Ex Parte Abuzaina et al

Patent Trial and Appeal Board

Dec 27, 2012

12147046 (P.T.A.B. Dec. 27, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte FERASS ABUZAINA and
AHMAD ROBERT HADBA
____________________

Appeal 2010-011094
Application 12/147,046
Technology Center 3700
____________________

Before WILLIAM V. SAINDON, BRETT C. MARTIN, and
REMY J. VANOPHEM, Administrative Patent Judges.

MARTIN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-011094
Application 12/147,046

2
STATEMENT OF CASE
Ferass Abuzaina et al. (Appellants) appeal under 35 U.S.C. § 134
from the Examiner’s rejection of claims 1-14. Claims 15-26 have been
cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

THE INVENTION
Appellants’ disclosed invention is directed generally to “cannulas
suitable for introducing thermoreversible polymeric materials in situ.” Spec.
¶ 0002. Claim 1, reproduced below with emphasis added, is illustrative of
the claimed subject matter:
1. A multi-lumen cannula comprising:
a proximal end and a distal end;
at least one lumen configured to permit the passage of a
coolant; and
at least one additional lumen configured to permit the
passage of a composition comprising a thermally responsive
polymer,
wherein the thermally responsive polymer is in a low
viscosity state at a pre-treatment temperature and a higher
viscosity state at a treatment temperature that is higher than the
pre-treatment temperature, and wherein the lumen configured to
permit the passage of the coolant possesses a device to prevent
the coolant from exiting the distal end of the lumen.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Kaasenbrood US 3,578,664 May 11, 1971
Freyman
Muller
US 2004/0030282 A1
US 2007/0083155 A1
Feb. 12, 2004
Apr. 12, 2007
Appeal 2010-011094
Application 12/147,046

3
Chen US 2007/0243131 A1 Oct. 18, 2007
H.F. MARK ET AL.1, ENCYCLOPEDIA OF POLYMER SCIENCE, (2d ed., vol. 3,
1985).

THE REJECTIONS ON APPEAL
Claims 1, 7, and 9-12 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Freyman. Ans. 3.
Claim 2-6 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Freyman and Muller. Ans. 6.
Claim 8 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Freyman and Kaasenbrood. Ans. 8.
Claim 13 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Freyman and Mark. Ans. 9.
Claim 14 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Freyman and Chen. Ans. 9.

ANALYSIS
Claim 1, the only independent claim at issue, stands rejected as
anticipated by Freyman. According to the Examiner, Freyman discloses
every element of claim 1. Ans. 4. The main issue in this case is whether
Freyman discloses the claimed “device to prevent the coolant from exiting
the distal end of the lumen.” The Examiner finds that Freyman discloses
this device in the form of plug 4. Id. Appellants contend, however, that
plug 4 does not prevent “coolant from exiting the distal end of a lumen, but
rather, discloses plugging a needle track in tissue left by needle withdrawal.”
App. Br. 9.

1 Hereafter referred to as “Mark.”
Appeal 2010-011094
Application 12/147,046

4
Freyman does not disclose that plug 4 is part of the device as claimed,
but that it is formed by one or more materials that are ejected from the
device during operation. See ¶ 0043; see also Fig. 2.2 This disclosure in
Freyman presents at least two issues as to the rejection of claim 1. First, as
Appellants point out, Freyman discloses that the plug is for the needle track
(App. Br. 9), i.e., plugging the wound, not for plugging the needle or any of
the lumens of the device itself. Second, even if the plug could plug the
needle or lumens, because the Examiner relies on a plug formed by the
operation of Freyman’s device as disclosed, the Examiner fails to account
for the fact that no lumens would then be available for passage of a coolant
as claimed.
Regarding the first issue, the rejection itself provides little explanation
as to how Freyman’s plug allegedly operates as claimed, and merely asserts
that it “prevent[s] the coolant from exiting the distal end of the cannula.”
Ans. 4 (emphasis omitted). As Appellants point out, however, “the track left
in the tissue by Freyman’s cannula may be filled with a plug of material
from the device of Freyman” and further that the “lumens of Freyman are
open at their distal end to enable passage of materials into tissue.” App. Br.
9. Additionally, as Appellants note, “plug 4 ‘functions to reduce outflow of
the therapeutic agent (injected into tissue when lumen 1 is deployed) from
the injection site.’” App. Br. 10 (quoting Freyman ¶ 0043). It is clear from
Freyman’s teaching that plug 4 is intended to block the needle track in the
tissue and the Examiner offers no cogent explanation as to how the plug
would plug one or more of lumens 1-3.

2 As seen in Figure 2, plug 4 is spaced from the distal end of lumens 2 and 3
and is at best depicted as formed around lumen 1.
Appeal 2010-011094
Application 12/147,046

5
The Examiner’s response is to restate that the plug is capable of
preventing the coolant from exiting the distal end of the lumen and then to
state that the claim language at issue is merely an intended use. Ans. 11.
This response still does not explain how the Examiner alleges that the
cannula is plugged when Freyman’s disclosure is clear that plug 4 is
intended to plug the tissue track. Given that this is an anticipation rejection,
we do not see any teaching in Freyman that would suggest the kind of
plugging that is claimed, nor has the Examiner adequately explained how
Freyman’s plug would be capable of performing this function.
Furthermore, turning to the second issue, as shown in the embodiment
of Figure 2 used by the Examiner, Freyman teaches that a therapeutic agent
is delivered via lumen 1. See also ¶ 0043. The remaining lumens, 2 and 3,
deliver second and third materials that interact to form the plug in the needle
track of the tissue. Id. In other words, at the point that the claimed plug is
allegedly formed, there would no longer be a lumen capable of permitting
the passage of a coolant as stated in the rejection. The Examiner relies upon
the disclosure of Freyman to create the plug and then states that the same
cannula, which has no remaining unused lumens, is then capable of
permitting the passage of a coolant without explaining how such a coolant
would be introduced. Accordingly, we conclude that the Examiner has not
adequately shown that Freyman discloses “a device to prevent the coolant
from exiting the distal end of the lumen.”
For the reasons stated above, we conclude that Freyman does not
disclose each and every element of the claimed invention arranged as in
independent claim 1. See Lindemann Machinenfabrik GmbH V. American
Hoist and Derrick Co. 730 F2d. 1454, 1458 (Fed. Cir. 1984). Accordingly,
Appeal 2010-011094
Application 12/147,046

6
we cannot sustain the rejection of claim 1 or of dependent claims 7, and 9-12
as anticipated by Freyman. Because the remaining obviousness rejections of
dependent claims 2-6, 8, 13, and 14 rely on the erroneous application of
Freyman described above combined with Muller, Kaasenbrood, Mark, or
Chen, and because none of these references overcomes the stated
deficiencies of Freyman, we also cannot sustain the rejections of claims 2-6,
8, 13, and 14.

DECISION
For the above reasons, we REVERSE the Examiner’s decision to
reject claims 1-14.

REVERSED

babc