Ex Parte Pavcnik et al

Patent Trial and Appeal Board

Sep 21, 2016

12533731 (P.T.A.B. Sep. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/533,731
48003 7590
EGL/Cook - Chicago
PO BOX 10395
CHICAGO, IL 60610
07/31/2009
09/21/2016
FIRST NAMED INVENTOR
Dusan Pavcnik
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.
8627-2553(PA-6128-PCT/US) 8155
EXAMINER
LYNCH, ROBERT A
ART UNIT PAPER NUMBER
3731
MAILDATE DELIVERY MODE
09/21/2016 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)
U-NITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte DUSAN PAVCNIK and KURT J. TEKULVE
Appeal2015-000159
Application 12/533,731
Technology Center 3700
Before JILL D. HILL, JEFFREY A. STEPHENS, and
PAUL J. KORNICZKY, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 seek our review under 35 U.S.C. § 134(a) from the
Examiner's Final Office Action ("Final Act.") rejecting claims 58---61 and
63-75. Claims 1-57 and 62 are canceled (App. Br. 10-11), and claims 76
and 77 are withdrawn from consideration (Final Act. 1 ). We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 The real party in interest is identified as Cook Medical Technologies LLC.
App. Br. 2.
Appeal2015-000159
Application 12/533,731
Claimed Subject Matter
Claim 58, reproduced below, is illustrative of the claimed subject
matter:
58. A closure device comprising:
only one circumferential frame defining a single frame
plane;
a first crossbar extending across the frame, the first
crossbar having a central portion and terminal crossbar ends
connectively linked to separate sites on the frame;
a bar-shaped first anchor containing two terminal first
anchor ends and a central portion attached to the central portion
of the first cross bar; and
a single sheet of biocompatible material, the sheet of
biocompatible material having a periphery attached to the frame,
wherein each of the frame, the first crossbar, and the first
anchor comprises at least one flexible, substantially linear
structure,
wherein the first anchor is only indirectly connected to the
frame via the first crossbar and
wherein the first crossbar is configured to extend in an arc
concave to the frame plane when deployed, and wherein the first
anchor is configured to extend in an arc convex to the frame
plane when deployed.
Rejections
1. Claims 58, 59, 63---66, 72, 74, and 75 stand rejected under 35
U.S.C. § 102(b) as anticipated by Marino et al. (US 2005/0065548 Al,
published Mar. 24, 2005) ("Marino '548"). Final Act. 3-5.
2. Claims 60, 61, and 67-71 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Marino '548 and Marino et al. (US 6,206,907
Bl, issued Mar. 27, 2001) ("Marino '907"). Final Act. 6-8.
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Appeal2015-000159
Application 12/533,731
3. Claim 73 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Marino '548 and Chanduszko (US 2004/0073242 Al,
published Apr. 15, 2004). Final Act. 9.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments (App. Br. 5-9; see also Reply Br. 2-3). We concur with
Appellants' argument (App. Br. 6, 8) that independent claims 58, 70, and 74
each limit the number of frames to one, and that Marino '548 discloses
closure devices with two frames.
The Examiner concludes that, because claim 58 uses the open-ended
transitional phrase "comprising," "claim 58 may be interpreted as being
inclusive of an additional, unrecited delivery bar structure ( 48; see Marino,
Fig. 3a above)." Ans. 4. Although the Examiner is correct that the
transitional phrase "comprising" allows the claims to encompass a device
with additional structures not recited in the claim, "' [ c ]omprising' is not a
weasel word with which to abrogate claim limitations." Spectrum Int 'l, Inc.
v. Sterilite Corp., 164 F.3d 1372, 1380 (Fed. Cir. 1998). Here, the
independent claims are specifically limited to "only one circumferential
frame" (claims 58 and 74) and "only one frame" (claim 70), and we do not
interpret the transitional phrase "comprising" to reach into each limitation of
the claims to broaden the scope of each limitation. For example, we decline
to allow the term "comprising" to reach into the limitation "only one frame"
such that the limitation is met by prior art having closure devices with more
than one frame. See Dippin 'Dots, Inc. v. Mosey, 476 F.3d 1337, 1343 (Fed.
Cir. 2007) ("The presumption raised by the term 'comprising' does not reach
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Application 12/533,731
into each of the six steps to render every word and phrase therein open-
ended---especially where, as here, the patentee has narrowly defined the
claim term it now seeks to have broadened.").
Appellants' Specification indicates that a frame must support a sheet
of biocompatible material and be used to cover a septal opening, such as a
patent foramen ovale (PFO). Spec. i-f 77. Both of Marino '548's hoops 46
and 48 are covered with sheets of material and cover the septal opening. See
Marino '548 Fig. 3a, i-fi-146-47. Indeed, Figures 1-3 of Marino '548 do not
show any differences between hoop 48, which the Examiner calls an
additional "delivery bar structure," and hoop 46, which the Examiner
identifies as the claimed "frame." Ans. 3. Thus, hoop 46 must be
considered an additional frame rather than an additional structure of the
closure device not recited in the claim. Because claims 58, 70, and 74 are
limited to only one frame, the Examiner's rejections of these claims are in
error. Accordingly, we do not sustain the rejection of claims 58 and 74 as
anticipated by Marino '548 and the rejection of claim 70 as obvious over
Marino '548 and Marino '907.
The rejections of the dependent claims rely on the Examiner's finding
that Marino '548 discloses "only one circumferential frame" as recited in
independent claims 58 and 74, and teaches "only one frame" as recited in
independent claim 70. Final Act. 4--9. Thus, for the same reasons as the
independent claims, we do not sustain the rejections of dependent claims
59---61, 63---69, 71-73, and 75.
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Application 12/533,731
DECISION
We reverse the Examiner's decision to reject claims 58---61 and 63-75.
REVERSED
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