Ex Parte Glick et al

Patent Trial and Appeal Board

Aug 4, 2017

13951495 (P.T.A.B. Aug. 4, 2017)

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.
13/951,495 07/26/2013 Jonathan Glick H-US-03235CIP4(203-8446PC 5262
50855 7590
Covidien LP
60 Middletown Avenue
Mailstop 54, Legal Dept.
North Haven, CT 06473
EXAMINER
SCHERBEL, TODD J
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
08/08/2017 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):
SurgicalUS@covidien.com
medtronic_mitg-si_docketing@cardinal-ip.com
mail @ cdfslaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JONATHAN GLICK, RICHARD HAMMOND,
OFEK LEVIN, and ARIE LEVY
Appeal 2016-004019
Application 13/951,495
Technology Center 3700
Before ERIC B. GRIMES, JEFFREY N. FREDMAN, and
RACHEL H. TOWNSEND, Administrative Patent Judges.
FREDMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal1 under 35U.S.C. § 134 involving claims to a system
for closing an aperture in biological tissue. The Examiner rejected the
claims as anticipated. We have jurisdiction under 35 U.S.C. § 6(b). We
reverse.
Statement of the Case
Background
“After the conventional surgery, patients frequently cannot return to a
full range of activity and work schedule for a month or more. Accordingly,
1 Appellants identify the Real Party in Interest as Covidien LP, a subsidiary
of Medtronic pic (see Br. 1).
Appeal 2016-004019
Application 13/951,495
medical science has sought alternative techniques that are less traumatic to
the patient and provide for more rapid recovery” (Spec. 14).
The Claims
Claims 1—8 are on appeal. Claim 1 is representative and reads as
follows:
1. A system for closing an aperture in biological tissue, the
system comprising:
a proximal portion adapted to remain outside a body;
a distal portion adapted to be inserted into the body, the
distal portion including at least one frame arm;
at least one clip rotatably attached to the at least one
frame arm and configured to releasably retain a surgical implant
to the at least one frame arm, the at least one clip including at
least one locking structure, the at least one locking structure
including a flat surface; and
a lock bar, wherein at least a portion of the lock bar
selectively engages the at least one locking structure of the at
least one clip to lock the at least one clip in a closed position by
inhibiting movement of the at least one clip when the lock bar
is in a locked position, and wherein the lock bar allows the at
least one clip to move to an open position when the lock bar is
in an unlocked position, wherein the at least one clip is
rotatable in the open position.
The Issue
The Examiner rejected claims 1-8 under 35 U.S.C. § 102(a) as
anticipated by Yoon2 (Final Act. 2-4).
2 Yoon, US 5,653,718, issued Aug. 5, 1997.
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Application 13/951,495
The Examiner finds “Yoon discloses a system (FIG. 13—17) capable
of closing an aperture in a biological tissue including a proximal portion (11
or proximal portion of 21), a distal portion (21 or distal portion of 21), at
least one clip (131), and a lock bar (141)” (Final Act. 3). The Examiner
finds “sleeve 11 can reasonably be considered the proximal portion and
housing 21 can reasonably be considered the distal portion. With this
interpretation, sleeve 11 is capable of remaining outside a body and housing
21 is capable of being inserted into the body” (Final Act. 4).
The issues with respect to this rejection are: Does the evidence of
record support the Examiner’s conclusion that Yoon teaches “a distal portion
adapted to be inserted into the body . . . including at least one frame arm”
and “at least one clip rotatably attached to the at least one frame arm” as
required by claim 1 ?
Findings of Fact
1. The Specification teaches:
a system for closing an aperture in a biological tissue, the
system comprising a proximal portion adapted to remain
outside a patient body, a distal portion adapted to be inserted
into the patient body, the distal portion including at least one
frame arm, at least one clip connected to the at least one frame
arm and configured to releasably retain a surgical implant to the
frame arm.
(Spec. 151).
2. The Specification teaches:
In order to allow tight spreading of the implant 210 during
surgery, said stapling process is preformed [sic] while implant
deployment device 100 is not completely opened; as a result,
once implant deployment device is completely opened inside
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Application 13/951,495
the abdominal cavity, it is stretched beyond its original
dimension (as was during stapling) therefore tight spreading is
obtained.
(Spec. 1127).
3. The Specification teaches:
staple return spring 500 is needed in order to return clip 107
into horizontal position immediate [ly] after detachment from
the implant 210; this is necessary in order prevent damage to
internal organs by the sharp tip of clip 107 and in order to
prevent clip 107 from being caught at the trocar or at the tissue
during device extraction.
(Spec. 1128).
4. Yoon teaches “anchoring a cannula in an anatomical cavity wall
with the use of one or more tissue penetrating members carried by the
cannula” (Yoon 2:39-41).
5. Figure 1 of Yoon is reproduced below:
“A cannula anchoring system 10 according to the present invention is
illustrated in FIG[]. 1 ... . Portal sleeve 11 has a distal end 17 for
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Application 13/951,495
being disposed within the anatomical cavity and a proximal end 19 for being
disposed externally of the cavity with the sleeve 11 inserted through the
cavity wall” (Yoon 5:50-57).
Principles of Law
“Above all, the broadest reasonable interpretation must be reasonable
in light of the claims and specification.” PPC Broadband, Inc. v. Corning
Optical Commc’ns RL\ LLC, 815 F.3d 747, 755 (Fed. Cir. 2016).
“The broadest reasonable interpretation of a claim term cannot be so
broad as to include a configuration expressly disclaimed in the
specification.” In re Man Machine Interface Technologies LLC, 822 F.3d
1282, 1286 (Fed. Cir. 2016).
Analysis
Appellants contend that “reversing the orientation of Yoon’s
anchoring system, as proposed by the Examiner, is disingenuous and clearly
contrary to Yoon’s disclosure” (Br. 5—6). Appellants contend “Yoon fails to
disclose ‘a distal portion adapted to be inserted into the body, the distal
portion including at least one frame arm; at least one clip rotatably
attached to the at least one frame arm,’ as recited in independent claim 1”
{id. at 6). Appellants contend “As such, Yoon’s needles 31 are deployed
from housing 21 which is outside of the cavity wall 49 and not from a distal
portion that is adapted to be inserted into the cavity 51” (id. at 6).
The Examiner responds:
With the distal portion of housing 21 placed against an internal
anatomical cavity, the proximal portion of housing 21 is
capable of remaining outside a body due to its length such that
the proximal portion of housing 21 is capable of being outside
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Appeal 2016-004019
Application 13/951,495
of a body with the distal portion of housing 21 being inserted
into the body.
(Ans. 3).
We find that Appellants have the better position. Claim 1 requires the
distal portion of the device that includes the clip and frame elements to be
“adapted to be inserted into the body.” We interpret the phrase “adapted to”
consistent with the Federal Circuit’s decision in In re Man Machine, which
looked to the Specification to determine whether “adapted to” was broadly
equivalent to “capable of’ or had a narrower meaning. In re Man Machine,
822 F.3d at 1286. Here, we agree with Appellants that we construe the
limitation “adapted to be inserted into the body” as requiring the device be
designed for the clip and frame arm elements to be placed within the body,
and the proximal portion remain outside the body (see FF 1). Indeed, the
Specification describes the operation of the implant device as a deployment
device that is involved in placement of an implant and as such operates
within the body, as well as describing the operation of the clips within the
body as an integral part of that placement (FF 2—3). This clearly
demonstrates that the “adapted to” requirement is more than simply being
“capable of’ being inserted but requires specific procedures for function.
We also agree with Appellants that Yoon directly teaches the reverse
orientation, with portal sleeve 11 inserted into the body and proximal end 19
remaining outside the body (FF 5).
Moreover, even if we reversed the orientation of Yoon, as proposed
by the Examiner (Ans. 3), while that would result in the frame and clip
portion inserted into the body, it would then result in sleeve 11 and
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Appeal 2016-004019
Application 13/951,495
penetrating member 15 pointing outward from the body, with a sharp point
facing the surgeon. Such a design would be dangerous to the surgical team
and the Examiner provides no reason why such an orientation would be
employed.
Consequently, we find the Examiner’s interpretation of claim 1
unreasonable and conclude that Yoon does not anticipate.
Conclusion of Law
The evidence of record does not support the Examiner’s conclusion
that Yoon teaches “a distal portion adapted to be inserted into the body . . .
including at least one frame arm” and “at least one clip rotatably attached to
the at least one frame arm” as required by claim 1.
SUMMARY
In summary, we reverse the rejection of claims 1—8 under 35 U.S.C. §
102(a) as anticipated by Yoon.
REVERSED
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