Ex Parte ThillDownload PDFBoard of Patent Appeals and InterferencesJun 25, 201210419412 (B.P.A.I. Jun. 25, 2012) Copy Citation 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. 10/419,412 04/21/2003 Gary A. Thill EV3.058CPC1 1392 68717 7590 06/25/2012 EV3, INC. Attn: Jill Johnson 3033 Campus Drive PLYMOUTH, MN 55441 EXAMINER MENDOZA, MICHAEL G ART UNIT PAPER NUMBER 3734 MAIL DATE DELIVERY MODE 06/25/2012 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 BOARD OF PATENT APPEALS AND INTERFERENCES __________ Ex parte GARY A. THILL __________ Appeal 2011-005426 Application 10/419,412 Technology Center 3700 __________ Before DONALD E. ADAMS, DEMETRA J. MILLS, and LORA M. GREEN, Administrative Patent Judges. GREEN, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134 from the Examiner‟s rejection of claims 27-75. We have jurisdiction under 35 U.S.C. § 6(b). Appeal 2011-005426 Application 10/419,412 2 STATEMENT OF THE CASE According to the Specification, the invention is drawn to “a septal defect occluder which has first and second occluder panels” (Spec. 8). In an embodiment of the invention, the “occluder panels are arranged in cooperative cambered opposition such that the perimeters of the cambered fabric support structures impart a clamping force upon tissue adjacent a tissue defect interposed there between when the occluder is deployed for tissue defect occlusion” (id. at 9). The Specification teaches: [E]ach of the frames 50, 50A of the fabric support structures 32, 62 may be cambered about their minimum dimension (i.e., the internal eyelets 40 do not lay in the same plane as the legs 51, or more specifically, the internal eyelets 40 and perimeter eyelets 44 are not coplanar) so as to, among other things, provide an occluder capable of exerting a clamping force at the perimeter edge of the tissue defect when deployed. (Id. at 19-20.) Claims 27-40, 56-66, and 70-72 are drawn to methods of blocking an internal opening, of which claims 27, 36, and 56 are independent, and claims 41-55, 67-69, and 73-75 are apparatus claims, of which 41 and 49 are independent. A copy of the claims on appeal may be found in the claims appendix to the Appeal Brief. At issue is the limitation of a panel comprising a wire frame being cambered prior to delivery into the patient without being constrained by a catheter, which is required by all of the claims on appeal (see, e.g., App. Br. 1 8-13 and 17). 1 All references to the Appeal Brief are to the Appeal Brief dated June 9, 2010. Appeal 2011-005426 Application 10/419,412 3 The following grounds of rejection are before us for review: Claims 27-75 stand rejected under 35 U.S.C. § 102(e) as being anticipated by Gainor 2 (Ans. 3). We reverse. ANALYSIS We initially note that Appellant argues that the rejection of apparatus claims 41-55, 67-69, 73, and 74 should be withdrawn in view of statements made in an Examiner interview and a second Advisory Action (App. Br. 15- 16). The actions of the Examiner during prosecution, however, are not reviewable on Appeal by the Board, but only by petition to the Director. See, e.g., 37 C.F.R. § 41.31(c), § 1.181(a)(1). The Examiner finds that Gainor “teaches an apparatus and method of blocking an internal opening in a patient” (Ans. 3). Referring to Fig. 1 of Gainor, the Examiner finds that the wire frame of at least one panel of Gainor is cambered (id. at 4-5). The Examiner further finds that “[b]ecause the regions 40 are connected to conjoint disk 50, it would result in at least regions 40 being cambered prior to delivery into the patient without being constrained by a catheter” (id. at 6). Appellant argues that “Gainor does not disclose, teach, or suggest a cambered wire frame as recited in the . . . claims” (App. Br. 18). Appellant asserts that the Examiner‟s reliance on Figure 1 of Gainor is incorrect, as the “illustration is not a reflection of a device prior to delivery, it is a device as deployed” (id.). Appellant thus asserts that the portions shown as being 2 Gainor et al., US 6,911,037 B2, issued Jun. 28, 2005. Appeal 2011-005426 Application 10/419,412 4 cambered by the Examiner in that Figure is based on the device being interfered with by the septum, and in fact Gainor teaches that in the absence of such interference, the frame “„will tend to pull the membrane . . . into a taut, generally planar shape‟” (id. (quoting Gainor, col. 4, ll. 10-17)). As to the Examiner‟s assertion that because region 40 is connected to conjoint disk 50, region 40 must necessarily be cambered prior to delivery, Appellant asserts that the Examiner is misreading the Gainor reference (id. at 20). Appellant asserts that Gainor in fact teaches that because of the overlap of the membranes, the two membranes can maintain their planar shape, and Gainor in fact teaches the use of an additional layer to keep the membranes taut (id.). We conclude that Appellant has the better position. “It is well settled that a claim is anticipated if each and every limitation is found either expressly or inherently in a single prior art reference.” Celeritas Techs. Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998). In general, a limitation is inherent if it is the “„natural result flowing from‟” the explicit disclosure of the prior art. Schering Corp. v. Geneva Pharms., Inc., 339 F.3d 1373, 1379 (Fed. Cir. 2003). “Inherency . . . may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” MEHL/Biophile Int'l. Corp. v. Milgraum, 192 F.3d 1362, 1365 (Fed. Cir. 1999)(quoting In re Oelrich, 666 F.2d 578, 581 (CCPA 1981)). First, we disagree with the Examiner that Figure 1 shows a camber in the wire frame prior to deployment. As noted by Appellant, Figure 1 of Appeal 2011-005426 Application 10/419,412 5 Gainor shows the device as deployed, as S in the Figure refers to the septum (see Gainor, col. 4, ll. 13-15). As to the non-deployed state, the Examiner reasons that as regions 40 are connected to conjoint disk 50 would inherently result in at least regions 40 being cambered prior to delivery into the patient without being constrained by a catheter. Gainor, however, specifically teaches: When the [proximal] frame 24 is in its natural deployed or non- deformed state, it[] serves to hold the membrane 22 taut. In the absence of any interference (such as from the septum S in FIG. 1, the frame 24 will tend to pull the membrane 22 into a taut, generally planar shape and the two occluding disks 20, 30 will abut against one another. (Id. at col. 4, ll. 10-17 (emphasis added).) Gainor also teaches that the distal frame has a “natural, non-deformed shape” as shown in Figure 3 of Gainor. (Id. at col. 5, l. 12). Thus, while, at best, it may be possible that regions 40 being connected to conjoint disk 50 would result in regions 40 being cambered, inherency cannot be established by probabilities or possibilities. Moreover, the Examiner has not pointed to any other teaching in Gainor that would establish that the ordinary artisan would expect regions 40 of the wire frame to be cambered. We are thus compelled to reverse the anticipation rejection as to all of the claims, as all of the independent claims on appeal require a wire frame being cambered prior to delivery into the patient. REVERSED cdc Copy with citationCopy as parenthetical citation