Ex Parte Nicolo

Patent Trial and Appeal Board

Nov 9, 2016

13078338 (P.T.A.B. Nov. 9, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/078,338 04/01/2011 Enrico Nicolo
36787 7590 11/14/2016
BL YNN L SHIDELER
THE BLK LAW GROUP
3500 BROKKTREE ROAD
SUITE 200
WEXFORD, PA 15090
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.
Nicolo-0701 7249
EXAMINER
LAUER, CHRISTINA C
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
11/14/2016 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):
patents@BLKLawGroup.com
cbelleci@BLKLawGroup.com
blynn@BLKLawGroup.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ENRICO NICOLO
Appeal2014-005801
Application 13/078,338
Technology Center 3700
Before LINDA E. HORNER, THOMAS F. SMEGAL, and LISA M. GUIJT,
Administrative Patent Judges.
HORNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Enrico Nicolo (Appellant) seeks our review under 35 U.S.C. § 134 of
the Examiner's decision rejecting claims 1-20. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
CLAIMED SUBJECT MATTER
Appellant's claimed subject matter relates to "inguinal hernia repair."
Spec., para. 3. Claims 1, 13, and 19 are independent. Claims 1, 13, and 19
are reproduced below.
Appeal2014-005801
Application 13/078,338
1. A method of repairing an inguinal hernia in a patient
comprising the steps of
using a hernia prosthetic having a narrow aspect within the
inguinal canal to proximate the muscle to the ligament structure
while maintaining substantially tension free tissue to provide for
both repair of the inguinal hernia and reconstitution of the pre-
hernia muscle physiology
wherein the step of using the hernia prosthetic having a
narrow aspect within the inguinal canal includes placement of the
patient's spermatic cord to the lateral side of the hernia prosthetic
whereby the spermatic cord is not encircled by prosthetic
material.
13. An inguinal hernia prosthesis configured to repair
an inguinal hernia of a patient, said inguinal hernia prosthesis
including a cord locating structure formed by a recess positioned
along a longitudinal peripheral edge of the prosthesis, wherein
the prosthesis and the cord locating structure is configured to
only surround a portion of the patient's spermatic cord with the
remaining spermatic cord circumference being positioned by the
cord locating structure against the patient's muscle tissue.
19. An inguinal hernia prosthetic configured to repair
an inguinal hernia of a patient, said inguinal hernia prosthesis
having a narrow aspect configured to proximate the muscle to the
ligament structure while maintaining substantially tension free
tissue to provide for both repair of the inguinal hernia and
reconstitution of the pre-hernia muscle physiology, wherein the
length to width ratio of the prosthesis is at least 3.0.
REJECTIONS
The Final Office Action, dated June 13, 2013 ("Final Act."), from
which this appeal is taken, included the following grounds of rejection:
1. Claims 13 and 16 under 35 U.S.C. § 102(b) as anticipated by
Nicolo (US 6,497,650 Bl, issued December 24, 2002).
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Application 13/078,338
2. Claims 17 and 18 under 35 U.S.C. § 102(b) as anticipated by, or
alternatively under 35 U.S.C. § 103(a) as unpatentable over,
Nicolo.
3. Claims 1, 2, and 6-10 under 35 U.S.C. § 103(a) as unpatentable
over Nicolo and Bendavid (US 4,769,038, issued September 6,
1988).
4. Claims 3-5, 11, and 12 under 35 U.S.C. § 103(a) as unpatentable
over Nicolo, Bendavid, and Amid (US 6,610,006 B 1, issued
August 26, 2003).
5. Claims 14, 15, 19, and 20 under 35 U.S.C. § 103(a) as
unpatentable over Nicolo and Amid.
ANALYSIS
First Ground of Rejection
The Examiner found that Nicolo discloses "an inguinal hernia
prosthesis 10 ... [including] a cord locating structure (opening 18) formed
by a recess positioned along a longitudinal peripheral edge of the prosthesis"
as called for in independent claim 13. Final Act. 2 (citing Nicolo, Fig. la).
The Examiner explained:
A longitudinal edge is a direction along an edge or a direction of
an axis, not necessarily directly relating to a length of the edge.
The claim language does not require a specific length to be
associated with the longitudinal peripheral edge and therefore the
recess may be considered to be along the longitudinal peripheral
edge of the width of the prosthesis.
Ans. 2.
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Application 13/078,338
The Specification describes, with respect to the embodiment of
Figure 1, that Appellant's "prosthesis 10 has a longitudinal length 12 and a
width 14." Spec., para. 43. The longitudinal length is described as being
longer than the width. Id. The Specification further describes that
prosthesis 10 includes longitudinally extending edges 32, 42, 52, and 62, and
that cord locating structure 40 is formed in longitudinally extending edge 32.
Id., paras. 54, 56, Fig. 1. Figure 1 shows the longitudinally extending edges
32, 42, 52, 62 along the longitudinal length 12 of prosthesis 10. The
Specification discusses that the location of the cord in the specified location
"helps to protect the cord as the cord will be positioned in a location that will
be avoided with fasteners (sutures or the like)" and that "the structure 40 is
located on the prosthesis 10 to best locate the cord relative to the prosthesis
10 and the physiology." Id., para. 58. As such, the Specification associates
the term "longitudinal" with the lengthwise direction of the prosthesis,
which is the dimension shown in the direction opposite the width and in the
direction of the long axis of the prosthesis.
The Examiner does not provide any support for the broad
interpretation of "longitudinal" relied on in the rejection. In our review, we
found that ordinary meanings of "longitudinal" include: "[ e ]xtending in the
direction of the long axis of the body or a body part" and "[ e ]xtending or
proceeding in the direction of the length of an object; running lengthwise." 1
1 Oxford English Dictionary, definitions l .a. and l .b., available at
http://www.oed.com/view /Entry /11003 9?redirectedFrom= longitudinal#eid,
last accessed November 1, 2016.
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Application 13/078,338
These ordinary meanings, associating "longitudinal" with the length of an
object, are consistent with the manner in which Appellant employed the term
in the Specification. The Examiner's interpretation of "longitudinal edge" as
meaning "along an edge or a direction of an axis" appears to read the term
"longitudinal" entirely out of the claim phrase. As such, we find that the
Examiner's interpretation of "longitudinal peripheral edge" as encompassing
a recess disposed along an edge of the width of the prosthesis is
unreasonably broad.
We agree with Appellant that Nicolo discloses cord opening 18
disposed along a width of prosthesis 10, and that the edge of prosthesis 10
along a width direction is not the claimed "longitudinal peripheral edge of
the prosthesis," as recited in claim 13. Br. 10-11. For this reason, Nicolo
does not disclose by a preponderance of the evidence each and every
element of independent claim 13 or its dependent claim 16. Accordingly,
we do not sustain the rejection of claims 13 and 16 under 35 U.S.C. § 102(b)
as anticipated by Nicolo.
Second Ground of Re} ection
Claims 1 7 and 18 depend from claim 13. The rejection of these
dependent claims relies on the same asserted finding that Nicolo discloses "a
cord locating structure formed by a recess positioned along a longitudinal
peripheral edge of the prosthesis" that we found deficient in the rejection of
claim 13. As such, for the same reasons discussed above for the first ground
of rejection, we likewise do not sustain the rejection of claims 17 and 18
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Application 13/078,338
under 35 U.S.C. § 102(b) as anticipated by, or alternatively under 35 U.S.C.
§ 103(a) as unpatentable over, Nicolo.
Third Ground of Rejection
The Examiner found that Nicolo discloses a method of repairing an
inguinal hernia in a patient as called for in independent claim 1, including
"placement of the patient's spermatic cord to the lateral side of the hernia
prosthetic." Final Act. 4. The Specification equates the lateral side with the
longitudinal side edge of the prosthesis, explaining:
The cord locating structure 40 may be referenced as a non-
encircling lateral cord locating structure. The term lateral in
reference to structure on a prosthesis 10 within the meaning of
the present application will reference structure extending to a
longitudinally extending side edge (e.g.[,] 32, 42, 52 and 62,
described below) of the prosthesis 10.
Spec., para. 56. The Examiner's finding that Nicolo teaches placement of
the patient's spermatic cord to the lateral side of the hernia prosthetic is not
supported by a preponderance of the evidence for the same reasons set forth
above in the analysis of claim 13. Specifically, Nicolo teaches placement of
the patient's spermatic cord in the cord opening 18, which is not disposed on
the lateral side of the prosthesis. Nicolo, col. 3, 11. 43--45, Fig. la. The
Examiner did not rely on Bendavid to cure this deficiency in Nicolo. Final
Act. 4-5 (citing Bendavid for teaching a method of repairing an inguinal
hernia using a prosthetic to proximate the muscle to the tissue to provide for
both repair of the inguinal hernia and reconstitution of the pre-hernia muscle
physiology). Thus, the Examiner has failed to demonstrate how the
combined teachings of Nicolo and Bendavid would have led one having
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Application 13/078,338
ordinary skill in the art to the method of independent claim 1, or its
dependent claims 2 and 6-10. Accordingly, we do not sustain the rejection
of claims 1, 2, and 6-10 under 35 U.S.C. § 103(a) as unpatentable over
Nicolo and Bendavid.
Fourth Ground of Rejection
Claims 3-5, 11, and 12 depend from claim 1. The rejection of these
dependent claims relies on the same asserted finding that Nicolo discloses
"placement of the patient's spermatic cord to the lateral side of the hernia
prosthetic" that we found deficient in the rejection of claim 1. Final Act. 6.
The Examiner does not rely on Amid to cure the deficiency in Nicolo. Id.
(citing Amid to teach the claimed aspect ratio). We further note that Amid,
like Nicolo, shows a cord retaining slit 38 on the short or width side of the
prosthesis opposite the lateral side. Amid, Fig. 6. As such, for the same
reasons discussed above for the third ground of rejection, we likewise do not
sustain the rejection of claims 3-5, 11, and 12 under 35 U.S.C. § 103(a) as
unpatentable over Nicolo, Bendavid, and Amid.
Fifth Ground of Rejection
Claims 14 and 15 depend from claim 13. The rejection of these
dependent claims relies on the same asserted finding that Nicolo discloses "a
cord locating structure formed by a recess positioned along a longitudinal
peripheral edge of the prosthesis" that we found deficient in the rejection of
claim 13. As such, for the same reasons discussed above for the first ground
of rejection, we likewise do not sustain the rejection of claims 14 and 15
under 35 U.S.C. § 103(a) as unpatentable over Nicolo and Amid.
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Independent claim 19 is directed to an inguinal hernia prosthetic
"having a narrow aspect configured to proximate the muscle to the ligament
structure while maintaining substantially tension free tissue to provide for
both repair of the inguinal hernia and reconstitution of the pre-hernia muscle
physiology." Br. 24 (Claims App.). The Examiner found that Nicolo's
prosthesis is configured as claimed. Final Act. 7.2
Appellant contends that Nicolo's prosthesis is not "configured to
proximate the muscle to the ligament structure ... to provide for ...
reconstitution of the pre-hernia muscle physiology." Br. 20 (referring to
similar arguments presented for claim 1 ). In particular, Appellant argues
that Nicolo "merely bridges the defect, which addresses the hernia but does
not attend to anything to reconstitute the muscle physiology." Br. 14-15.
Indeed, in the rejection of method claim 1, the Examiner appears to rely on
Bendavid "to modify Nicolo with a method providing substantially tension
free tissue and reconstitution of the muscle physiology." Final Act. 5. The
Examiner has not explained adequately in the rejection of claim 19 the basis
for the finding that the prosthesis of Nicolo, without any modification, is
"configured to proximate the muscle to the ligament structure while
maintaining substantially free tissue to provide for both repair of the inguinal
hernia and reconstitution of the pre-hernia muscle physiology" as called for
in claim 19. For this reason, we do not sustain the rejection of independent
2 The Examiner relied on Amid to teach the claimed length-to-width ratio of
the prosthesis. Final Act. 7.
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Application 13/078,338
claim 19, or its dependent claim 20, under 35 U.S.C. § 103(a) as
unpatentable over Nicolo and Amid.
DECISION
The decision of the Examiner to reject claims 1-20 is REVERSED.
REVERSED
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