Ex Parte Fiorella et alDownload PDFPatent Trial and Appeal BoardFeb 28, 201813672496 (P.T.A.B. Feb. 28, 2018) Copy Citation United States Patent and Trademark Office 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 13/672,496 11/08/2012 David FIORELLA MIC5035USDIV4 7950 27777 7590 03/02/2018 JOSEPH F. SHIRTZ JOHNSON & JOHNSON ONE JOHNSON & JOHNSON PLAZA NEW BRUNSWICK, NJ 08933-7003 EXAMINER BERDICHEVSKY, AARTI ART UNIT PAPER NUMBER 3763 NOTIFICATION DATE DELIVERY MODE 03/02/2018 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): j nju spatent @ coru s .j nj. com lhowd@its.jnj.com pair_jnj @ firsttofile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DAVID FIORELLA and HENRY WOO Appeal 2017-002818 Application 13/672,4961 Technology Center 3700 Before LINDA E. HORNER, LYNNE H. BROWNE, and BRENT M. DOUGAL, Administrative Patent Judges. HORNER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. § 134(a) of the Examiner’s decision rejecting claims 1-24. Final Office Action (September 1, 2015) (hereinafter “Final Act.”). We have jurisdiction under 35 U.S.C. § 6(b). 1 The Cleveland Clinic Foundation (“Appellant”) is the applicant as provided for under 37 C.F.R. § 1.46, and is identified as the real party in interest. Appeal Brief 1 (January 28, 2016) (hereinafter “Br.”). Appellant states that DePuy Synthes Products, Inc., which is an affiliate of Johnson & Johnson, is an exclusive licensee. Id. Appeal 2017-002818 Application 13/672,496 The claimed subject matter relates to a method of increasing blood flow through an obstructed blood vessel. The method employs an expandable member, including a tubular body made of a mesh having a plurality of interstices, to dislodge, capture, and remove a fragment of the obstruction. The Examiner found that the prior art discloses the claimed method, including employing an expandable member having a tubular body made of mesh. Appellant challenges the Examiner’s finding that the prior art device is a tubular body made of mesh. We find insufficient evidence to support the Examiner’s finding. Accordingly, we REVERSE. CLAIMED SUBJECT MATTER Claim 1 is the sole independent claim and is reproduced below. 1. A method of removing an obstruction from a blood vessel with an expandable member that is attached to a delivery system, the expandable member having a proximal end, a distal end and a tubular body between the proximal end and the distal end, the tubular body being made of a mesh having a plurality of interstices, the method comprising the steps of: positioning the tubular body of the expandable member radially adjacent to an obstruction within a blood vessel; expanding the expandable member such that a portion of the tubular body comes into contact with a portion of the obstruction; dislodging a portion of the obstruction to enhance blood flow through the blood vessel past the obstruction; and removing the expandable member from the blood vessel while the expandable member retains at least a portion of the obstruction from the blood vessel. Br. 6 (Claims Appendix). 2 Appeal 2017-002818 Application 13/672,496 REJECTIONS The Final Office Action includes the following rejections: 1. Claims 1-5, 8, 13-16, 20, and 22-24 stand rejected under pre-AIA 35 U.S.C. § 102(b) as anticipated by Sepetka et al. (US 2005/0033348 Al, published February 10, 2005). 2. Claims 6, 7, 17-19, and 21 stand rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Sepetka. 3. Claims 9-12 stand rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Sepetka and Evans et al. (US 2001/0031981 Al, published October 18, 2001). ISSUE The Examiner found that Sepetka discloses the method of claim 1, including an expandable member (906) having a tubular body made of a mesh having a plurality of interstices. Final Act. 3 (citing Sepetka, Fig. 30 and 190). The Examiner further identified the claimed “tubular body” in Sepetka with reference to an annotated version of Figure 21 of Sepetka, reproduced below. Ans. 2-3. The figure above shows device 902 of Sepetka disposed in a collapsed configuration within delivery catheter 905, along with an 3 Appeal 2017-002818 Application 13/672,496 annotation added by the Examiner of a shaded box placed over the portion of the device the Examiner finds to be a “tubular body.” Id. Appellant argues that Sepetka’s device 902 does not anticipate claim 1 because it does not include a tubular body made of a mesh, and, in fact, explicitly discloses that the invention does not use mesh-like structures having a predetermined geometry. Br. 4. The question presented by this appeal is whether Sepetka discloses an expandable member having a “tubular body being made of a mesh having a plurality of interstices.” ANALYSIS Sepetka discloses a device 902 for removing an obstruction. Sepetka 1 83, Fig. 21. Device 902 includes a main element 904 and strands 906 that may be wound helically, interwoven, or interlocked with main element 904. Id. Main element 904 is naturally biased toward the expanded position and may form coils 907. Id. 1 84. Strands 906 are flexible and deform as element 904 expands. Id. | 85. As shown in Figure 21, strands 906 form two loops 908 that interlock at the midpoint of the expandable portion of element 904. Id. Sepetka describes that strands 906 and loops 908 are shown “in an exaggerated state” in the collapsed position of Figure 21 “for clarity.” Id. 1 85. Sepetka explains that strands 906 are “relatively small and flexible” and “do not take up much space in the lumen of the delivery catheter” as compared to conventional wires, but that this feature cannot be appreciated in the “exaggerated depiction” of Figure 21. Id. Once the device emerges from delivery catheter 905, strands 906 are relatively free of main element 4 Appeal 2017-002818 Application 13/672,496 904, and become entangled with the obstruction during rotation of the main element. Id. 1 89; Fig. 22. The Examiner’s reliance on the depiction of the placement and configuration of strands 906 in Figure 21 as forming a “tubular body” is suspect. As noted above, Sepetka describes that strands 906 are shown in an “exaggerated state” in this Figure for clarity. As we understand Sepetka, strands 906 would not necessarily bow outwardly from main element 904 within delivery catheter 905 as depicted in Figure 21. As such, it is not evident from this Figure, when viewed with the accompanying description, whether the “tubular body” identified by the Examiner would be found in Sepetka’s device. Sepetka further describes: Another aspect of the present invention is that the strand 906 and element 904 may engage one another at locations dependent upon the permitted expansion of the main element 904 within the vessel. As such, the present invention provides advantages over conventional mesh-like structures having a predetermined geometry since these structures may not perform adequately under a variety of different size restrictions in an obstruction. Id. 190. Thus, Sepetka describes a device 902 formed by main element 904 and strands 906, where the device does not have a predetermined geometry. The language of claim 1, however, calls for a mesh with a predetermined geometry: the claim recites “a tubular body.” The claim language further recites the step of expanding the expandable member “such that a portion of the tubular body comes into contact with a portion of the obstruction.” As clearly depicted in Figure 22 of Sepetka, strands 906 do not form a tubular body once the device 902 emerges from delivery catheter 5 Appeal 2017-002818 Application 13/672,496 905 and main element 904 is allowed to expand. As such, the “tubular body” identified by the Examiner in Figure 21 no longer exists during expansion of device 902 and, thus, a portion of a tubular body does not come into contact with a portion of the obstruction. For these reasons, the Examiner’s finding that Sepetka anticipates claim 1 is not supported by a preponderance of the evidence. As such, we do not sustain the rejection of claim 1 and its dependent claims 2-5, 8, 13— 16, 20, and 22-24 as anticipated by Sepetka. The remaining rejections under 35 U.S.C. § 103(a) based on unpatentability over Sepetka alone, or in combination with Evans, rely on the same deficient finding as to the disclosure of a “tubular body” in Sepetka. Final Act. 5-6. DECISION The decision of the Examiner rejecting claims 1-24 is reversed. REVERSED 6 Copy with citationCopy as parenthetical citation