Michael Marks et al.

Patent Trials and Appeals Board

Nov 19, 2020

2020003230 (P.T.A.B. Nov. 19, 2020)

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.
13/543,657 07/06/2012 Michael P. Marks LIKMA.006P1 8450
20995 7590 11/19/2020
KNOBBE MARTENS OLSON & BEAR LLP
2040 MAIN STREET
FOURTEENTH FLOOR
IRVINE, CA 92614
EXAMINER
DANG, ANH TIEU
ART UNIT PAPER NUMBER
3771
NOTIFICATION DATE DELIVERY MODE
11/19/2020 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):
efiling@knobbe.com
jayna.cartee@knobbe.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MICHAEL P. MARKS and LIKE QUE

Appeal 2020-003230
Application 13/543,657
Technology Center 3700
____________

Before KENNETH G. SCHOPFER, BRADLEY B. BAYAT, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

SCHOPFER, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s decision to reject claims 25–28, 38, 39, and 46.1 We have
jurisdiction under 35 U.S.C. § 6(b). An oral hearing was held on November
6, 2020.
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies ThrombX Medical, Inc., as the real party
in interest. Appeal Br. 3.
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BACKGROUND
The Specification discloses that “[t]he present disclosure is generally
related to a device used in a body lumen and a method of using the same.”
Spec. 1. More specifically, the claims on appeal are directed to devices used
to remove occlusions present in a blood vessel. See Appeal Br. 26.
ILLUSTRATIVE CLAIM
Claim 25 is the only independent claim on appeal and recites:
25. A device for use in a blood vessel to remove an occlusion
present in the blood vessel, the device comprising:
a proximal end;
a distal end;
a handle at the proximal end of the device;
a tubing compartment, which comprises a pusher tubing
and a connecting tubing fixedly connected to each other;
a central wire comprising a proximal end and a distal end
thereof; and
an engaging compartment at or near the distal end of the
device, wherein the engaging compartment comprises:
a proximal engaging element comprising a plurality of
wires or struts, said proximal engaging element being open at a
distal end of the proximal engaging element, wherein the
proximal engaging element comprises a concave bend causing
the distal end of the proximal engaging element to bend towards
a central axis of the proximal engaging element such that the
distal end points towards the central axis and the distal end is
closer to the central axis than a part of the proximal engaging
element proximal to the distal end; and
a distal engaging element comprising a plurality of wires
or struts forming a web or mesh, said distal engaging element
being self-expandable, said distal engaging element being closed
at a proximal end of the distal engaging element;
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wherein the proximal end of the distal engaging element fits
inside the distal end of the proximal engaging element with room
for a portion of the occlusion to fit therein, such that said portion
of the occlusion can be captured between the proximal end of the
distal engaging element and the distal end of the proximal
engaging element when the distance between the distal engaging
element and the proximal engaging element is shortened,
wherein the proximal end of the distal engaging element is
fixed at the distal end of the central wire, said central wire
extending from the proximal end of the distal engaging element
to the handle at the proximal end of the device, whereby the
location of the distal engaging element in the blood vessel or its
position with respect to the proximal engaging element is
controlled by movement of the central wire and configured to be
locked at the proximal end of the device once the occlusion is
engaged; and
wherein the distal engaging element is configured to hold
the occlusion in all of the following ways:
(d) engaging the occlusion with a lateral side of the
distal engaging element,
(e) frictionally engaging the occlusion between the
lateral side of the distal engaging element and the wall of
the blood vessel, and
(f) grabbing the occlusion between the proximal
structure and the distal structure, while the device moves
the occlusion within the blood vessel.
Appeal Br. 26–27.
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REJECTION
The Examiner rejects claims 25–28, 38, 39, and 46 under 35 U.S.C.
§ 103(a) as unpatentable over Martin,2 in view of Palmer3 and Wholey.4
DISCUSSION5
As discussed below, we are persuaded of error by Appellant’s
argument that the Examiner has not articulated an adequate reason to support
the combination proposed. See Appeal Br. 11–14.
With respect to claim 25, the Examiner finds that Martin discloses a
device for use in a blood vessel for removing an occlusion including a
proximal end, a distal end, a tubing compartment, a central wire, and an
engaging compartment including proximal and distal engaging elements.
Final Act. 5 (citing Martin ¶¶ 112–114, Figs. 5D–5F). However, the
Examiner acknowledges that Martin does not disclose that the distal
engaging element is configured as required by the claim. Id. Regarding this
element, the Examiner further relies on Palmer. Id. at 5–6. The Examiner
finds that
Palmer . . . teaches a emboli extractor structure (figure 8)
comprising a closed proximal end with a proximal end fixed at
the distal end of a central wire, wherein the structure is
configured to compress embolic material against the vessel wall

2 Martin et al., US 2009/0299393 A1, pub. Dec. 3, 2009 (hereinafter
“Martin”).
3 Palmer et al., US 6,458,139 B1, iss. Oct. 1, 2002 (hereinafter “Palmer”).
4 Wholey et al., US 2003/0176886 A1, pub. Sept. 18, 2003 (hereinafter
“Wholey”).
5 On August 25, 2020, in a Decision on Appeal (2019-002767) for a related
application, the Board reversed the Examiner’s rejections similarly relying
on the combination of Martin and Palmer.
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(C:9, L:1-2) while providing a relatively larger-cross section for
blood to flow through its distal end during a procedure.
Id. at 6. The Examiner then determines:
Therefore, it would have been obvious to one with ordinary skill
in the art at the time of the invention to substitute the distal
structure for extracting an occlusion with the extractor structure
of Palmer, in order to provide a distal structure with a relatively
large cross-section for blood to flow through its distal end while
the distal structure traps or engages the occlusion against the
vessel wall, wherein the proximal end of the distal engaging
element would thus fit inside the distal end of the proximal
engaging element with room for a portion of the occlusion to fit
therein, wherein the proximal end of the distal engaging element
is fixed at the distal end of the central wire since the two were
art-recognized embolic extraction structures at the time of the
invention and it has been held that mere substitution of art-
recognized equivalents at the time of the invention involves
routine skill in the art.
Id. The Examiner further acknowledges that the combination of Martin and
Palmer does not teach that the distal end of the proximal engaging element
points inward, and the Examiner relies on Wholey as teaching that it was
known in the art “to make the tips of the struts of an embolic protection
device curved inward to minimize trauma to the blood vessel wall.” Id. at 7.
The Examiner determines that it would have been obvious to modify the
combination of Martin and Palmer based on this teaching to arrive at the
claimed device. Id.
The key to supporting a conclusion of obviousness under 35 U.S.C.
§ 103 is the clear articulation of a reason why the claimed invention would
have been obvious. The Court in KSR International Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007) indicated that the analysis supporting a rejection under
35 U.S.C. § 103 should be made explicit. The Federal Circuit has stated that
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“rejections on obviousness grounds cannot be sustained by mere conclusory
statements; instead, there must be some articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness.” In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited with approval in KSR, 550
U.S. at 418).
Here, we determine that the proposed reasons provided by the
Examiner do not amount to a sufficient articulated reason with some rational
underpinning to support the conclusion that the claimed device would have
been obvious. Regarding the Examiner’s reliance on equivalents, we agree
with Appellant that the Examiner has not established adequately that the
elements to be substituted are equivalents. See Appeal Br. 11–13. Although
Palmer’s extractor structure 90 and Martin’s proximal and distal structures
may each ultimately act to remove an occlusion, the Examiner does not
persuade us that these are art-recognized equivalents, at least because they
operate in different ways. See id. As evidence that these are art recognized
equivalents, the Examiner notes that Palmer discloses the structure depicted
in Figure 8, which is relied upon in the rejection, and a different extractor
structure 80 in Figure 7, which the Examiner indicates is similar to Martin’s
structure. Ans. 4–5. Yet, the mere similarity in results, i.e. removal of an
occlusion, when using either of these two devices in Palmer does not explain
adequately how the art recognizes the equivalence between Martin’s distal
structure and Palmer’s extractor structure 90.
Rather, we find that the art of record provides evidence that these are
not equivalent structures based on their different modes of operation. Martin
discloses a method of extraction in which an occlusion is encapsulated by
proximal and distal structures in order to “overcome the friction forces
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acting on the obstruction” and the occlusion is removed “without losing or
fractionating the obstruction.” See Martin ¶¶ 23, 114. In contrast, Palmer
discloses “a hollow knitted or mesh extractor 90” that is designed “to trap
undesirable material in a blood vessel or compress the same against the
vessel wall.” Palmer col. 8, l. 55–col. 9, l. 2. Thus, Palmer contemplates
pressing the occlusion against a vessel wall in order to extract it, which
undoubtedly provides an increase in the friction forces acting on the
obstruction. Given this difference, we disagree with the Examiner that one
of ordinary skill in the art would have recognized these as equivalent
structures.
The Examiner also states that the rejection “relies on the improved
blood flow through the distal end of the embolic capturing device in Figure 8
of Palmer,” in addition to the reason provided above. See Final Act. 6; see
also Ans. 6. The Examiner does not explain adequately how this feature of
Palmer would have led to a modification of Martin’s device. For example,
the Examiner does not explain why improved blood flow would have been
desirable in using Martin’s device and the Examiner does not provide any
evidence or explanation showing that the proposed substitution would have
actually resulted in improved blood flow over the unmodified distal structure
disclosed by Martin. Thus, we agree with Appellant’s argument regarding
this rationale. Appeal Br. 13–14.
Based on the foregoing, we determine that the Examiner has not
provided a sufficient reason with rational underpinning to support the legal
conclusion of obviousness. Further, the Examiner’s reasoning and findings
with respect to Wholey, do not cure the deficiency in the proposed
combination of Martin and Palmer. Accordingly, we do not sustain the
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rejection of claim 25. For the same reasons, we do not sustain the rejection
of dependent claims 26–28, 38, 39, and 46.

DECISION
We reverse the rejection of claims 25–28, 38, 39, and 46.

CONCLUSION
We REVERSE the rejection of claims 25–28, 38, 39, and 46.
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)Basis Affirmed Reversed
25–28, 38,
39, 46
103(a) Martin, Palmer,
Wholey
25–28,
38, 39,
46

REVERSED