10976092 (B.P.A.I. May. 29, 2012)

Ex Parte Letort

Board of Patent Appeals and InterferencesMay 29, 2012

10976092 (B.P.A.I. May. 29, 2012)

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. 10/976,092 10/27/2004 Michel Letort PA1193 9865 28390 7590 05/30/2012 MEDTRONIC VASCULAR, INC. IP LEGAL DEPARTMENT 3576 UNOCAL PLACE SANTA ROSA, CA 95403 EXAMINER BLATT, ERIC D ART UNIT PAPER NUMBER 3734 MAIL DATE DELIVERY MODE 05/30/2012 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte MICHEL LETORT ____________ Appeal 2011-001295 Application 10/976,092 Technology Center 3700 ____________ Before DONALD E. ADAMS, DEMETRA J. MILLS, and JEFFREY N. FREDMAN, Administrative Patent Judges. ADAMS, Administrative Patent Judge. DECISION ON APPEAL This appeal under 35 U.S.C. § 134 involves claims 1-8. 1 We have jurisdiction under 35 U.S.C. § 6(b). STATEMENT OF THE CASE The claims are directed to a method for stabilizing a segment of a blood vessel for placement of an intravascular repair vehicle (claims 1-6) or 1 “Claims 9-10 were canceled in the Amendment After Final Filed October 28, 2008” (App. Br. 5). Appeal 2011-001295 Application 10/976,092 2 a stent graft (claims 7-8). Claim 1 is representative and is reproduced in the “CLAIM APPENDIX” of Appellant’s Brief (App. Br. 19). Claims 1-8 stand rejected under 35 U.S.C. § 102(e) as being anticipated by Hunter. 2 Claims 1-8 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Edwards 3 and McDonald. 4 We reverse. Anticipation: ISSUE Has Examiner established an evidentiary basis on this record to support a conclusion that Hunter teaches Appellant’s claimed invention? FACTUAL FINDINGS (FF) FF 1. Hunter teaches an injectable polymer system which comprises a sclerosing agent for injection into an aneurysm sac (Hunter 43: ¶ [0346]; see Ans. 3). FF 2. Hunter teaches that “embolization agents combined with a fibrosing agent directly, or a composition (e.g., a polymeric or non-polymeric carrier) that includes a fibrosing agent, for the purpose of permanently occluding an aneurysm” (Hunter 43: ¶ [0345]); see also id. at ¶ [0343] (“The embolic materials that are injected . . . into the vasculature are capable of producing a permanent, obstructive scar in the aneurysm sac that results in regression and absorption of the unwanted vessel (or portion of the vessel)”). 2 Hunter et al., US 2005/0177103 A1, issued August 11, 2005. 3 Edwards et al., US 6,419,673 B1, issued July 16, 2002. 4 McDonald et al., US 6,090,136, issued July 18, 2000. Appeal 2011-001295 Application 10/976,092 3 ANALYSIS Examiner relies on paragraph 346 of Hunter to teach the infusion of an isolated segment of a blood vessel “with a sclerosing agent . . . creating a sclerosed segment” (Ans. 3). The portion of Hunter relied upon by Examiner teaches an injectable polymer system which comprises a sclerosing agent for injection into an aneurysm sac (FF 1; App. Br. 11). In contrast to Examiner’s finding that Hunter teaches the use of an injectable polymer system with a stent graft, Hunter teaches that the polymer system is used for the purpose of permanently occluding an aneurysm resulting in regression and absorption of the unwanted vessel or portion of the vessel (FF 2; App. Br. 11 and 12; Cf. Ans. 3 and 5). We recognize Examiner’s reference to Hunter’s abstract and paragraph 397 to suggest a stent graft or stent (Ans. 3 and 5). Examiner, however, failed to explain how the evidence of record leads to a conclusion that Hunter’s injectable polymer system for permanently occluding an aneurysm, which results in regression and absorption of the unwanted vessel or portion thereof, is used in a method of deploying a stent or stent-graft (FF 1-2; Cf. Ans. 3). “[I]n an ex parte proceeding to obtain a patent, . . . the Patent Office has the initial burden of coming forward with some sort of evidence tending to disprove novelty.” See In re Wilder, 429 F.2d 447, 450, (CCPA 1970); see also In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (“[E]xaminer bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability”). For the foregoing reasons, we are compelled to agree with Appellant’s contention that Hunter fails to teach each and every element of independent Appeal 2011-001295 Application 10/976,092 4 claims 1 and 7 (App. Br. 11 and 13). The same is true of claims 2-5 and 8, which depend from claims 1 and 7 respectively (id. at 12 and 13). CONCLUSION OF LAW Examiner failed to establish an evidentiary basis on this record to support a conclusion that Hunter teaches Appellant’s claimed invention. The rejection of claims 1-8 under 35 U.S.C. § 102(e) as being anticipated by Hunter is reversed. Obviousness: ISSUE Does the preponderance of evidence on this record support a conclusion of obviousness? FACTUAL FINDINGS (FF) FF 3. Edwards suggests “an apparatus and system for ablation of body structures or tissue in the region of the rectum” (Edwards, Abstract; see also id. at col. 6, ll. 11-62); id. at col. 11, ll. 11-24 and col. 12, ll. 4-16 (Edward’s claims 28, 34, and 35, which are directed to an apparatus for treatment of a sphincter in a body). FF 4. Edwards suggests that an electrode is disposed on the apparatus “for emitting energy to ablate body structures or other tissue, such as by cell death, dehydration, or denaturation” (id. at col. 2, ll. 25-28). FF 5. Edwards suggests that the apparatus “is inserted into the body at an opening, such as the rectum” or “another opening into the body, such as a natural orifice such as the vagina or the urethra, or an opening which has been made surgically, such as an incision which allows the catheter . . . to be inserted into a blood vessel” (id. a col. 5, l. 53 - col. 6, l. 2). Appeal 2011-001295 Application 10/976,092 5 FF 6. Examiner finds that “Edwards does not disclose deploying an intravascular repair vehicle” and relies on McDonald to suggest “that it was known to deploy a stent in a lumen following ablation” (Ans. 4; see McDonald, col. 1, ll. 13-16 (McDonald’s “invention relates to intraluminal stents and grafts that are adapted to be advanced . . . to the site of an aneurysm, defect or injury of a body vessel”)). ANALYSIS With reference to column 6, line 2 of Edward’s, Examiner finds, inter alia, that Edwards suggests “a method for stabilizing a segment of a blood vessel for placement of an intravascular repair vehicle” (Ans. 4 (emphasis added)). We are not persuaded. Examiner expressly finds that Edwards fails to suggest the deployment of an intravascular repair vehicle (FF 6; App. Br. 14). Further, notwithstanding Examiner’s contention to the contrary, Edwards does not suggest “a method for stabilizing a segment of a blood vessel” (Ans. 4; Cf. 3-5; App. Br. 14). At best, Edwards, suggests inserting the apparatus into the body through a blood vessel (FF 5). While, McDonald suggests an intravascular repair vehicle, e.g., a stent, Examiner failed to establish an evidentiary basis on this record to support a conclusion that McDonald’s stent would be useful in any treatment suggested by Edwards, wherein a body structures or other tissue is ablated, such as by cell death, dehydration, or denaturation (FF 3-5; Cf. FF 6; App. Br. 15). Appeal 2011-001295 Application 10/976,092 6 CONCLUSION OF LAW The preponderance of evidence on this record fails to support a conclusion of obviousness. The rejection of claims 1-8 under 35 U.S.C. § 103(a) as unpatentable over the combination of Edwards and McDonald is reversed. REVERSED cdc