Ex Parte GerberDownload PDFPatent Trial and Appeal BoardDec 7, 201711591294 (P.T.A.B. Dec. 7, 2017) Copy Citation 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. 11/591,294 10/31/2006 Martin T. Gerber 1023-596US01/P0027183.00 7139 71996 7590 12/11/2017 SHUMAKER & SIEFFERT , P.A 1625 RADIO DRIVE , SUITE 100 WOODBURY, MN 55125 EXAMINER D ABREU, MICHAEL JOSEPH ART UNIT PAPER NUMBER 3762 NOTIFICATION DATE DELIVERY MODE 12/11/2017 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): pairdocketing @ ssiplaw.com medtronic_neuro_docketing @ cardinal-ip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MARTIN T. GERBER Appeal 2016-004521 Application 11/591,294 Technology Center 3700 Before JEFFREY N. FREDMAN, RICHARD J. SMITH, and RACHEL H. TOWNSEND, Administrative Patent Judges. FREDMAN, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellant requests rehearing of the decision entered September 20, 2017 (“Decision”) that affirmed-in-part the Examiner’s rejections under 35 U.S.C. § 103(a). We deny the requested relief. Appeal 2016-004521 Application 11/591,294 DISCUSSION New Grounds Appellant contends: [T]he portions of Colliou that the Board asserts correspond to the positive pressure line, positive pressure, and fixation element of claim 1 in the rejection put forth by the Board are all materially different than the disclosure of Colliou relied upon by the Examiner in the final Office Action and the Examiner’s Answer. (Req. Reh’g 3—4.) Appellant contends, “As these changes are not simply a further explanation of the Examiner’s ground or rejection, the rejection by the Board constitutes new grounds” (id.) We are not persuaded that our position differed from that of the Examiner and constitutes a new ground of rejection. Leithem stated that “[t]he thrust of the Board’s rejection changes when ... it finds facts not found by the examiner regarding the differences between the prior art and the claimed invention, and these facts are the principal evidence upon which the Board’s rejection was based.” In re Leithem, 661 F.3d 1316, 1320 (Fed. Cir. 2011). Here, Appellant’s identification of facts relied upon in our Decision that allegedly differ in substance from those relied upon by the Examiner is unavailing. The Decision and the Examiner both relied upon Figures 1, 2B, and 2C of Colliou to demonstrate that Coillou teaches the positive pressure line, positive pressure, and fixation element (Dec. 3—6, FF 1,7; Final Act. 2—3). In particular regarding the positive pressure line and positive pressure, the Decision stated “positive pressure is exerted via the positive pressure line using grasping instrument 556” (Dec. 9), and the Examiner found “a positive 2 Appeal 2016-004521 Application 11/591,294 pressure line disposed within the elongated body (i.e. where the line is the conduit used as a push-rod positive pressure system for #556)” (Final Act. 3). Thus, both our Decision and the Examiner relied upon element 556 in Figure 2C as the positive pressure element and the conduit and space through which 556 pushes needle 524 as the positive pressure line (see, e.g., Dec. 5-6, FF 7). Similarly, and contrary to Appellant’s position that the Decision identifies the needle 524, or the needle point 525 alone as the fixation element, both the Decision and the Examiner identified the needle 524, being connected to 556 to its proximal end, as the fixation element where , with the Decision citing the Examiner in finding: Needle 524 is used as a fixation element to fix tissue 104 when positive pressure is exerted via the positive pressure line using grasping instrument 556 (FF 3, 7). As the Examiner noted, “the examiner considers the fixation element to be a single structure extending from the distal tip of Fig. 2C, #524 to the proximal end of #556” (Final Act. 3). (Dec. 9). Our Decision simply points out that the needle point 525 of the fixation element is forced through the captured tissue (Dec. 10) and the needle 524 (which is a part of the fixation element) is configured to enter the vacuum cavity when a positive pressure is exerted on the fixation element via the positive pressure line (Dec. 9-10). That discussion is an elaboration of the Examiner’s position found at Final Action 3 noted above and Final Action 5—6 also explaining that fixation element is the “combination of elements #556 & #524” and describing how these are “configured to enter a vacuum cavity from the conduit.” Such elaboration does not rise to the level of a new ground of rejection. See In re Biedermann, 733 F.3d 329, 337 3 Appeal 2016-004521 Application 11/591,294 (Fed. Cir. 2013) (“A new ground of rejection, however, generally will not be found based on the Board ‘further explaining] the examiner’s rejection’ or the Board’s thoroughness in responding to an applicant’s argument.” (alteration in original) (citation omitted)). Appellant also contends the Board’s rejection of claim 1 relied upon, inter alia, asserting that “the language ‘configured to deliver a therapy’ represents an intended use recitation that does not structurally distinguish the device of Colliou.” The Examiner’s rejection of claim 1 did not rely on such an assertion. Thus, for this additional reason, the rejection to which Appellant’s Appeal Brief and Reply Brief were directed is different than the rejection that appears in the Decision on Appeal. (Req. Reh’g 4 (footnote omitted).) We also find this argument unpersuasive because the Examiner finds “it is clear that the entire device is implanted in the patient and used to treat a particular tissue region in the stomach and therefore would be recognized as meeting the elongated member as configured in the claim preamble” (Ans. 3). That is, while the Examiner does not cite the “intended use” caselaw, the Examiner is clearly relying upon an “intended use” rationale that the “configured to deliver a therapy” preamble limitation does not structurally distinguish the device of Colliou. The difference between the Examiner’s position in the Final Action and our decision is that we elaborated the Examiner’s position in our decision in response to Appellant’s arguments. As noted above, such elaboration does not rise to the level of a new ground of rejection. Biedermann, 733 F.3d at 337. Colliou Anticipation Rejection 4 Appeal 2016-004521 Application 11/591,294 Appellant contends the “Board appears to have overlooked the plain language of claim 1, which recites that ‘the fixation element is configured to enter the vacuum cavity from [a] positive pressure line ... when a positive pressure is exerted on the fixation element via the positive pressure line’” (Req. Reh’g 4 (alteration in original)). Appellant contends “Colliou fails to disclose or suggest the needle guide hole has anything to do with the alleged positive pressure applied to the needle 524. For at least this reason, the Board failed to show that Colliou discloses the subject matter of claim 1” (Req. Reh’g 5). We do not find this argument persuasive for the reasons already given in the Decision where we noted “there is no requirement in the claim that the positive pressure element itself enters the positive pressure line” (Dec. 9). We were in agreement with the Examiner’s finding that “it is critical to understand that the claims have no specific requirement as to what type of connection (i.e. direct/indirect, mechanical, etc.)” (Ans. 3). We noted that the Examiner’s interpretation was “consistent with the Specification, which teaches that a wire may be ‘placed within positive pressure line 94 and used as a push rod to force fixation element 92 through the captured tissue’ (FF 6)” and therefore “the requirement in claim 1 for ‘positive pressure’ that ‘is exerted on the fixation element via the positive pressure line’ encompasses a portion of needle 524 serving as the push rod that forces the fixation element, the needle point 525, through the captured tissue as disclosed by Colliou (FF 7)” (Dec. 10). Appellant also contends the “language ‘configured to’ in claims requires a structure that is more than just capable of performing a function, but is actually made to perform the function” (Req. Reh’g 6). 5 Appeal 2016-004521 Application 11/591,294 We find this argument unpersuasive for the reasons fully addressed in the Decision (see Dec. 11). Indeed, even in Appellant’s request, Appellant does not identity any specific structure that is necessarily required for the functions recited, instead only arguing that Colliou lacks the capacity to be “configured to couple to the medical device” (see Req. Reh’g 6). This silence speaks volumes. Moreover, the Examiner finds “the entire device is implanted in the patient and used to treat a particular tissue region in the stomach and therefore would be recognized as meeting the elongated member as configured in the claim preamble” (Ans. 3). Therefore, even if we treated Appellant’s functional recitation of “configured to couple to the medical device” as having some structural consequence, not specifically identified by Appellant, Schreiber teaches that writing a claim that mixes structural and functional limitations comes at a price. In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997) (“[CJhoosing to define an element functionally, i.e., by what it does, carries with it a risk.”). The price is that when the structural limitations are met by a single prior art reference, and when the Examiner “has reason to believe” that the prior art reference teaches the functional limitation as the Examiner does in the instant case (see Ans. 3), the burden shifts to the patent applicant to show that the functional limitation cannot be met by the single prior art reference. Id. Appellant has provided no evidence rebutting the Examiner’s position, only attorney argument. See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s argument in a brief cannot take the place of evidence.”). Appellant contends: 6 Appeal 2016-004521 Application 11/591,294 [0]ne of ordinary skill in the art would not have understood an endoscope to have been an implantable medical device configured to deliver a therapy or with a proximal end configured to couple to a medical device. In addition, in the system of Colliou, the endoscope 110 is not implanted, but is used to deliver an implantable device 520 and then removed. Therefore, the inclusion of Colliou’s endoscope 110 as being part of a system that anticipates claim 1 is in error and unsupported by the Colliou disclosure. (Req. Reh’g 6.) We remain unpersuaded because, as the Examiner noted, “the entire device is implanted in the patient and used to treat a particular tissue region in the stomach” (Ans. 3). Appellant is relying upon one particular use for the device, but identifies no specific structural differences between the device of Colliou and that of claim 1. As we noted in the Decision, “‘[Apparatus claims cover what a device is, not what a device does.'1 Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990)” (Dec. 11). We further note that Colliou teaches that the device “includes an open chamber 522 for receiving a portion of the stomach wall 104 for attachment” (Dec. 4, FF 2), where attachment to the stomach wall is reasonably interpreted as at least temporarily implanted (cf. Ans. 3). CONCFUSION We have carefully reviewed the original opinion in light of Appellant’s request, but we find no point of law or fact which we overlooked or misapprehended in arriving at our decision. Therefore, 7 Appeal 2016-004521 Application 11/591,294 Appellant’s request is denied with respect to making any modifications to the decision affirming the Examiner’s rejection. REHEARING DENIED 8 Copy with citationCopy as parenthetical citation