Ex Parte Hotter

Patent Trial and Appeal Board

Feb 29, 2016

13211396 (P.T.A.B. Feb. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/211,396 08/17/2011
50855 7590 03/02/2016
Covidien LP
555 Long Wharf Drive
Mail Stop SN-I, Legal Department
New Haven, CT 06511
FIRST NAMED INVENTOR
Joseph Hotter
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.
H-US-02629 4113
EXAMINER
ORKIN, ALEXANDER J
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
03/02/2016 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):
mail@cdfslaw.com
SurgicalUS@covidien.com
medtronic_mitg-si_docketing@cardinal-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSEPH HOTTER
Appeal2014-003047
Application 13/211,396
Technology Center 3700
Before ANNETTE R. REIMERS, THOMAS F. SMEGAL, and
GORDON D. KINDER, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Joseph Hotter (Appellant) appeals under 35 U.S.C. § 134(a) from the
Examiner's decision to reject under 35 U.S.C. § 102(b) (1): claims 1-5 as
anticipated by Cummins (US 2005/0234508 Al; pub. Oct. 20, 2005); and (2)
claims 1and5-10 as anticipated by Gifford (US 2005/0131460 Al; pub.
June 16, 2005). Claims 11-14 have been withdrawn from consideration.
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Appeal2014-003047
Application 13/211,396
CLAIMED SUBJECT MATTER
The claimed subject matter "relates to a wound closure device to be
inserted into a wound gap between tissue segments to close the wound gap
by approximating the tissue segments." Spec. para. 2; Fig. IA, IB, 5, 6.
Claim 1, the sole independent claim, is representative of the claimed
subject matter and recites:
1. A wound closure device for closing a wound gap defined
by at least two tissue segments, comprising:
a tubular collapsible member defining a proximal and
distal end, a longitudinal axis, and a hollow bore extending along
the longitudinal axis between the proximal and distal ends;
tissue engaging structure supported on an outer wall of the
tubular collapsible member positioned to engage the at least two
tissue segments;
wherein the tubular collapsible member defines a first
configuration in which the hollow bore is open and a second
configuration in which the hollow bore is substantially closed,
the tubular collapsible member being selectively movable from
the first configuration to the second configuration to draw the at
least two tissue segments towards each other such that the wound
gap is substantially closed.
ANALYSIS
Anticipation by Cummins
Independent claim 1 calls for a wound closure device including a
tubular collapsible member having a hollow bore extending along the
longitudinal axis between proximal and distal ends, "wherein the tubular
collapsible member defines a first configuration in which the hollow bore is
open and a second configuration in which the hollow bore is substantially
closed." Appeal Br. 10, Claims App. The Examiner finds that Cummins
teaches "a tubular collapsible member (10, figure 1 a,b )"having "a hollow
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Application 13/211,396
bore (lumen as seen in figure la) extending along the longitudinal axis
between the proximal and distal ends," "wherein the tubular collapsible
member defines a first configuration in which the hollow bore is open and a
second configuration in which the hollow bore is substantially closed (figure
8, 10)." Final Act. 2. Additionally, the Examiner takes the position that
"paragraph 3 5 of Cummins states 'the closed ring occludes [sic] remains
positioned ... as illustrated in figure 10.' Therefore the ring is in a closed
state in figure 10, and in this configuration has its minimum profile which
can be considered 'substantially closed."' Ans. 5.
Appellant contends that based upon the description in paragraph 34 of
the Specification, "the recitation in claim 1 of 'a second configuration in
which the hollow bore is substantially closed' requires that the hollow bore
be substantially or entirely diminished in the collapsed state" and that "one
could not reasonably define the non-expanded bore [of Cummins] as being
'substantially or entirely diminished' in its non-expanded state." See Reply
Br. 2-3 (citing para. 34 of the Specification); see also Appeal Br. 4---6.
Appellant further contends that Cummin's clip "expand[s] and
contract[s] circumferentially" and "[cannot] be moved to a substantially
closed configuration." See Appeal Br. 8; see also Reply Br. 3. In other
words, based on our understanding, Appellant is asserting that Cummin' s
clip (ring occlude 10) does not constitute a "collapsible" member.
When construing claim terminology in the Patent and Trademark
Office, this Board is required to give the claim language its broadest
reasonable interpretation. See In re Crish, 393 F.3d 1253, 1256 (Fed. Cir.
2004); In re Bigio, 381F.3d1320, 1324 (Fed. Cir. 2004); In re Hyatt, 211
F.3d 1367, 1372-73 (Fed. Cir. 2000). In this case, Appellant's Specification
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Application 13/211,396
does not provide an express definition of what constitutes the "hollow bore"
being "substantially closed." However, Appellant's Specification describes:
[T]he tubular collapsible member 100 defines a second
configuration in which the member 100 is in a substantially
deflated or collapsed state and has a minimum profile as
illustrated in FIG. IB. In the second configuration, the inner wall
112 of the member 100 collapses against itself, and substantially
or entirely diminishes [closes] the hollow bore 140.
Spec. para. 34 (emphasis added); see also id. at paras. 12, 21; Figs. 1 A, 1 B,
5, 6; Reply Br. 2-3. Appellant's Specification further describes that "the
member 100 is moved from its first, expanded configuration to its second,
collapsed configuration as shown in FIG. 6, by the application of an external
force .... In the second, collapsed configuration, the inner wall 112 closes
upon itself substantially diminishing [closing] the hollow bore 140. Spec.
para. 39 (emphasis added); see also id. at paras. 11, 12, 21; Figs. IA, IB, 5,
6.
Cummins teaches "the present invention provides a clip for closing a
puncture hole in a blood vessel, the clip comprising a ring [ring occlude 1 OJ
having a resiliently expandable circumference." Cummins, para. 9
(emphasis added). Ring occluder 10 includes an "expanded state" and a
"non-expanded [initial] state." See id. at paras. 17, 30; Figs. la, lb. In
reference to Figure 10, Cummins teaches:
Once fully deflated the guide wire 26 and catheter 22 are
removed from the tissue tract and the puncture hole 32 causing
the ring occluder 10 to resiliently contract to its initial state
thereby pulling the edges of the puncture hole 32 together and
effecting homeostasis. The closed ring occluder 10 remains
positioned around the puncture hole on the artery as illustrated in
FIG. 10.
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Appeal2014-003047
Application 13/211,396
Cummins, para. 35 (emphasis added); see also Final Act. 2; Ans. 5.
Although the hollow bore of Cummins' s ring occluder 10 is smaller in
size (contracted) in the non-expanded/initial state (second configuration) as
compared to the expanded state (first configuration), the hollow bore defined
by ring occluder 10 is open in the non-expanded/initial state (second
configuration). See Cummins, Fig. la; see also Appeal Br. 4--5, 9; Reply Br.
3. A skilled artisan, upon review of Appellant's disclosure, would not
consider the hollow bore of Cummins' s ring occluder 10 to be "substantially
closed" in the non-expanded/initial state (second configuration). See Reply
Br. 3; see also In re Cortright, 165 F.3d 1353, 1358 (Fed. Cir. 1999)
("Although the PTO must give claims their broadest reasonable
interpretation, this interpretation must be consistent with the one that those
skilled in the art would reach."). Further, Cummins describes ring occluder
10 as an expandable and contractible member not a "collapsible" member,
as recited in claim 1. 1 See Cummins, paras. 9, 11, 12, 17, 30, 35, Figs. la,
lb; see also Appeal Br. 8; Reply Br. 3. Moreover, the Examiner does not
provide sufficient evidence or technical reasoning to support a determination
that ring occluder 10 of Cummins is necessarily a "collapsible" member.
1 An ordinary and customary meaning of the term "collapse," consistent with
Appellant's Specification, is "6 : to fold down into a more compact shape."
Collapse, MERRIAM-WEBSTER, http://www.merriam-
webster.com/dictionary/collapsible (last visited February 22, 2016). See
Spec. para 34 (emphasis added) ("the tubular collapsible member 100
defines a second configuration in which the member 100 is in a substantially
deflated or collapsed state and has a minimum profile as illustrated in FIG.
1 B. In the second configuration, the inner wall 112 of the member 100
collapses against itself, and substantially or entirely diminishes the hollow
bore 140"); see also id. at 12, 21, 39; Figs. lB, 6.
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See Final Act. 2; see also Ans. 4-5. "A claim is anticipated only if each and
every element as set forth in the claim is found, either expressly or
inherently described, in a single prior art reference." Verdegaal Bros., Inc. v.
Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). As the Examiner
has not established that each and every limitation of claim 1 is met by
Cummins, the anticipation rejection cannot be sustained. We further do not
sustain the rejection of claims 2-5, which depend from claim 1.
Anticipation by Gifford
Independent claim 1 calls for a wound closure device including a
tubular collapsible member having a hollow bore extending along the
longitudinal axis between proximal and distal ends, "wherein the tubular
collapsible member defines a first configuration in which the hollow bore is
open and a second configuration in which the hollow bore is substantially
closed." Appeal Br. 10, Claims App. The Examiner finds that Gifford
teaches "a tubular collapsible member (92, figure I la)" having "a hollow
bore (lumen as seen in figure 11 c-t) extending along the longitudinal axis
between the proximal and distal ends," "wherein the tubular collapsible
member defines a first configuration in which the hollow bore is open and a
second configuration in which the hollow bore is substantially closed (figure
1 le,t)." Final Act. 3. Additionally, the Examiner takes the position that
"Gifford discloses in paragraph 86 that the clip as seen in figure 11 a is self-
closing and is in its minimum profile. Therefore because it is self-closing,
and that it will close by itself to a substantially closed profile in figure I la."
Ans. 5.
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Appellant contends that based upon the description in paragraph 34 of
the Specification, "the recitation in claim 1 of 'a second configuration in
which the hollow bore is substantially closed' requires that the hollow bore
be substantially or entirely diminished in the collapsed state" and that "one
could not reasonably define the non-expanded bore [of Gifford] as being
'substantially or entirely diminished' in its non-expanded state." See Reply
Br. 2-3 (citing para. 34 of the Specification); see also Appeal Br. 6-9.
Appellant further contends that Gifford's stent "expand[ s] and
contract[s] circumferentially" and "[cannot] be moved to a substantially
closed configuration." See Appeal Br. 8; see also Reply Br. 3. In other
words, based on our understanding, Appellant is asserting that Gifford's
stent 92 does not constitute a "collapsible" member.
As discussed above, when construing claim terminology in the Patent
and Trademark Office, this Board is required to give the claim language its
broadest reasonable interpretation.
In reference to Figures 1 lA and 1 lB, Gifford teaches:
As shown in FIG. llA, a clip device 90 may suitably include an
expandable, self-closing stent 92 having multiple slits 93, and
multiple tissue attachment members 94 coupled with stent 92.
Stent 92 may be delivered via a catheter device to a location for
treating a PFO [patent foramen ovale] in its unexpanded state, as
shown in FIG. llA. Stent 92 may then be expanded, as shown
in FIG. llB, to expand tissue attachment members 94. Tissue
attachment members 94 are then advanced to pierce into septum
primum SP and septum secundum SS tissue, and stent 92 is
released from expansive force to allow it to close to its
unexpanded form.
Gifford, para. 86 (emphasis added); Figs. 1lA,1 lB; see also Ans. 5. In
reference to Figure 1 lF, Gifford teaches that "in FIG. llF, balloon 96 is
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Application 13/211,396
deflated and withdrawn, allowing clip device 90 to return to its unexpanded
configuration." Gifford, para. 87; Fig. I IF; see also Final Act. 3. We agree
with Appellant that although the hollow bore of stent 92 of Gifford is
smaller in size (contracted) in the unexpanded/initial state (second
configuration) as compared to the expanded state (first configuration), "the
hollow bore defined by ... stent 92 is open" in the unexpanded/initial state
(second configuration). See Gifford, Fig. I IA; see also Appeal Br. 7. A
skilled artisan, upon review of Appellant's disclosure, would not consider
the hollow bore of Gifford's stent 92 to be "substantially closed" in the
unexpanded/initial state (second configuration). See Spec. paras. 11, 12, 21,
34, 39; Figs. IA, IB, 5, 6; see also Appeal Br. 7; Reply Br. 3. Regarding
Gifford's disclosure of a "self-closing stent," Gifford teaches "the closure
device attaches to tissue adjacent the PFO and self-closes to bring the tissues
together ... In some embodiments, the closure device comprises an
expandable, self-closing stent coupled with a plurality of tissue attachment
members." See Gifford, para. 32 (emphasis added); see also id. at para. 15.
Gifford further teaches that
[t]issue attachment members 94 are ... advanced to pierce into
septum primum SP and septum secundum SS tissue, and stent 92
is released from expansive force to allow it to close to its
unexpanded form, thus pulling tissue attachment members 94
together, and thus bringing septum primum SP and septum
secundum SS together.
Id. at para. 86; see also Ans. 5.
In other words, in clip 90's return to its unexpanded configuration,
tissue attachment members 94 attach to tissue adjacent the PFO and self-
close to bring the tissues together as stent 92 self-closes (contracts) to its
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unexpanded/initial form. See Gifford, paras. 86, 87; Figs. 1 lA, 1 lB, 1 lF.
Although Gifford's stent 92 self-closes (contracts) as it returns to its
unexpanded/initial state (second configuration), "the hollow bore defined by
... stent 92 is [still] open" in the unexpanded/initial state (second
configuration). See Gifford, Fig. 1 lA; see also Appeal Br. 7. Further,
Gifford describes stent 92 as an expandable and contractible member not a
"collapsible" member, as recited in claim 1.2 See Gifford, paras. 86, 87;
Figs. 1 lA, 1 lB; see also Appeal Br. 8; Reply Br. 3. Moreover, the
Examiner does not provide sufficient evidence or technical reasoning to
support a determination that Gifford's stent 92 is necessarily a "collapsible"
member. See Final Act. 3; see also Ans. 5. As the Examiner has not
established that each and every limitation of claim 1 is met by Gifford, the
anticipation rejection cannot be sustained. We further do not sustain the
rejection of claims 5-10, which depend from claim 1.
DECISION
We REVERSE the decision of the Examiner to reject claims 1-10.
REVERSED
2 See supra note 1.
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