Ex Parte Khosravi et al

Board of Patent Appeals and Interferences

Apr 26, 2010

10461106 (B.P.A.I. Apr. 26, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte FARHAD KHOSRAVI, AMIR ABOLFATHI, and
MICHAEL HOGENDIJK
____________

Appeal 2009-006532
Application 10/461,106
Technology Center 3700
____________

Decided: April 26, 2010
____________

Before JOHN C. KERINS, STEFAN STAICOVICI and
FRED A. SILVERBERG, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL
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Application 10/461,106

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STATEMENT OF THE CASE
Farhad Khosravi et al. (Appellants) appeal under 35 U.S.C. § 134
(2006) from the Examiner’s decision rejecting claims 1-7 and 9-16. Claim 8
has been canceled. We have jurisdiction over this appeal under 35 U.S.C. §
6 (2006).

THE INVENTION
Appellants’ invention relates to a device 70 for treating aneurysms in
hollow-body organs or vessels including rolled sheet 71 having overlapping
edges 72, spiral porous balloon 73 wrapped along the length of rolled sheet
71, and cuff mechanisms 74, 75. Spec. 9, para. [0032]; Spec. 16, para.
[0057]; and fig. 5.
Claim 1 is representative of the claimed invention and reads as
follows:
1. A device for treating an aneurysm or arterio-venous
fistula in a body lumen, comprising:

a tubular member comprising a proximal end, a distal
end, and a passage extending therebetween, the tubular member
being expandable from a collapsed state to an expanded state;

expandable first and second cuffs on the proximal and
distal end of the tubular member, respectively and

means for actuating the expansion of the first and second
expandable cuffs and the tubular member.

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Application 10/461,106

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THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Schiff US 4,697,573 Oct. 6, 1987
Schweich US 5,558,642 Sep. 24, 1996
Saab US 5,902,268 May 11, 1999

The following rejections are before us for review:
The Examiner rejected claims 1-3 and 5-7 under 35 U.S.C. § 102(e) as
anticipated by Schweich.1
The Examiner rejected claim 4 under 35 U.S.C. § 103(a) as
unpatentable over Schweich and Schiff.
The Examiner rejected claims 9-16 under 35 U.S.C. § 103(a) as
unpatentable over Schweich and Saab.

THE ISSUES
Independent claim 1 requires a “tubular member” that is “expandable
from a collapsed state to an expanded state.” According to Appellants, the
broadest reasonable interpretation consistent with the Specification of claim
1 requires that the recited tubular member have “a tubular configuration in
the collapsed state and in the expanded state.” App. Br. 10. See also
Reply Br. 5. Specifically, Appellants further argue that in contrast to the
claimed invention, “the blood flow lumen 24 defined by the sheath 22 [of
Schweich] does not have a tubular configuration in the collapsed state.”
App. Br. 11. In response, the Examiner takes the position that claim 1

1 Although the Examiner has included claim 8 in this rejection, because
claim 8 has been canceled we consider this to be a typographical error. See
Ans. 3.
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merely requires that the tubular member have a collapsed state and not that
the collapsed state have a tubular configuration. Ans. 5.
As such, the first issue presented for our consideration in the instant
appeal is whether the broadest reasonable interpretation of claim 1 consistent
with the Specification requires that the recited tubular member have a
tubular configuration in both the collapsed state and the expanded state.
Appellants further argue that Schweich does not teach “a balloon
wound around the outer surface of the tubular member,” as per claim 3 or a
“tubular member being wound against the delivery catheter in the collapsed
state,” as per claim 5. The Examiner responds that:
When the balloon is collapsed, it is inherently at
least partially wound around the tubular member
as this is the only way to minimize the size of the
device.
Ans. 5.
Hence, the second issue presented for our consideration in the instant
appeal is whether Schweich teaches “a balloon wound around the outer
surface of the tubular member,” as per claim 3 or a “tubular member being
wound against the delivery catheter in the collapsed state,” as per claim 5.
This same issue is presented with respect to the rejection of claims 9-16 as
being obvious over Schweich and Saab.
Lastly, Appellants argue that the combined teachings of Schweich and
Schiff do not disclose a “sheet being rolled such that an overlapping edge of
the sheet spirals along an outer surface of the sheet in the collapsed state.”
In response, the Examiner notes that Schiff clearly discloses a sheet 22 that
is rolled about a stylet in a single spiral. Ans. 5-6. The Examiner then
concludes that it would have been obvious for a person of ordinary skill in
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the art to “to modify the device of Schweich to have a sheet rolled in such a
way as taught by Schiff to facilitate tight wrapping of the balloon around the
stylet.” Ans. 4.
As such, the third issue presented for our consideration in the instant
appeal is whether the combined teachings of Schweich and Schiff would
have prompted a person of ordinary skill in the art to have wrapped the
tubular sheath 22 of Schweich, as taught by Schiff, around the elongated
tubular shaft 30.

SUMMARY OF DECISION
We AFFIRM-IN-PART.

OPINION
Issue (1)
Appellants argue the rejection under 35 U.S.C. §102(e) of claims 1, 2,
6, and 7 together as a group. Therefore, in accordance with 37 C.F.R.
41.37(c)(1)(vii)(2009), we have selected claim 1 as the representative claim
to decide the appeal, with claims 2, 6, and 7 standing or falling with claim 1.
We begin our analysis by construing the limitation “the tubular
member being expandable from a collapsed state to an expanded state.” As
noted by Appellants, “‘member’ is modified by ‘tubular’ in the limitation
‘the tubular member being expandable from the collapsed state to an
expanded state.’” Reply Br. 5. However, in contrast to Appellants’ position,
we do not find that “tubular” also modifies “collapsed state” and “expanded
state,” as argued by Appellants. Although the broadest reasonable
interpretation of a claim under consideration must be consistent with the
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specification, we must be careful not to read a particular embodiment
appearing in the written description into the claim if the claim language is
broader than the embodiment. See Superguide Corp. v. DirecTV
Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). See also E-Pass
Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003). In this
case, as long as the cylindrical sheath 22 of Schweich (tubular member) has
a collapsed state and an expanded state, Schweich teaches a “tubular
member being expandable from a collapsed state to an expanded state,” as
called for in claim 1. It is our finding that the cylindrical sheath 22 of
Schweich (tubular member) has a deflated state (collapsed) and an inflated
state (expanded). Schweich, col. 10, ll. 40-41 and figs. 4 and 5. Hence,
Schweich teaches a “tubular member being expandable from a collapsed
state to an expanded state,” as called for in claim 1. Moreover, we agree
with the Examiner that, “[a] tubular member still has the structure of a
tubular member regardless of whether it is collapsed or expanded.” Ans. 5.
In conclusion, for the foregoing reasons, the rejection of claim 1, and
claims 2, 6, and 7, standing or falling with claim 1, under 35 U.S.C. § 102(e)
as anticipated by Schweich is sustained.

Issue (2)
Claim 3 requires a balloon wound around a tubular member and claim
5 requires a tubular member wound against a delivery catheter. At the
outset, we note that Appellants’ Specification does not expressly define the
term “wound” or otherwise indicate that this term is used in a manner other
than its ordinary and customary meaning. We find that an ordinary and
customary meaning of the term “wound” that is most consistent with the
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Specification and the understanding of those of ordinary skill in the art is “to
turn completely or repeatedly about an object.” MERRIAM WEBSTER’S
COLLEGIATE DICTIONARY (10th Ed. 1997).
It is our finding that Schweich teaches a drug delivery catheter
including cylindrical sheath 22 having a passageway or blood lumen 24
(tubular member), toroidal-shaped balloons 10, 12, 14, 16 (inflatable cuffs),
and an elongated tubular shaft 30 for accommodating a drug flow into a
containment pocket 26 formed between the two inner balloons 12, 14, sheath
22, and vessel wall 20 (lumen configured for injecting a fluid from within
the lumen to a region beyond an outer surface of the tubular member).
Schweich, col. 6, ll. 16-17 and 27-30; col. 7, ll. 8-11; col. 8, ll. 54-57; and
fig. 1.
Furthermore, the cylindrical sheath 22 of Schweich (tubular member)
has a deflated state (collapsed) and an inflated state (expanded) such that
when in a collapsed state, the cylindrical sheath 22 partially covers the
elongated tubular shaft 30. Schweich, col. 10, ll. 40-41 and figs. 4 and 5.
Although the toroidal-shaped balloons are laced through openings 40 in the
tubular shaft 30 (Schweich, col. 9, ll. 8-23 and fig. 2b), we did not find any
portion of Schweich and the Examiner has not pointed to any portion which
teaches that the cylindrical sheath 22 is turned completely or repeatedly
about the elongated tubular shaft 30 of Schweich. As shown in Figures 2b,
4, and 5 of Schweich, the cylindrical sheath 22 lies on top and along
elongated tubular shaft 30, and is not wound around or against it, as required
by Appellants’ claimed invention. Hence, Schweich does not teach a
balloon wound around a tubular member, as per claim 3 or a tubular member
wound against a delivery catheter, as per claim 5.
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Accordingly, the rejection of claims 3 and 5 under 35 U.S.C. § 102(e)
as anticipated by Schweich cannot be sustained.

Issue (3)
It is our finding that the elongated tubular shaft 30 of Schweich
includes a plurality of apertures 40 for delivering a drug from within the
tubular shaft 30 to a containment pocket 26 formed between the two inner
balloons 12, 14, sheath 22, and vessel wall 20. Schweich, col. 8, ll. 54-57;
and fig. 1. Schiff discloses a vacuumed (collapsed state) balloon 22 that is
wrapped around a stylet 28 in a single spiral like a flag around a flagpole.
Schiff, Abstract; col. 9, ll. 40-42; and figs. 2b-2d.
In this case, because the apertures 40 of Schweich deliver the drug from
within the tubular shaft 30 to the containment pocket 26, we find that
apertures 40 cannot be obstructed. However, if the cylindrical sheath 22 of
Schweich is wrapped around the elongated shaft tubing 30, as proposed by
the Examiner, the apertures 40 of Schweich would be obstructed, and hence
would render the delivery catheter of Schweich inoperable for its intended
purpose, namely, to deliver a drug. Where the proposed modification would
render the prior art invention being modified inoperable for its intended
purpose, the proposed modification would not have been obvious. See Tec
Air, Inc. v. Denso Mfg. Michigan Inc., 192 F.3d 1353, 1360 (Fed. Cir. 1999);
In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984). See also In re Gurley, 27
F.3d 551, 553 (Fed. Cir. 1994). Accordingly, the modification proposed by
the Examiner of wrapping the sheath 22 of Schweich around the shaft tubing
30, as taught by Schiff, would not have been obvious to a person of ordinary
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skill in the art. Therefore, the rejection of claim 4 under 35 U.S.C. § 103(a)
as unpatentable over Schweich and Schiff cannot be sustained.
Finally, Appellants argue the rejection of claims 9-16 under 35 U.S.C.
§ 103(a) as unpatentable over Schweich and Saab together as a group. App.
Br. 16-17. We have selected claim 9 as the representative claim to decide
the appeal, with claims 10-16 standing or falling with claim 9. Like claim 5,
claim 9 also requires the limitation of “a tubular member… wound against
the delivery catheter.” However, as shown above, Schweich does not teach
a tubular member wound against a delivery catheter. The Examiner has not
relied on Saab for any teaching that would remedy the deficiency in
Schweich (Ans. 4). Accordingly, the rejection of claim 9, and claims 10-16
standing or falling with claim 9, likewise cannot be sustained.

CONCLUSIONS
1. The broadest reasonable interpretation of claim 1 consistent with the
Specification does not require that the recited tubular member have a
tubular configuration in both the collapsed state and the expanded
state. Schweich teaches a “tubular member being expandable from a
collapsed state to an expanded state,” as called for in claim 1.
2. Schweich does not teach a balloon wound around a tubular member,
as per claim 3 or a tubular member wound against a delivery catheter,
as per claim 5. The combined teachings of Schwiech and Saab do not
teach or suggest a tubular member wound against a delivery catheter,
as required in claims 9-16.
3. The combined teachings of Schweich and Schiff would not have
prompted a person of ordinary skill in the art to have wrapped the
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tubular sheath 22 of Schweich, as taught by Schiff, around the
elongated tubular shaft 30 of Schweich.

DECISION
The Examiner’s decision is affirmed as to claims 1, 2, 6, and 7 and
reversed as to claims 3-5 and 9-16.
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) (2007).

AFFIRMED-IN-PART

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