Ex Parte Elliott

Board of Patent Appeals and Interferences

Jun 29, 2009

10626246 (B.P.A.I. Jun. 29, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte CHRISTOPHER J. ELLIOTT
__________

Appeal 2009-002676
Application 10/626,246
Technology Center 3700
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Decided:1 June 29, 2009
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Before DEMETRA J. MILLS, ERIC GRIMES, and
RICHARD M. LEBOVITZ, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims 1, 2, 5-12,
24 and 26, which are directed to an embolic coil. The Examiner has rejected

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-002676
Application 10/626,246

the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.
STATEMENT OF THE CASE
The Specification discloses that “[e]mbolic coils are one example of
devices that may be used to stop undesired blood flow in situations, for
example, requiring treatment of aneurysms” (Spec. ¶ 0001). The coil is
“inserted in the affected blood vessel” where it “slows down the flow of
blood through the weakened [blood vessel] section” (id. at ¶ 0003). The
Specification also discloses
a method of forming an embolic coil which comprises the steps
of setting a shape memory core element to a shape defining a
secondary coil shape of the embolic coil, straightening the core
element, winding an elongated outer element around the
straightened core element to form a primary coil of the embolic
coil, and releasing the straightened core element to form the
secondary coil of the embolic coil.
(Id. at ¶ 0005.)
Claims 1, 2, 5-12, 24 and 26 are on appeal.2 Claim 1 is representative
and reads as follows:
Claim 1: An embolic coil comprising:
an elongated core element formed of a shape memory material treated
to define a memorized secondary coil shape;
an elongated outer element wound around the elongated core element
to define a primary coil shape of the embolic coil; and
a plurality of fibers gripped between adjacent coils of the primary coil.

The claims stand rejected under 35 U.S.C. § 103(a) as follows:

2 Claims 13-23 are also pending but have been withdrawn from
consideration by the Examiner (Office Action mailed Sept. 5, 2006).
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• claims 1, 2, 5-11, 24 and 26 in view of Kupiecki3 and Villar;4 and
• claims 5 and 12 in view of Kupiecki, Villar, and Ferrera.5
OBVIOUSNESS I
Issue
The Examiner has rejected claims 1, 2, 5-11, 24, and 26 under 35
U.S.C. § 103(a) as being obvious in view of Kupiecki and Villar. The
claims have not been argued separately and therefore claims 2, 5-11, 24, and
26 stand or fall with claim 1.6 37 C.F.R. § 41.37(c)(1)(vii).
The Examiner finds that “Kupiecki discloses an embolic coil
comprising an elongated core element. … formed of a shape memory
material, nitinol, … treated to define a memorized secondary coil shape; and
an elongated outer element (202) wound around the elongated core element
to define a primary coil shape of the embolic coil” but “does not disclose
that the coil has fibers” as arranged in the claim (Answer 3). The Examiner
finds that “Villar discloses an embolic coil comprising polymeric fibers,
which promote tissue growth … in vascular occlusions” and that “the fibers
are gripped (by the coil that it is looped around) between adjacent coils” (id.
at 4). The Examiner concludes that it “would have been obvious to one
having ordinary skill in the art at the time of the invention to incorporate the
fibers into [Kupiecki’s] coil since they enhance the performance of the coil
as stated by Villar” (id.).

3 Kupiecki et al., US 5,980,514, Nov. 9, 1999.
4 Villar et al., US 6,287,318 B1, Sep. 11, 2001.
5 Ferrera et al., US 6,171,326 B1, Jan. 9, 2001.
6 Although claim 24 is addressed separately (Appeal Br. 6), Appellant relies
on the same argument as presented for claim 1.
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Appellant contends that the Examiner erred in finding that the cited
references suggest fibers “gripped between adjacent coils of the primary
coil” as required by claim 1 (Appeal Br. 5).
The issue with respect to this rejection is: Does the evidence of
record support the Examiner’s conclusion that the cited references suggest
an embolic coil with fibers “gripped between adjacent coils of the primary
coil” as required by claim 1?
Findings of Fact
1. The Specification discloses that the “fibers 22 may be held in
place, for example, by friction between the loops of the primary coil 20,
such that a certain amount of pressure between the loops is necessary to
securely retain the fibers 22 therebetween” (Spec. ¶ 0012).
2. Kupiecki discloses “[a]n artificial occlusion kit … for implanting
and retaining an artificial occlusion device in a body space adjacent to and
extending from a body lumen in a mammal” that includes “at least one
occlusion device adapted for filling at least a portion of the body space, and
a retaining device assembly that includes a retaining device” for retaining
the occlusion device in the body space (Kupiecki, col. 4, ll. 1-18). The
device is described a useful for the treatment of aneurysms (id. at col. 3, ll.
65-67).
3. Figure 8 of Kupiecki is shown below:
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Figure 8 shows a retaining device “constructed of a wire wound into a
helix over a core member, the helical wire and core member being formed
into a secondary geometry” (id. at col. 5, ll. 63-67).
4. Kupiecki discloses that in “the ‘wire over core’ combination
structure [as shown in Figure 8] . . . , the inner core member (204) is chosen
such as to provide the requisite shape memory and stiffness” (id. at col. 14,
ll. 33-35).
5. Kupiecki discloses that “the addition of the mandrel [i.e., inner
core member (204)] in what would otherwise be the primary helix lumen
provides a stiffening structure that still allows for a certain controlled
flexibility of the secondary helical shape” (id. at col. 14, ll. 55-58).
6. Figure 9A of Kupiecki is shown below:
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Figure 9A shows a retaining device (220) and an “anatomically
shaped oval (222)” filler or occlusion coil suitable for embolizing an
aneurysm (id. at col. 15, ll. 43-44).
7. Villar discloses “an occlusive device suitable for placement in an
internal area of the human body” that “has been found to facilitate the
formation of neocapillaries, scar tissue, cellular growth, or healing tissue in
the occlusion” (Villar, col. 2, ll. 8-17). The device has a core element and
two additional components which are polymeric in nature (id. at col. 2, ll.
18-22). One of these is a polymer in fibrous form “which is present in the
inventive device quickly to form clots when placed in the vasculature” (id. at
col. 2, ll. 22-24). The device can be used in the interior of an aneurysm (id.
at col. 2, ll. 8-17).
8. Figure 2 of Villar is shown below:
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Figure 2 shows a “device involving a coil and a looping of fibrous
members” (id. at col. 2, ll. 47-48).
9. Villar discloses that
FIG. 2 shows another variation (120) of the inventive occlusion
device. In this variation, coil (122) also has a constant diameter
although it is somewhat more stretched than is the coil shown in
FIG. 1. Coil (122) also has coil ends (124) as was the case with
the coil shown in FIG. 1. In this variation, the respective
fibrous elements (126 and 128) are looped through the turns of
the coil.
(Id. at col. 4, ll. 48-57.)
10. Villar discloses that the fibrous members can be composed of
polymeric materials (id. at col. 4, ll. 9-61) and that “each of the polymeric
materials can be attached to any allied core member [i.e. the coil] variously
by appropriate and safe glues or, if the polymeric materials are
thermoplastics, by heating those polymers to cause them to maintain a
contact with the core member” (id. at col. 5, ll. 21-26).
Principles of Law
[A]s an initial matter, the PTO applies to the verbiage of the
proposed claims the broadest reasonable meaning of the words
in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever
enlightenment by way of definitions or otherwise that may be
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afforded by the written description contained in the applicant’s
specification.
In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
Analysis
Claim 1 is directed to an embolic coil comprising a core element made
of a shape memory material having a memorized secondary coil shape, an
outer element wound around the core element to define a primary coil shape,
and fibers gripped between adjacent coils of the primary coil.
Kupiecki discloses an embolic kit containing a “wire over core”
embolic coil that includes the primary coil and secondary coil recited in
claim 1. Villar discloses an embolic coil with fibers looped between the
coils. In view of these disclosures, it would have been obvious to one of
ordinary skill in the art to modify the prior art Kupiecki coil with the fibers
of Villar because the fibers, as disclosed by Villar, facilitate “the formation
of neocapillaries, scar tissue, cellular growth, or healing tissue in the
occlusion” (FF 7). Such a combination is no more than the predictable use
of prior art elements according to their established functions. Although
Villar’s fibers are not shown in Figure 2 as held between adjacent coils, as
recited in claim 1, Villar does not restrict its disclosure to this embodiment.
Thus, Villar’s statement that the fibers “are looped through the turns of the
coil” (FF 9) would have suggested looping the fibers between any two coils
of an embolic coil, including adjacent ones, because such configuration
would have been reasonably expected to promote rapid clot formation.
Appellant contends that Villar does not teach or suggest fibers gripped
between adjacent coils (Appeal Br. 5). Appellant argues that the Villar
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embodiment with fibers is described as having coils that are “more
stretched” and that stretched coils “are incapable of gripping fibers between
them as they will not provide the necessary pressure to keep the fibers in
place” (id.). Appellant provides a dictionary definition of the term “gripped”
as meaning “to secure and maintain a tight hold on; seize firmly” (id.; citing
the American Heritage Dictionary of the English Language, Fourth Edition).
Appellant’s arguments are not persuasive. The Specification does not define
the term “gripped.” However, in describing how the fibers are “held in
place”, it states “for example” the fibers may be held in place by “friction”
and “pressure” between the coils (Spec. ¶ 0012). As exemplary language is
explicitly used, we do not understand this to restrict the fiber/coil
configuration to a friction or pressure fit, or define it to exclude attaching
fibers to the coil by other means. According to the dictionary definition of
the term “gripped” provided by Appellant, therefore, the broadest reasonable
interpretation of the term gripped between, in accord with In re Morris,
would require only that the fibers are held firmly between the coils. “Absent
an express definition in their specification, the fact that appellants can point
to definitions or usages that conform to their interpretation does not make
the PTO’s definition unreasonable when the PTO can point to other sources
that support its interpretation.” In re Morris, 127 F.3d at 1056.
Villar discloses fibers that are looped between the coils and that may
be fastened at the point of contact with the coils. Thus, the fibers would be
held firmly, or “gripped,” between the coils.
Appellant further argues that “Villar specifically describes attaching
the fibers to the core member. … Any attachment would thus exist only at
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the point which the fiber touches the core member 122” (Appeal Br. 5).
Appellant argues that such contact would be “on the inner curve of the
looped coil, and not between the adjacent coils” (id.; citing Fig. 2 of Villar).
Appellant’s argument is not persuasive. Whether the fibers are
attached to the coil at the side of the coil facing its lumen or at the coil area
between coils, the fibers would be held firmly between the coils and thus
would be “gripped” between the coils.
Conclusion of Law
The evidence of record supports the Examiner’s conclusion that the
cited references suggest an embolic coil with fibers “gripped between
adjacent coils of the primary coil” as required by claim 1.
OBVIOUSNESS II
The Examiner has rejected claims 5 and 12 under 35 U.S.C. § 103(a)
as being obvious in view of Kupiecki, Villar, and Ferrera.
The Examiner relies on Kupiecki and Villar as making obvious the
embolic coil of independent claim 1, as discussed above, and concludes that
Ferrera would have made obvious the additional limitations of dependent
claims 5 and 12 (Answer 5-6). We agree with the Examiner’s reasoning and
conclusion.
Appellant contends that Ferrera does not cure the deficiencies of the
combination of Kupiecki and Villar in suggesting the invention of
independent claim 1 (Appeal Br. 7). This argument is not persuasive for the
reasons discussed above.
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SUMMARY
We affirm the rejection of claims 1, 2, 5-12, 24 and 26 under 35
U.S.C. § 103(a) as obvious based on the cited references.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED

cdc

Patrick J. Fay, Esq.
FAY KAPLUN & MARCIN, LLP
Suite 702
150 Broadway
New York NY 10038
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