Ex Parte BARRY et al

Patent Trial and Appeal Board

Dec 13, 2018

12695035 (P.T.A.B. Dec. 13, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/695,035 01/27/2010
21971 7590 12/17/2018
WILSON, SONSINI, GOODRICH & ROSATI
650 PAGE MILL ROAD
PALO ALTO, CA 94304-1050
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
David BARRY
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.
41507-711.201 7121
EXAMINER
HOLLM, JONATHAN A
ART UNIT PAPER NUMBER
3771
NOTIFICATION DATE DELIVERY MODE
12/17/2018 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):
patentdocket@wsgr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID BARRY, BEN TOMPKINS, DELILAH HUI,
and ARTHUR JOHN LOCKHART
Appeal2017-009247
Application 12/695,035 1
Technology Center 3700
Before FRANCISCO C. PRATS, ELIZABETH A. LA VIER, and
DAVID COTTA, Administrative Patent Judges.
LA VIER, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants seek review of the
Examiner's rejections of claims 1, 2, 5-7, 11-14, and 18. We have
jurisdiction under 35 U.S.C. § 6(b ).
For the reasons set forth below, we AFFIRM.
1 Appellants identify the real party in interest as PENUMBRA, INC. Appeal
Br. 3.
Appeal2017-009247
Application 12/695,035
BACKGROUND
The Specification relates to intravascular implants, particularly
embolic coils. Spec. 1:4--5. As the Specification explains, "[e]mbolization
is a commonly practiced technique for treatment of brain aneurysm,
arteriovenous malformation, tumors, and other conditions for which vessel
occlusion is a desired treatment option." Id. at 1 :7-9.
Claim 1 is illustrative, and recites:
1. An embolic implant comprising a first coil having a first
lumen extending through a substantial length of said coil, said
first lumen comprising a first diameter, and a second coil
extending through a substantial portion of said first lumen,
wherein said second coil, when unconstrained by the first
lumen, comprises a second lumen having a second diameter
that is larger than the first diameter, and said second coil exerts
an outward radial force on said first coil, and wherein said first
coil comprises a closed pitch, and said second coil comprises a
pitch that is open relative to the pitch of said first coil.
Appeal Br. 11 (Claims Appendix).
REJECTIONS MAINTAINED ON APPEAL
1. Claims 1, 2, 5-7, 11, and 12 stand rejected under 35 U.S.C.
§ I03(a) as unpatentable over Schaefer,2 Fleischhacker, 3 and
Sharrow. 4 Ans. 2.
2 Schaefer, US 2004/0006363 Al, published Jan. 8, 2004.
3 Fleischhacker et al., US 5,154,705, issued Oct. 13, 1992.
4 Sharrow, US 2007/0083132 Al, published Apr. 12, 2007.
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Application 12/695,035
2. Claims 13, 14, and 18 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Schaefer, Fleischhacker, and Sharrow. Ans. 3.
DISCUSSION
The Examiner's rejection of claim 1 rests largely on Schaefer, which
generally describes microcoil implants for use in embolization procedures.
See Schaefer ,r,r 5, 10-11. Specifically, the Examiner relies on Schaefer as
teaching an embolic implant with a first coil ( and a lumen extending
therethrough), a second coil extending through a substantial length of the
first lumen, the second coil exerting an outward radial force on the first coil,
and the first coil having a closed pitch. See Non-Final Action 3 (citing
Schaefer Figs. lA---6, ,r,r 12, 54)). 5 For the second coil's lumen having a
diameter larger than the diameter of the lumen of the first coil (when
unconstrained), the Examiner turns to Fleischhacker. See id. at 3--4 ( citing
Fleischhacker 5: 10-30). In Fleischhacker' s medical device, the larger
diameter of the second/inner coil provides for an interference fit between the
coils, improving torque transmission along the length of the device. Id. at 4
( discussing Fleischhacker 6:22-26). Noting that Schaefer teaches that
improved torque transmission is a desirable trait in embolic coils (see id. at 4
( citing Schaefer ,r 69) ), the Examiner concludes it would have been obvious
to modify Schaefer by giving the lumen of the second/inner coil a larger
diameter (when unconstrained) than that of the first/outer coil to improve
torque transmission (id.). As for the "second coil comprising a pitch that is
5 Non-Final Action dated Oct. 5, 2016.
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Application 12/695,035
open relative to the pitch of said first coil," the Examiner turns to Sharrow,
which discloses medical coils having an inner/second coil with a relatively
open pitch as compared to the outer/first coil. See id. ( citing Sharrow Figs.
1-3, ,r,r 23--46, 51). The Examiner finds it would have been obvious to
further modify Schaefer with Sharrow's teaching of a relatively open
inner/second coil pitch, "to provide the device with a desired amount of
flexibility to treat a patient." Id.
Appellants characterize the Examiner's finding that Schaefer discloses
the exertion of outward radial force by the second/inner coil on the
first/outer coil as "technically correct," but nonetheless "misleading."
Appeal Br. 7. Appellants contend:
The full teaching of these paragraphs in [Schaefer] is that the
first (outer) coil of Schaefer exerts a radially inward force
against the second (inner) coil when the outer coil is placed in
axial tension. So the force is actually being imparted by the
first (outer) coil which transmits an externally applied axial
force. Nothing in Schaefer remotely suggests any need or
benefit in making the inner coil oversized as claimed herein.
Id. (referring to Schaefer ,r,r 12, 54); see also Reply Br. 2.
Having reviewed the relevant passages of Schaefer, we do not find
that the Examiner took them out of context. This is largely because
Appellants' argument does not map to the claim limitations. As the
Examiner puts it, claim 1 "does not require the force exerted by the inner
coil to result from any oversizing of the inner coil." Ans. 5. Appellants'
argument regarding the Examiner's reliance on Fleischhacker as teaching the
relative sizes of the first and second coils likewise does not correspond to
recited claim limitations. More specifically, Appellants attempt to
distinguish Fleischhacker from claim 1 on the basis that claim 1 "requires
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Application 12/695,035
that the inner diameter of the inner coil be greater than the inner diameter of
the outer coil" (Appeal Br. 7), but claim 1 does not distinguish between the
inner and outer diameters of the first or second lumens.
As to the combination of Schaefer and Fleischhacker, Appellants
argue that "the ability to transmit torque is not a recognized design objective
for an embolic coil," and that one of ordinary skill in the art would not have
looked to Fleischhacker's drive shafts, guide wires, and delivery catheters to
improve an embolic coil in this manner. Appeal Br. 8. Specifically,
Appellants assert:
Drive shafts, guide wires, and delivery catheters each require
the ability to transmit torque over a long distance to rotate a
distal tool or navigate a pathway through the vasculature. In
contrast, an embolic coil is delivered to a treatment site through
the lumen of a delivery catheter, and need not itself be torqued
during advancement.
Id. Unfortunately for Appellants, this assertion is not supported by evidence
(for example, in the form of a declaration). In contrast, the Examiner points
to paragraph 69 of Schaefer as teaching that improved torque transmission is
"a recognized desirable trait in an embolic coil." Ans. 7. As Appellants
point out (see Appeal Br. 8), this passage of Schaefer refers to a particular
embodiment in Schaefer not otherwise relied on by the Examiner for the
prima facie case of obviousness. But the Examiner simply points to
paragraph 69 of Schaefer as additional support for the rationale provided in
Fleischhacker, to establish that improved torque was known be a desirable
characteristic of embolic coils ( and not simply in the types of medical
devices of Fleischhacker).
Finally, as to Sharrow and the combination thereof with Schaefer and
Fleischhacker, Appellants argue that Sharrow teaches single-coil
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Application 12/695,035
embodiments with closed pitches, and two-coil embodiments with open
pitches, but not two-coil embodiments with a closed-pitch outer coil. See
Appeal Br. 8-9; see also Reply Br. 3. This is not persuasive, because the
Examiner relies on Sharrow only for teaching the relative pitches of the two
coils. See Non-Final Action 4. 6 The Examiner relies on Schaefer (not
Sharrow) to teach the first/outer coil having a closed pitch. See id. at 3.
Appellants further argue that Sharrow teaches away from the claimed
invention, because Sharrow teaches affixing the inner and outer coils to
improve torque transmission, not an interference fit ( as in Fleischhacker) or
the claimed exertion of outward radial force on the first/ outer coil. Appeal
Br. 9 ( citing Sharrow ,r,r 40, 42). This argument is inapposite because the
Examiner's rationale for combining Sharrow with the other references is
based on flexibility, not torque transmission. 7
Having considered Appellants' arguments, we are not persuaded of
any reversible error by the Examiner in rejecting claim 1. Appellants do not
separately argue claims 2, 5-7, 11, or 12; these fall with claim 1. See
6 Accordingly, the issue of whether Figure 1 of Sharrow can be interpreted as
teaching multiple coils rather than the one coil expressly shown ( compare
Appeal Br. 8 (arguing against) with Ans. 8-9 (arguing for)) is not critical to
our decision.
7 Appellants do not argue that these two motivations are mutually exclusive.
In regard to flexibility, Sharrow teaches that "[i]n some embodiments, there
may be no affixation points along a portion of the coil length," and that this
absence of affixation points "may provide for desirable flexibility
characteristics." Sharrow ,r 40. As the Examiner explains, Sharrow teaches
that its coil structures "can be incorporated into a broad variety of medical
devices" (Ans. 11 (quoting Sharrow ,r 46)) and Schaefer establishes the
desirability of flexibility in embolic implants (id. ( citing Schaefer ,r 10) ).
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37 C.F.R. § 4I.37(c)(l)(iv). Accordingly, we affirm Rejection 1 in its
entirety. Appellants' arguments in support of the claims subject to Rejection
2 are limited to referring back to arguments made regarding Rejection 1 (see
Appeal Br. 9). We thus affirm Rejection 2 in its entirety for the same
reasons.
CONCLUSION
The rejections of claims 1, 2, 5-7, 11-14, and 18 are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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