Ex Parte ElliottDownload PDFPatent Trial and Appeal BoardMay 23, 201714068509 (P.T.A.B. May. 23, 2017) Copy Citation 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. 2 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”). 3 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”). 4 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 5 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. 6 Appeal 2016-001496 Application 14/068,509 SUMMARY The rejections under 35 U.S.C. §§ 102 and 103 are reversed. REVERSED 7 Copy with citationCopy as parenthetical citation