Ex Parte Thill

Board of Patent Appeals and Interferences

Jun 25, 2012

10419412 (B.P.A.I. Jun. 25, 2012)

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

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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
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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