Ex Parte Chu et alDownload PDFPatent Trial and Appeal BoardSep 28, 201612062245 (P.T.A.B. Sep. 28, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/062,245 04/03/2008 77218 7590 09/30/2016 Medtronic Vascular - APV Division c/o IP Legal Department 3576 Unocal Place Santa Rosa, CA 95403 FIRST NAMED INVENTOR Jack Chu 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. Pl768 CONl 9941 EXAMINER SCHALL, MATTHEW WAYNE ART UNIT PAPER NUMBER 3738 NOTIFICATION DATE DELIVERY MODE 09/30/2016 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): rs. docketingapv@medtronic.com medtronic _apv _docketing@ cardinal-ip. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JACK CHU, DA VE ERICKSON, PREMA GENESAN, and JONATHAN MORRIS Appeal2014-009487 Application 12/062,245 Technology Center 3700 Before WILLIAM A. CAPP, GEORGE R. HOSKINS, and ARTHUR M. PESLAK, Administrative Patent Judges. PESLAK, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Jack Chu et al. ("Appellants") appeal under 35 U.S.C. § 134(a) from the Examiner's Final decision rejecting claims 55---61. 1 We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM-IN-PART. 1 Appellants submit the real party in interest is Medtronic, Inc. Appeal Br. 2. Appeal2014-009487 Application 12/062,245 THE CLAIMED SUBJECT MATTER Claim 55, reproduced below, is illustrative of the claimed subject matter. 55. An aneurismal tissue treatment system comprising: a stent graft adapted for placement within a vessel lumen adjacent an aneurismal site; and at least one implantable therapeutic agent delivery reservoir adapted to be implanted external to said vessel lumen and further adapted to deliver a carrier comprising at least one therapeutic agent from said reservoir to said aneurismal site over time wherein said reservoir comprises said carrier and said at least one therapeutic agent within said reservoir. REJECTION Claims 55---61 are rejected under 35 U.S.C. § 103(a) as unpatentable over Urquhart (US 3,797,485, iss. Mar. 19, 1974) and Rosenbluth (US 2003/0014075 Al, pub. Jan 16, 2003). DISCUSSION Claims 55, 57, 59, and 60 Appellants argue these claims as a group. Pursuant to 37 C.F.R. § 41.37(c)(l)(iv), we select claim 55 as representative of this group, and the remaining claims stand or fall with claim 55. The Examiner finds that Urquhart discloses the limitations of claim 55 except for a stent graft. Final Act. 2-3. The Examiner finds that Rosenbluth discloses in Figure 3 "an aneurismal treatment system comprising a stent graft and a reservoir filled with drugs and a carrier, in the same field of endeavor, for the purpose of treating a diseased blood vessel (paragraph 2 Appeal2014-009487 Application 12/062,245 [0023])." Id. at 3. The Examiner concludes it would have been obvious to one of ordinary skill in the art "to modify the device of Urquhart to have the stent graft of Rosenbluth, in order to treat blood vessels as described in Rosenbluth in paragraph [0023]." Id. Appellants do not dispute the Examiner's findings that Urquhart and Rosenbluth together disclose all the limitations of claim 55, but contend the Examiner's combination of Urquhart and Rosenbluth would render Urquhart unsatisfactory for its intended purpose. Appeal Br. 3. Appellants argue that Urquhart is directed to "a device for administering a drug into the blood circulation of a patient" and Rosenbluth's stent graft would limit the drug to a localized area "to the extent the stent graft is not permeable to the drug." Id. at 4--5. Appellants also contend that the Examiner's proposed combination of Urquhart and Rosenbluth "lack[ s] sufficient rational underpinnings and/or is not clearly articulated." Id. at 5. Appellants argue that the Examiner's premise for the conclusion of obviousness is that Urquhart and Rosenbluth are directed to the same field of endeavor. Id. Appellants assert this premise is faulty because Urquhart is "generally directed to a device for administering a drug into the blood circulation of a patient" while Rosenbluth is directed to "treating a diseased blood vessel." Id. at 6. The Examiner responds that Urquhart discloses "specific treatment areas" and "localized treatment of a blood vessel." Ans. 2 (citing Urquhart, col. 2, 11. 61---62, col. 7, 11. 40-44). The Examiner also asserts that "[b]oth of the references disclose treating diseased blood vessels using therapeutic agents and implantable prosthetics." Id. 3 Appeal2014-009487 Application 12/062,245 Urquhart discloses "a drug delivery device 1 O" that surrounds "a blood vessel 11." Urquhart, col. 4, 11. 50-51, Fig. 1. Drugs can be admitted into device 10 through inlet port 14 and then diffused through the blood vessel walls. Id. at col. 4, 11. 63----67, col. 3, 11. 13-17. Figure 1 of Urquhart discloses a reservoir around blood vessel 11 where drugs are received through inlet port 14. See id. at Fig. 1. Urquhart also discloses that drugs can be administered "to produce either localized or systemic effects." Id. at col. 2, 11. 61----63 (emphasis added). Appellants' contention that combining Rosenbluth with Urquhart would render Urquhart unsuitable for its intended purpose is unpersuasive for the following reasons. First, Appellants do not provide persuasive arguments or technical reasoning why Urquhart, when combined with Rosenbluth, would be rendered incapable of diffusing drugs through the wall of the diseased blood vessel disclosed in Rosenbluth's Figure 3. Second, Appellants' contention that Urquhart's purpose is to provide a drug delivery mechanism only to the general blood circulation as opposed to localized areas is contrary to the disclosure of Urquhart noted above. Third, Appellants do not direct us to any specific disclosure in Rosenbluth to support their argument that the stent graft of Rosenbluth "is not permeable to the drug" and would limit the distribution of the drug to a localized area. Appellants' contention that the Examiner's rationale for combining Urquhart and Rosenbluth is insufficient is also unpersuasive. Appellants assert that Urquhart and Rosenbluth are not in the same field of endeavor 4 Appeal2014-009487 Application 12/062,245 and thus, appear to argue that Urquhart and/or Rosenbluth are non-analogous art to Appellants' claimed invention. The Federal Circuit has stated that [t]wo separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor's endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved. In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011). In this case Rosenbluth is directed to injecting drugs into an aorta with aneurism AN for treating the aneurism. Rosenbluth, i-f53, Fig. 3. A stent graft is placed in the diseased aorta. Id. at Fig. 3. Rosenbluth is directed to the same aneurismal tissue treatment field of endeavor as claim 55 and thus qualifies as analogous art. Urquhart is directed to transmitting drugs into a blood vessel from a reservoir located outside of the blood vessel as recited in claim 55. Urquhart, thus, also qualifies as analogous art, as it is reasonably pertinent to treating aneurismal blood vessel tissue. Appellants fail to persuasively apprise us of error in the Examiner's factual findings or rationale, quoted above, for the combination of Urquhart and Rosenbluth, which we determine to be sufficient and supported by the disclosure in the cited references. See KSR Intern. Co. v Teleflex Inc., 550 U.S. 398, 416 (2007) ("The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results."). We, thus, sustain the rejection of claims 55, 57, 59, and 60. Claims 56, 58, and 61 Claims 56, 58, and 61 recite, inter alia, a "pump" as part of a delivery reservoir. Appeal Br. (Claims App.). The Examiner finds that Urquhart 5 Appeal2014-009487 Application 12/062,245 discloses an "osmotic ... or mechanical ... pump." Final Act. 3. Appellants argue that Urquhart does not disclose an osmotic pump but discloses that "drugs may pass or enter the blood through the blood vessel wall via osmosis." Appeal Br. 7. Appellants also argue that Urquhart's disclosure of a mechanical pump is in connection with "a test system in which Ringer's solution is pumped through an ex vivo blood vessel to simulate blood flow" not in connection with a delivery reservoir of an implantable device. Id. For the following reasons, we do not sustain the rejection of claims 56, 58, and 61. The Examiner has not directed us to any disclosure in Urquhart wherein a pump is disclosed in connection with a delivery reservoir of an implantable device. Urquhart's only reference to a pump is at column 13, line 48 where a pump is used to simulate blood flow in an artery not in connection with a delivery reservoir. Consequently, the Examiner's finding that Urquhart discloses a pump as recited in these claims is not supported by a preponderance of the evidence. Thus, we do not sustain the rejection of claims 56, 58, and 61. DECISION The Examiner's decision rejecting claims 55, 57, 59, and 60 is affirmed. The Examiner's decision rejecting claims 56, 58, and 61 is reversed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED-IN-PART 6 Copy with citationCopy as parenthetical citation