Ex Parte Jaeger et al

Patent Trial and Appeal BoardNov 7, 2014

11270035 (P.T.A.B. Nov. 7, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte KEVIN M. JAEGER and CLIFFORD TEOH ____________ Appeal 2012-006688 Application 11/270,035 Technology Center 3700 ____________ Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and CHRISTOPHER G. PAULRAJ, Administrative Patent Judges. ADAMS, Administrative Patent Judge. DECISION ON APPEAL1 This appeal under 35 U.S.C. § 134 involves claims 1–13 (App. Br. 2). Examiner entered rejections under 35 U.S.C. § 102(b) and 35 U.S.C. § 103(a). We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 The Real Party in Interest is Stryker Corporation and Stryker NV Operations Ltd. (App. Br. 2). Appeal 2012-006688 Application 11/270,035 2 STATEMENT OF THE CASE The claims are directed to vaso-occlusive device and a method of occluding a body cavity. Claims 1 and 12 are representative and are reproduced in the Claims Appendix of Appellants’ Brief. Claims 1–4 and 9–13 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Ferrera.2 Claims 5–8 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Ferrera. Anticipation: ISSUE Does the preponderance of evidence on this record support Examiner’s finding that Ferrera expressly or inherently teaches a device, wherein the distal portion does not extend distally beyond the proximal portion in the relaxed configuration as is required by Appellants’ claimed invention? FACTUAL FINDINGS (FF) FF 1. Ferrera [C]oncerns a vaso[-]occlusive device that has a first elongated, reduced friction configuration in which the vaso[-]occlusive device may be deployed through a catheter or cannula to an anatomical cavity at a site in the vasculature to be treated, and that has a three dimensional second configuration assumed by the vaso[-]occlusive device at the site to be treated for filling the anatomical cavity. (Ferrera, col. 1, ll. 16–23.) 2 Ferrera et al., US 6,638,291 B1, issued Oct. 28, 2003. Appeal 2012-006688 Application 11/270,035 3 FF 2. Ferrera’s Figure 3A is reproduced below: “FIG. 3A is a side elevational view showing [the three dimensional configuration 8 of the vaso-occlusive coil 1 of Ferrera’ invention] including a two-dimensional substantially J-shaped portion [9]” (id. at col. 4, ll. 28–30; see generally Ans. 4–5). “FIG 3B is a side elevational view showing [the three dimensional configuration 8 of the vaso-occlusive coil 1 of Ferrera’s invention] including a helically shaped portion [9’]” (id. at ll. 31–33; see generally Ans. 5). FF 3. Ferrera teaches that the substantially J-shaped coil portion 9 [or 9’], fills and reinforces “the distal, three dimensional shaped portion 8 when the vaso[-]occlusive device is implanted at the site in the vasculature to be treated” (id. at col. 6, ll. 7–19; Ans. 5 and 7). FF 4. Ferrera teaches that The vaso[-]occlusive device comprises at least one strand of a flexible material formed to have a first inoperable, substantially linear configuration for insertion into and through a catheter or cannula to a desired portion of the vasculature to be treated, and a second operable, three dimensional configuration for occluding the desired portion of the vasculature to be treated. The vaso[-]occlusive device . . . may optionally include a portion having a second operable, substantially J-shape or helical shape for filling and reinforcing the distal, three dimensional box or cube shaped portion when it is implanted at the site in the vasculature to be treated. (Id. at col. 3, ll. 35–42.) Appeal 2012-006688 Application 11/270,035 4 ANALYSIS Appellants’ vaso-occlusive device comprises: (i) a proximal portion having a random, complex, three-dimensional relaxed configuration and a first overall diameter and (ii) a distal portion having a circular two- dimensional or three-dimensional shape and a second overall diameter (see Appellants’ claim 1). Appellants’ independent claim 1 further requires that: (a) the second overall diameter is less than the first overall diameter and (b) the distal portion does not extend distally beyond the proximal portion in the relaxed configuration (id.). Appellants’ claims 2–11 depend from claim 1. Appellants’ method of occluding a body cavity comprises the step of introducing the vaso-occlusive device of claim 1 into a body cavity (see Appellants’ claim 12). Appellants’ claim 13 depends from claim 12. Examiner finds that “the distal portion [of Ferrera’s device] does not extend distally beyond said proximal portion in the relaxed configuration (column 6, lines 7-13)” (Ans. 5; Cf. FF 3). Appellants disagree. Initially, Appellants note that Ferrera’s “proximal portion [9 or 9’] . . . fills and reinforces the distal portion [8],” which “is exactly opposite of the claimed invention which requires that the distal portion have a smaller diameter than the proximal portion” (App. Br. 4–5; FF 2–3; Cf. Ans. 7 (“Regardless of how the structural limitations of the prior art are named, if they are capable of performing the functional tasks disclosed by the present application, then the prior art structure is valid”)). Nevertheless, Appellants contend that [E]ven if Ferrera . . . is interpreted to be rotated 180 degrees so that the proximal portion is the distal portion and vice versa, it does not disclose Applicants’ claimed invention because . . . portion 9 that the Examiner interprets as the distal portion Appeal 2012-006688 Application 11/270,035 5 clearly extends beyond the what is assumed to be the proximal portion 8, in the relaxed configuration. (App. Br. 5.) We agree. Ferrera’s device has two configurations: (1) an “inoperable, substantially linear configuration for insertion into and through a catheter or cannula to a desired portion of the vasculature” and (2) an “operable, three dimensional[, i.e. relaxed,3] configuration for occluding the desired portion of the vasculature” (FF 4). As Appellants explain, [T]here is no teaching, or even a suggestion, that . . . portion 9 [or 9’] of Ferrera . . . is located within the bounds of the proximal portion in a “relaxed configuration.” Furthermore, there is no teaching that even when portion 9 [or 9’] is filling and reinforcing the portion 8 that the portion 9 [or 9’] does not still extend distally beyond the portion 8 (App. Br. 5.) We agree. “It is well settled that a prior art reference may anticipate when the claim limitations not expressly found in that reference are nonetheless inherent in it. Under the principles of inherency, if the prior art necessarily functions in accordance with, or includes, the claimed limitations, it anticipates.” In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002) (citations and internal quotation marks omitted). “Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set 3 We recognize the dispute on this record regarding the use of the term “relaxed” (see App. Br. 5; Reply Br. 2–3; Cf. Ans. 8). We find that whether or not some pressure is exerted on the device when it is in the vasculature that denies the device of Appellants and Ferrera from achieving a “fully” relaxed state is inconsequential to this record. Both devices must achieve a three-dimensional configuration. The question is, therefore, whether the evidence supports a finding that Ferrera’s device has the same three- dimensional configuration as is required by Appellants’ claimed invention. Appeal 2012-006688 Application 11/270,035 6 of circumstances is not sufficient.” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations and internal quotation marks omitted). In sum, Examiner failed to establish an evidentiary basis on this record to support a finding that Ferrera expressly or inherently teaches a device, wherein the distal portion does not extend distally beyond the proximal portion in the relaxed configuration as is required by Appellants’ claimed invention, even if Ferrera’ device is interpreted to be rotated 180 degrees so that the proximal portion is the distal portion and vice versa. CONCLUSION OF LAW The preponderance of evidence on this record fails to support Examiner’s finding that Ferrera expressly or inherently teaches a device, wherein the distal portion does not extend distally beyond the proximal portion in the relaxed configuration as is required by Appellants’ claimed invention. The rejection of claims 1–4 and 9–13 under 35 U.S.C. § 102(b) as being anticipated by Ferrera is reversed. Obviousness: ISSUE Does the preponderance of evidence relied upon by Examiner support a conclusion of obviousness? FACTUAL FINDINGS (FF) FF 5. Examiner “fails to explicitly mention the second overall diameter being at least 10%-75% smaller than the first overall diameter,” but finds that Ferrera suggests “a distal portion of the device being reduced in diameter (Figure 3A)” (Ans. 6). Appeal 2012-006688 Application 11/270,035 7 ANALYSIS Based on Ferrera, Examiner concludes that, at the time Appellants’ invention was made, it would have been prima facie obvious “to find the optimum ratio between the first overall diameter and the distal end second diameter since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272 . . . (CCPA 1980)” (Ans. 6). Examiner failed to establish that it would have been prima facie obvious to modify Ferrera’s device such that the distal portion does not extend distally beyond the proximal portion in the relaxed configuration as is required by Appellants’ claimed invention (see generally App. Br. 8). CONCLUSION OF LAW The preponderance of evidence relied upon by Examiner fails to support a conclusion of obviousness. The rejection of claims 5–8 under 35 U.S.C. § 103(a) as unpatentable over Ferrera is reversed. REVERSED cdc