Ex Parte Foley

Board of Patent Appeals and Interferences

Nov 17, 2010

10961312 (B.P.A.I. Nov. 17, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte MARK J. FOLEY
____________________

Appeal 2009-007199
Application 10/961,312
Technology Center 3700
____________________

Before JENNIFER D. BAHR, LINDA E. HORNER, and KEN B.
BARRETT, Administrative Patent Judges.

BARRETT, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-007199
Application 10/961,312

2
STATEMENT OF THE CASE
Mark J. Foley (Appellant) seeks our review under 35 U.S.C. § 134 of
the final rejection of claims 2-9 and 11-18. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.

THE INVENTION
Claim 7, reproduced below, is representative of the subject matter on
appeal.
7. A method for increasing the flow of blood to a selected
site in a patient's arterial vascular system of the heart, the
method comprising the steps of:
creating a channel for blood flow from an oxygenated
blood source to the selected site in the arterial vascular system
of the heart;
maintaining the channel in an open position for blood
flow through diastolic and systolic cycles of the heart;
regulating the blood flow in the channel to minimize
blood flow from the coronary vascular system to the blood
source during diastole; and
wherein the method includes more than one blood source.

THE REJECTION
Before us for review is the Examiner’s rejection of claims 2-9 and
11-18 under 35 U.S.C. § 103(a) as being unpatentable over LaFontaine
(US 6,092,526, issued July 25, 2000) and Makower (US 6,746,464 B1,
issued June 8, 2004).

Appeal 2009-007199
Application 10/961,312

3
OPINION
Appellant’s claims are directed to a method involving the creation of a
channel for blood from an oxygenated source to a site in the arterial vascular
system of the heart. Appellant argues the rejected independent claims in two
groups, with independent claims 7 and 16 in one group and independent
claims 8 and 17 in the second group. App. Br. 13, 16. Claims 7 and 16
recite “wherein the method includes more than one blood source.” Claims 8
and 17 recite “wherein the method includes more than one site in the arterial
vascular system.” Appellant does not present separate arguments for the
remaining claims on appeal, but notes that those claims each depend from an
argued independent claim and contends that the dependent claims are
patentable for the reasons presented for the independent claims. Id. at 17.
We select independent claims 7 and 8 as the representative claims for which
to decide this appeal. Claim 16 stands or falls with claim 7, claim 17 stands
or falls with claim 8, and the dependent claims stand or fall with their
respective independent claim. 37 C.F.R. § 41.37(c)(1)(vii).

Claim Construction
Appellant’s arguments for both groups of claims appear to be
premised on a particular interpretation of the claim scope. Appellant argues
that the claims require separate and parallel pathways (channels) from the
source(s) to the site(s). See App. Br. 15, 17; Reply Br. 5. Appellant appears
to contend that such a limitation is implicit in the claims because “[t]he
general direction of blood flow is specified,” i.e., from multiple sources to a
site or from a source to multiple sites. Reply Br. 5.
Appeal 2009-007199
Application 10/961,312

4
While multiple sources or multiple sites might imply the need for
separate pathways originating/terminating at the individual sources or sites,
the claims do not, as Appellant suggests, require those pathways to remain
separate and parallel for the entire distance from source to site. Moreover,
Appellant appears to agree that the Specification describes an embodiment
having the sources in series and an embodiment having two sources supply
one pathway leading to a site. See App. Br. 13 (“Based upon the
specification and figures, more than one blood source can be supplied to the
selected site by supplying the sources in series ….”); id. at 14 (noting that
the Specification discloses an arrangement where two sources supply one
channel leading to a site). We agree with the Examiner’s conclusion that
“[t]he claims do not recite limitations regarding separate and parallel
pathways.” Ans. 5.

Claim 7
As mentioned above, claim 7 is directed to a method involving more
than one blood source. The Examiner, while addressing together both
groups of independent claims, found that LaFontaine discloses forming a
channel from the left ventricle (a source) to a location in the coronary artery
(a site), but that LaFontaine does not expressly disclose using more than one
source or site. Ans. 3-4. The Examiner further found that “Makower
teaches in column 2, line 41 through column 3, line 1 and column 5, lines
58-63 that it is well known to those of ordinary skill in the cardiology art to
provide multiple bypass procedures in order to provide enhanced blood flow
to areas in need.” Id. at 4. The Examiner then concluded that
Appeal 2009-007199
Application 10/961,312

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Therefore it would have been obvious to one of ordinary skill in
the art at the time of the invention to modify the method of
LaFontaine by using the system to create multiple bypasses
including either multiple sources or delivery sites, as taught
Makower, in order to provide enhanced blood flow to areas in
need thereof.
Id.
Appellant contends that the references together do not teach or
suggest the use of more than one blood source. App. Br. 13. While
Appellant agrees that Makower discloses the use of the vasculature in a
multiple cardiac bypass procedure, Appellant argues that “there is no
mention or suggestion of using more than one blood source in one bypass.”
App. Br. 14 (emphasis added). Even if Appellant is correct, it is not clear to
us how the assertion regarding “one bypass” is commensurate with the scope
of claim 7. As such, Appellant’s argument does not persuade us that the
Examiner’s proposed combination of teachings lacks more than one blood
source.
Appellant also argues that the Examiner has “failed to show proper
motivation for the modification of LaFontaine by Makower, or for
combination of the references.” App. Br. 15; see also id. (“there is no
suggestion to combine the references”). Specifically, Appellant asserts that
LaFontaine is directed to using the heart as a source while Makower
involves other parts of the body and therefore “[i]t does not make sense to
combine the two references” because they are so different. Id.
Appellant’s arguments are not persuasive. First, to the extent that
Appellant is advocating a rigid requirement of a motivation or suggestion to
modify or combine references, the Supreme Court has rejected that position.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418-19 (2007). Second,
Appeal 2009-007199
Application 10/961,312

6
Appellant fails to address the specific teaching of Makower which underlies
the Examiner’s conclusion of obviousness – the teaching regarding multiple
coronary artery bypass procedures. See App. Br. 15. Rather, Appellant
focuses on Makower’s broad concept as set forth in the reference’s abstract
and seems to erroneously assert that Makower discloses nothing concerning
the heart. Id. Third, Appellant’s arguments are premised on the incorrect
assertion that the claim requires separate parallel pathways. App. Br. 15; see
supra (discussing claim construction). Accordingly, Appellant’s arguments
fail to show that it does not make sense to combine the references as
proposed by the Examiner.
Appellant has not persuaded us that the Examiner’s conclusion of
obviousness is not supported by adequate articulated reasoning with rational
underpinning. As such, we affirm the rejection of representative
independent claim 7, independent claim 16, and dependent claims 3, 5, 6, 9,
13, 14, and 18 as obvious in light of LaFontaine and Makower.

Claim 8
As to claim 8, Appellant reiterates the assertion that the Examiner has
failed to show proper motivation for the combination of references. App.
Br. 17. The assertion is based on the same arguments made in the context of
claim 7. Id. at 16-17. Those arguments are equally unpersuasive in the
context of claim 8. As such, we affirm the rejection of representative
independent claim 8, independent claim 17, and dependent claims 2, 4, 11,
12, and 15 as obvious in light of LaFontaine and Makower.

Appeal 2009-007199
Application 10/961,312

7
DECISION
The decision of the Examiner to reject claims 2-9 and 11-18 is
affirmed.
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)(1)(iv).

AFFIRMED

mls

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