Jacob A. Goble et al.

Patent Trials and Appeals Board

Jul 31, 2019

13838166 - (D) (P.T.A.B. Jul. 31, 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.
13/838,166 03/15/2013 Jacob A. Goble 25931-0059001 / MP/456 7729
133414 7590 07/31/2019
Faegre Baker Daniels - W.L. Gore
2200 Wells Fargo Center
90 South Seventh Street
Minneapolis, MN 55402-3901
EXAMINER
WEISBERG, AMY REGINA
ART UNIT PAPER NUMBER
3649
NOTIFICATION DATE DELIVERY MODE
07/31/2019 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):
patentdocketing@faegrebd.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JACOB A. GOBLE, BRANDON A. LURIE,
STEVEN J. MASTERS, SCOT K. MATHENA, and
RICHARD L. McCLURE1
____________________

Appeal 2018-008065
Application 13/838,166
Technology Center 3600
____________________

Before JENNIFER D. BAHR, FREDERICK C. LANEY, and
BRENT M. DOUGAL, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 122, 124, 127–129, 131, 134–136, 138, 140–144,
148–178, 180, and 183–185.2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 W.L. GORE & ASSOCIATES, INC. (Appellant) is the applicant as
provided in 37 C.F.R. § 1.46 and is identified as the real party in interest.
Appeal Br. 2.
2 The Examiner withdrew the rejection of claims 123, 125, 130, 132, 137,
145–147, 179, and 181. Ans. 2.
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THE CLAIMED SUBJECT MATTER
Claims 122 and 129, reproduced below, are illustrative of the claimed
subject matter.
122. A medical device for sealing a defect or structure in
tissue, the medical device comprising:
a wire frame that includes a plurality of wound wires that
each extend from a proximal end of the wire frame to a distal
end of the wire frame, the plurality of wound wires being
configured to move substantially independently of adjacent
wires to adapt to a shape of a defect, the plurality of wound
wires forming:
a first eyelet arranged near the proximal end of the wire
frame;
a second eyelet arranged near the distal end of the wire
frame;
a first occluding member having a nominal diameter
from 27 mm to 48 mm;
a second occluding member having a nominal diameter
from 27 mm to 48 mm;
a defect-occupying portion disposed between the first
occluding member and the second occluding member, wherein
the defect-occupying portion comprises a nominal diameter
from 17 mm to 36 mm, and
each of the plurality of wound wires includes a first
generally linear segment and a first generally curved segment
that define a petal of the first occluding member, a second
generally linear segment and a second generally curved
segment that define a petal of the second occluding member, a
third generally linear segment, a fourth generally linear
segment, a third generally curved segment disposed between
the third generally linear segment and the fourth generally
linear segment that define the defect-occupying portion;
a sealing member in contact with the frame; and
a non-metal attachment member arranged through one of
the first eyelet and the second eyelet and configured to interface
with a delivery apparatus.

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129. A medical device for sealing a defect or structure in a
heart, the medical device comprising:
a wire frame that includes a plurality of wound wires that
each extend from a proximal end of the wire frame to a distal
end of the wire frame, the plurality of wound wires being
configured to move substantially independently of adjacent
wires to adapt to a shape of a defect, the plurality of wound
wires forming:
a first eyelet arranged near the proximal end of the wire
frame;
a second eyelet arranged near the distal end of the wire
frame;
a first occluding member having a nominal diameter
from 27 mm to 48 mm;
a second occluding member having a nominal diameter
from 27 mm to 48 mm;
a defect-occupying portion disposed between the first
occluding member and the second occluding member, wherein
the defect-occupying portion comprises a nominal diameter
from 17 mm to 36 mm, and
each of the plurality of wound wires includes a first
generally linear segment and a first generally curved segment
that define a petal of the first occluding member, a second
generally linear segment and a second generally curved
segment that define a petal of the second occluding member, a
third generally linear segment, a fourth generally linear
segment, a third generally curved segment disposed between
the third generally linear segment and the fourth generally
linear segment that define the defect-occupying portion, and a
first outer peripheral edge section extending between the
first generally curved segment and the third generally linear
segment and a second outer peripheral edge section extending
between the second generally curved segment and the fourth
generally linear segment;
a sealing member in contact with the frame; and
a non-metal attachment member arranged through one of
the first eyelet and the second eyelet and configured to interface
with a delivery apparatus.
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THE REJECTION
Claims 122, 124, 127–129, 131, 134–136, 138, 140–144, 148–178,
180, and 183–185 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Aurilia (US 2010/0324652 A1, published Dec. 23, 2010) and Van
Orden (US 2010/0324538 A1, published Dec. 23, 2010). See Non-Final
Act. 2–53; Ans. 2.3

DISCUSSION
Appellant argues the patentability of the claims involved in this appeal
without regard to any particular claim. Appeal Br. 16–22. All but one of the
arguments presented by Appellant are pertinent to all of the claims involved
in this appeal. See id. Appellant’s argument on page 21 of the Appeal Brief
regarding peripheral edge sections is pertinent only to independent claims
129, 169, 172, and 175, as well as their dependent claims, because only
these claims contain limitations directed to peripheral edge sections. See
Appeal Br. 25–45 (Claims App.). We select claim 122 as representative of
the group of claims that do not recite peripheral edge sections and claim 129
as representative of the group of claims that do recite peripheral edge
sections; claims 124, 127, 128, 136, 138, 140–144, 148–168, 178, 180,
and 183–185 stand or fall with claim 122; and claims 131, 134, 135, and
169–177 stand or fall with claim 129. See 37 C.F.R. § 41.37(c)(1)(iv)
(permitting the Board to select a single claim to decide the appeal as to a
single ground of rejection of a group of claims argued together).

3 We refer herein to the Non-Final Action (“Non-Final Act.”) dated
November 24, 2017.
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Claims 122, 124, 127, 128, 136, 138, 140–144, 148–168,
178, 180, and 183–185
The Examiner’s findings explaining how the elements of claim 122
read on the structure of Aurilia are set forth on pages 2–4 of the Non-Final
Action. The Examiner initially found that “Aurilia fails to teach a non-metal
attachment member arranged through one of the first eyelet and the second
eyelet and configured to interface with a delivery apparatus” and relied on
Van Orden for this feature. Non-Final Act. 3 (citing Van Orden ¶¶ 47–50).
Appellant, correctly, pointed out that paragraphs 47–50 of Van Orden,
on which the Examiner relies for the non-metal attachment member, are
identical to paragraphs 47–50 of Aurilia. Appeal Br. 17. Moreover, Figure
1 of Van Orden and Figure 1 of Aurilia, which paragraphs 47–50 of each of
the references describe, are at least substantially, if not wholly, identical. In
other words, Aurilia contains the very disclosure for which the Examiner
relies on Van Orden in the rejection.4
The Examiner, agreeing with Appellant that the disclosure of
paragraphs 47–50 of Van Orden are identical to paragraphs 47–50 of
Aurilia, finds that “Aurilia does in fact teach a non-metal attachment
mechanism.” Ans. 4. Thus, the Examiner finds that Aurilia in fact
anticipates the subject matter of claim 122 and states that, although an
obviousness rejection under 35 U.S.C. § 103(a) is “still proper,” a rejection
under 35 U.S.C. § 102 “would also have been proper.” Id. The Examiner
points out that the fact that Aurilia anticipates the subject matter of claim
122 does not change the basic thrust of the rejection and that Appellant has

4 Notably, paragraphs 86–89 of Appellant’s Specification, which describe an
embodiment of the present invention, contain the same disclosure set forth in
paragraphs 47–50 of Aurilia and Van Orden.
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had an opportunity to react to this rejection. Id. The Examiner is correct in
this regard. It is well settled that “anticipation is the epitome of
obviousness.” In re McDaniel, 293 F3d. 1379, 1385 (Fed. Cir. 2002)
(quoting Connell v. Sears Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir.
1983)); In re Fracalossi, 681 F.2d 792, 794 (CCPA 1982). In affirming a
multiple reference rejection under 35 U.S.C. § 103, the Board may rely on
fewer than all of the references relied on by the Examiner in an obviousness
rationale without designating it as a new ground of rejection. In re Bush,
296 F.2d 491, 496 (CCPA 1966).
Appellant also argues that the Examiner has not presented “a valid
rationale” for combining Aurilia and Van Orden because the “proposed
combination would attempt to fix a problem that is not an issue in [Aurilia]
as [Aurilia] already teaches an attachment mechanism to a delivery system.”
Appeal Br. 21–22. This argument is unavailing because, as discussed above,
Aurilia discloses the features for which the Examiner relies on Van Orden,
and, thus, no combination is required.
Appellant argues that the structure described in paragraphs 47–50 of
Aurilia or Van Orden cited by the Examiner does not include a non-metal
attachment member as claimed. Appeal Br. 17–18. Appellant states that the
claims require that the “non-metal attachment member is arranged through
one of the first eyelet and the second eyelet and configured to interface with
a delivery apparatus.” Id. at 17. Appellant argues that locking loop 111,
which provides attachment to the delivery system, is a portion of the metal
wires of the frame, and, thus, is not a non-metal attachment member. Id.
Appellant contends that the Examiner does not identify retrieval cord 110,
described in paragraph 50 of Aurilia and Van Orden, as the non-metal
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attachment member, but, according to Appellant, even if the Examiner had
identified retrieval cord 110, it “is a part of the delivery system and not part
of the device as is described in the claims.” Id. at 17–18.
Appellant’s arguments regarding locking loop 111and retrieval cord
110 are unavailing because the Examiner relies on second tube 108 as the
non-metal attachment member. See Ans. 4–5. The Examiner finds that
second tube 108 may be fabricated from a biocompatible material including
a polymer, such as “PEEK (polyetheretherketone)” and “is threaded through
the eyelets of sealing device 100 to hold sealing device 100 on the delivery
system and to provide stability while deploying the sealing device 100.” Id.
at 5 (citing Aurilia ¶ 49). Thus, Aurilia’s second tube 108 satisfies the
limitations set forth in claim 122, namely, being “arranged through one of
the first eyelet and the second eyelet and configured to interface with a
delivery apparatus” (i.e., configured to interface with a delivery system to
hold sealing device 100 on the delivery system).
Appellant contends that “[t]he Examiner’s new explanation regarding
[Aurilia or Van Orden on pages 4–5 of the Answer] ignores the claim
limitations” and maintains that “[t]he cited portions of [Van Orden] refer to
a portion of a delivery system and not a portion of a device as is described in
the claims” or “a portion of a sealing device that interfaces with a delivery
apparatus as recited in the claims.” Reply Br. 1–2. However, Appellant
does not elaborate on why Aurilia’s (or Van Orden’s) second tube 108
cannot reasonably be considered part of the “medical device for sealing” and
“configured to interface with a delivery apparatus” as claimed.
Claim 122 is directed broadly to “[a] medical device for sealing a
defect or structure in tissue” and refers to “a delivery apparatus” only
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nominally, without specifying any structure of the “delivery apparatus.”
Further, Appellant does not identify, nor do we find, any particular
definition of “delivery apparatus” in Appellant’s Specification that would
suggest that second tube 108 is part of “a delivery apparatus,” and not “a
non-metal attachment member” that is “configured to interface with a
delivery apparatus.” See Appeal Br. passim; Reply Br. passim.
Appellant’s Specification refers to a “super elastic wire” device
inserted into a “delivery sheath.” Spec. ¶ 4. Appellant’s Specification also
refers to “trans-catheter delivery devices” using a handle and a flexible
urging member for urging the sealing device through a catheter. Id. ¶ 6.
The Specification also describes “a non-metal attachment member adapted
to couple with one or more components of a delivery system.” Id. ¶¶ 8, 10,
15, 16, 17. The Specification discloses “advancing a delivery apparatus, to
which the medical device is attached.” Id. ¶¶ 25, 26, 27. Further,
Appellant’s Specification describes “[s]econd tube 108 . . . threaded through
the eyelets of sealing device 100 to hold sealing device 100 on the delivery
system and to provide stability while deploying the sealing device 100.” Id.
¶ 88. The Specification also discloses device 1702 delivered or deployed
“using the delivery apparatuses or systems described herein,” but does not
specify what structures are part of a delivery apparatus or system and what
structures are not part of the delivery apparatus or system but are used with
the delivery apparatus or system. Id. ¶ 111. The Specification discloses that
frame 1700 of device 1702 “may be elongated, extended, or collapsed for
passage through a delivery apparatus in the delivery configuration.” Id.
¶ 112 (emphasis added). Thus, to the extent that the “delivery apparatus”
referred to in claim 122 is construed, in accordance with this description in
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the Specification, as a structure through which the claimed medical device
for sealing passes, second tube 108 is not part of the “delivery apparatus” of
Aurilia or Van Orden. Rather, the “delivery apparatus” of Aurilia or Van
Orden would seemingly include first tube 102 and third tube 104, through
which sealing device 100 and second tube 108 pass. See Aurilia ¶¶ 48–50;
Van Orden ¶¶ 48–50.
In short, Appellant does not point to evidence in the record before us
defining or describing a “delivery apparatus” in such a way as to necessarily
include second tube 108. Thus, Appellant does not apprise us of error in the
Examiner’s interpretation of Aurilia’s or Van Orden’s second tube 108 as
the “non-metal attachment member” recited in claim 122.
Appellant, referring to the Examiner’s annotated reproduction of
Figure 5B of Aurilia on page 4 of the Non-Final Action, also argues that “the
alleged third linear segment, third curved segment and fourth linear segment
identified by the Examiner appear to fall within a center eyelet of the device
shown.” Appeal Br. 20. More specifically, Appellant contends that the
Examiner draws the area identified as the third curved segment as being
curved, but Aurilia “teaches that this portion of the device shown in FIG. 5B
is a center eyelet 203 formed by wires ‘wound around keyed center pin
300.’” Id. According to Appellant, these wires “would not allow for a
curvature as drawn by the Examiner.” Id. Appellant also objects that the
Examiner identifies features on different wires, rather than identifying all of
the claimed segments on any one of the wires.5 Id. at 21.

5 This criticism seems a bit incongruous, given that Appellant’s Figure 34
identifies first linear segment 1716 and first curved segment 1718 on a first
wire; second linear segment 1720 and second curved segment 1722 on a
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In response to Appellant’s criticism that the Examiner did not identify
all features of the wires on a single wire, the Examiner provides an
annotated version of Figure 5B of Aurilia with the other wires having “been
erased to show the segments more clearly” on one wire of the device, by
way of example. Ans. 8. The Examiner states that “[t]his example should
be extrapolated for the remaining wires to meet the claim limitation.” Id.
The Examiner’s annotated version of Aurilia’s Figure 5B identifying all of
the linear and curved segments on a single wire is reproduced below from
page 8 of the Answer.

The annotated version of Aurilia’s Figure 5B reproduced above
identifies a “[t]hird linear” segment and a “third curved” segment just to the
left of the center eyelet and a “[f]ourth linear” segment to the right of the
center eyelet. Id.
Appellant does not allege any deficiency in the Examiner’s
identification of each of the recited segments of a wire on the example wire
shown in the annotated version of Aurilia’s Figure 5B on page 8 of the
Answer. See Reply Br. 3. Rather, Appellant takes issue with the

second wire; and third linear segment 1726, third curved segment 1730, and
fourth linear segment 1728 on a third wire.
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Examiner’s statement that the particular wire example shown should be
extrapolated for all of the other wires. Id. Once again, Appellant’s criticism
seems unwarranted. The Examiner focuses on a single wire in response to
Appellant’s argument, discussed above, that the Examiner failed to identify
all of the claimed wire segments on any one wire. It strikes us as no more
unreasonable for one to extrapolate the identified segments of the one
example wire shown in the Examiner’s annotated version of Figure 5B of
Aurilia to the remaining wires than for one to extrapolate the linear and
curved segments identified in Appellant’s Figure 34 to the remaining wires
in Appellant’s device. One of ordinary skill in the art would have gleaned
from Figures 5A and 5B, and the corresponding disclosure, in Aurilia that
the plurality of wires of Aurilia’s wire frame are similarly shaped.
For the above reasons, Appellant does not apprise us of error in the
rejection of claim 122. Accordingly, we sustain the rejection of claim 122,
as well as claims 124, 127, 128, 136, 138, 140–144, 148–168, 178, 180, and
183–185, which fall with claim 122, as unpatentable over Aurilia and Van
Orden.
Claims 129, 131, 134, 135, and 169–177
Independent claim 129 contains limitations substantially similar to
independent claim 122, but claim 129 additionally recites “a first outer
peripheral edge section extending between the first generally curved
segment and the third generally linear segment and a second outer peripheral
edge section extending between the second generally curved segment
and the fourth generally linear segment.” Appeal Br. 26–27 (Claims App.).
The analysis set forth above applies equally to claim 129, and we
incorporate it herein. For the reasons set forth above, the aforementioned
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arguments of Appellant fail to apprise us of error in the rejection of claim
129.
Appellant also takes issue with the manner in which the Examiner
attempted to show the first and second outer peripheral edges in the
annotated version of Aurilia’s Figure 5B on page 4 of the Non-Final Action
because, according to Appellant, in the annotated figure, “each of the first
peripheral edge section and the second peripheral edge section . . . identified
by the Examiner span multiple wires and are not shown as matching with
any one of the wires.” Appeal Br. 21. In response to Appellant’s argument,
the Examiner explains that the wire shown in the annotated version of
Aurilia’s Figure 5B presented on page 8 of the Answer (reproduced above)
“clearly has a first and second [‘]peripheral edge section[,’] that is an outer
boundary portion.” Ans. 8 (boldface omitted). According to the Examiner,
“this corresponds to a portion near the first and second curved portion which
are outer boundaries of the device (radially).” Id. (boldface omitted).
The wire shown in the annotated version of Aurilia’s Figure 5B
presented on page 8 of the Answer transitions from a generally linear
segment on one end (labeled “first linear” in the annotated drawing) and
from a generally linear segment on the other end (labeled “second linear” in
the annotated drawing) to generally curved segments (labeled “first curved”
and “second curved”) that extend to the radially outermost peripheral
sections of the wire. The wire then runs radially inward again from the first
generally curved segment to a third generally linear segment (labeled
“[t]hird linear” in the annotated drawing) and from the second generally
curved segment to a fourth generally linear segment (labeled “[f]ourth
linear” in the annotated drawing). See Ans. 8. As such, the wire has first
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and second peripheral edge sections between the first generally curved
segment and the third generally linear segment. Further, as shown in the
annotated version of Figure 5B of Aurilia presented on page 4 of the Non-
Final Action, the other wires of Aurilia’s device have similar peripheral edge
sections. Appellant does not specifically dispute the Examiner’s explanation
regarding the first and second peripheral edge sections set forth on page 8 of
the Answer.
For the above reasons, Appellant fails to apprise us of error in the
rejection of claim 129. Accordingly, we sustain the rejection of claim 129,
as well as claims 131, 134, 135, and 169–177, which fall with claim 129, as
unpatentable over Aurilia and Van Orden.

DECISION
The Examiner’s decision rejecting claims 122, 124, 127–129, 131,
134–136, 138, 140–144, 148–178, 180, and 183–185 is AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED