Ex Parte Elliott et al

Patent Trial and Appeal BoardNov 4, 2012

11000741 (P.T.A.B. Nov. 4, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte CHRISTOPHER J. ELLIOTT and PATRICK G. O’CONNOR ____________________ Appeal 2010-009289 Application 11/000,741 Technology Center 3700 ____________________ Before: LINDA E. HORNER, PATRICK R. SCANLON, and BRADFORD E. KILE, Administrative Patent Judges. KILE, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-009289 Application 11/000,741 2 STATEMENT OF THE CASE Christopher J. Elliot et al. (Appellants) appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1-13 and 31-43. Claims 21-25 have been withdrawn from consideration and claims 14-20 and 26-30 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. THE INVENTION The invention is directed to an embolic coil that is configured to fit within a lumen of a subject to provide a therapeutic vascular occlusion for a variety of medical applications. Spec. 1, ll. 5-13. Appellants’ Figure 1B is reproduced below: Figure 1B is a side view of an embolic coil 14 including a wire coil having relatively large outer diameter regions 20 and relatively smaller outer diameter regions 22 to which fibers 24 are attached. Spec. 5, ll. 24-27. Appeal 2010-009289 Application 11/000,741 3 Independent claim 1, reproduced below, is representative of the subject matter on appeal. 1. An embolic coil including a wire having a primary shape when extended in a lumen of a deployment device, the primary shape with a plurality of first regions each having a first outer diameter, each of the first outer diameters being substantially the same, and a plurality of second regions each having a second outer diameter that is smaller than the first outer diameter, each of the second outer diameters being substantially the same, wherein: the embolic coil is configured to fit within a lumen of a subject; at least one of the plurality of second regions is located between two of the plurality of first regions; and at least one of the first regions comprises multiple windings with adjacent windings being flush with each other. THE REJECTIONS Claims 1, 12, 13, and 31 stand rejected under 35 U.S.C. § 102(a) as being anticipated by Trout (US 2004/0127919 A1; pub. Jul. 1, 2004). Claims 2-5 and 11 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Trout in view of Mariant (US 5,639,277; iss. Jun. 17, 1997). Claims 6-9 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Trout in view of Jayaraman (US 2002/0010481 A1; pub. Jan. 24, 2002). Appeal 2010-009289 Application 11/000,741 4 Claim 10 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Trout in view of Brustad (US 2005/0165366 A1; pub. Jul. 28, 2005). Claims 32-36 and 38 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Trout in view of Ken (US 5,749,891; iss. May 12, 1998). Claims 37 and 39-42 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Trout in view of Ken and further in view of Mariant. Claim 43 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Trout in view of Tekulve (US 6,117,157; iss. Sep. 12, 2000). OPINION Claims 1, 12, 13, and 31 Representative independent claim 1 stands rejected as being anticipated by Trout. The Trout patent discloses an apparatus and method for reducing fluid loss during a surgical procedure. Trout, para. [0002]. Figures 2A, 4, and 5 of the Trout publication are reproduced below: Appeal 2010-009289 Application 11/000,741 5 The Trout publication discloses in Figures 2A and 4 a penetration apparatus 20 that operably carries a surgical fastener 30 in combination with a surgical fastener tip 40. The penetration apparatus 20 functions to punch through a surgical component 100 and affix the component to a blood vessel wall 200. Id., para. [0043]. In order to occlude an aperture punched through the vessel wall 200 by the penetration apparatus 20, an occlusive device 50 can be mounted within the tip 40 as illustrated in Figure 5. When the penetration shaft 20 is withdrawn, the occlusive device 50 will effectively collapse and plug the hole created in the blood vessel side wall when fixing the surgical component to the blood vessel 200. Figures 18A and 18C of the Trout publication are reproduced below: Appeal 2010-009289 Application 11/000,741 6 In the Figure 18 embodiment an insertion tip 40 is shown mounted upon a penetration shaft 20 similar to the arrangement shown in Figure 2A above. A fastener coil 30 is shown wound around the penetration shaft 20 and an occlusive coil 50 is shown interspersed between turns of the fastener coil 30. Trout, para. [0057]. The Examiner found that Trout discloses a coil including a metal wire having a primary shape with a plurality of first regions and a plurality of second regions having a diameter less than the diameter of the first regions. Ans. 4. With respect to the claim recitation “embolic,” the Examiner determined that the term is a statement of intended use and that Trout’s coil could fit within a lumen of a subject as recited in the claims. Ans. 9. Appellants assert that one of skill in the art would readily appreciate that Trout does not disclose an embolic coil. App. Br. 4. Trout, according to Appellants, discloses a “surgical fastener” used to attach a surgical component to tissue. Id. Moreover, Appellants assert that Trout discloses a fastener 30 and an occlusive device 50 which are two distinct elements. Reply Br. 1. A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference. See, e.g., Structural Rubber Prods. Co. v. Park Rubber Co., 749 F.2d 707, 715 (Fed. Cir. 1984); Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 771 (Fed. Cir. 1983). Here, we find that the Trout publication does not anticipate claim 1. We find that the Trout publication does not disclose a single embolic coil of different diameters as claimed. Trout discloses a fastener coil 30 and a separate occlusion coil 50 in Figure 18. We reverse the Examiner’s rejection of claim 1 as being anticipated. Appeal 2010-009289 Application 11/000,741 7 For the same reasons as stated with respect to our reversal of the Examiner’s rejection of claim 1 we also reverse the Examiner’s rejection of dependent claims 12, 13, and 31, which directly depend from claim 1, as being anticipated by Trout. Claims 2-11 and 32-43 The Examiner rejected claims 2-11 and 32-43 over various combinations of Trout in view of Mariant, Jayaraman, Brustad, Ken, and/or Tekulve. Each of these claims is a dependent claim and directly or ultimately depends from claim 1 which we hold is not anticipated for the reasons as stated supra. Each of these dependent claims stands rejected over the Trout publication as the primary reference. None of the secondary references applied by the Examiner, however, cures the deficiencies of the primary Trout publication and therefore we also reverse the Examiner’s rejection of claims 2-11 and 32-43 as being unpatentable. DECISION The decision of the Examiner to reject claims 1-13 and 31-43 is REVERSED. REVERSED hh