Ex Parte Gerberding et alDownload PDFPatent Trial and Appeal BoardOct 23, 201412489158 (P.T.A.B. Oct. 23, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte BRENT GERBERDING, STEPHEN GRIFFIN, YEM CHIN, JENNIFER JANDAK, ANTHONY R. TREMAGLIO JR., LEE GUTERMAN, ALYSSA DASSA, and RICHARD HUDSON __________ Appeal 2012-006081 Application 12/489,158 Technology Center 3700 __________ Before DEMETRA J. MILLS ULRIKE W. JENKS, and CHRISTOPHER G. PAULRAJ, Administrative Patent Judges. PAULRAJ, Administrative Patent Judge. DECISION ON APPEAL This is an appeal1 under 35 U.S.C. § 134 involving claims to device to at least partially seal a neck of an aneurysm. The Examiner rejected the claims on the grounds of anticipation and obviousness. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 Appellants identify the Real Parties in Interest as Stryker Corporation and Stryker NV Operation Ltd. (see App. Br. 2). Appeal 2012-006081 Application 12/489,158 2 STATEMENT OF THE CASE Background “[T]he present invention pertains to occlusion systems for the treatment of aneurysms” (Spec. ¶ 2). Techniques have been attempted in order to deal with the disadvantages associated with embolic material migration to the parent vessel. Some such techniques, commonly referred to as flow arrest techniques, typically involve temporarily occluding the parent vessel proximal of the aneurysm, so that no blood flow occurs through the parent vessel, until a thrombotic mass has formed in the sac of the aneurysm which helps reduce the tendency of the embolic material to migrate out of the aneurysm sac. (Id., ¶ 8). The Specification describes aneurysm neck bridges used for at least partially occluding or sealing an aneurism (Id., ¶¶ 10–12). The Claims Claims 1–9, and 11–19 are on appeal. Independent claim 1 is representative, and reads as follows: 1. A device to at least partially seal a neck of aneurysm, comprising: a first elongate member having a proximal end and a distal end and an elongated length therebetween; an aneurysm neck bridge releasably connected to the distal end of the first elongate member at a connection point, the aneurysm neck bridge having a proximal end and a distal end, the aneurysm neck bridge comprising: a first array having a deployed configuration and a delivery configuration, the first array formed proximate the distal end of the aneurysm neck bridge, wherein the first array forms a plurality of petal-like features when in the deployed Appeal 2012-006081 Application 12/489,158 3 configuration; a second array having a deployed configuration and a delivery configuration, the second array formed proximate the proximal end of the aneurysm neck bridge, wherein the second array forms a plurality of petal-like features when in the deployed configuration; a second elongate member having a proximal end and a distal end and an elongated length therebetween, the first elongate member and the first and second array being slidably received within the second elongate member, wherein the first and second array are configured to transform such that they are in the delivery configuration when contained within the second elongate member and are in the deployed configuration when outside the second elongate member. The Issues The Examiner has rejected the claims as follows: I. Claims 1–6, and 10–16 under 35 U.S.C. § 102(e) as being anticipated by Huebsch.2 II. Claims 7 and 17 under 35 U.S.C. § 103(a) as being unpatentable over Huebsch. III. Claims 8, 9, 18, and 19 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Huebsch and Guglielmi.3 ANALYSIS I. Anticipation Rejection Independent claims 1 and 11 require an “aneurysm neck bridge” comprising a first and second array that form a plurality of “petal-like” 2 Huebsch et al., US 5,853,422, issued Dec. 29, 1998. 3 Guglielmi, US 5,916,235, issued Jun. 29, 1999. Appeal 2012-006081 Application 12/489,158 4 features or members in a deployed configuration” (Cls. 1, 11). The Examiner finds that these limitations are satisfied by Huebsch’s teaching of a device for closing cardiac septal defects having a cylindrical body with concentric parallel cuts forming support struts (22) having hinge points (24 that move “radially away from the axis of the device in a hinge like fashion in response to the movement of the proximal and distal ends 14, 16 toward the central portion 18 of the device 10” (Huebsch, col. 4 ll. 29–32). Appellants argue that Huebsch fails to teach “petal-like” features or members (App. Br. 7). Appellants cite to a definition of “petal-like” as “resembling a petal” and a definition of “petal” as “a modified leaf that is part of a flower” (Id.). Appellants further argue that the Examiner erred in considering the preamble language, “to at least partially seal the neck of an aneurysm,” as merely intended use language that does not further distinguish claims 1 and 11 over the device of Huebsch (Id. at 8). We find that Appellants have the better position. The Examiner provides no basis to interpret the claimed “petal-like” features or members to encompass the support struts (22) of Huebsch. Although claims are given their broadest reasonable interpretation during examination, that interpretation must nonetheless be consistent with the Specification as it would be understood by one of ordinary skill in the art. See In re Bond, 910 F.2d 831, 833 (Fed.Cir.1990) (“claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art”). There is nothing to suggest that a skilled artisan would have found the support struts of Huebsch to resemble a flower petal. The Examiner only points to figures 10-13B of the Specification as disclosing rectangular petal- like features similar to Huebsch (Ans. 7–8). However, element 78 in Figures Appeal 2012-006081 Application 12/489,158 5 10–13B is only described in the Specification as a “plurality of struts,” whereas element 208 in Figure 22 and elements 312 and 314 in Figure 25 are described as “petal-like” or “petals” (Spec. ¶¶ 60, 96, 104). We therefore find that the hinged rectangular support struts of Huebsch do not satisfy the requirements for “petal-like” features or members. Furthermore, the Examiner finds that “[t]he preambular reference to a structure defined by a ‘neck of an aneurysm’ is not given patentable weight, since it is not a structural part of the invention” (Ans. 8). “In general, the preamble limits a claim if it recites essential structure or is otherwise ‘necessary to give life, meaning, and vitality’ to the claim, . . . while the preamble is not limiting when the claim body defines a structurally complete invention and the preamble states only a purpose or intended use.” In re Taylor, 484 F. App’x 540, 543 (Fed. Cir. 2012) (non-precedential). The Examiner provides no basis to conclude that the structure described by Huebsch is inherently capable of at least partially sealing the neck of an aneurism in a manner such that the claims are merely directed to the new use of an old product. Cf. In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (affirming Board decision that prior art oil can structure was “inherently capable” of dispensing popcorn). Moreover, even assuming that the preamble of the independent claims recites a non-limiting intended use of the claimed device, the Examiner has not explained how the device for closing a septal defect within the heart taught by Huebsch would satisfy the structural requirements for an “aneurysm neck bridge” recited in the body of the claims. Appeal 2012-006081 Application 12/489,158 6 We therefore conclude that a prima facie showing of anticipation has not been made and reverse the anticipation rejection of claims 1–6 and 10– 16. II. & III. Obviousness Rejections The Examiner’s obviousness rejections of claims 7–9, and 17–19 rely upon the same teachings of Huebsch to satisfy the requirement of an “aneurysm neck bridge” and “petal-like” features or members. Because Guglielmi does not make up for the deficiency in Huebsch discussed above, we are also constrained to reverse the obviousness rejections of these claims. SUMMARY We reverse the rejection under 35 U.S.C. § 102(e). We reverse the rejections under 35 U.S.C. §103(a). REVERSED dm Copy with citationCopy as parenthetical citation