Pierre Bailly et al.

Patent Trials and Appeals Board

Nov 20, 2019

14332496 - (D) (P.T.A.B. Nov. 20, 2019)

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.
14/332,496 07/16/2014 Pierre Bailly H-
SP-00058CON(00020-91PCT
9485
158229 7590 11/20/2019
Covidien LP
Attn: IP Legal
5920 Longbow Drive
Mail Stop A36
Boulder, CO 80301-3299
EXAMINER
LAUER, CHRISTINA C
ART UNIT PAPER NUMBER
3771
NOTIFICATION DATE DELIVERY MODE
11/20/2019 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):
docket@wrciplaw.com
eofficeaction@appcoll.com
rs.patents.two@medtronic.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

Ex parte PIERRE BAILLY and GENEVIÈVE DOUCET

Appeal 2019-002341
Application 14/332,496
Technology Center 3700

Before MURRIEL E. CRAWFORD, PHILIP J. HOFFMANN, and
BRADLEY B. BAYAT, Administrative Patent Judges.

BAYAT, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the decision
rejecting claims 10, 12–16, 18–25, and 27, which are all the claims pending
in the application. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as “the
Assignee of record, Sofradim Production.” Appeal Br. 1.
Appeal 2019-002341
Application 14/332,496

2
CLAIMED SUBJECT MATTER
The claimed invention is directed to a “Surgical instrument for
deploying a prosthesis.” Spec., Title. Sole independent claim 10,
reproduced below, is representative of the subject matter on appeal.
10. A surgical instrument for deploying a prosthesis intended
to repair a hernial defect comprising:
at least one sheet made of a flexible resilient material,
said sheet continuously overlapping itself one or more times so
as to define a plurality of levels forming a spiral, wherein a
central hole passes through said plurality of levels and said
spiral is configured to adopt an idle configuration in which the
plurality of levels are in contact with each other.
REJECTION
Claims 10, 12–16, 18–25, and 27 are rejected under 35 U.S.C.
§ 102(b) as anticipated by Shaw et al. (US 6,080,182, issued June 27, 2000)
(“Shaw”).
OPINION
In rejecting independent claim 10 as anticipated by Shaw, the
Examiner finds Shaw discloses the claimed surgical instrument at
Figures 13, 32B, and 40C. Answer 2. As to the “spiral being configured to
adopt an idle configuration in which the plurality of levels are in contact
with each other,” the Examiner finds Shaw’s examples are “capable of being
compressed to achieve this configuration, which is an idle configuration.”
Id. at 2–3. Specifically, the Examiner explains, “the device may be
compressed while in the spiral memory induced state, to form a device
reading on the limitations as claimed in which the spiral is flat and the
plurality of levels being in contact with each other.” Id. at 7–8. In addition,
Appeal 2019-002341
Application 14/332,496

3
the Examiner determines that because “Shaw discloses all of the structural
limitations of the device, and may include a compressed or expanded state, it
is concluded that Shaw is inherently capable of performing the [claimed]
function.” Id. at 8.
Appellant argues:
given that claim 10 recites that the “spiral is configured to adopt
an idle configuration in which the plurality of levels are in
contact with each other,” and does not recite that the spiral is
capable of adopting an idle configuration in which the plurality
of levels are in contact with each other,[] Appellant maintains
that the alleged physical capability of Shaw’s self-expanding
sealing device to be “compressed to achieve [the claimed]
configuration,” as asserted by the Office, is insufficient to
provide a prima facie case of anticipation.
Appeal Br. 19; see also Reply Br. 2 (“Shaw does not expressly or inherently
teach a spiral configured to adopt an idle configuration in which the plurality
of levels (a, b, c) are in contact with each other.”).
We agree with Appellant.
The Federal Circuit has held that “configured to” language requires
that the specific element is not only “capable of” performing the recited
function, but is also specifically designed to accomplish the function
claimed. See Aspex Eyewear, Inc. v. Marchon Eyewear, Inc., 672 F.3d.
1335, 1349 (Fed. Cir. 2012) (The phrase “configured to” is construed more
narrowly than “capable of” such that the structure must be designed to
accomplish the specified objective, not simply that it can be made to serve
that purpose.). Cf. Spec. 2:18–21 (“Due to the resilience of said sheet, the
spiral is able to adopt a substantially flat configuration, in which each level
Appeal 2019-002341
Application 14/332,496

4
is in contact with the adjacent level, corresponding to an idle configuration
in which the spiral does not undergo significant stresses.”)
The Examiner has not shown that Shaw’s device includes a “spiral
configured to adopt an idle configuration in which the plurality of levels are
in contact with each other,” because the Examiner has not established that
Shaw’s device is specifically designed to adopt an idle configuration, as
required by claim 10. For example, the Examiner does not point to a
compressed configuration in Shaw, and does not show that Shaw expressly
describes compressing its device to a compressed state. As such, the
Examiner has not established that Shaw expressly anticipates claim 10.
As to the Examiner’s assertion that Shaw is “inherently capable of
performing the function” (Answer 8), this is insufficient to establish
anticipation of claim 10. To establish inherency, the extrinsic evidence must
make clear that the missing descriptive matter is necessarily present in the
thing described in the reference, and that it would be so recognized by
persons of ordinary skill. In re Robertson, 169 F.3d 743, 745 (Fed. Cir.
1999) (citations omitted) (internal quotation marks omitted). Inherency,
however, may not be established by probabilities or possibilities. Id. The
mere fact that a certain thing may result from a given set of circumstances is
not sufficient. Id. The Examiner has not established that an idle
configuration, as claimed, is necessarily present in Shaw. As discussed
above, when claim 10 is properly construed, the “configured to” language
requires more than mere capability. To conclude an idle configuration as
claimed is necessarily present in Shaw requires mere speculation, which is
insufficient to establish anticipation based on inherency. “[A]bsence from
Appeal 2019-002341
Application 14/332,496

5
the reference of any claimed element negates anticipation.” Kloster
Speedsteel AB v. Crucible Inc., 793 F.2d 1565, 1571 (Fed. Cir. 1986).
For these reasons, we do not sustain the anticipation rejection under
35 U.S.C. § 102(b) over Shaw.
CONCLUSION
The Examiner’s rejection is REVERSED.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
10, 12–16,
18–25, 27
102(b) Shaw 10, 12–16,
18–25, 27

REVERSED