Ex Parte Hoffman

Patent Trial and Appeal Board

Sep 28, 2017

12038238 (P.T.A.B. Sep. 28, 2017)

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.
8627-1922 (PA-6058-RFB) 5264
EXAMINER
SIMPSON, SARAH A
ART UNIT PAPER NUMBER
3731
MAIL DATE DELIVERY MODE
12/038,238 02/27/2008
48003 7590
BGL/Cook - Chicago
PO BOX 10395
CHICAGO, IL 60610
09/29/2017
GRANT T. HOFFMAN
09/29/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GRANT T. HOFFMAN
Appeal 2015-0036201
Application 12/038,23 82
Technology Center 3700
Before MICHAEL C. ASTORINO, KENNETH G. SCHOPFER, and
MATTHEW S. MEYERS, Administrative Patent Judges.
SCHOPFER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the rejection of claims
1, 2, 4—7, 9-17, 19-24, and 27—30. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.
1 Our decision references the Appeal Brief (“Appeal Br.,” filed Oct. 21,
2014) and Reply Brief (“Reply Br.,” filed Jan 27, 2015), and the Examiner’
Answer (“Ans.,” mailed Nov. 28, 2014) and Final Office Action (“Final
Act.,” mailed July 21, 2014).
2 According to Appellant, the real party in interest is Cook Medical
Technologies LLC. Appeal Br. 2.
Appeal 2015-003620
Application 12/038,238
BACKGROUND
According to the Specification, “the invention relates to detachable
and retrievable embolic protection devices for the capture of emboli during a
vascular procedure.” Spec. 12.
CLAIMS
Claims 1,16, 24, and 27 are the independent claims on appeal. Claim
1 is illustrative of the appealed claims and recites:
1. An embolic protection device for capturing emboli in a
body vessel, the device comprising:
a frame having an expanded state and a collapsed state,
the frame including a plurality of struts extending distally along
a longitudinal axis from a proximal end to a distal end, the
struts being configured to open radially to define the expanded
state of the device for capturing emboli and to fold along the
longitudinal axis to define the collapsed state of the device for
retrieval of the device;
a waist band having an open and a closed state being
disposed about the plurality of struts and attached to a middle
portion of at least one of the plurality of struts of the frame, the
waist band being formed of a plurality of members each having
a proximal tip and a distal tip, each of the proximal and distal
tips being attached at a waist band joint to the respective
proximal or distal tip of an adjacent member such that the
members form a “Z” pattern in the open state and lie nearly
parallel to each other in the closed state, wherein adjacent struts
have at least one waist band joint disposed therebetween in the
open state; and
a filter portion defining a proximal filter end attached to
the waist band and a distal filter end attached to the distal end
of the frame, the distal filter end defining a round shape when
the frame is in the expanded state, the proximal filter end
corresponding to the “Z” pattern of the waist band in the open
state such that a portion of the proximal filter end is attached to
the at least one waistband joint disposed between adjacent
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Appeal 2015-003620
Application 12/038,238
stmts, the filter portion configured to capture emboli in the
expanded state.
Appeal Br. 35.
REJECTIONS
1. The Examiner rejects claims 1, 2, 4—7, 9, 10, 13, 16, 19—24, and 27—303
under 35 U.S.C. § 103(a) as unpatentable over Tsugita4 in view of Boyle5
and O’Connell6 and evidenced by the Dictionary.com definition of
‘about.’7
2. The Examiner rejects claim 11 under 35 U.S.C. § 103(a) as unpatentable
over Tsugita in view of Boyle, O’Connell, and Kusleika8 and evidenced
by the Dictionary.com definition of ‘about.’
3. The Examiner rejects claim 12 under 35 U.S.C. § 103(a) as unpatentable
over Tsugita in view of Boyle, O’Connell, and Griffin9 and evidenced by
the Dictionary.com definition of ‘about.’
4. The Examiner rejects claims 14 and 15 under 35 U.S.C. § 103(a) as
unpatentable over Tsugita in view of Boyle, O’Connell, and
Ravenscroft10 and evidence by the Dictionary.com definition of ‘about.’11
3 The heading for this rejection also includes claims 3, 25, and 26. Final
Act. 2. However, those claims have been cancelled. See Appeal Br. 35, 40.
4 Tsugita et al., US 6,165,200, iss. Dec. 26, 2000.
5 Boyle et al., US 6,540,722 Bl, iss. Apr. 1, 2003.
6 O’Connell, US 6,517,559 Bl, iss. Feb. 11,2003.
7 http://dictionary.reference.com/browse/about; visited on Oct. 21, 2011.
8 Kusleika et al., US 6,773,448 B2, iss. Aug. 10, 2004.
9 Griffin et al., US 2002/0193828 Al, pub. Dec. 19, 2002.
10 Ravenscroft et al., US 6,007,558, iss. Dec. 28, 1999.
11 Although the heading for this rejection does not include O’Connell or a
reference to the Dictionary.com definition of ‘about,’ claims 14 and 15 each
ultimately depend from claim 1, which has only been rejected in view of,
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Appeal 2015-003620
Application 12/038,238
5. The Examiner rejects claim 17 under 35 U.S.C. § 103(a) as unpatentable
over Tsugita in view of Boyle, O’Connell, and Russell12 and evidenced
by the Dictionary.com definition of ‘about.’
DISCUSSION
With respect to claim 1, the Examiner finds that Tsugita discloses an
embolic protection device including a frame as claimed and a filter portion
including a proximal filter end; a distal filter end defining a round shape; and
configured to capture emboli in the expanded state. Final Act. 2—3 (citing
Tsugita Figs. 6a—8b; col. 12,11. 15—41, 54—55). The Examiner
acknowledges that Tsugita does not disclose a waistband as claimed, for
which the Examiner relies on O’Connell and Boyle. Final Act. 4. The
Examiner relies on Boyle as disclosing a waistband disposed about a
plurality of struts and attached at the middle portion of the frame and with
members that lie substantially parallel in the closed state. Id. at 4—5. The
Examiner further relies on O’Connell as disclosing a waistband that is
configured such that adjacent struts of the device have multiple waistband
joints disposed therebetween. Id. at 5—6 (citing O’Connell Figs. 1, 17, 18,
20, 21). The Examiner first concludes that “it would have been obvious to
one of ordinary skill in the art at the time of the invention to modify the filter
of Tsugita with the waistband taught by Boyle to create a better seal with the
vessel wall.” Ans. 11. And with respect to O’Connell, the Examiner
concludes:
inter alia, O’Connell and evidenced by the Dictionary.com definition of
‘about.’ Thus, we consider the Examiner’s omission of these references
with respect to this rejection to be an inadvertent and harmless error.
12 Russell, US 2003/0130680 Al, pub. July 10, 2003.
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Appeal 2015-003620
Application 12/038,238
it would have been obvious to one of ordinary skill in the art at
the time of the invention to modify the device of Tsugita
including the waistband taught by Boyle (which includes
members that lie substantially parallel to each other when
closed) so that there is at least one joint disposed between
adjacent struts of the waistband to provide better expansion
capabilities of the filter struts.
Ans. 11-12.
We are persuaded of reversible error because the Examiner has failed
to provide sufficient reasoning for the proposed combination. See Reply Br.
4. Based on our review, we determine that the Examiner’s reason for further
modifying Tsugita and Boyle in view of O’Connell lacks the required
rational underpinnings to support the Examiner’s conclusion. See KSR Int'l
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[R]ejections on obviousness
grounds cannot be sustained by mere conclusory statements; instead, there
must be some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness.”). The reasoning provided for
the proposed combination with O’Connell to include joints between adjacent
struts in Tsugita’s device, as modified by Boyle, is to allow for “better
expansion capabilities of the filter struts.” Final Act. 6; see also Ans. 12.
The Examiner provides no explanation as to how or why one of ordinary
skill in the art would have recognized this alleged benefit in O’Connell’s
spring element or how or why one of ordinary skill in the art would have
understood that further modifying Tsugita’s device would have achieved this
benefit. Further, such is not readily apparent from our review of the portions
of O’Connell cited by the Examiner. Additionally, to the extent O’Connell’s
spring element does provide “better expansion capabilities” the Examiner
has not shown that such expansion capabilities are provided by O’Connell’s
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Appeal 2015-003620
Application 12/038,238
placement of spring joints between adjacent stmts, which would have led
one to modify Tsugita’s device as proposed. Simply put, the Examiner’s
statement that the modification would provide “better expansion
capabilities” lacks adequate support.
Based on the foregoing, we do not sustain the rejection of claim 1.
Each of the remaining independent claims similarly require a waistband and
stmts wherein at least one joint in the waistband is disposed between
adjacent stmts, and the Examiner relies on the same analysis with respect to
this limitation for each of the remaining independent claims. Accordingly,
we also do not sustain the rejections of claims 2, 4—7, 9-17, 19-24, and 27—
30.
CONCLUSION
We REVERSE the rejections of claims 1, 2, 4—7, 9—17, 19—24, and
27—30 for the reasons set forth herein.
REVERSED
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