Ex Parte Kunis

Patent Trial and Appeal Board

Mar 19, 2018

13324631 (P.T.A.B. Mar. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
13/324,631
113314 7590
Michael R. Shevlin
9330 Fletcher Drive
La Mesa, CA 91941
FILING DATE FIRST NAMED INVENTOR
12/13/2011 Christopher Gerard Kunis
03/21/2018
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
APM-OOlUSCON 2430
EXAMINER
LOUIS, RICHARD G
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
03/21/2018 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):
mshevlin@cox.net
mike@shevlinlaw.com
docketing@cpaglobal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER GERARD KUNIS
Appeal 2017-001176
Application 13/324,631 1
Technology Center 3700
Before DONALD E. ADAMS, DEBORAH KATZ, and
JENNIFER MEYER CHAGNON, Administrative Patent Judges.
ADAMS, Administrative Patent Judge.
DECISION ON APPEAL
This Appeal under 35 U.S.C. § 134(a) involves claims 32-50 (Br. 5;
see also id. at 9 ("All of the rejections of all of the claims 32-50 are
appealed")). Examiner entered rejections under 35 U.S.C. § 103(a). We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
Appellant's disclosure relates to a device for delivering therapy
"within [a] vessel having a focal tissue effect sufficient to create electrically
1 Appellant identifies the real party in interest as "Aperiam Medical, Inc."
(Br. 3).
Appeal 2017-001176
Application 13/324,631
inert tissue at the point of contact affecting only the implant deployment
location, e.g., where ectopic beats occur within the sleeve of the pulmonary
vein" (Spec. iJ 6). Claims 32, 33, 34, 40, and 41 are representative and
reproduced below:
32. An implant device for disrupting aberrant electrical
signals adjacent a target vessel in a subject, the implant device
compnsmg:
a single ribbon that is shaped and configured to include
proximal and distal windings or coils, wherein the ribbon
comprises a rectangular cross-sectional shape, the ribbon
further having no penetrating elements, wherein a width of the
ribbon is between 0.5 and 2.5 mm;
a first end and a second end, and an implant device
length extending between the first end and the second end,
wherein the ribbon is generally perpendicular to a longitudinal
axis of the implant device throughout an entire implant device
length;
wherein the ribbon is wherein the implant device is[2J
configured for placement within the target vessel of the subject
and for radial deployment therein, wherein, once radially
deployed within the target vessel, the ribbon is configured to
deliver a force against adjacent tissue of between about 5
g/mm2 and 340 g/mm2;
2 We note that the phrase "wherein the implant device is" appears to
represent a typographical error (cf Br. 7 (Appellant's summary of
independent claim 32 states, with reference to Appellant's Specification, that
the "ribbon is configured for placement within the target vessel of the
subject and for radial deployment therein (paragraph [0042]), wherein, once
radially deployed within the target vessel, the ribbon is configured to deliver
a force against adjacent tissue of between about 5 g/mm2 and 340 g/mm2
(paragraph [0045]") (alteration original)). For this Appeal, we interpret
claim 32 as not including the phrase "wherein the implant device is." In the
event of further prosecution we encourage Examiner and Appellant to
address and clarify this phrase.
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Application 13/324,631
wherein a pressure exerted by the ribbon is sufficient to
focally compress the adjacent tissue to disrupt electrical signals
within the tissue without penetrating said tissue;
wherein, due to the proximal and distal windings or coils
of the implant device, upon radial deployment within the target
vessel, pressure is exerted by the ribbon along at least two
longitudinally separate and distinct locations of the target vessel
for a particular radial section of the target vessel wall;
wherein the ribbon is configured, upon radial
deployment within the target vessel, to generally contact and
conform to the adjacent tissue throughout an entire implant
device length and to radially expand so as to generally distribute
a radial pressure created by the implant device to all the regions
of the target vessel contact by the implant along an entire
implant device length.
33. The implant device of [ c ]laim 32, wherein a pitch of
adjacent windings or coils is constant throughout the entire
implant device length.
34. The implant device of [ c ]laim 32, wherein a pitch of
adjacent windings or coils varies along the implant device
length.
40. The implant device of [ c ]laim 32, wherein a pitch of the
windings or coils along the first end and the second end is less
than a pitch of the windings or coils along a middle portion of
the implant device, generally between the first and second ends.
41. An implant device for disrupting aberrant electrical
signals adjacent a target vessel in a subject, the implant device
compnsmg:
a continuous ribbon that is shaped and configured to
include proximal and distal windings, wherein the ribbon
comprises a rectangular cross-sectional shape, the ribbon
further having no penetrating elements;
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Application 13/324,631
a first end and a second end, and an implant device
length extending between the first end and the second end;
wherein the ribbon is configured for placement within the
target vessel of the subject and for radial deployment therein,
wherein, once radially deployed within the target vessel, the
ribbon is configured to deliver a force against adjacent tissue of
between about 5 g/mm2 and 340 g/mm2 ;
wherein a pressure exerted by the ribbon is sufficient to
compress the adjacent tissue to disrupt electrical signals within
the tissue without penetrating said tissue;
wherein the ribbon is configured, upon radial deployment
within the target vessel, to generally contact and conform to the
adjacent tissue throughout an entire implant device length;
and
wherein the ribbon is configured to radially expand so as
to generally distribute a radial pressure created by the implant
device to all the regions of the target vessel contact by the
implant along an entire implant device length.
(Br. 21-22 (emphasis added).)
The claims stand rejected as follows:
Claims 32, 35-39, 41, and 44--49 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Swanson3 and Thorud.4
Claims 33, 34, 42, and 43 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Swanson, Thorud, and Villar. 5
Claims 40 and 50 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Swanson, Thorud, and Horton. 6
3 Swanson et al., US 2004/0220655 Al, published Nov. 4, 2004.
4 Thorud et al., US 6,109,779, issued Feb. 1, 2000.
5 Villaretal., US 5,935,145, issued Aug. 10, 1999.
6 Horton et al., US 2002/0133190 Al, published Sept. 19, 2002.
4
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Application 13/324,631
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 1. Appellant discloses "an implant [that] may include two separated
coils or rings that are connected by a single helical wire, a double helical
wire, or a set of multiple helical wires" (Spec. ii 42).
FF 2. Appellant's Figure 1 is reproduced below:
/
/
I
10CI
./
Appellant's Fig. 1 schematically illustrates "an implant device 100 ...
within a pulmonary vein [PV]" that "includes a proximal coil 10[] [and] a
distal coil 30[] ... separated by a helix or helical wind 20" (Spec. ii 43).
FF 3. Appellant's Figure 2(C) is reproduced below:
30
FIG. 2(C)
Appellant's Fig 2(C) "illustrate[s] ... the implant device of [Appellant's]
Fig. 1, with a single helix connecting two coils or rings" (Spec. ii 22).
5
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Application 13/324,631
FF 4. Swanson "provides an electrical block device that is implantable and
anchorable within the pulmonary veins and/or left atrium of many different
geometries" (Swanson ii 70; id. ii 71 (Swanson's implantable electrical block
device "function[ s] in a way that consistently circumferentially blocks
aberrant electrical signals through its presence in the ostium of the
pulmonary veins"); see also ii 73 (Swanson's implantable electrical block
"device can press against the tissue causing tension in the tissue wall ...
without having the device actually pass through the wall"); see Final Act. 7
3).
FF 5. Swanson's Figure IA is reproduced below:
Swanson's FIG. IA illustrates "a left atrium 10 of a human heart wherein
two adjacent pulmonary veins 11 [] originate directly from two ostia in the
left atrium ... [at] bifurcation 13 ... located near the left atrium" (Swanson
ii 68 (emphasis omitted)).
7 Office Action mailed October 20, 2015.
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Application 13/324,631
F:r:c.,, 1\A
Swanson's "FIG. l lA illustrates a side view of an electrical block device
according to ... [Swanson's] invention" (Swanson ii 31 (emphasis
omitted)). "This embodiment of [Swanson's] electrical conduction block
device 700 uses ... [an] expandable wire ring 702 and an expandable vein
anchor 704 connected by a connecting wire 706" (Swanson ii 115 (emphasis
omitted); see Final Act. 3).
FF 7. Examiner finds that Swanson discloses the subject matter of, inter
alia, Appellant's independent claims 32 and 41 with the exception of a
ribbon [that] comprises a rectangular cross-sectional shape,
wherein a width of the ribbon is between 0.5 and 2.5 mm, the
width of the ribbon is between 1-2 mm, the ribbon comprises a
shape memory material, and the ribbon is configured to deliver
a force against adjacent tissue of between about 5 g/mm[2] and
340 g/mm[2].
(Final Act. 3.)
FF 8. Thorud "relates to tubular stents introduced to a site in a body vessel,
duct or tract or other body lumen to provide a passageway through the stent
lumen, and more particularly to a multi-filar coil stent and method of
fabrication and implantation thereof' (Thorud 1: 4-8; see Final Act. 3--4).
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Application 13/324,631
FF 9. Thorud's Figure 2 is reproduced below:
Thorud's "FIG. 2 is a side view of a bi-filar open coil stent [10] ... in the
expanded state in relation to a stent delivery catheter [75]" (Thorud 5: 44--46
(emphasis omitted); see generally id. at 6: 12-66; Final Act. 3-5).
FF 10. Thorud's "bi-filar open coil stent 10 [contains] ... first and second
coils 15 and 20 which are attached together at attachment junctions of the
coil ends to form first or proximal and second or distal, stent ends 25 and 30,
respectively" (Thorud 6: 21-25 (emphasis omitted); see generally Final Act.
3-5).
FF 11. Thorud's "coils 15, 20[] are formed in rectangular cross-section and
form a shape memory material," wherein "the ribbon shaped, coil wire
preferably has a thickness of about 0.15 mm to 0.40 mm and a width of
about 0.30 mm to 5.00 mm" (Thorud 8: 5-14; see also id. at 5: 15-17; see
Final Act. 3-4).
FF 12. Examiner finds that the combination of Swanson and Thorud fails to
disclose a ribbon, or coil, that comprises "a constant pitch," or in the
alternative, "a varying pitch throughout an entire length of the implant"
(Final Act. 5-6).
FF 13. Villar "relates to a device for occluding a space within the body, and
particularly, it is useful as a vaso-occlusive device" (Villar 1: 4-6; see
generally Final Act. 5-6).
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FF 14. Villar's Figure 1 is reproduced below:
t0-0 ..•
...
Fig. 1
Villar' s Fig. 1 illustrates "a partial cross-section of [Villar' s] ... occlusion
device including a coil [102] and a braided covering [106]" (Villar 2: 36-38;
see also id. at 4: 1-2; see Final Act. 5-6).
FF 15. Villar discloses that the "coil windings" of its device "may have a
regular or constant pitch ... or they may vary in pitch as desired to provide
the coil with a variation in flexibility" (Villar 4: 30-32; see Final Act. 5-6).
FF 16. Examiner finds that the combination of Swanson and Thorud "fail[ s]
to disclose a pitch of the windings or coils along the first end and the second
end [that] is less than a pitch of the windings or coils along a middle portion
of the implant device, generally between the first and second ends" (Final
Act. 6-7).
FF 17. Horton "relates broadly to an in[]situ formable and self-forming
intravascular flow modifier (IFM) and/or stent" (Horton ,-i 2).
9
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Application 13/324,631
FF 18. Horton's Figure 1 is reproduced below:
F.IG. 1
42
Horton's "FIG. 1 is a perspective view of an IFM [20] deployed in a
cutaway of a vessel according to one embodiment" of Horton's disclosure
and illustrates an
IFM 20 [having] an outer layer 22 formed of a strand ...
configured as a longitudinally oriented coil 24 of adjacent
helical loops 26 extending between a first end 28 and a second
end 30 of the outer layer 22. The outer layer 22 is secured in
the vessel 32 by at least some of the helical loops 26 pressing
against a portion of the interior surface of the vessel 32[, which]
... is depicted with a defect 34, which is a wide neck
aneurysm.
(Horton ,-i 43 (emphasis omitted); id. ,-i 63 (emphasis omitted).)
FF 19. Horton discloses that "the outer layer [22 of the IFM 20] is divided
into at least a first end portion, a middle portion, and a second end portion
along the longitudinally oriented coil," wherein, "[t]he pitch of the middle
portion [of Horton's IFM 20] may be smaller than the pitch of the first end
and second end portions" or, "[a ]ltematively, the pitch of the middle portion
may be larger than the pitch of the first end and second end portions"
(Horton ,-i 17; Final Act. 6-7).
FF 20. Horton discloses that "[f]or an intracranial IFM, the option of
varying the spacing or controlling the pitch at various points alon[g] the
longitudinal coil is especially important. The physician can manipulate the
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Application 13/324,631
relative movement of the IFM ... to stretch the coil out or bunch it up to
avoid blocking perforating arteries. . . . Further, the physician can tighten
the coil by reducing the pitch to more fully obstruct the blood flow into [an]
aneurysm" (Horton ,-i 91; see Final Act. 6-7).
ANALYSIS
The rejection over the combination of Swanson and Thorud:
Based on the combination of Swanson and Thorud, Examiner
concludes that, at the time Appellant's invention was made, it would have
been prima facie obvious
to modify the ribbon disclosed by Swanson et al. such that the
ribbon comprises a rectangular cross-sectional shape, wherein a
width of the ribbon is between 0.5 and 2.5 mm or 1-2 mm,
because it would only require the substitution of one known
equivalent configuration for another to produce nothing but
predictable results.
(Final Act. 4; see FF 4-11.) In this regard, Examiner reasons that it would
have been a matter of routine optimization to modify the device suggested
by the combination of Swanson and Thorud
to deliver a force against adjacent tissue of between about 5
g/mm[2] and 340 g/mm[2] ... to focally compress [] adjacent
tissue to disrupt electrical signals within the tissue without
penetrating [the] tissue, because Swanson recognizes the force
applied by the implant is a result effective variable and it has
been held that discovering an optimum value of a result
effective variable involves only routine skill in the art.
(Final Act. 4, citing In re Boesch, 617 F .2d 272 (CCP A 1980); see FF 4; see
generally Final Act. 3-5.)
Although Appellant recognizes "the single ribbon embodiment
disclosed in [Swanson's] FIG. l lA" (Br. 13 (emphasis added)), Appellant
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Application 13/324,631
contends that "Swanson does not disclose 'a single ribbon that is shaped and
configured to include proximal and distal windings or coils' (claim 32) or 'a
continuous ribbon that is shaped and configured to include proximal and
distal windings' (claim 41) as required by [Appellant's] claims" (Br. 12; see
also id. at 13). We are not persuaded.
Notwithstanding Appellant's contention to the contrary, Swanson
discloses a device that is a single, continuous, ribbon comprising an
expandable wire ring 702 and an expandable vein anchor 704 connected by a
connecting wire 706 (see FF 6; see also Ans. 3 ("Expandable wire ring 702,
expandable vein anchor 704, connecting wire 706 are all characterized as the
single structure of electrical conduction block 700. They are disclosed as
attached to one another in paragraph [0115] and shown to be direct
continuations of one another in Figure l lA" (alteration original); cf FF 1-
3).
Swanson's description of its device does not substantially differ from
Appellant's description of implant 100 (see FF 1 (Appellant discloses "two
separated coils or rings that are connected by a single helical wire"); see also
FF 2 (Appellant's "implant device 100 ... includes a proximal coil 10[]
[and], a distal coil 30[] ... separated by a helix or helical wind 20"); see also
FF 3 (Appellant's device is "a single helix connecting two coils or rings");
cf FF 6 (Swanson's "device 700 uses ... [an] expandable wire ring 702 and
an expandable vein anchor 704 connected by a connecting wire 706")). As
Swanson's FIG. l lA makes clear, Swanson's connecting wire 706 is a
helical wire (see FF 6). Therefore, we are not persuaded by Appellant's
contention that the language Swanson used to describe its device "does not
appear to characterize the three components[, i.e., wire ring 702, vein anchor
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Application 13/324,631
704, and connecting wire 706,] as a single structure" (Br. 12; see FF 6).
Identical language between the prior art and claims is not required to sustain
a prior-art rejection. In re Skoner, 517 F.2d 947, 950 (CCPA 1975) ("Any
other result would permit the allowance of claims drawn to unpatentable
subject matter merely through the employment of descriptive language not
chosen by the prior art.")
Examiner relies upon Thorud to suggest the rectangular cross-
sectional shape and dimensions of an implantable coil wire for use in
Swanson's device (see Final Act. 4; FF 11 (Examiner finds that Thorud's
wire is "formed in rectangular cross-section" and "has a thickness of about
0.15 mm to 0.40 mm and a width of about 0.30 mm to 5.00 mm")). In
addition, Examiner finds that Thorud discloses an implantable coil wire that
is "shown to generally contact and conform to the adjacent tissue throughout
an entire implant device and to radially expand so as to generally distribute
radial pressure created by the implant to all regions of the target vessel
contact[ ed] by the implant along an entire implant device length" (Ans. 6;
see FF 8-10). Thus, we find no error in Examiner's conclusion that, at the
time of Appellant's claimed invention, it would have been prima facie
obvious to use Thorud' s wire having a rectangular cross-section, a thickness
of about 0.15 mm to 0.40 mm, and a width of about 0.30 mm to 5.00 mm to
construct Swanson's electrical block device, or, otherwise, configure
Swanson's device to have a rectangular cross-sectional shape and defined
dimensions as disclosed by Thorud (see Final Act. 4; FF 6 and 8-11 ).
Therefore, we are not persuaded by Appellant's contention that Thorud fails
to suggest "'a single ribbon' or 'continuous ribbon', as described in
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Application 13/324,631
[Appellant's] application" (Br. 13), which fails to account for Swanson's
contribution to the combination of Swanson and Thorud.
Swanson illustrates the implantation of a device 700, wherein the
expandable wire ring 702 is located in the left atrium and the expandable
vein anchor 704 is located in a pulmonary vein (see FF 4-6; see also Br. 14).
Swanson's disclosure, however, is not limited to locating its device 700 as
illustrated in Swanson's FIG. l lA. 8 To the contrary, Swanson "provides an
electrical block device that is implantable and anchorable within the
pulmonary veins and/or left atrium of many different geometries" (FF 4
(emphasis added); see generally FF 5). In addition, as Examiner explains,
Thorud discloses a device for implantation in a single target vein (see Ans.
6). Appellant failed to provide persuasive evidence or reasoning to support a
conclusion that the device suggested by the combination of Swanson and
Thorud could not reasonably be placed in a single target vein or that a
person of ordinary skill in this art would not have found it prima facie
obvious to place the device suggested by the combination of Swanson and
Thorud in a single target vessel, i.e. a pulmonary vein (see Ans. 6 ("The
implant disclosed by Swanson is capable of being implanted anywhere. Not
just at a bifurcation")). Therefore, we are not persuaded by Appellant's
contention that
[b ]ecause [Swanson illustrates] the position of the expandable
wire ring in the target vessel and expandable vein anchor in
separate vessels, Swanson does not meet [the] limitation of
[Appellant's] claims by exerting pressure "along at least two
8 See In re Fracalossi, 681 F.2d 792, 794 n.l (CCPA 1982) ("It is axiomatic
that a reference must be considered in its entirety, and it is well established
that the disclosure of a reference is not limited to specific working examples
contained therein").
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Application 13/324,631
longitudinally separate and distinct locations of the target
vessel" to disrupt electrical signals.
(Br. 14; see id. at 15 and 16.)
Appellant recognizes that "Swanson shows an electrical conduction
block device [700] that includes an expandable wire ring 702 that exerts an
'expansion force' to disrupt electrical signals and [an] expandable vein
anchor [704] that exerts an 'anchoring force to secure the electrical bock
device [700]' to the target position" (Br. 16). Appellant contends, however,
that although
the expansion force of the expandable wire ring [702] may
disrupt electrical signals, the anchoring force appears not to
disrupt electrical signals, providing just enough force to secure
the electrical block device [700]. Nowhere in Swanson does it
describe an anchoring force capable of blocking electrical
signals. Also, since the expandable vein anchor is positioned in
a different vessel than the target vessel, there is no reason or
need for the expandable vein anchor to block the electrical
signals [of] the other vessel.
(Id.) In addition, Appellant contends that Thorud "fails to disclose any
mention that the pressure exerted [by its device] is 'sufficient to focally
compress the adjacent tissue to disrupt electrical signals within the tissue', as
required by [Appellant's] claims" (id.). Thus, Appellant contends that
Swanson alone, or in combination with Thorud, fails to suggest a device that
exerts pressure "'along at least two longitudinally separate and distinct
locations of [a] target vessel for a particular radial section of the target vessel
wall' [such that] the pressure exerted by the proximal and distal coils is
'sufficient to focally compress the adjacent tissue to disrupt electrical signals
within the tissue"' (id.). We are not persuaded.
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Initially, for the reasons provided above, we are not persuaded by
Appellant's contention that the combination of Swanson and Thorud
suggests a device that must be position in different vessels. Further,
Appellant failed to provide persuasive evidence or reasoning to support a
conclusion that both the expandable wire ring 702 and expandable vein
anchor 704 (which are formed of the same single, continuous, ribbon) of the
device suggest by the combination of Swanson and Thorud do not exert the
same amount of pressure when placed in a target vessel (see Ans. 7
("Swanson does not disclose the amount of force the anchor applies, thus the
Office disagrees there is evidence [on this record] to suggest it would not
disrupt electrical signals")). "Where, as here, the claimed and prior art
products are identical or substantially identical, or are produced by identical
or substantially identical processes, the PTO can require an applicant to
prove that the prior art products do not necessarily or inherently possess the
characteristics of his claimed product." In re Best, 562 F.2d 1252, 1255
( CCP A 1977). On this record, Appellant failed to establish a difference
between the force exerted by the prior art device and the force exerted by
Appellant's claimed device.
For the reasons set forth above, we are not persuaded by Appellant's
contention that Examiner's rejection is based on "impermissible hindsight"
(Br. 15).
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The rejection over the combination of Swanson, Thorud, and Villar:
Based on the combination of Swanson, Thorud, and Villar, Examiner
concludes that, at the time Appellant's invention was made, it would have
been prima facie
obvious to configure the ribbon disclosed by [the combination
of Swanson and Thorud] to have a constant [or, alternatively,
varying pitch] throughout an entire length of the implant, as
suggested by Villar ... in order to provide the implant with
uniform [or varying] flexibility [and] to apply uniform [or
varying] pressure over the treatment site, [respectively].
(Final Act. 6; see FF 4-15.)
Appellant contends that Villar, when viewed in isolation, "does not
disclose 'a single [or continuous] ribbon that is shaped and configured to
include proximal and distal windings'," as is required by Appellant's
independent claims (Br. 18, citing Appellant's independent claims 32 and
41 ). We are not persuaded. As discussed above, the combination of
Swanson and Thorud suggests a device within the scope of Appellant's
independent claims. Having found no error in Examiner's combination of
Swanson and Thorud, as it relates to Appellant's independent claims, we are
not persuaded by Appellant's contention that "the addition of Villar does not
cure the defects of Swanson in view of Thorud" (id.).
We are also not persuaded by Appellant's contention that "Villar[]
does not compress the adjacent tissue to disrupt electrical signals within the
tissue" (id.), which, as discussed above, is suggested by the combination of
Swanson and Thorud.
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The rejection over the combination of Swanson, Thorud, and Horton:
Based on the combination of Swanson, Thorud, and Horton, Examiner
concludes that, at the time Appellant's invention was made, it would have
been prima facie obvious
to modify the implant disclosed by [the combination of
Swanson and Thorud] such that it included a pitch of the
windings or coils along the first end and the second end is less
than a pitch of the windings or coils along a middle portion of
the implant device, generally between the first and second ends,
as taught by Horton ... in order to control the length of the coil
and avoid blocking the body lumen the coil is disposed in.
(Final Act. 7)
For the reasons discussed above, having found no error in Examiner's
combination of Swanson and Thorud, as it relates to Appellant's
independent claims, we are not persuaded by Appellant's contention that
"the addition of [Horton] does not cure the defects of Swanson in view of
Th[or]ud" (Br. 19, citing Appellant's independent claims 32 and 41).
We are also not persuaded by Appellant's contention that Horton
"does not appear to be 'from a related field of endeavor' as alleged by the
[E]xaminer" (Br. 19).
Two criteria have evolved for determining whether prior
art is analogous: (1) whether the art is from the same field of
endeavor, regardless of the problem addressed, and (2) if the
reference is not within the field of the inventor's endeavor,
whether the reference still is reasonably pertinent to the
particular problem with which the inventor is involved.
In re Clay, 966 F.2d 656, 658-9 (Fed. Cir. 1992).
Horton relates to implantable intra-vascular coiled devices (17-20).
Each of Swanson, Thorud, and Appellant's claimed invention also relate to
implantable intra-vascular coiled devices (see FF 1-6 and 8-11 ). In
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addition, Horton discloses how the pitch of an implantable intra-vascular
coiled device affects flow through a vessel, which a person of ordinary skill
in this art would have understand was reasonably pertinent to the particular
problem with which the inventor, as well as Swanson and Thorud, were in
involved when implanting an intra-vascular coiled device into a vessel (see
FF 20). Thus, notwithstanding Appellant's contention to the contrary,
Horton meets both of the Clay criteria for determining whether prior art is
analogous. See Clay, 966 F.2d 658-9.
CONCLUSION OF LAW
The preponderance of evidence relied upon by Examiner supports a
conclusion of obviousness.
The rejection of claims 32 and 41 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Swanson and Thorud is affirmed.
Claims 35-39 and 44--49 are not separately argued and fall with claims 32
and 41 respectively.
The rejection of claims 33, 34, 42, and 43 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Swanson, Thorud, and Villar is
affirmed.
The rejection of claims 40 and 50 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Swanson, Thorud, and Horton is
affirmed.
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TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a).
AFFIRMED
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