Ex Parte Mamo et al

Patent Trial and Appeal Board

Apr 9, 2013

11152898 (P.T.A.B. Apr. 9, 2013)

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.
11/152,898 06/14/2005 George Mamo 7061612001 7289
112654 7590 04/09/2013
Bingham McCutchen LLP
2020 K Street, NW
Washington, DC 20006
EXAMINER
BURK, CATHERINE E
ART UNIT PAPER NUMBER
3735
MAIL DATE DELIVERY MODE
04/09/2013 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 GEORGE MAMO and MICHAEL F. WEISER
__________

Appeal 2011-013400
Application 11/152,898
Technology Center 3700
__________

Before ERIC GRIMES, ERICA A. FRANKLIN, and ANNETTE R.
REIMERS, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a system
for treating urinary incontinence, which have been rejected for anticipation
and obviousness. We have jurisdiction under 35 U.S.C. § 6(b). We reverse.
STATEMENT OF THE CASE
The Specification states that a “popular treatment of SUI [stress
urinary incontinence] uses a surgical sling placed under the bladder neck or
the mid-urethra to provide a urethral platform” (Spec. 1:27-28).
Claims 54-68 are on appeal. Claim 54 is representative:
Appeal 2011-013400
Application 11/152,898

2
54. A system for the treatment of urinary incontinence, comprising:
a sling having first and second ends;
first and second anchors, wherein the first end of the sling interfits
within a slot in the first anchor, and the second end of the sling
interfits within a slot in the second anchor,
each of said first and second anchors comprising a body having
a proximal end, a distal end, and a through lumen
extending therebetween, each of said first and second
anchors further comprising at least one barb projecting
radially therefrom; and
a delivery device for delivering said sling within the body of a patient,
said delivery device comprising a shaft comprising a distal
section that has an outer diameter that is less than a diameter of
said shaft at a location immediately proximal to the distal
section, wherein the distal section of said shaft is configured to
extend through the through lumen of each of said first and
second anchors.

Claim 68, the only other independent claim, is also directed to a
system that includes a sling having ends that interfit within slots in first and
second tissue anchors (see Appeal Br. 17-18 (Claims Appendix)).
The claims stand rejected as follows:
• Claims 54-57 and 62-67 under 35 U.S.C. § 102(b) as anticipated by
Browning1 (Answer 4);
• Claim 58 under 35 U.S.C. § 103(a) as obvious based on Browning
(Answer 5); and
• Claims 59-61 and 68 under 35 U.S.C. § 103(a) as obvious based on
Browning and Gellman2 (Answer 6).

1 Browning, WO 02/30293 A1, Apr. 18, 2002.
2 Gellman et al., US 2002/0156487 A1, Oct. 24, 2002.
Appeal 2011-013400
Application 11/152,898

3
The same issue is dispositive for all of the rejections. The Examiner
finds that Browning discloses a system meeting all of the limitations of
claim 54 (Answer 4), including “anchors [that] are associated with the sling
ends by crimping a tube around a recessed portion -44- of the tissue anchor
(p. 9, line 30-p. 10, line 2 and fig. 7B)” (id. at 5). The Examiner reasons that
“Dictionary.com defines the word ‘slot’ as ‘a narrow elongated depression
or groove’. Element -44- is defined as a recessed portion and is shown in
fig. 7B as an elongated depression or groove encircling the anchor.
Accordingly, the recessed portion is considered to be a slot as claimed by
applicant.” (Id.)
Appellants argue that the Specification describes element 196 shown
in Figures 4A and 4B as a slot (Reply Br. 33), and “clearly distinguishes
between an embodiment including a ‘slot,’ and an embodiment (as shown in
Fig. 3A) where the sling is wrapped around the end of the anchor” (id. at 4).
Appellants argue that
[o]ne of ordinary skill in the art . . . would not consider element
-44- in [Browning’s] Figure 7B to disclose a structure that
would be construed as a “slot.”. . . What’s more, to interpret
“slot” to cover an embodiment in which the sling is wrapped
around the end of the anchor, and affixed with a crimped wire,
would be interpreting the term in a manner completely
inconsistent with plain meaning of “slot[.]”
(Id.)
We agree with Appellants that a preponderance of the evidence does
not support the Examiner’s finding that Browning’s system includes a sling

3 The Answer includes new grounds of rejection (Answer 3). Appellants
responded to the new grounds of rejection in the Reply Brief.
App
App

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Appeal 2011-013400
Application 11/152,898

5
As we understand it, the Examiner finds that “recessed portion 44” of
Browning’s anchor is a “slot,” as recited in claim 54, based on the depiction
in Figure 7B of element 44 as a recessed area with areas having slightly
thicker walls proximal and distal to it. However, Browning does not use the
term slot, or a synonym of it, to describe element 44. In addition, while
Figure 7B seems to depict areas with thicker walls both proximal and distal
to recessed portion 44, Figure 7A does not: in Figure 7A, recessed portion
44 appears to extend all the way to the rear end 40 of the anchor. Thus, the
Examiner’s finding that recessed portion 44 would have been considered a
“slot” by a person of ordinary skill in the art is not supported by a
preponderance of the evidence of record.
“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., 814 F.2d 628, 631
(Fed. Cir. 1987). “A reference may anticipate inherently if a claim
limitation that is not expressly disclosed ‘is necessarily present, or inherent,
in the single anticipating reference.’. . . The inherent result must inevitably
result from the disclosed steps; ‘[i]nherency . . . may not be established by
probabilities or possibilities.’” In re Montgomery, 677 F.3d 1375, 1379-80
(Fed. Cir. 2012) (citations omitted, alterations to second quote in original).
For the reasons discussed above, Browning does not expressly
disclose that element 44 is a slot. The Examiner has not provided evidence
or technical reasoning to show that Browning’s recessed portion 44 would
inherently – that is, necessarily – have taken the form of a slot. Thus, the
Examiner has not provided adequate evidence to support the finding that
Appeal 2011-013400
Application 11/152,898

6
Browning discloses a product meeting all of the limitations of claim 54. The
rejection of claims 54-57 and 62-67 for anticipation is reversed.
The rejections based on 35 U.S.C. § 103(a) also rely on the
Examiner’s finding that Browning discloses anchors having a slot (Answer
5-7). We therefore reverse the rejections under § 103(a) for the reasons
discussed above.
SUMMARY
We reverse all of the rejections on appeal.

REVERSED

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