Ex Parte Jones et al

Patent Trial and Appeal Board

Nov 21, 2012

11821340 (P.T.A.B. Nov. 21, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte DONALD K. JONES, JUAN A. LORENZO,
MARK L. POMERANZ, and DARREN SHERMAN
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Appeal 2011-013340
Application 11/821,340
Technology Center 3700
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Before JEFFREY N. FREDMAN, STEPHEN WALSH, and
ERICA A. FRANKLIN, Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the rejection of
claims directed to an implantable vascular occlusive device. The Patent
Examiner rejected the claims for obviousness. We have jurisdiction under
35 U.S.C. § 6(b). We affirm.
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Application 11/821,340

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STATEMENT OF THE CASE
Claims 1-7 are on appeal. Claim 1 is representative and reads as
follows:
1. An implantable vascular occlusive device for therapeutic treatment of
a patient by aiding in occluding blood in a selected portion of the vasculature
or in filling an aneurysm, comprising:
a vascular occlusive embolic coil;
a thrombus-inducing bioactive agent disposed on said embolic coil;
and,
an outer barrier disposed on said bioactive agent to prevent exposure
of said thrombus-inducing bioactive agent to bodily fluid when said vascular
occlusive device is inserted into a blood vessel, said outer barrier exhibiting
the characteristic of being substantially inert to bodily fluid but dissolving
when exposed to an external agent, wherein the outer barrier is a coating,
and wherein said characteristic of being substantially inert further comprises
being non-water soluble.

The Examiner rejected claims 1-7 under 35 U.S.C. § 103(a) as
unpatentable over Wallace et al. (US 6,280,457 B1, issued Aug. 28, 2001)
and Sirhan et al. (US 2002/0082679 A1, issued Jun. 27, 2002).

OBVIOUSNESS
We conclude that the Examiner presented a sound case for
obviousness based on Wallace and Sirhan, and we adopt the Examiner’s
findings and conclusions as our own. (See Ans. 4-5.)
Appellants point to the different vascular applications that Wallace
and Sirhan taught: Wallace used its device to occlude, but Sirhan used its
device to promote blood flow. (App. Br. 5.) Appellants contend that “one
of ordinary skill in the art would not look to Sirhan for a teaching of how to
modify Wallace's device, which is intended to induce a thrombus, because
Sirhan is teaching the exact opposite, i.e., to restore adequate blood flow.”
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(Id.) “Appellants maintain that Sirhan is not in Appellants field of
endeavor.” (Id.)
The Examiner was unpersuaded, and took a broader view, arguing
first:
Both the Wallace et al and Sirhan et al references have the same
broad concern of delivering a therapeutic agent to a blood
vessel of a patient. As the devices of both the Wallace et al and
Sirhan et al references are delivered to environments (i.e., blood
vessels) having similar characteristics (i.e., adjacent tissue,
blood flow, etc.), one of ordinary skill in the art would
recognize the principles of delivering a therapeutic agent, as
taught by Sirhan et al, as being readily adaptable and applicable
to the delivery of the therapeutic agent disclosed by Wallace et
al.

(Ans. 6.) Next, the Examiner explained why Appellants’ contention
concerning the field of endeavor was unpersuasive:
Sirhan et al is in the field of appellant's endeavor (implantable
vascular implants) and is reasonably pertinent to the particular
problem with which the appellant was concerned (i.e.,
controlling delivery of a therapeutic agent to a target vascular
site).

(Id. at 7.)
After reviewing the evidence and arguments, we conclude that the
Examiner has the better position, and we adopt the Examiner’s response as
our own. See Ans. 6-7; see also In re Clay, 966 F.2d 656, 658-9 (Fed. Cir.
1992) (prior art is analogous when (1) it is from the same field of endeavor,
regardless of the problem addressed, or (2) the reference is not within the
field of the inventor’s endeavor, but is still is reasonably pertinent to the
particular problem with which the inventor is involved); KSR Int’l Co. v.
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Application 11/821,340

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Teleflex, Inc., 550 U.S. 398, 402 (2007) (“familiar items may have obvious
uses beyond their primary purposes.”). The rejection is affirmed.
Claims 2-7 have not been argued separately and therefore fall with
claim 1. 37 C.F.R. § 41.37(c)(1)(vii).

SUMMARY
We affirm the rejection of claims 1-7 under 35 U.S.C. § 103(a) as
unpatentable over Wallace and Sirhan.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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