Ex Parte Cox

Board of Patent Appeals and Interferences

Sep 7, 2010

10763975 (B.P.A.I. Sep. 7, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte BRIAN J. COX
____________________

Appeal 2009-008375
Application 10/763,975
Technology Center 3700
____________________

Before LINDA E. HORNER, WILLIAM F. PATE III, and
MICHAEL W. O’NEILL, Administrative Patent Judges.

PATE III, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 (2006) from a final rejection
of claims 23-28, 40 and 41. We have jurisdiction under 35 U.S.C. § 6(b)
(2006).
The claims are directed to an aneurysm treatment device. Claim 23,
reproduced below, is illustrative of the claimed subject matter:
23. A device for treating a vascular aneurysm
comprising:

a support structure sized for placement at a region of said
vascular aneurysm;

said support structure having a bridge portion spanning at
least a neck region of said vascular aneurysm;

said support structure having an open, non-tubular arced
configuration;

said bridge portion including a reactive material, said
reactive material being expanded when in a reacted state such
that said reactive material restricts flow of blood to said
vascular aneurysm when said reactive material is in said reacted
state.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Silvestrini
Deem
5,234,456
6,231,597 B1
Aug. 10, 1993
May 15, 2001

REJECTIONS
Claims 23-28, 40 and 41 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Deem and Silvestrini. Ans. 3.
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OPINION
The Rejection of Claims 23-28, 40 and 41 as being unpatentable over Deem
and Silvestrini is reversed.
The Examiner found that Deem discloses a basic device for treating a
vascular aneurysm according to independent claims 23 and 40. Ans. 3. The
Examiner further found that Deem does not disclose that covering 102, read
as the claimed “reactive material,” expands in the reacted state. Ans. 4. The
Examiner concluded that it would have been obvious to construct Deem’s
cover from the hydrophilic material taught by Silvestrini in order to help
occlude the neck of the aneurysm. Id.
Appellant contends that it was unreasonable for the Examiner to
interpret Deem’s cover 102 as the claimed “reactive material” because it is
constructed from expanded polytetrafluoroethylene (PTFE) or polyester
mesh—relatively inert substances, and is not “expanded when in a reacted
state.” Reply Br. 7-9; Deem col. 5, ll. 49-50. Appellant further contends
that there is no rational basis for the Examiner’s proposed combination
because Silvestrini does not teach or fairly suggest using the disclosed
hydrophilic material for occlusion. App. Br. 5-9. Appellant’s arguments are
persuasive.
Construing the claim is the first step in an obviousness analysis. Key
Pharms. v. Hercon Labs. Corp., 161 F.3d 709, 714 (Fed. Cir. 1998)
(citations omitted). Pending claims are given their broadest reasonable
construction consistent with the specification. In re Am. Acad. of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
The Federal Circuit has stated that “rejections on obviousness grounds
cannot be sustained by mere conclusory statements; instead, there must be
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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 Int’l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007). It is improper to base a conclusion of obviousness upon facts
gleaned only through hindsight. “To draw on hindsight knowledge of the
patented invention, when the prior art does not contain or suggest that
knowledge, is to use the invention as a template for its own reconstruction—
an illogical and inappropriate process by which to determine patentability.”
Sensonics, Inc. v. Aerosonic Corp., 81 F.3d 1566, 1570 (Fed. Cir. 1996)
(citing W.L. Gore & Assoc. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir.
1983)).
Despite performing the claimed function of “restrict[ing the] flow of
blood to said vascular aneurysm,” Deem does not describe any particular
reaction undergone by the cover 102. It was therefore unreasonable to
interpret Deem’s cover as the claimed reactive material. Additionally,
Silvestrini’s hydrophilic material absorbs liquid in order to inflate the stent
10 so that it remains in place by impinging on the interior lumen wall.
Silvestrini col. 2, ll. 38-58. Silvestrini does not expressly provide any
indication, nor would one of ordinary skill in the art recognize, that
Silvestrini’s hydrophilic material would be suitable for the Examiner’s
proposed use—occlusion. The Examiner’s conclusion is therefore based
upon speculation and conjecture. We are constrained to conclude that the
Examiner improperly resorted to hindsight gleaned only through Appellant’s
Specification in order to reach the conclusion of obviousness. Accordingly,
the rejection of independent claims 23 and 40, along with dependent claims
24-28 and 41, as being unpatentable over Deem and Silvestrini must be
reversed.
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Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter new grounds
of rejection for claims 23-28, 40 and 41 under 35 U.S.C. § 103(a) as being
unpatentable over Deem.
Other than those discussed above, Appellant does not contest any of
the Examiner’s other findings related to the embodiments of Deem depicted
in Figures 4, 11B, and 13 and relied on in rejecting claims 23-28, 40 and 41.
See Ans. 3-5. Those findings are adopted. As discussed above, while the
Examiner erred by interpreting Deem’s cover 102 as the claimed “reactive
material,” the material forming elements 14 at the mid-region 15 (the
“bridge portion” or “occlusion region”) of Deem’s stent 10, 101, which
reacts and expands when exposed to heat or electric current, meets this
limitation. Deem col. 4, ll. 57-64, col. 5, ll. 22-35, 47-49. By virtue of
decreasing the cross-sectional area through which blood can flow to the
aneurysm, the “reactive material” of claim 23 or the entire “occlusion
region” of claim 40, “restricts” or “substantially restricts” the “flow of blood
to said vascular aneurysm,” respectively. Thus, the Examiner’s rejection is
modified by interpreting the material forming elements 14 at the mid-region
15 of Deem’s stent 101 as the claimed “reactive material” as opposed to the
material forming cover 102. The Examiner’s rejection is further modified
by discarding the Examiner’s finding that Deem does not disclose a reactive
material that is “expanded when in a reacted state.” Ans. 5. Accordingly,
there is no need to rely upon any teachings of Silvestrini in order to conclude
that the subject matter of claims 23-28, 40 and 41 would have been obvious
to one having ordinary skill in the art. Since we have modified the
Examiner’s rejection in this manner, we denominate this rejection a “new
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grounds” of rejection under 37 C.F.R. § 41.50(b) in order to provide
Appellant a full and fair opportunity to respond.

DECISION
For the above reasons, the Examiner’s rejection of claims 23-28, 40
and 41 as being unpatentable over Deem and Silvestrini is reversed. We
enter new grounds of rejection of claims 23-28, 40 and 41 under 35 U.S.C.
§ 103(a) as being unpatentable over Deem.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b) (2008). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
Examiner, in which event the proceeding will be remanded to
the Examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .

REVERSED; 37 C.F.R. § 41.50(b)

nlk
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