Ex Parte O et al

Patent Trial and Appeal BoardFeb 13, 2019

12029990 (P.T.A.B. Feb. 13, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/029,990 02/12/2008 121974 7590 02/15/2019 KACVINSKY DAISAK BLUNI PLLC America's Cup Building 50 Doaks Lane Marblehead, MA 01945 FIRST NAMED INVENTOR Aidan O'Connor 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 7311502001 9846 EXAMINER COLELLO, ERIN L ART UNIT PAPER NUMBER 3771 NOTIFICATION DATE DELIVERY MODE 02/15/2019 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@kdbfirm.com ehysesani@kdbfirm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte AIDAN O'CONNOR, MARCIA S. BUISER, CHRISTOPHER J. ELLIOTT, MARY MCCARTHY, and INES BURGOS 1 Appeal 2017-011594 Application 12/029 ,990 Technology Center 3700 Before DONALD E. ADAMS, FRANCISCO C. PRATS, 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. Â§ 134(a) involving claims to an embolic coil and systems having such a coil. The Examiner's rejections of claims 1, 9-16, and 19 under 35 U.S.C. Â§Â§ 102(b) and 103(a) are appealed. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We reverse. 1 The Real Party in Interest is identified as "Boston Scientific Scimed, Inc." Br. 2. Appeal2017-011594 Application 12/029,990 STATEMENT OF THE CASE In summarizing the invention, the Specification states: In some systems, fibered coils can be placed in delivery catheters with fiber bundles oriented to facilitate delivery of the coil out of the catheter. In some coils, the distribution of the fiber bundles along the coil varies such that fiber bundle density, and thus column strength, is higher near the point at which deployment force is applied to the coil. Spec. 1. Independent claims 1 and 16, reproduced below, are representative: 1. A system comprising: a catheter having a delivery end; and an embolic coil at least partially disposed within the catheter, the embolic coil including a coil wire having an end fitting configured to releasably couple to an end fitting of a delivery wire, and multiple fiber bundles contacting the catheter, each fiber bundle having first and second bundle ends, wherein the first bundle end of each fiber bundle is attached to the coil wire, the second bundle end of each fiber bundle is opposite the first bundle end of each fiber bundle, each fiber bundle being disposed such that a distance from the first bundle end of a specific fiber bundle to the delivery end of the catheter is less than a distance from the second bundle end of the specific fiber bundle to the delivery end of the catheter; wherein the fiber bundles are disposed in at least one group and the spacing between adjacent fiber bundles is constant within each group of the at least one group, and wherein the coil is disposed in the catheter such that a second half of the coil is between a first half of the coil and the delivery end of the catheter, the bundles are distributed along an entire length of the first half of the coil, and more fiber bundles 2 Appeal2017-011594 Application 12/029,990 are attached to the first half of the coil than are attached to the second half of the coil. 16. A coil comprising: a coil wire having a first proximal end configured to provide an opposable surface configured for engagement of a pusher element, an opposite second end, and a midpoint located halfway between the first proximal end and the second distal end; and multiple fiber bundles attached to the coil wire; wherein (a) more fiber bundles are attached to the coil wire between the first proximal end and the midpoint than are attached to the coil wire between the second distal end and the midpoint, (b) the fiber bundles are disposed in at least one group and the spacing between adjacent fiber bundles is constant within each group of the at least one group, and ( c) the bundles are distributed along substantially all of a length of the coil between the first proximal end and the midpoint, and wherein the coil is an embolic coil. Br. 16, 17 (Claims Appendix). The following rejections are on appeal: Claim 16 stands rejected under 35 U.S.C. Â§ I02(b) as anticipated by Ken. 2 Final Action 2. Claims 1, 12, and 19 stand rejected under 35 U.S.C. Â§ I03(a) over Ken and Elliott. 3 Id. at 4. Claims 9 and 10 stand rejected under 35 U.S.C. Â§ I03(a) over Ken, Elliott, and Lorenzo. 4 Id. at 7. 2 US 2003/0093111 Al (published May 15, 2003) ("Ken"). 3 US 2006/0116711 Al (published June 1, 2006) ("Elliott"). 4 US 2005/0228435 Al (published Oct. 14, 2005) ("Lorenzo"). 3 Appeal2017-011594 Application 12/029,990 Claims 11 and 15 stand rejected under 35 U.S.C. Â§ I03(a) over Ken, Elliott, and Mariant. 5 Id. at 8. Claims 13 and 14 stand rejected under 35 U.S.C. Â§ I03(a) over Ken, Elliott, and Kida. 6 Id. at 8. DISCUSSION "[T]he examiner bears the initial burden, on review of the prior art or on any other ground, of presenting aprimafacie case ofunpatentability. [Only once] that burden is met, [does] the burden of coming forward with evidence or argument shift[] to the applicant." In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). "Anticipation requires that all of the claim elements and their limitations are shown in a single prior art reference." In re Skvorecz, 580 F.3d 1262, 1266 (Fed. Cir. 2009). "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). However, "obviousness requires a suggestion of all limitations in a claim." CFMT, Inc. v. Yieldup Int'! Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003) (citing In re Royka, 490 F.2d 981,985 (CCPA 1974)). The Examiner determined, regarding the anticipation of claim 16, that Ken disclosed the claimed coil. See Final Action 2-3; Answer 3-5. In particular, the Examiner cited Ken's Figures 6A, 6Bb, and 7 as disclosing a 5 US 6,143,007 (issued Nov. 7, 2000) ("Mariant"). 6 US 2005/0245963 Al (published Nov. 3, 2005) ("Kida"). 4 Appeal2017-011594 Application 12/029,990 coil that had more fiber bundles on its proximal half than its distal half, annotating Figure 6a as follows: Final Action 3 ( all text other than the figure number and reference numbers added by the Examiner); cf Ken ,r 32 (describing Fig. 6A). Examiner- annotated Figure 6A, above, shows an embolic coil having a first end 16 and a second end 18, which the Examiner has labeled proximal and distal, respectively, shows several coils between these ends, and also shows bundles of fibers 11 attached to the coil the three places. The Examiner has also added a reference to a "midpoint" on the coil. Based on this annotated drawing, the Examiner determined that there were more fiber bundles on a proximal half of the coil than on a distal half of the coil, using the identified midpoint as the separator between these halves. Final Action 3. 5 Appeal2017-011594 Application 12/029,990 Regarding the obviousness rejection of claim 1, the Examiner cited Ken and its annotated Figure 6A (above) in the same way as for the anticipation rejection. Final Action 4--5. The Examiner further determined that Ken "fails to explicitly disclose details of the coil within the delivery device and fails to explicitly disclose that the coil has an end fitting," and cited Elliot for such teachings. Id. at 4--6. Appellants argue: the Examiner had mischaracterized Ken because there was nothing to indicate that Figure 6A is drawn to scale, or that Ken discloses the preferential location of fiber bundles along the coil length. Indeed, the words "proximal" and "distal" do not appear anywhere in Ken. If identifiers are to be arbitrarily inserted, the proximal and distal ends might just as easily be switched, thereby negating the alleged teaching. Appellants further emphasized that Figures 6A, 6B and 7 of Ken . . . depict fiber bundles distributed along the entire coil length. An arbitrarily identified midpoint does not change this fact. Appeal Br. 10. Appellants' arguments are persuasive. We conclude the Examiner has unreasonably relied on the precise dimensions of Ken's figures and unsupported inferences relating thereto. Under [the] precedent [of our reviewing court] ... it is well established that patent drawings do not define the precise proportions of the elements and may not be relied on to show particular sizes if the specification is completely silent on the issue. See In re Wright, 569 F.2d 1124, 1127 (CCPA 1977) ("Absent any written description in the specification of quantitative values, arguments based on measurement of a drawing are of little value."). Hockerson-Halberstadt, Inc. v. Avia Group Intern., Inc., 222 F.3d 951, 956 (Fed. Cir. 2000). Without support in Ken's related written disclosure, the Examiner has identified one end of Ken's coil in Figure 6A as its proximal 6 Appeal2017-011594 Application 12/029,990 end or half and one end as its distal end or half. The Examiner has not reasonably articulated why Ken's coil necessarily has such a configuration. For claim 16, which only requires a coil, it does not appear that there are any distinguishing, claimed structural differences between its proximal and distal ends, other than the amount of fiber bundles. Claim 1, however, requires its coil to be positioned within a catheter, thus, there would be a proximal end and a distal end respective of the catheter's delivery end, which equate to claim 1 's recited "first half' and "second half," respectively. Each of claims 1 and 16 define the claimed coils and their structures by the differences in the number of fiber bundles on one half versus the other (proximal/first versus distal/second halves). The Examiner has merely designated a point on Ken's coil as its midpoint or halfway mark and determined that there are more fiber bundles illustrated on one side of this mark than the other. This is not sufficient and Ken's written disclosure neither supports such an interpretation of its drawings nor provides any reason to specifically modify its disclosed coils to place more fiber bundles on either half of its coil. For these reasons, we reverse the anticipation rejection over Ken. The obviousness rejections over Ken combined with other prior art also lack evidentiary support for the same reasons the anticipation rejection lacks evidentiary support; we, therefore, also reverse the Examiner's rejections for obviousness. SUMMARY The anticipation and obviousness rejections are each reversed. REVERSED 7