Joshua Stopek et al.

Patent Trials and Appeals Board

Jul 24, 2019

13780121 - (D) (P.T.A.B. Jul. 24, 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.
13/780,121 02/28/2013 Joshua Stopek H-US-03369 (203-8750) 4845
50855 7590 07/24/2019
Covidien LP
60 Middletown Avenue
Mailstop 54, Legal Dept.
North Haven, CT 06473
EXAMINER
MEDWAY, SCOTT J
ART UNIT PAPER NUMBER
3783
NOTIFICATION DATE DELIVERY MODE
07/24/2019 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@carterdeluca.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 JOSHUA STOPEK,
AMIN ELACHCHABI, and DANIEL BROOM1
__________

Appeal 2018-009150
Application 13/780,121
Technology Center 3700
__________

Before MICHAEL L. HOELTER, ANNETTE R. REIMERS, and
LISA M. GUIJT, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a) from the
Examiner’s final rejection of claims 1–4, 6, 8, 9, 11, 19, 20, and 22–24.
App. Br. 4, 15. Claims 12–18 and 21 have been canceled and claims 5, 7,
and 10 have been withdrawn from consideration. App. Br. 19–21 (Claims
App.). We have jurisdiction under 35 U.S.C. § 6(b). For the reasons

1 “The real party in interest is the assignee of the entire interest in this patent
application, Covidien LP.” App. Br. 1. We refer to the appealing party as
“Appellant.”
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explained below, we do not find error in the Examiner’s rejections of these
claims. Accordingly, we AFFIRM the Examiner’s rejections.
CLAIMED SUBJECT MATTER
The disclosed subject matter “relates generally to implantable medical
devices, and more particularly, to implantable medical devices which
include at least one mesh and at least one extendable film positioned on at
least a portion of the mesh.” Spec. ¶ 2. Apparatus claims 1 and 24 and
method claim 19 are independent claims. Claim 1 is representative of the
claims on appeal and is reproduced below.
1. An implantable medical device comprising:
a mesh including intertwined filaments and
defining a first plane, and
a film layer covering a portion of the intertwined
filaments of the mesh and including a first portion
secured to at least a portion of the intertwined filaments
of mesh and a second extended portion which is
stationary and configured to extend away from the mesh
in a fixed position.

REFERENCE

Thomas et al. US 2011/0238094 A1 Sept. 29, 2011

THE REJECTIONS ON APPEAL
Claims 1–4, 6, 8, 9, 11, 19, 20, and 24 are rejected under 35 U.S.C.
§ 102(e) as anticipated by Thomas.2 Final Act. 3–5.

2 Although the Examiner includes claim 21 in this rejection, claim 21 has
been canceled. See App. Br. 4, 21 (Claims App.).
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Claims 22 and 23 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Thomas. Final Act. 5–6.
ANALYSIS
The rejection of claims 1–4, 6, 8, 9, 11, 19, 20, and 24
as anticipated by Thomas
Claims 1–4, 6, 8, 9, 11, 19, and 20:
Appellant argues these claims together. See App. Br. 4–10. We select
claim 1 for review, with claims 2–4, 6, 8, 9, 11, 19, and 20 standing or
falling with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner finds that Thomas discloses an implantable medical
device having all the limitations of claim 1. Final Act. 3–4 (citing Thomas
¶¶ 8, 20, 23, 46, 47, 54, 56, Figs. 1A, and 1D). More particularly, the
Examiner finds that Thomas discloses a film layer (gripping member 130)
covering a portion of the intertwined filaments of a mesh (substrate 12) and
including a first portion secured to at least a portion of the intertwined
filaments of mesh and a second extended portion, which is stationary and
configured to extend away from the mesh in a fixed position. Final Act 3–4
(citing Thomas ¶ 54, Fig. 1D).
Appellant contends that “Thomas does not expressly or inherently
describe an implantable medical [device] including a second extended
portion of a film which is both stationary and configured to extend away
from the mesh in a fixed position” because “Thomas expressly describes that
his surgical implants include ‘a biocompatible substrate and at least one grip
member capable of transitioning between a first non-gripping configuration
and a second gripping configuration.’” App. Br. 5–6 (citing Thomas
Abstract, ¶ 8, and claim 1) (emphasis added). In other words, Appellant
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argues that because Thomas describes gripping member 130 as transitioning
between a first non-gripping configuration and a second gripping
configuration (because gripping member 130 is made from a shape memory
material), gripping member 130 does not extend away from a mesh in a
“fixed position” or is “stationary.” App. Br. 6–7 (citing Thomas ¶¶ 9, 27,
and 28), and 8; see also Reply Br. 1–2.
Appellant’s contentions are unpersuasive. It has long been held that
an intermediate product or article can anticipate a claimed article even if the
intermediate product is merely a stage in the final production of a non-
anticipatory article. See In re Mullin, 481 F.2d 1333, 1335–36, (CCPA
1973) (an article that is intended and appreciated is no less anticipatory be it
an intermediate structure rather than an end use item) (citing In re Herbert,
461 F.2d 1390, 1394 (CCPA 1972)).
Appellant’s contentions essentially equate to arguing that claim 1
precludes the claimed film layer from being a shape memory material. We
decline to interpret claim 1 in such a manner. Claim 1 does not specify the
conditions for the extendable portion to be “fixed” or “stationary.” We note
that all materials will change shape or form in some manner at a particular
temperature and in that view, none would be considered “fixed” or
“stationary.”
More importantly, however, we note that because Thomas’ gripping
member 130 is attached to substrate 120, it can be said that when
temperature equilibrium is reached, Thomas discloses “a second extended
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portion which is stationary and configured to extend away from the mesh in
a fixed position” as recited (emphasis added).3
We agree with the Examiner that because “the grip[ping] members
130 [of Thomas] are stationary and in a fixed position for at least the period
of time that they are in the gripping position (shown in Fig. 1D),” Thomas’
temperature-sensitive gripping member 130 meets the limitation at issue.
Ans. 3; see also Thomas ¶¶ 28, 56. In other words, once Thomas’ gripping
member 130 achieves equilibrium with the ambient temperature, it will
cease moving under its own power. See Thomas ¶¶ 28, 56. Just because the
gripping member 130 may move again when temperature changes, does not
detract from it being “stationary” or “fixed” when the temperature is
constant. Temperature balance with the surrounding environment is the key
to the movement/non-movement of gripping member 130. As such, we
agree with the Examiner that “while it is acknowledged that the grip
members 130 are capable of transitioning between a non-gripping and a
gripping configuration, nonetheless, the gripping members are stationary and
in a fixed position during at least some period of time, i.e., when in the
gripping position.” Ans. 3. To be clear, Appellant does not recite a time
frame during which non-movement is to occur, and Thomas discloses a
device that can move from a stationary position into another stationary
position, depending on temperature. See Thomas ¶¶ 28, 56.

3 Appellant’s Specification does not define the term “stationary.” The
Examiner states that “stationary” is defined as “not moving.” Ans. 4 (citing
a definition from Merriam-Webster dictionary, which was provided as Non-
Patent Literature, dated July 8, 2016). We further note that “fixed” is
defined as “securely placed or fastened.” See https://www.merriam-
webster.com/dictionary/fixed (last accessed June 28, 2019).
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We note Appellant’s contention that paragraphs 6 and 56 of the
Specification provide a distinction between portions of the film that are
movable and those that are stationary. App. Br. 8. According to Appellant,
the Examiner recognized this distinction by issuing a restriction requirement
in which the subject matter of claim 7 was considered as being drawn to a
non-elected species. App. Br. 8–9.
First, we note that claim 7 recites “first plane” and “second plane”
rather than the extendable portion being movable, and not stationary or
fixed. App. Br. 20 (Claims App.). Further, as discussed above, we do not
find that the language of claim 1 precludes the use of a shape memory
material for the extendable portion, as Appellant would seem to have us to
believe. Claim 7 also lacks a time period during which “the second
extendable portion of the mesh is movable between the first plane defined by
the mesh and a second different plane.” Appellant does not explain how
Thomas fails to disclose this limitation.
Accordingly, and based on the record presented, we sustain the
Examiner’s rejection of claims 1–4, 6, 8, 9, 11, 19, and 20 as being
anticipated by Thomas.
Claim 24:
Claim 24 recites limitations similar to those of claim 1 reiterated
above, namely “a film layer . . . including a first portion secured to at least a
portion of the intertwined filaments of mesh and a second extended portion
configured in a fixed position that extends away from the mesh.” App. Br.
21–22 (Claims App.) (emphasis added).
Appellant contends that Thomas does not anticipate claim 24 for the
same reasons presented above with respect to claim 1. See App. Br. 10–15.
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Appellant’s contentions are unpersuasive for similar reasons. We sustain the
Examiner’s rejection of claim 24 as being anticipated by Thomas.
The rejection of claims 22 and 23
as being obvious over Thomas
Claims 22 and 23 each depend from claim 19. Appellant argues
claims 22 and 23 together. See App. Br. 15–17. We select claim 22 for
review. Claim 22 recites the additional limitation of “trimming the second
extended portion of the film prior to implanting the medical device.” The
Examiner acknowledges that “Thomas does not appear to disclose” this
trimming step. Final Act. 6. The Examiner, however, finds that “Thomas
discloses that the second extended portion may be soft and flexible and able
to be changed prior to implantation (para [0028]).” Final Act. 6. The
Examiner points out that “Thomas describes various changes that may be
made to the grip members prior to their implantation in order to improve
their function” because Thomas discloses “[i]t is envisioned that the mesh
sheet may be configured to any size and/or shape suitable for hernia repair.”
Ans. 5 (quoting Thomas ¶¶ 21, 28 (disclosing that “the [shape memory]
polymer [can] become soft, flexible, and easier to shape”). The Examiner
concludes that “[t]hus, a skilled artisan would have found it obvious at the
time of the invention to modify the invention by trimming the second
extended portion, in order to ensure that the second extended portion is not
so long that it pierces tissue too deeply.” Final Act. 6.
Appellant contends that “[p]aragraph [0028] Thomas does not
describe trimming the grip[ping] members in any manner” and that
“[p]aragraph [0028] of Thomas is also completely silent with respect to
changing and/or trimming a second portion of a film to ‘ensure that the
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second extended portion is not so long that it pierces tissue too deeply.’”
App. Br. 16; see also Reply Br. 3.
Appellant’s contentions are unpersuasive in that they do not address
the rejection. The Examiner acknowledges that Thomas fails to expressly
disclose trimming a second portion of the film and Appellant does not
provide any argument as to why an ordinary artisan would not be motivated
to modify the method of Thomas by trimming a second portion of the film
so that the device “may be configured to any size and/or shape suitable for
hernia repair.” Ans. 5.
For these reasons, the rejection of claims 22 and 23 is sustained.
DECISION
The Examiner’s rejections of claims 1–4, 6, 8, 9, 11, 19, 20, and 22–
24 are 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)(1)(iv).

AFFIRMED