Ex Parte Freudenthal

Patent Trial and Appeal Board

Feb 1, 2016

10543007 (P.T.A.B. Feb. 1, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
10/543,007 0510212006 Franz Freudenthal
32047 7590 02/02/2016
GROSSMAN, TUCKER, PERREAULT & PFLEGER, PLLC
55 SOUTH COMMERICAL STREET
MANCHESTER, NH 03101
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.
PPTOOl 2439
EXAMINER
OU, JING RU!
ART UNIT PAPER NUMBER
3731
MAILDATE DELIVERY MODE
02/02/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRANZ FREUDENTHAL
Appeal2013-010880
Application 10/543,007
Technology Center 3700
Before NEALE. ABRAMS, ERIC C. JESCHKE, and MARK A. GEIER,
Administrative Patent Judges.
JESCHKE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Franz Freudenthal (Appellant) seeks review, under 35 U.S.C.
§ 134(a), of the Examiner's decision to reject claims 40-50, 52---63, and 65-
73. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
BACKGROUND
The disclosed subject matter "relates to an implantable device to be
used in the human and/or animal body for occluding or partially occluding
defect openings, hollow spaces, organ tracts, etc. or for creating a defined
connecting opening between walls, organs, hollow spaces, etc." Spec. 1, 11.
Appeal2013-010880
Application 10/543,007
3-7. Claim 40, the sole independent claim, is reproduced below with
emphasis added:
40. An implantable device to be used in a
human and/or animal body for at least partially
occluding a defect opening in a wall in said body,
compnsmg;
a support structure having a primary shape
of tubular form having a first length-to-width ratio
along an axis in a first operating state and having a
secondary shape having a second length-to-width
ratio along said axis in a second operating state
wherein said first length-to-width ratio is greater
than said second length-to-width ratio,
the support structure having two ends, a
proximal portion, an intermediate portion, a distal
portion, a surface, and an outer edge portion,
wherein said proximal portion and said distal
portion are offset from said intermediate portion,
and, in said secondary shape of said support
structure, said proximal portion and said distal
portion are configured to engage opposing sides of
said wall and a portion of said intermediate portion
is configured to engage said defect opening and at
least partially occludes said defect opening,
the support structure comprising a single
intertwined, inter-coiled wire-like element having
two open ends and configured into a tissue and/ or
scrim and/or net structure and includes a plurality
of loops defining said outer edge portion, and
wherein the proximal portion and/or distal
portion in the secondary shape is substantially flat
in a disk shape or ring shape or at least bent round
in an edge area of said proximal portion or bent
back toward the other of the distal or proximate
portion or bent outward from said intermediate
portion connecting the distal and proximal
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Application 10/543,007
portions, so that a delimited inner space is formed,
said inner space including an opening, wherein
said two ends of said wire-like element are both
arranged at one end of said support structure or are
integrated into the surface of the support structure.
EVIDENCE RELIED ON BY THE EXAMINER
Amplatz US 5,944,738 Aug. 31, 1999
Shaw US 6,171,329 Bl Jan. 9, 2001
Thill US 6,214,029 B 1 Apr. 10, 2001
Globerman US 2001/0041930 Al Nov. 15, 2001
Gainor US 2002/0169475 Al Nov. 14, 2002
Hyodoh US 2003/0149475 Al Aug. 7, 2003
REJECTIONS ON APPEAL 1
1. Claims 40-48, 50, 52-59, 63, 65, and 66 are rejected under
35 U.S.C. § 103(a) as unpatentable over Amplatz, Hyodoh, and Shaw.
2. Claim 49 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Amplatz, Hyodoh, Shaw, and Globerman.
1 The Examiner rejected claims 40-50, 52---63, and 65-73 under (1)
35 U.S.C. § 101 as being directed to or encompassing a human organism, (2)
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement, and (3) 35 U.S.C. § 112, second paragraph, as
failing to particularly point out and distinctly claim the subject matter
regarded as the invention. See Final Act. 2--4 (dated Aug. 23, 2012). After
the Final Office Action, Appellant filed an Amendment addressing these
rejections. See Amendment 9-10 (dated Jan. 10, 2013). In an Advisory
Action, the Examiner entered the amendments but did not address the
rejections. See Adv. Act. 1. The briefing here does not mention these
rejections. See Appeal Br. 7. On these facts, we consider these rejections
implicitly withdrawn.
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3. Claims 60-62 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Amplatz, Hyodoh, Shaw, and Gainor.
4. Claims 67----69 and 71-73 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Amplatz and Shaw.
5. Claim 69 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Amplatz, Shaw, and Thill.
DISCUSSION
Rejection I -The rejection of claims 40--48, 50, 52-59,
63, 65, and 66 under 35 U.S.C. § 103(a)
For this rejection, Appellant argues the patentability of independent
claim 40 and does not separately argue the dependent claims. Appeal Br.
17-26. Accordingly, we address only claim 40, with the remaining claims
standing or falling with claim 40. See 37 C.F.R. § 41.37 (c)(l)(iv) (2012).
The Examiner finds that Amplatz discloses substantially all of the
limitations of claim 40 (Final Act. 4----6), but states that Amplatz "does not
appear to disclose that the support structure is formed from a single
inter[t]wined, inter-coiled wire-like element" (id. at 6). The Examiner finds,
however, that Hyodoh "discloses a support structure of an implantable
device (100 or 700, Figs. 10, 14, 50A-50C, or 57B-D) formed from a single
inter[t]wined, inter-coiled wire-like element (Paras. [0146], [0152], [0189],
and [0233]) configured into a tissue and/or scrim and/or net structure." Final
Act. 7. The Examiner also finds that Shaw "teaches a support structure of an
implantable device formed from a single wire-like element." Id. (citing
Shaw, col. 13, 11. 60-67). The Examiner states:
It would have been obvious to one of ordinary skill in the art at
the time of the invention to modify the support structure of
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Amplatz et al formed of multiple wire inter[t]wined and inter-
coiled together to be formed from a single inter[t]wined,
intercooled wire-like element as taught by Hyodoh et al in order
to enable the device to remain quite flexible in its compacted,
inserted configuration as taught by Shaw et al (Shaw et al, Col.
13, lines 60---67).
Final Act. 7.
First, Appellant states that "Amplatz appears to disclose an
implantable device 'for at least partially occluding a defect opening in a
wall,' as generally recited in claim 40" but "submits that the single wire
embodiment (700) of Hyodoh (FIGS. 57B-57D) does not appear to be
configured 'for at least partially occluding a defect opening in a wall,' as
generally recited in claim 40." Appeal Br. 21. Appellant relies on the
Declaration of Dr. Boosfeld who, according to Appellant, "pointed out that
one of ordinary skill in the art would not find any teaching or suggestion in
H yodoh of utilizing the single wire embodiment for occlusion of a defect
opening in a wall" and who concludes that "one of ordinary skill in the art
would not have been motivated to combine the single wire embodiment of
Hyodoh with the occlusion device of Amplatz." Id. at 22 (citing Dec. i-f 16).2
In response, the Examiner disagrees with Dr. Boosfeld's statement
that "'given the nature by which the occlusion device of Amplatz is formed
and how it is connected to a delivery system, one of ordinary skill in the art
would not have modified the occlusion device [of] Amplatz to include a
single wire configuration as taught by Hyodoh. "' Ans. 3--4 (quoting Dec.
i-f 11 ). The Examiner states, "each of Amplatz and Hyodoh discloses a self-
2 All citations to "Dec." refer to the Declaration under 37 C.F.R.
§ 1.132 of Dr. Christoph Boosfeld, dated Apr. 5, 2012.
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expandable occlusion device (the same field of endeavor)." Id. at 4. The
Examiner also states that "the single wire device (such as shown in Figure
SOC or 57B) of Hyodoh is fully capable to at least partially occlude a defect
opening in the wall because it is an occlusion device" and that "[t]he
recitation 'for at least partially occluding a defect opening in a wall' is a
recitation of intended use." Id. at 5 (emphasis omitted). According to the
Examiner, "the modification in the combination of Amplatz and Hyodoh is
simply to form the support structure [of] the occlusion device of Amplatz
from a single intertwined, inter-coiled wire instead of a plurality of braided
wires" and "not to change the shape of the device of Amplatz." Id. at 6.
In reply, Appellant contends that "Amplatz already recognizes the
impact of wire count and characteristics on various properties of its
disclosed implant, including flexibility" but, "[ d]espite this overt
recognition, Amplatz is silent with respect to the use of an implant
containing a support structure formed from a single wire-like element, as
claimed." Reply Br. 7. Appellant also argues that "nothing in Amplatz is
understood to indicate that the disclosed multiwire implant exhibits
insufficient or undesirable flexibility for its intended purpose." Id. at 8
(discussing Amplatz, col. 9, 11. 15-25, col. 11, 11. 23---61). Appellant also
contends that "nothing in Hyod[ o ]his understood by Appellant as indicating
or suggesting that implant having a support structure comprising a single
intertwined, inter-coiled wire-like element will exhibit improved flexibility
relative to the Amplatz's devices" and that "the mere fact that it may be
possible to form a complex structure (such as described by Hyod[o]h) from a
single wire is not a proper basis upon which a prima facie case of
obviousness may be established." Id. at 9.
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We are not apprised of error based on Appellant's first set of
arguments. As an initial matter, we determine that the Examiner's
reasoning, as quoted above (see Final Act. 7 (citing Shaw, col. 13, 11. 60-
67)), supports a prima facie case of obviousness of claim 40. See In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). The argument that Hyodoh
does not provide such reasoning (e.g., Appeal Br. 22; Reply Br. 9) does not
apprise us of error because the Examiner relies on Shaw-not H yodoh-as
providing the "motivation/suggestion for the modification." Ans. 7.
As to the arguments related to the preamble of claim 40, we are not
apprised of error because Appellant argues against Hyodoh individually,
rather than addressing the modified device. See In re Merck & Co., 800
F.2d 1091, 1097 (Fed. Cir. 1986). Here, Appellant has not persuasively
shown error in the finding that "the modified device of Amplatz in view of
Hyodoh with the teaching of Shaw would be fully capable of occluding a
defect opening in a wall." Ans. 6 (emphasis omitted). In addition, to the
extent Appellant implicitly contends that Hyodoh is nonanalogous art, we
are not persuaded of error in the Examiner's contrary findings (id. at 4).
As to the contentions regarding Amplatz (Reply Br. 6-8), Appellant
does not apprise us of error because the Examiner relies on Shaw-not
Amplatz-to provide the reasoning for the proposed modification. Ans. 7.
Further, we do not consider Amplatz's silence as to a single-wire
embodiment as an implicit teaching away from such an embodiment. See
DyStar Textilfarben GmbH v. C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed.
Cir. 2006) ("We will not read into a reference a teaching away ... where no
such language exists."); see also Ans. 5 ("Amplatz does not expressively
state that the support structure of occlusion device cannot be formed a single
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intertwined, inter-coiled wire.") (emphasis omitted). On this issue, we note
that Appellant has not provided evidentiary support for the assertion that
"from the disclosure of the applied references, it appears that wire density
and other factors of Amplatz'[s] device would be negatively impacted by the
proposed modification and thus would result in a corresponding decrease in
the 'important' properties identified by Amplatz as being related to such
factors." Reply Br. 7. Finally, even assuming that the device disclosed in
Amplatz is sufficiently flexible to perform the functions disclosed, Appellant
has not persuasively shown that the discussion relied upon by the Examiner
(Shaw, col. 13, 11. 60-67), would not provide a motivation to modify
Amplatz with the relied-upon teachings of Hyodoh. See Final Act. 7.
Second, citing Dr. Boosfeld' s Declaration, Appellant contends that
"one of ordinary skill in the art would not have modified the occlusion
device of Amplatz to include the collars (702)" of Hyodoh (see, e.g., Figs.
57B-D) "because one of ordinary skill in the art would not find any teaching
or suggestion from Hyodoh to utilize the collars (702) for coupling and
necessarily modify the single wire embodiment of Hyodoh to a delivery
system." Appeal Br. 20 (citing Dec. i-f 12). According to Appellant, "the
occlusion device ofHyodoh (shown in FIGS. 57B-57D) requires the use of
the collars 702 in order to serve as an occlusion device." Id. at 24.
In response, the Examiner states that "the modification in the
combination of Amplatz and Hyodoh is simply to form the support structure
[of] the occlusion device of Amplatz from a single intertwined, inter-coiled
wire instead of a plurality of braided wires" and is "not to replace the both
clamps (30 and 32) of Amplatz with the collar/clamps (702) of Hyodoh."
Ans. 5. We are not apprised of error based on Appellant's second argument
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because, for the Examiner's reasons as set forth above, the argument does
not address the rejection as articulated.
Third, Appellant states that "H yodoh teaches, at best, a single wire
with one collar (702) on one end" and that "Amplatz makes clear that a
clamp is required on both ends." Appeal Br. 20. Based on those alleged
teachings, Appellant contends that "one of ordinary skill in the art would not
incorporate Hyodoh's FIG. 57D into Amplatz" because that "would change
the principle of operation of Amplatz, in a manner not acceptable to Amplatz
(it would leave Amplatz with a clamp on one end, which Amplatz would not
find acceptable)." Id. (citing Dec. i-f 14 ).
We are not apprised of error based on Appellant's third set of
arguments because the argument does not address the rejection as
articulated. As stated by the Examiner, "the modification in the combination
of Amplatz and Hyodoh is simply to form the support structure [of] the
occlusion device of Amplatz from a single intertwined, inter-coiled wire
instead of a plurality of braided wires." Ans. 4--5. The modification does
not, as stated by Appellant, "incorporate Hyodoh's FIG. 57D into Amplatz"
(Appeal Br. 20) and, more specifically, does not involve collars 702 of
Hyodoh. See Ans. 5 ("The modification is not to replace the both clamps
(30 and 32) of Amplatz with the collar/clamps (702) of Hyodoh."). Further,
we note that Appellant has not provided evidence supporting the contention
that "the modification proposed by the Office would fundamentally change
the manner in which the Amplatz's devices are made." Reply Br. 11.
Fourth, Appellant argues that "Shaw does not cure the deficiencies of
Hyodoh" regarding the "motivat[ion] to combine the single wire
embodiment of Hyodoh with the occlusion device of Amplatz." Appeal Br.
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22. Appellant argues that "the teaching of Shaw does not appear applicable
with respect to Amplatz and/or Hyodoh." Id. at 25. According to Appellant,
"the self-expanding closure device of Shaw has a general helical shape and
is formed from a single helical shaped wire, in contrast to the woven
structure of Amplatz." Id. Appellant continues that "[t]he 'advantage'
obtained by the closure device of Shaw (i.e. remaining flexible in
compacted, insertion configuration) is due to its particular configuration,
specifically a single length of wire in a compacted state" and that, in
contrast, "[t]he woven structure of the occlusion device of Amplatz has
multiple lengths of multiple wires in a compacted state." Id.
In response, the Examiner states that Shaw "teaches a support
structure (Figs. 6B-7B) of an implantable (occlusion) device to be formed
from a single wire" and "provides the motivation of forming the implantable
device from a single wire (to enable the device to remain quite flexible in its
compacted, inserted configuration[)]." Ans. 6 (citing Shaw, col. 13, 11. 60-
67). The Examiner states: "[a]gain, the modification in the combination of
Amplatz and Hyodoh is simply to form the support structure [of] the
occlusion device of Amplatz from a single intertwined, inter-coiled wire
instead of a plurality of braided wires" and "not to change the shape of the
device of Amplatz." Id.
In reply, Appellant "acknowledges that column 13, lines 60-67 of
Shaw does indicate that Shaw's devices are flexible in their compacted state"
but argues that Shaw does not "indicate that its devices (which may be
formed from a single wire) exhibit better or more desirable flexibility than
Amplatz's multiwire implants which ... would be understood by one of
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ordinary skill in the art as already possessing sufficient flexibility for their
intended purposes." Reply Br. 10.
We are not apprised of error based on Appellant's fourth set of
arguments. As to the alleged differences between the structures of the
devices in Shaw and Amplatz, Appellant has not persuasively demonstrated
that, based on those alleged differences, the relied-upon teachings of Shaw
are not "applicable with respect to Amplatz and/or Hyodoh." Appeal Br. 25.
Indeed, that Shaw teaches "a single length of wire in a compacted state"
whereas Amplatz teaches "multiple lengths of multiple wires in a compacted
state" (id.) does not conflict with the Examiner's findings or reasoning
provided in support of the conclusion of obviousness (Final Act. 7).
Further, the issue here is not whether Shaw discloses that its devices
are more flexible than Amplatz' s devices. Reply Br. 10. Instead, the issue
is whether the teachings in Shaw relied upon by the Examiner (Final Act. 7
(citing Shaw, col. 13, 11. 60-67)) would provide a reason for one of ordinary
skill in the art at the time of the invention to modify the support structure of
Amplatz with the "single intert[w]ined, inter-coiled wire-like element as
taught by Hyodoh." Final Act. 7. Appellant has not shown error in the
Examiner's related findings or conclusions.
For the reasons above, we sustain the decision to reject independent
claim 40 as unpatentable over the combined teachings relied upon by the
Examiner. Claims 41--48, 50, 52-59, 63, 65, and 66 fall with claim 40.
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Rejections 2-5 -The rejection of claims 49, 6()-62,
67-69, and 71-73 under 35 U.S.C. § 103(a)
Appellant does not separately argue claims 49, 60-62, 67----69, and 71-
73, all of which depend from claim 40. Appeal Br. 26-27. Thus, for the
reasons above, we sustain the decision to reject these claims.
DECISION
We AFFIRM the decision to reject claims 40-50, 52-63, and 65-73
under 35 U.S.C. § 103(a).
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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