Ex Parte Elliott

Patent Trial and Appeal Board

May 23, 2017

14068509 (P.T.A.B. May. 23, 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.
14/068,509 10/31/2013 Christopher J. Elliott 7310463001 9605
121974 7590 05/25/2017
K AC VINSKY DAISAK BLUNI PLLC
America's Cup Building
50 Doaks Lane
Marblehead, MA 01945
EXAMINER
YABUT, DIANE D
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
05/25/2017 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):
bbonneville @ kdbfirm .com
docketing @ kdbfrrm. com
ndeane @ kdbfirm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER J. ELLIOTT1
Appeal 2016-001496
Application 14/068,509
Technology Center 3700
Before ERIC B. GRIMES, JOHN E. SCHNEIDER, and RYAN H. FLAX,
Administrative Patent Judges.
FLAX, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) involving
claims directed to a system for treating a patient, comprising a catheter, a
delivery wire, and an embolic device. Claims 31, 32, 34-42, and 45 are on
appeal as rejected under 35 U.S.C. §§ 102(b) and 103(a).2 We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 Appellant identifies the Real Party in Interest as Boston Scientific Scimed,
Inc. Br. 2.
2 Claim 44 is also pending. The Examiner objected to claim 44, but did not
reject it. Claim objections are petitionable, not appealable, so claim 44 is
not on appeal. MPEP § 1002.02(c)(4).
Appeal 2016-001496
Application 14/068,509
STATEMENT OF THE CASE
The Specification states, “[tjherapeutic vascular occlusions
(embolizations) are used to prevent or treat pathological conditions in situ.
Embolic coils can be used to occlude vessels in a variety of medical
applications.” Spec 12.3 The Specification’s Figure 16 is reproduced
below:
4CK): Vj
Figure 16 shows an embolic coil system. Id. 1 58. The Specification
states:
in certain embodiments, an embolic coil or an embolic coil
delivery wire can include a head having one or more grooves in
it. For example, FIG. 16 shows an embolic coil system 400
including an embolic coil delivery wire 402 with arms 404 and
406 extending from it, and an embolic coil 408 having a head
410. Head 410 includes a helical groove 412 on its surface 414.
The tip 416 of arm 404 and the tip 418 of arm 406 each are
disposed within groove 412. The presence of groove 412 on head
410 can, for example, enhance the engagement of arms 404 and
406 with head 410.
Spec. 1130.
3 “Specification” or “Spec.” refers to the published version of the application
(Pub. No. US 2014/0081313 Al, pub. Mar. 20, 2014); used because of the
general poor quality of copy of the original Specification of record.
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Appeal 2016-001496
Application 14/068,509
Claims 31 and 40 are independent claims. We find claim 31 to be
representative; it reads as follows:
31. A system for treating a patient, comprising:
a catheter having a proximal end, a distal end, and a lumen
extending from the proximal end to the distal end;
a delivery wire slidably disposed within the lumen, the delivery
wire having a proximal end and a distal end; and
an embolic device having a proximal and a distal end, wherein
(a) the distal end of the delivery wire includes a structure
expandable between first and second positions relative to
the distal end of the catheter,
(b) the proximal end of the embolic device includes a head
with a helical groove on the outer surface of the head
configured for enhanced engagement with the structure,
(c) the structure interfits with the head when in the first
position, and
(d) the structure assumes the second position when the
distal end of the delivery wire is positioned distally to the
lumen of the catheter.
Supplement to App. Br. 2 (Claims App’x.) (May 14, 2015).
The following rejections are on appeal:
Claims 31, 40, and 42 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Barry.4 Final Action 4.
Claims 31, 39, 40, 42, and 45 stand rejected under 35 U.S.C. § 102(b)
as anticipated by Tsugita.5 Id. at 6.
4 U.S. Patent No. US 6,277,125 B1 (issued Aug. 21, 2001) (“Barry”)
5 U.S. Patent No. US 6,371,971 B1 (issued Apr. 16, 2002) (“Tsugita”).
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Appeal 2016-001496
Application 14/068,509
Claims 32 and 35 stand rejected under 35 U.S.C. § 103(a) over
Tsugita and Keegan.6 Id. at 7.
Claim 34 stands rejected under 35 U.S.C. § 103(a) over Tsugita and
Lowe.7 Id. at 8.
Claims 36 and 37 stand rejected under 35 U.S.C. § 103(a) over
Tsugita and Russell.8 Id. at 9.
Claim 38 stands rejected under 35 U.S.C. § 103(a) over Tsugita and
West.9 Id. at 10.
Claim 41 stands rejected under 35 U.S.C. § 103(a) over Tsugita and
Diaz.10 Id. at 10.
DISCUSSION
Rejection over Barry
In rejecting the claims as anticipated by Barry, the Examiner finds that
the unlabeled feature at the end of the “embolic coil 20,” shown in, e.g.,
Figure 4 of Barry, satisfies the claim element “the embolic device includes a
head with a helical groove on the outer surface of the head.” See Final
Action 5 (reproduction of Barry’s Fig. 4, annotated). As the recited “helical
groove,” the Examiner can only be identifying the coil portion of the
embolic device disclosed in Barry, as the remainder of the portion of the
device identified as the head, and encircled by the Examiner’s annotation to
6 U.S. Patent App. Pub. No. US 2003/0212429 A1 (pub. Nov. 13, 2003)
(“Keegan”).
7 U.S. Patent App. Pub. No. US 2006/0184193 A1 (pub. Aug. 17, 2006)
(“Fowe”).
8 U.S. Patent No. US 6,958,074 B2 (issued Oct. 25, 2005) (“Russell”).
9 U.S. Patent No. US 7,942,894 B2 (issued May 17, 2011) (“West”).
10 U.S. Patent No. US 7,201,768 B2 (issued Apr. 10, 2007) (“Diaz”).
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Appeal 2016-001496
Application 14/068,509
Barry’s Figure 4, is shown as smooth-surfaced and without any outer surface
feature. Id.
Appellant takes issue with the Examiner’s determination. Appellant
argues that Barry does not disclose an embolic device with a helically
grooved head. Br. 10. We find Appellant has the better position.
Even if the Examiner’s position that the “head” of the device
disclosed by Barry can include both the device’s smooth, protruding end and
the remainder of the device that is also within the disclosed jaws/arms
(encircled by the Examiner’s annotation at Final Action 5), we do not agree
that there is a “helical groove” present because the portion of the device that
could be considered “helical” is not a groove, but is a coil. Once the device
is deployed (released from the jaws/arms), and the coil expands, or at least
changes shape, and the difference between the coil and a groove would be
apparent.
For these reasons, we reverse the Examiner’s anticipation rejection
over Barry.
Rejections over Tsugita
Appellant argues all rejections over Tsugita based on the same
contention, which is that it was improper for the Examiner to combine
features of different Tsugita embodiments illustrated in Figures 9A, 9B,
10 A, and 10B for a disclosure of both a helically grooved head and an
associated expandable, head-holding structure. Br. 11—12.
In response, the Examiner points to the express disclosure in Tsugita,
“it will be understood that each and every feature described for any given
embodiment or in any reference incorporated herein, can be combined with
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Appeal 2016-001496
Application 14/068,509
any of the other embodiments described herein.” Ans. 3 (citing Tsugita
15:17-21).
We find Appellant has the better position. While, generally, the
Examiner is correct that the various features disclosed in the several
embodiments of Tsugita could be mixed and matched, this principle only
extends so far as would be reasonable based on the functions of the features
disclosed by Tsugita. Here, the Examiner seeks to combine a threaded head,
which is disclosed by Tsugita (13:19-28) as specifically configured to be
screwed into and out of an associated interlock at the end of a delivery wire,
with the pivoting claws of another embodiment, which are specifically
configured (13:8—17) to engage a recess in the head of the associated device.
There is simply no showing by the Examiner of either motivation to make
this modification or rationale that it would reasonably be expected to be
successful. For example, there is no evidence, based on any of the cited
prior art, that it would be desirable to have a threaded head engaged by
claws/arms or that such an engagement would function to properly hold and
release the so-headed-device.
Moreover, we note Tsugita is not directed to an embolic device, but,
to a filter device. See, e.g., Tsugita Abstract. The Examiner does not show
that the two devices are the same or sufficiently the same to either anticipate
or render obvious the claimed device.
For these reasons, we reverse the anticipation and obviousness
rejections over Tsugita.
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Appeal 2016-001496
Application 14/068,509
SUMMARY
The rejections under 35 U.S.C. §§ 102 and 103 are reversed.
REVERSED
7