Ex Parte Assad

Patent Trial and Appeal Board

Nov 1, 2018

11974147 (P.T.A.B. Nov. 1, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
11/974,147
13527 7590
BodiLawLLC
25935 Detroit Road
#153
FILING DATE
10/10/2007
11/05/2018
Westlake, OH 44145-2453
FIRST NAMED INVENTOR
Renato Samy Assad
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
AZEMl-48224 4191
EXAMINER
OU,JINGRUI
ART UNIT PAPER NUMBER
3771
NOTIFICATION DATE DELIVERY MODE
11/05/2018 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):
docketing@bodilaw llc .com
rfb@bodi.org
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RENATO SAMY ASSAD
Appeal2017-007125
Application 11/97 4,147
Technology Center 3700
Before JEFFREY N. FRED MAN, ULRIKE W. JENKS, and
CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.
Opinion for the Board filed by Administrative Patent Judge FREDMAN.
Opinion Dissenting filed by Administrative Patent Judge P AULRAJ.
FREDMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal 1,2 under 35 U.S.C. § 134 involving claims to an
adjustable banding device for a blood vessel. The Examiner rejected the
claims as failing to comply with the written description requirement, as
anticipated, and as obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellant identifies the Real Party in Interest as the inventor Renato Samy
Assad (see App. Br. 3).
2 We have considered and herein refer to the Specification of Oct. 10, 2007
("Spec."); Non-Final Office Action of Jan. 4, 2016 ("Non-Final Act.");
Appeal Brief of Oct. 3, 2016 ("App. Br."); Examiner's Answer of Feb. 2,
2017 ("Ans."); and Reply Brief of Apr. 3, 2017 ("Reply Br.").
Appeal2017-007125
Application 11/97 4,147
Statement of the Case
Background
"Some congenital heart lesions are associated with excessive
pulmonary blood flow, in some special circumstances requiring palliative
treatment to somehow diminish this excessive pulmonary blood flow until
subsequent definitive treatment is possible" (Spec. ,r 6). For example, "some
small infants may be very sick, making it difficult to completely repair the
lesion ... Surgical treatment can be well managed initially by PA
[pulmonary artery] banding to limit the excessive blood flow to the lungs,
resulting in deferred repair until the patient can be submitted to definitive
surgery" (id. ,r 8). Pulmonary artery banding
consists of placing a band well proximal to the pulmonary
artery bifurcation. The band is tightened and secured by suture
to narrow the main pulmonary artery, bringing about a balance
of pulmonary and aortic blood flow by equalizing outflow
resistance. Excessive blood flow to the lungs is therefore
diminished by constricting the circumference of the pulmonary
artery, thereby achieving the desired limitation of the
pulmonary flow.
(id. ,r 9). "[ A ]n adjustable PA banding device that could be safely applied to
humans and afford fine PA diameter adjustments is not available yet" (id.
i1 41 ).
The Claims
Claims 3-10, 12-14, and 18-26 are on appeal. Claim 3 is
representative and reads as follows:
3. An adjustable banding device for a blood vessel
compnsmg:
an insufflating button;
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Application 11/97 4,147
an extending tube connected to said insufflating button and
adapted to extend radially from said insufflating button;
and
an inflating banding ring configured to form a "C" shaped cuff
and connected to said extending tube, said inflating
banding ring comprising a hydraulic sleeve adapted of a
size and shape for at least partially encircling the blood
vessel of an infant or neonate, said hydraulic sleeve
compnsmg:
an external wall having a first end and a second end,
wherein the wall forms a continuous structure
between said first end and said second end,
a first brim comprising said first end of the external wall
extending from said "C" shaped cuff,
a second brim comprising said second end of the external
wall extending from said "C" shaped cuff, wherein
said first brim and said second brim are configured to
facilitate size banding adjustment of the banding
device to a caliber of the blood vessel of the infant
or neonate, and
an internal wall including a thin flexible layer, wherein
during compression adjustment of said banding device,
said external wall is configured to be constrained
from radially distending outwardly from said
hydraulic sleeve while said thin flexible layer is
radially distended inwardly from said hydraulic
sleeve for constricting at least a portion of said
blood vessel, and wherein
said inflating banding ring is configured to withstand the
systemic arterial pressure of the blood vessel of the
patient.
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The Rejections3
A. The Examiner has rejected claims 22 and 23 under 35 U.S.C. § 112,
first paragraph as failing to comply with the written description requirement
(Non-Final Act. 3).
B. The Examiner has rejected claims 3, 5-7, 19, and 26 under 35 U.S.C.
§ I02(a) as anticipated by Byrum4 (Non-Final Act. 5-7).
C. The Examiner has rejected claim 4 under 35 U.S.C. § I03(a) as
obvious over Byrum and Edmunds, Jr. 5 (Non-Final Act. 9).
D. The Examiner has rejected claim 8 under 35 U.S.C. § I03(a) as
obvious over Byrum and Forsell6 (Non-Final Act. 9-10).
E. The Examiner has rejected claims 9 and 10 under 35 U.S.C. § I03(a)
as obvious over Byrum and DiMatteo7 (Non-Final Act. 10-11).
F. The Examiner has rejected claim 12 under 35 U.S.C. § I03(a) as
obvious over Byrum and Pudenz8 (Non-Final Act. 11).
G. The Examiner has rejected claims 13, 18, 22, 23, and 25 under 35
U.S.C. § I03(a) as obvious over Byrum, DiMatteo, Selker, 9 and Forsell
(Non-Final Act. 11-13).
H. The Examiner has rejected claim 14 under 35 U.S.C. § I03(a) as
obvious over Byrum, DiMatteo, Selker, and Pudenz (Non-Final Act. 13-14).
3 The Examiner withdrew the rejection for indefiniteness under 35 U.S.C.
§ 112, second paragraph (see Ans. 2).
4 Byrum, US 2005/0183730 Al, published Aug. 25, 2005.
5 Edmunds, Jr. et al., US 3,730,186, issued May 1, 1973.
6 Forsell, US 6,464,628 Bl, issued Oct. 15, 2002.
7 DiMatteo, US 2004/0199129 Al, published Oct. 7, 2004.
8 Pudenz et al., US 5,112,303, issued May 12, 1992.
9 Selker, US 3,538,917, issued Nov. 10, 1970.
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I. The Examiner has rejected claims 20, 21, and 24 under 35 U.S.C.
§ 103(a) as obvious over Byrum, DiMatteo, and Forsell (Non-Final Act. 14--
15).
A. 35 US.C. § 112,first paragraph
The Examiner finds the "limitation 'a contiguous external wall' in line
13 of claim 22 in view of applicant's definition of the term 'contiguous'
provided on page 11 of the remarks filed 03/02/2015 does not have
sufficient support in the original disclosure and is considered as new matter"
(Non-Final Act. 3). The Examiner finds "the external wall shown in Figures
4 and 5 looks like porous/a mesh structure. A porous/mesh wall is
considered as a broken structure" (id.).
Appellant responds
in all of the drawings, the external wall is shown as being of a
continuous structure, without any breaks in the structure.
Paragraph 0056 requires this wall to be "non-distensible" and
paragraphs 0079-0080 require that this wall prevent centrifugal
gaps or stretching, which can only occur if the wall is devoid of
breaks in its length. Hence, it is clear from reading the
reference that this wall must be contiguous in order to perform
its disclosed function.
(App. Br. 11 ).
The issue with respect to this rejection is: Does a preponderance of
the evidence of record support the Examiner's conclusion that the phrase "a
contiguous external wall" in claim 22 represents new matter?
Findings of Fact
1. The Specification teaches a "non-distensible outer wall" (Spec.
if 56).
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2. Figure 5 of the Specification is reproduced below:
FIG. 5·
Figure 5 depicts, in part, "an inflating balloon, whose external wall (2a) is
formed by a thin rigid silicon layer, composed by a Dacron mesh, that
prevent the radial distention of the ring from within inside to outside
( centrifugal distention)" (Spec. ,r 79).
Principles of Law
When assessing whether a drawing provides descriptive support for a
claim feature the "legitimate enquiry in each case ... is what the drawing in
fact discloses to one skilled in the art. Whatever it does disclose may be
added to the specification in words without violation of the statute and rule
which prohibit 'new matter."' In re Wolfensperger, 302 F.2d 950, 955
(CCPA 1962). Cf Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1565 (Fed.
Cir. 1991) ("[D]rawings alone may provide a 'written description' of an
invention as required by§ 112.")
Analysis
We agree with Appellant that the teachings in the Specification of an
outer wall that may not be stretched or expanded (FF 1) combined with a
drawing that discloses a contiguous meshwork (FF 2) reasonably provides
descriptive support for the "contiguous external wall" in claim 22.
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We are not persuaded by the Examiner's finding that a "porous/mesh
wall is not considered as 'touching or connected through in an unbroken
sequence' since there's only one wall" (Ans. 2). The mesh shown in the
Specification in Figure 5 is reasonably described as "contiguous" even under
the Examiner's own definition because the mesh extends from one side to
the other without a break or separation. That the mesh itself may include
pores does not render it non-contiguous under the plain and ordinary
meaning of contiguous as "sharing a common border," "touching," or "next
or together in sequence." 10
Conclusion of Law
The preponderance of the evidence of record does not support the
Examiner's conclusion that the phrase "a contiguous external wall" in claim
22 represents new matter.
B. 35 US.C. § 102(a) over Byrum
The Examiner finds Byrum teaches an adjustable banding device
structurally identical to claim 3 (see Non-Final Act. 5). The Examiner finds
the device comprises "an inflating band ring (Fig. 3, the inflating band ring
formed by combination of 10 and 20) fully capable to [] form a 'C' shaped
cuff (Figs. 1 and 3, the inflating band ring is fully capable to form a 'C'
shaped cuff since it bendable" (id.). The Examiner also finds "during
compressing adjustment of the banding device, said external wall is fully
capable to be constrained from radially distending outwardly from said
hydraulic sleeve" (Non-Final Act. 6).
10 See https:// en.oxforddictionaries.com/ definition/ contiguous ( accessed
Aug. 28, 2018) ("[C]ontiguous ... Sharing a common border; touching ...
Next or together in sequence.")
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The issue with respect to this rejection is: Does a preponderance of
the evidence of record support the Examiner's conclusion that Byrum
anticipates the rejected claims?
Findings of Fact
1. Figure 1 of Byrum is reproduced below:
Figure 1 depicts "a surgically implantable device 1 ... [that] includes an
elongated flexible inflatable balloon portion 10 . ... Device 1 further
includes and an elongated flexible and substantially inextensible band
portion 20" (Byrum ,r 19).
2. Byrum teaches "[i]t will become readily apparent to those
skilled in the art that the above invention has equal[] applicability to other
types of implantable bands ... Bands can also be used to treat urinary
incontinence" (Byrum ,r 24).
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3. Figure 2 of Byrum is reproduced below:
FIG.2 28
10
"FIG. 2 shows a cross section of inflatable portion 10 and band portion 20
when the device 1 is in its undeployed position" (Byrum ,r 23).
4. Figure 3 of Byrum is reproduced below:
FIG. 3
i
l
"Device 2 also has a deployed position with an deployed shape, shown in
FIG. 3. The deployed position of the band is when the band is encircling a
body part of the patient, such as the stomach or esophagus" (Byrum ,r 22).
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Principles of Law
Anticipation under 35 U.S.C. § 102 requires that "'each and every
element as set forth in the claim is found, either expressly or inherently
described, in a single prior art reference."' In re Robertson, 169 F.3d 743,
745 (Fed. Cir. 1999).
Analysis
We adopt the Examiner's findings of fact and conclusions of law (see
Non-Final Act. 5-7; FF 1--4) and agree that Byrum anticipates the claims.
We address Appellant's arguments below.
Claim 3
Appellant contends
Byrum, in contrast, is specifically for use in banding a stomach,
and does not teach the necessary structure for banding a blood
vessel. . . . There is no teaching that such a device can be used
for banding a blood vessel, and in particular the blood vessel of
an infant or neonate, which is clearly of a different size and
involves completely different organs and different usage.
(App. Br. 15).
We find these arguments unpersuasive because it focuses on the
intended use of the adjustable banding device, rather than the structure of the
adjustable banding device itself. "[ A Jpparatus claims cover what a device is,
not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909
F.2d 1464, 1468 (Fed. Cir. 1990). Merely stating an intended use for an
apparatus is not sufficient to distinguish the apparatus from the prior art. In
re Sinex, 309 F.2d 488, 492 (CCPA 1962).
In this case, Byrum teaches that the device may be used for "other
types of implantable bands" specifically including urinary incontinence (FF
2). The Examiner finds that a band sized to "constrict the urinary tube"
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would have been "fully capable to constrict a blood vessel of a neonate
patient" (Ans. 5). Appellant provides no rebuttal evidence that a banding
device sized for the ureter would be structurally different in size or other
parameter than a banding device sized for one of the variously sized blood
vessels of an infant as recited in claim 3.
We recognize that Appellant argues a number of functional reasons
why the Byrum device would not be suitable for use in encircling a neonatal
blood vessel (see App. Br. 18-21 ), but Appellant provides neither evidence
supporting these arguments nor identifies claim limitations that are
specifically associated with these issues that would structurally distinguish
from the Byrum device. See In re Pearson, 494 F.2d 1399, 1405 (CCPA
1974) ("Attorney's argument in a brief cannot take the place of evidence.")
See also In re Self, 671 F.2d 1344, 1348 (CCPA 1982) ("[A]ppellant's
arguments fail from the outset because ... they are not based on limitations
appearing in the claims.")
Appellant contends "the claim clearly requires that the device has a
'banding ring configured to form a "C" shaped cuff' a feature clearly
missing in the Byrum device, which exhibits no 'C' shape" (App. Br. 16).
Appellant contends Figure 3 of Byrum "is not "'C "' shaped at all, but at best
is an "O" shape, since the ends of the banding device are in contact with
each other with no gaps. According to Appellant, "[a] 'C' shape clearly
requires an inner void with a gap being provided at the ends of the structure
forming the void" (id.).
The Examiner responds "Byrom's inflating banding ring is fully
capable to form a 'C' shaped cuff' (Ans. 4).
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We have considered the arguments of Appellant and our dissenting
colleague, but we believe that these arguments conflate the issues of inherent
anticipation and claim interpretation.
As to claim interpretation, we have considered the guidance of the
Federal Circuit regarding "configured" language. The court in In re
Giannelli, 739 F.3d 1375 (Fed. Cir. 2014) determined that the prior art chest
press machine did not have handles adapted to be pulled in a rowing motion
because such a motion of the handles was contraindicated by the prior art
itself, and that the proper inquiry the Board should have made was "whether
it would have been obvious to modify the prior art apparatus to arrive at the
claimed rowing machine." Giannelli, 739 F.3d at 1380.
Unlike in Giannelli, the Examiner is not proposing that the prior art
Byrum device be used for a different specified objective than what it was
designed to accomplish or be modified to do so. Byrom's device is designed
to function as an implantable surgical banding device (FF 2). Appellants
have not met their burden to rebut the Examiner's finding that Byrom's
device, without modification, is configured to form a "C" shaped cuff that is
sized to "at least partially encircl[ e] the blood vessel of an infant or neonate"
in the manner required by claim 3.
Similarly, in In re Man Machine Inteiface Technologies LLC, 822
F.3d 1282 (Fed. Cir. 2016), the court dealt with a situation where the
"broadest reasonable interpretation of a claim term cannot be so broad as to
include a configuration expressly disclaimed in the specification." Man
Machine, 822 F.3d at 1286. However, in the present case, neither Appellant
nor the dissent identifies a teaching in the Specification that expressly
disclaims or disavows the interpretation relied upon by the Examiner.
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Indeed, the Specification teaches "our new PA banding device prototype
differs from earlier experimental models in that it presents a Dacron mesh
that reinforces the outer layer and makes it thinner, keeping it from
centrifugal distension when inflated" (Spec. ,r 48). The Specification
explains that "the banding ring (2) of the device is now improved and differs
from the previous experimental models by being thinner and presenting a
reinforcement through a screen in the sleeve outside wall that prevents the
centrifugal distention, when insufflating" (Spec. ,r 80). Thus, the
Specification does not identify the inventive feature as the "C" shaped cuff.
As further discussed below, the Examiner reasonably finds that Byrum
teaches a banding device that is constrained from radial distension as
required by claim 3 (see Ans. 5). There is no teaching disclaiming a device
that is "capable of' forming a "C" shaped cuff, but which may not always be
"C" shaped.
To the extent that Appellant intends to require the banding device to
be permanently formed into a "C" shaped cuff, claim 3 does not include
such a requirement but rather simply requires the ring "configured to form a
'C' shaped cuff." We think the Examiner reasonably interpreted this broad
language because it does not clearly distinguish between a banding device
that is ordinarily unshaped or flat but can be configured to form a "C" shape
and a banding device that is physically formed only in a "C" shape and
cannot be altered to other shapes such as flat or "O" shaped. "[D]uring
patent prosecution when claims can be amended, ambiguities should be
recognized, scope and breadth of language explored, and clarification
imposed." In re Zietz, 893 F.2d 319, 322 (Fed. Cir. 1989).
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As this case is still in prosecution, Appellant might still clarify that the
"inflating banding ring" is not simply "configured to form a 'C' shaped
cuff' but rather resolve this ambiguity regarding claim breadth by requiring
that an "inflating banding ring that is a 'C' shaped cuff." No such
amendment is presently of record. Indeed, claim 3 even uses the phrase "at
least partially encircling", which reasonably suggests that the claim
language, as written, encompasses a device that completely encircles a blood
vessel, identical to the Byrum device as understood by Appellant and the
dissent.
As to inherent anticipation, we agree with the Examiner that Byrom's
ring satisfies the "C" shaped cuff requirement of claim 3 because claim 3
recites "an inflating banding ring configured to form a 'C' shaped cuff' and
inflatable portion 10 as depicted in figure 3 of Byrum does not fully encircle
the lumen but rather leaves a small gap which results in a "C" shaped
inflating banding ring (see FF 4). Thus, Byrum depicts an embodiment
falling within the scope of claim 3.
We also agree with the Examiner that because the shape of the
inflating banding ring portion of the cuff depends solely on the size of the
cuff relative to the vessel to which the cuff is being attached, the inflating
banding ring portion of the cuff is inherently capable of forming a "C"
shape. See, e.g., In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997)
where the Federal Circuit found that a claim to a popcorn dispensing
container was properly anticipated by a structurally identical liquid
dispensing top since "the absence of a disclosure relating to function does
not defeat the Board's finding of anticipation."
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The instant case is better than Schreiber because the intended function
of Byrmn's device is identical to that of the device of claim 3, to band a
body lumen with a device that includes an inflatable banding ring and an
external wall in order to compress the body lumen (FF 1--4). Thus, in the
present situation, both the structure of Byrom's device and the intended
function of Byrom's device, particularly as shown in Figure 3 of Byrum,
appear to necessarily anticipate the structure and functions recited in claim
3.
Appellant contends
because of the gap in Byrom's band portion 20, when the
Byrum device is inflated, it is not possible for the band portion
to be constrained from radially distending outwardly at the gap
portion as also required by claim 3, as the band at the gap
portion will clearly be pushed outwardly as the inflatable
portion 10 of the device is inflated, as there is nothing to
constrain the band at the gap.
(App. Br. 17-18).
The Examiner responds
the band portion 20 of Byrum as shown in Fig. 1 is not broken
( or has a gap) near the center. Instead, Fig. 1 of Byrum shows a
cross section of the band portion 20 with the dash lines ...
Band portion 20 is a continuous structure. In Bryum, parts that
have gaps would be shown similar to the notch 32 (without the
dash line).
(Ans. 5).
We find that the evidence better supports the Examiner's position
because the dashed lines in Figure 1 of Byrum suggest that the apparent gap
is really just a view of the cross-section of element 20. This understanding
of Figure 1 of Byrum is reinforced by Figure 2, which shows a cross-section
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with the same cross-hatching shown in Figure 1 (FF 3). Figure 3 also
supports the Examiner's position because Appellant's asserted gap appears
roughly equidistant from the ends in Figure 1, but does not appear at that
location in Figure 3. Therefore, even if we agreed with Appellant that
Figure 1 displays a gap, which we do not, Figure 3 shows an embodiment in
which no gap is present, resulting in a banding device that is constrained
from radial distension as required by claim 3. Therefore, we agree with the
Examiner that Byrum reasonably anticipates the "configured to be
constrained from radially distending outwardly from said hydraulic sleeve"
requirement of claim 3.
Appellant contends "similarities and differences in structure and
function of the inventions carry great weight in determining if art is
analogous" (App. Br. 18). Appellant also contends "the [Byrum] reference
is not reasonably pertinent to the problem with which the inventor is
concerned" (id.).
We find this argument unpersuasive because whether the art is
analogous is irrelevant to anticipation. See Schreiber, 128 F.3d at 1478
("[T]he question whether a reference is analogous art is irrelevant to whether
that reference anticipates."). Cf Self, 671 F.2d at 1350-51.
Appellant contends "[s]ince Byrum fails to teach any use of banding a
blood vessel as discussed above, it cannot teach any ability to withstand the
systemic arterial pressure of the blood vessel of the patient" (App. Br. 21).
The Examiner responds:
The banding device of Byrum is fully capable to constrict a
blood vessel of a neonate patient. Since the banding device in
Byrum is capable to constrict the urinary tube or urethra or the
pressure from the urinary tube or urethra by inflating the
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banding ring using the insufflating button, it is fully capable to
constrict a pulmonary artery or support a desire pulmonary
artery pressure by inflating the banding ring using the
insufflating button.
(Ans. 5).
We find the evidence supports the Examiner's position because
Byrum teaches a banding devices with sufficient capacity to constrict the
pressure imposed by the stomach or esophagus, and by the urethra (FF 2, 4),
and Appellant provides no rebuttal evidence suggesting that the pressure
found in the blood vessel of a neonate patient would be greater than these
three lumens. Nor does Appellant provide any evidence showing that the
constriction capacity of the Byrum banding device itself would be
insufficient to constrict a blood vessel. See In re De Blauwe, 736 F.2d 699,
705 (Fed. Cir. 1984) (Arguments and conclusions unsupported by factual
evidence carry no evidentiary weight.)
Claims 5-7, 19, and 2 6
Appellant contends "as discussed above regarding claim 3, Byrum
fails to teach any use of its banding device on any artery, and certainly not
the pulmonary artery, and hence claims 6 and 19 are patentable over the
reference for this reason as well" (App. Br. 22). Appellant similarly argues
with regard to claim 7 that "since Byrum fails to teach any use of its banding
device for banding blood vessels as discussed above, it also cannot teach any
ability of its sutures to adjust the caliber of blood vessels, as any Byrum
sutures would be configured for use on the stomach, and not a blood vessel"
(id.). Finally, Appellant similarly argues regarding claim 26 that "Byrum
fails to teach any use of its device for banding a pulmonary artery. Byrum is
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concerned with reducing stomach volume, and not supporting stomach
pressure amounts" (id.).
We find these arguments unpersuasive for the same reasons as
discussed above. Schreiber teaches that writing a claim that mixes structural
and functional limitations comes at a price. Schreiber, 128 F.3d at 1478
("[C]hoosing to define an element functionally, i.e., by what it does, carries
with it a risk."). The price is that when the structural limitations are met by
a single prior art reference, and when the Examiner "has reason to believe"
that the prior art reference teaches the functional limitation as the Examiner
does in the instant case (see Ans. 5; Non-Final Act. 5-7), the burden shifts to
Appellant to show that the functional limitation cannot be met by the single
prior art reference. Id. Appellant has provided no evidence rebutting the
Examiner's position.
Conclusion of Law
A preponderance of the evidence of record support the Examiner's
conclusion that Byrum anticipates the rejected claims.
C. 35 US.C. § 103(a) over Byrum and Edmunds, Jr.
Appellant relies upon overcoming the rejection of claim 3, but
provides no separate argument for claim 4. We therefore affirm for the
reasons given by the Examiner (see Non-Final Act. 5-7).
D. 35 US.C. § 103(a) over Byrum and Forsell
Appellant contends
the device of Forsell is configured for treating mechanical
incontinence, which is not applicable to arterial banding as
required by the claim. The Examiner argues that since Byrum
teaches possible use of a banding device for treating urinary
incontinence, that this somehow supports the use of the Forsell
feature on Byrum for banding arteries (id. and pg. 15 of OA),
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which is a conclusion with no basis, as discussed above.
Neither Byrum nor Forsell are relevant references.
(App. Br. 23).
We find this argument unpersuasive because both Byrum and Forsell
teach implantable banding devices for incontinence issues (FF 2; Forsell
1 :49--53 ("adjustable restriction device implanted in a patient who suffers
from anal incontinence"). The Examiner reasonably relies upon Forsell's
disclosure of a particular implementation of the restriction or banding device
as shown in Figure 18 (Non-Final Act. 10; see also Forsell 15:50-67). The
Examiner reasons that the combination of Forsell with Byrum would have
been obvious in order "to modify the banding ring of Byrum to include a
plurality of loops extending from said external wall in order to obtain the
advantage of adjusting the diameter of the elastic internal wall/annular
element after it is radially distended inwardly" (Non-Final Act. 10).
That the prior art has a different reason or motivation to combine the
components of Byrum and Forsell to obtain a structure identical to that
required by claim 8 is of no moment as long as there is a sufficient reason to
make the combination. See In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir.
1996) ("[T]he motivation in the prior art to combine the references does not
have to be identical to that of the applicant to establish obviousness.").
Appellant also contends "[ t ]here is no teaching that these guide
members are configured for use with sutures, and in fact any such use would
interfere with their adjustment functions since sutures would put the
members 116 under tension" (App. Br. 23-24).
The Examiner responds "the guide members ( or loops) 116 of Forsell
are fully capable for use with sutures since the guide members ( or loops) 116
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Application 11/97 4,147
of Forsell (Fig. 18) are configured to be threaded through by threads 114"
(Ans. 6).
We find the evidence supports the Examiner's position because
Forsell teaches "the pulling means may comprise a plurality of threads
secured to the elastic annular element" (Forsell 4:28-29). The use of the
word "secured" suggests a physical attachment, such as sutures, and
Appellant provides no evidence that sutures would interfere with the secured
threads.
E. 35 US.C. § 103(a) over Byrum and DiMatteo
Appellant contends regarding claims 9 and 10 that
Dimatteo relates to a vascular access port with a reservoir
system that comprises two materials disposed within the
reservoir ... This device is not relevant to the invention or
Byrum, as it fails to meet the requirements of MPEP
§2141.0l(a) since it does not disclose any applicability to
arterial banding or gastric banding and, in fact, serves a very
different purpose than either.
(App. Br. 24).
We find this argument unpersuasive. We need not address whether
Byrom's banding device and DiMatteo's port are in the same field of
endeavor because a "reference is reasonably pertinent if, even though it may
be in a different field of endeavor, it is one which, because of the matter with
which it deals, logically would have commended itself to an inventor's
attention in considering his problem." In re Clay, 966 F.2d 656, 659 (Fed.
Cir. 1992). In this case, Byrum evidences that the inventor would have
considered teachings related to the vascular access ports of DiMatteo ( see
DiMatteo, abstract) because Byrum teaches "an injection port 50" where
"[p ]ort 50 is of the type well known in the medical field not only for gastric
20
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Application 11/97 4,147
bands, but such ports are also used for vascular access for drug delivery"
(Byrum ,r 21 ). Thus, Byrum provides a direct statement that vascular access
ports are pertinent to gastric bands and therefore DiMatteo is pertinent to,
and analogous art for, the claimed invention.
Appellant further contends "claim 10 recites the feature that the
'button is provided with a plurality of holes in said base disposed close to an
outlying border for providing fixation points to fix said button to a patient
using sutures.' The Examiner does not address this limitation at all in the
OA" (id.).
The Examiner responds:
As shown in Figure 1 of Bryum, structures/holes around the
bottom of the injection port 50 identified by the examiner are
the holes. That is at least supported by comparing the drawing
of the structures/holes around the bottom of 50 to the drawing
of the hole 36 or 38 on the same figure.
(Ans. 7).
We agree with the Examiner because Byrum teaches that port 50 has
several holes (FF 1 ), reasonably satisfying the structural requirement of
claim 10 where the "button is provided with a plurality of holes in said
base." We note that the recitation "for providing fixation points to fix said
button to a patient using sutures" represents an intended use recitation that,
in this case, imposes no specific additional structural requirements that
distinguishes the port 50 of Byrum from the required button. Hewlett-
Packard Co., 909 F.2d at 1468.
F. 35 US.C. § 103(a) over Byrum and Pudenz
Appellant contends with regard to claim 12 that
Pudenz, similar to Dimatteo, relates to a tumor access device
with a reservoir system quite different from the invention. This
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Application 11/97 4,147
device is not relevant to the invention or Byrum as it fails to
meet the requirements ofMPEP §2141.0l(a) since it does not
disclose any applicability to arterial or gastric banding and, in
fact, serves a very different purpose.
(App. Br. 25).
The Examiner responds "Pudenz teaches, from the same field of
endeavor, an implantable device with an injection port. Pudenz and Byrum
are also reasonably pertinent to the problem(s) applicant is attempting to
solve because each of Pudenz and Byrum teaches injecting fluids into an
implantable port/button by syringe/needle" (Ans. 8).
We agree with the Examiner because the Examiner provides specific
reasons to modify Byrum with Pudenz including coating with medical grade
silicone "to ensure ... known and acceptable tissue reaction properties" and
"to facilitate x-ray detection of the position and configuration of the
implantable device when subcutaneously implanted" (Non-Final Act. 11).
While Pudenz may be in a different field of endeavor, both Pudenz and
Byrum require a port for insufflation of a balloon (FF 1; Pudenz, abstract).
We agree with the Examiner that in placing that port subcutaneously,
Pudenz' teaching of x-ray detection would have been pertinent to Byrum in
order to allow ease of identification of the location of the insufflation port
(see Pudenz 6: 17-25).
G. 35 USC§ 103(a) over Byrum, DiMatteo, Selker, and Forsell
Appellant separately discusses this rejection and claims 13, 22,
18, and 23-25, but relies upon the same arguments that we found
unpersuasive above regarding claim 3. We therefore find these claims
obvious for the reasons given above and for the reasons given by the
Examiner (see Non-Final Act. 11-13).
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Application 11/97 4,147
H 35 US.C. § 103(a) over Byrum, DiMatteo, Selker, and Pudenz
Appellant relies upon overcoming the rejection of claim 13, but
provides no separate argument for claim 14. We therefore affirm for the
reasons given by the Examiner (see Non-Final Act. 13-14).
I. 35 US.C. § 103(a) over Byrum, DiMatteo, and Forsell
Appellant separately discusses this rejection and claims 20, 21, and
24, but relies upon the same arguments that we found unpersuasive above
regarding claims 3, 6, 8, and 10. We therefore find these claims obvious for
the reasons given above and for the reasons given by the Examiner (see
Non-Final Act. 14--15).
SUMMARY
In summary, we reverse the rejection of claims 22 and 23 under 35
U.S.C. § 112, first paragraph as failing to comply with the written
description requirement.
We affirm the rejection of claims 3, 5-7, 19, and 26 under 35 U.S.C.
§ 102(a) as anticipated by Byrum.
We affirm the rejection of claim 4 under 35 U.S.C. § 103(a) as
obvious over Byrum and Edmunds, Jr.
We affirm the rejection of claim 8 under 35 U.S.C. § 103(a) as
obvious over Byrum and Forsell.
We affirm the rejection of claims 9 and 10 under 35 U.S.C. § 103(a)
as obvious over Byrum and DiMatteo.
We affirm the rejection of claim 12 under 35 U.S.C. § 103(a) as
obvious over Byrum and Pudenz.
We affirm the rejection of claims 13, 18, 22, 23, and 25 under 35
U.S.C. § 103(a) as obvious over Byrum, DiMatteo, Selker, and Forsell.
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Application 11/97 4,147
We affirm the rejection of claim 14 under 35 U.S.C. § 103(a) as
obvious over Byrum, DiMatteo, Selker, and Pudenz.
We affirm the rejection of claims 20, 21, and 24 under 35 U.S.C.
§ 103(a) as obvious over Byrum, DiMatteo, and Forsell.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
24
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RENATO SAMY ASSAD
Appeal2017-007125
Application 11/974,147
Technology Center 3700
Before JEFFREY N. FRED MAN, ULRIKE W. JENKS, and
CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.
P AULRAJ, Administrative Patent Judge, dissenting.
I respectfully dissent from the Majority's decision to affirm the
anticipation and obviousness rejections based on Byrum. 1
The claims on appeal are drawn to "[ a ]n adjustable banding device for
a blood vessel" that comprises "an inflating banding ring configured to form
a 'C' shaped cuff." See Claims App'x, Cls. 3, 13, 20, and 22 (emphasis
added). The Majority concludes that this claim language requires only an
inflatable ring that is capable of forming a "C" shaped cuff. Majority Dec.
14 (citing In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997)). More
particularly, the Majority finds the Examiner's interpretation to be
reasonable because the claim language "does not clearly distinguish between
a banding device that is ordinarily unshaped or flat but can be configured to
1 I concur with the Majority's decision reversing the§ 112, first paragraph
rejection of claims 22 and 23.
Appeal2017-007125
Application 11/97 4,147
form a 'C' shape and a banding device that is physically formed only in a
'C' shape and cannot be altered to other shapes such as flat or 'O' shaped."
Id. at 13. I disagree. In my view, this claim language is properly interpreted
as imposing a structural requirement-a "C" shaped cuff-that must be
actually present in the banding device.
This interpretation is consistent with how the Federal Circuit has
treated similar claim language. For instance, the Federal Circuit has
interpreted claim language including the phrase "adapted to" as requiring
more than the mere capability to achieve a subsequently recited structure or
function. See Aspex Eyewear, Inc. v. Marchan Eyewear, Inc., 672 F .3d
1335, 1349 (Fed. Cir. 2012) ("In common parlance, the phrase 'adapted to'
is frequently used to mean 'made to,' 'designed to,' or 'configured to,' but it
can also be used in a broader sense to mean 'capable of' or 'suitable for."');
see also In re Man Machine Inteiface Techs. LLC, 822 F.3d 1282, 1286
(Fed. Cir. 2016); In re Giannelli, 739 F.3d 1375, 1379 (Fed. Cir. 2014).
Specifically, in Aspex Eyewear, the court construed the phrase "said arms
and said pair of magnetic members adapted to extend across respective side
portions of a primary spectacle frame" to mean that "the arms and magnetic
members are designed or configured to accomplish the specified objective,
not simply that they can be made to serve that purpose." 762 F.3d at 1349
( emphasis added). And in Man Machine Interface Technologies, the court
construed the phrases "a body adapted to be held by the human hand" and
"thumb switch being adapted for activation by a human thumb" to have "the
narrower meaning, viz., that the claimed remote control device is made or
designed to be held in the human hand and the thumb switch is made or
designed for activation by a human thumb." 822 F.3d at 1286 (emphasis
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Application 11/97 4,147
added). Likewise, in Giannelli, the court construed the phrase "first handle
portion adapted to be moved from a first position to a second position by a
pulling force ... in a rowing motion" to also have "a narrower meaning, viz.,
that the claimed machine is designed or constructed to be used as a rowing
machine whereby pulling force is exerted on the handles," and thus
determined that "the mere capability of pulling the handles is not the inquiry
that the Board should have made." 739 F.3d at 1379--80 (emphasis added).
In this case, the claims explicitly recite "configured to," which was
understood in each of the foregoing decisions as being narrower than just
"capable of."
This narrow interpretation can be distinguished from the Federal
Circuit's broader treatment of the phrase "non-articular surface configured
for long-lasting fixation" in In re Chudik, 706 Fed.Appx. 670, 672 (Fed. Cir.
2017) (non-precedential). There, the court determined that "whether [the
prior art] discusses a sliding contact is not relevant to whether [ that prior art]
is capable of long-lasting fixation," and that the applicant in that case did not
point to any evidence that that the prior art "is incapable of long-lasting
fixation." Id. To the extent that the Chudik court construed the phrase
"configured for" as synonymous with "capable of," it was only done so for
purely functional claim language, i.e., "long-lasting fixation," which did not
impose any structural "limitation regarding range of motion." Id. By
contrast, as further explained below, the requirement of "a 'C' shaped cuff'
is a structural limitation that must necessarily be satisfied by the prior art.
Of course, there is no bright-line rule based on any of these prior
Federal Circuit decisions that "configured to" claim language should be
construed the same way. Claim terms must be always interpreted by taking
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Application 11/97 4,147
into account the context of the particular claim and the specification in
which they appear. Nonetheless, in the present context, I believe the proper
interpretation of the "configured to" language requires the banding ring to
retain the shape of a "C" shaped cuff prior to being inflated. This
interpretation is reinforced by the fact that the "C" shaped cuff that is formed
according to this limitation serves as the antecedent basis for other structural
claim limitations. For example, representative claim 3 requires a first and
second brim "extending from said 'C' shaped cuff," wherein "said first brim
and said second brim are configured to facilitate size banding adjustment of
the banding device to a caliber of the blood vessel of the infant or neonate."
An interpretation of the "configured to" language to allow for mere
capability would render these other structural limitations a nullity if the "C"
shaped cuff is not actually formed, i.e., there could be no first and second
brim extending from said "C" shaped cuff. However, "claims are interpreted
with an eye toward giving effect to all terms in the claim." Bi con, Inc. v.
Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006) (emphasis added).
The specification also supports this interpretation. For instance, the
specification teaches repeatedly that "[t]he device is comprised of a banding
ring C-shaped hydraulic cuff." Spec. ,r,r 56, 64 (emphasis added). "When
the cuff is uninflated, the measured diameter can be as low as 4 mm." Id.
The specification further teaches that "[t]he banding ring is configured as a
'C' shaped hydraulic cuff, with an outer wall formed by a thin non-
distensible silicon layer, or similar, that prevents centrifugal distension of
the hydraulic cuff." Id. ,r 59 (emphasis added). I see no distinction between
the specification's description of a banding ring "configured as" a "C"
shaped cuff and the claim requirement of a banding ring "configured to
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Appeal2017-007125
Application 11/97 4,147
form" such a "C" shaped cuff. As further explained in the specification,
"[t]he 'C' shaped banding ring ends in two apart ends for adequate sizing of
the band according to neonate's [pulmonary artery] size." Id. ,r 60. Figure 4
of the specification illustrates the device with the "C" shaped cuff prior to
inflation:
As shown above:
the banding ring (2) is configured by a hydraulic sleeve in the
shape of "C," forming a support for an inflating balloon, whose
external wall (2a) is formed by a thin rigid silicon layer,
composed by a Dacron mesh, that prevent the radial distention
of the ring from within inside to outside ( centrifugal distention),
and whose inside wall (2b) is formed by a thin flexible silicon
layer that allows the outside radial distention of the ring from
within outside to inside ( centripetal distention).
Id. ,I 79.
In contrast to the foregoing teachings, I find no disclosure in the
specification that supports the Majority's interpretation to allow for the
banding ring to have the mere capability to form a "C" shaped cuff at some
transitional point after the device is inflated. "'While the Board must give
the terms their broadest reasonable construction, the construction cannot be
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Application 11/97 4,147
divorced from the specification and the record evidence."' Man Machine
Interfaces, 822 F.3d at 1286 (citing In re NTP, Inc., 654 F.3d 1279, 1288
(Fed. Cir. 2011)). "[A]bove all, the broadest reasonable interpretation must
be reasonable in light of the claims and specification." Id. at 1287 (citing
PPC Broadband, Inc. v. Corning Optical Commc'ns RF, LLC, 815 F.3d 747,
755 (Fed. Cir. 2016)).
Under the proper claim interpretation, I find that Byrum does not
teach or otherwise suggest an "inflating banding ring configured to form a
'C' shaped cuff." The Majority points to Byrom's teaching of a surgically
implantable device with an "elongated flexible balloon portion 10" that also
includes "an elongated flexible and substantially inextensible band portion
20." Majority Op., FF 1 (citing Byrum ,r 19, Fig. 1). The Majority also
points to Figures 2 and 3 of Byrum, showing the device in either an
undeployed or deployed position encircling the body part (i.e., forming an
"O" shape). Id., FF3--4 (citing Byrum, ,r,r 22-23, Figs. 2-3). Byrum,
however, does not teach that the device retains the form of a "C" shaped cuff
at any point either in its undeployed or deployed state. Thus, I find the
Majority's reliance on In re Schreiber to be misplaced. Contrary to the
situation in Schreiber, the prior art reference fails to disclose essential
structure required by the claims, and not merely a recited function or an
intended use for the claimed device.
For at least the foregoing reasons, I would not affirm the anticipation
and obviousness rejections relying upon Byrum.
6