Ex Parte Cook et al

Patent Trial and Appeal Board

Mar 17, 2016

12389070 (P.T.A.B. Mar. 17, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/389,070 02/19/2009 Brian Cook
28390 7590 03/21/2016
MEDTRONIC VASCULAR, INC
IP LEGAL DEPARTMENT
3576 UNOCAL PLACE
SANTA ROSA, CA 95403
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.
P28509 US 2577
EXAMINER
DANG, ANH TIEU
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
03/21/2016 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.vasciplegal@medtronic.com
medtronic_cv_docketing@cardinal-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRIAN COOK, JAMES MITCHELL, NATIVIDAD
VASQUEZ, and GIANFRANCO PELLEGRINI
Appeal2013-007788
Application 12/389,070
Technology Center 3700
Before WILLIAM A. CAPP, LEE L. STEPINA, and
FREDERICK C. LANEY, Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Brian Cook et al. (Appellants) seek our review under 35 U.S.C. § 134
of the Examiner's decision rejecting claims 1 and 4--12. 1 We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We REVERSE.
1 Claims 2 and 3 have been canceled, and claims 13-20 have been
withdrawn. Appeal Br. 18-21.
Appeal2013-007788
Application 12/389,070
THE CLAIMED SUBJECT MATTER
The claimed invention is directed to a retractable drug delivery
system. Spec. 1 (Title). Claim 1 is illustrative of the claims on appeal and is
reproduced below.
1. A system for treating a vascular condition, the system
compnsmg:
a catheter including an inner member and an outer
member, the outer member being concentrically arranged and
slideably disposed about the inner member;
a retractable drug delivery device disposed around a
distal end of the inner member extending through the
retractable drug delivery device, the retractable drug delivery
device comprising a plurality of scaffold struts and a plurality
of transition struts extending from the plurality of scaffold
struts, wherein the scaffold struts of the retractable drug
delivery are configured to expand radially from the inner
member forming an open passageway wherein the distal end of
the scaffold struts are unattached to the inner member;
an attachment, wherein proximal ends of the plurality of
transition struts are secured to the attachment and wherein the
attachment is formed integrally with the inner member;
a coating disposed on at least a portion of an outer
surface of the retractable drug delivery device; and in
at least one therapeutic agent within the coating;
wherein the inner member and the outer member are
operable to collapse the retractable drug delivery device from
an expanded configuration to a compressed configuration
about the inner member within the outer member when the
inner member is moved slideably relative to the outer member.
Appeal Br. 17 (emphasis added).
REFERENCES RELIED ON BY THE EXAMINER
Kleshinski
Mc Innes
Kao
Shum er
US 6,939,361 Bl
US 6,558,405 B 1
US 2006/0282149 Al
US 2007 /0100422 Al
2
Sept. 6, 2005
May 6, 2003
Dec. 14, 2006
May 3, 2007
Appeal2013-007788
Application 12/389,070
THE REJECTIONS ON APPEAL
(I) Claims 1, 6-10, and 12 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Kleshinski and Kao.
(II) Claims 4 and 5 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Kleshinski, Kao, and Mclnnes.
(III) Claim 11 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Kleshinski, Kao, and Schumer.
ANALYSIS
Rejection(!)
The Examiner finds that "Kleshinski teaches a system for treating a
vascular condition with a catheter comprising an inner member ( 11) and an
outer member (34) concentrically arranged about the inner member (figure
3, column 5, lines 33-47) and slideably disposed about the inner member
(figure 3, column 6, lines 1-13)." Final Act. 3--4 (emphasis omitted).2 The
Examiner further finds that filter 10 of Kleshinski corresponds to a
retractable drug delivery device. Final Act. 4. Additionally, the Examiner
finds that Kleshinski teaches that the inner and outer members (11 and 34)
"are operable to collapse the retractable drug delivery device from an
expanded configuration where it is in the body to a compressed
configuration about the inner member ( 11) when the inner member is
slideably retracted into outer sheath (34) to remove the stent (column 6, lines
1-13)." Final Act. 4.
Regarding claim interpretation in relation to the above-noted findings,
the Examiner interprets claim 1 as requiring "the retractable drug delivery
2 Dated August 15, 2012.
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Appeal2013-007788
Application 12/389,070
device to be collapse[ d] to a compressed configuration about the inner
member 'when' the outer member is moved slideably relative to the outer
member." Adv. Act. 2. The Examiner's position is that the last paragraph
of claim 1 "does not require the retractable drug delivery device to be
collapsible as a result of the slideable movement of the outer member over
the inner member." Adv. Act. 2 (emphasis added).
In an alternate approach, the Examiner finds that filter 10 of
Kleshinski "is capable of being collapsed by the sliding movement between
the inner member and the outer member regardless of whether the filter is
made of shape memory." Ans. 3. In this regard, the Examiner states,
"[t]herefore it would be within the skill of one of ordinary skill in the art at
the time of the invention to understand that the device could also operate in
the same manner as claimed in the instant invention." Ans. 3.
Appellants argue:
Kleshinski fails to disclose structure in which moving the
inner member slideably relative to the outer member will
collapse the retractable drug delivery device to a compressed
configuration, i.e., the inner member and the outer member
being operable to collapse the retractable drug delivery device
when the inner member is moved slideably relative to the outer
member as claimed.
Appeal Br. 9. Rather, according to Appellants, Kleshinski causes filter 10 to
collapse by cooling it. See Appeal Br. 8-1 O; see also Reply Br. 4.
Appellants argue that claim 1 requires the retractable drug delivery device to
collapse as a result of the movement of the inner member relative to the
outer member. Appeal Br. 11-13. Therefore, according to Appellants the
Examiner's finding that filter 10 ofKleshinski collapses at the same time as
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Appeal2013-007788
Application 12/389,070
inner member ( 11) moves relative to outer member (34) does not satisfy the
requirements of claim 1. Appeal Br. 11-13.
Regarding the Examiner's alternate approach, that Kleshinski "is
capable of being collapsed by the sliding movement between the inner
member and the outer member regardless of whether the filter is made of
shape memory" (Ans. 3), Appellants argue that Kleshinski provides no
support for the Examiner's finding. Reply Br. 5. Rather, according to
Appellants, Kleshinski discloses that "[i]n the operation of the filter 10, the
stent with the mesh filter material is inserted in a collapsed condition into a
delivery tube 34." Reply Br. 5. Appellants contend that "[t]rying to
compress the Kleshinski stent 14 from an expanded configuration by pulling
the stent 14 into the delivery tube 34 would apply significantly greater stress
to the delivery tube 34 than the minor amount of stress exerted by the
collapsed stent." Reply Br. 5.
We agree with Appellants' interpretation of claim 1. The plain
language of claim 1, that "the inner member and the outer member are
operable to collapse the retractable drug delivery device from an expanded
configuration to a compressed configuration," means that the inner member
and outer member are configured to perform the action of causing the
retractable drug delivery device to collapse. Thus, we also agree with
Appellants that a relative movement between inner member 11 and outer
member 34 occurring simultaneously with the collapse of filter 10 does not
satisfy the above-noted limitation in claim 1.
As for whether the arrangement disclosed by Kleshinski is capable of
performing the action of collapsing filter 10 as a result of movement of the
inner member 11 relative to the outer member 34, we agree with Appellants
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Appeal2013-007788
Application 12/389,070
that Kleshinski discloses collapsing stent 14 (which is the frame of filter 10)
only via cooling. For example, Kleshinski states, "[p]referably the stent is
formed of the thermal shape memory material such as nitinol and may be
collapsed by cooling the stent to a temperature below a transition
temperature." Col. 6, 1. 3-6. Although Kleshinski states that this is the
preferable method of collapsing stent 14 (and filter 10), Kleshinski does not
further teach any other method collapsing these components. Moreover, the
Examiner does not provide any persuasive explanation as to why this
capability would be inherent in Kleshinski. Thus, the Examiner's finding
that Kleshinski provides the capability to push outer member 34 over filter
10 to collapse it is not supported by a preponderance of the evidence. The
Examiner does not propose to use the teachings of Kao in any way that
would remedy the deficiencies in Kleshinski discussed above. Accordingly,
we do not sustain the Examiner's rejection of claim 1 and claims 6-10 and
12 depending therefrom as unpatentable over Kleshinski and Kao.
Rejections II and III
The Examiner does not rely either of Mcinnes or Schumer in any way
that would remedy the deficiencies discussed above with respect to
Kleshinski and the rejection of independent claim 1. Accordingly, we do not
sustain Rejections II and III.
DECISION
We reverse the Examiner's decision to reject claims 1 and 4--12.
REVERSED
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