
by Bloom is reversed.
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Appeal2014-008610
Application 13/097,520
The Examiner's decision rejecting claims 1--4 and 7-10 as anticipated
by Shokoohi is 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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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