Ex Parte Porter et al

Patent Trial and Appeal Board

Mar 14, 2013

11031421 (P.T.A.B. Mar. 14, 2013)

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.
11/031,421 01/07/2005 Stephen Christopher Porter 04-0085 (US01) 4169
41696 7590 03/14/2013
VISTA IP LAW GROUP LLP
12930 Saratoga Avenue
Suite D-2
Saratoga, CA 95070
EXAMINER
MANAHAN, TODD E
ART UNIT PAPER NUMBER
3776
MAIL DATE DELIVERY MODE
03/14/2013 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 STEPHEN CHRISTOPHER PORTER,
TRI D. TRAN, HAHN HO, and THACH CAO
____________________

Appeal 2010-006277
Application 11/031,421
Technology Center 3700
____________________

Before: JOHN C. KERINS, SCOTT A. DANIELS, and
JEREMY M. PLENZLER, Administrative Patent Judges.

DANIELS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-006277
Application 11/031,421

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1,
2, 4, 5, 7, 8, 12, 14-17, and 20-31. App. Br. 2. Claims 3, 6, 9-11, 13, 18 and
19 are withdrawn. Id. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

THE INVENTION
The claims are directed to vaso-occlusive devices for treating
aneurysms. The device 10 as shown in Appellants’ Figure 1, “is a surgical
implement and can be readily deployed, removed and/or repositioned in
human vasculature.” Spec. 6. para. [0031]. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A vaso-occlusive device for placement
within an aneurysm, the device comprising
a lower member having a linear
configuration prior to deployment and a deployed
open dome configuration having an outer surface
and an inner surface;
an upper member having a undeployed,
linear configuration prior to deployment and an
open, dome deployed configuration having an
outer surface and an inner surface, wherein at least
a portion of the inner surface of the dome of the
lower member faces at least a portion of the inner
surface of the domed upper member, and
a means of adjusting the overall dimensions
of the deployed configuration of the device such
that the outer surfaces of the upper and lower
members of the device are configured to contact
the dome and the neck of the aneurysm.

Appeal 2010-006277
Application 11/031,421

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REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Stack
Linden
US 5,342,393
US 5,634,936
Aug. 30, 1994
Jun. 3, 1997
Wallace

US 2003/0195553 Al

Oct. 16, 2003

REJECTIONS
The Examiner made the following rejections:
Claims 1, 2, 4, 5, 7, 8, 12, 14-17, 20-25 and 28-31 stand rejected
under 35 U.S.C §103(a) as being unpatentable over Wallace, and Stack. Ans.
3.
Claims 26 and 27 stand rejected under 35 U.S.C § 103(a) as being
unpatentable over Wallace, Stack and Linden. Ans. 6.

ANALYSIS
Appellants argue claims 1, 2, 4, 5, 7, 8, 12, 14-17, 20-25 and 28-31 as
a group, where claim 1 is the only independent claim. See App. Br. 5. We
select claim 1 as representative of the group where claims 2, 4, 5, 7, 8, 12,
14-17, 20-25 and 28-31 stand or fall with claim 1. See 37 C.F.R.
41.37(c)(1)(vii) (2011). Appellants’ position with respect to the further
rejection of claims 26 and 27 is addressed under a separate heading. App.
Br. 10.

Claims 1, 2, 4, 5, 7, 8, 12, 14-17, 20-25 and 28-31 as unpatentable over
Wallace, and Stack.

Appeal 2010-006277
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The Examiner found that Wallace discloses each of the limitations of
claim 1 with the exception of “a means of adjusting the overall dimensions
of the deployed configuration of the device.” Ans. 3. The Examiner turned
to Stack for the teaching of an adjustable upper and lower domed members
18, 32 having interlocking ridges or screw threads to adjust the distance
between the members. Ans. 3. (citing Stack col. 2, ll. 53-59 and col. 4, ll. 5-
22). Combining Stack’s adjustable members with Wallace’s vaso-occlusive
device the Examiner reasoned that “[w]hile Stack discloses the adjustment
means allows the upper and lower members to be moved closer together, one
of ordinary skill in the art would have recognized the need to modify the
adjustment means to allow the distance between the upper and lower
members to be increased since the [vaso-occlusive] device expands to fill the
space within the aneurysm.” Ans. 4.
Appellants argue “that Wallace does not disclose a device in which
the lower member contacts the aneurysm.” App. Br. 5 (emphasis added.)
Specifically Appellants dispute the Examiner’s finding that Wallace’s lower
member is “capable of” contacting the aneurysm and asserts that the
Examiner’s finding is based on “implicit (inherent) disclosure of the claimed
recitation of the lower member being configured to contact the neck of the
aneurysm.” App. Br. 6. Appellants argue that only Wallace’s upper
member (distal end 30) contacts the aneurysm and that “the evidence of
record clearly establishes that the lower member of Wallace’s devices is not
configured to contact the neck of the aneurysm, as positively recited in the
pending claims.” Id. Appellants also contend that the applied combination
of references is improper because Stack discloses that the device “would be
outside the aneurysm” and that the combination of the prior art devices is not
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“a predictable combination of elements based on their known functions” and
that the references teach away from the claimed invention. App. Br. 8.
At the outset, we agree with Appellants that the Examiner has the
initial burden of providing a basis in fact and/or technical reasoning to
reasonably support the determination that Wallace’s lower member
contacting the neck reasonably flows from the teachings of the applied prior
art. See In re King, 801 F.2d 1324, 1327 (Fed. Cir. 1986). To this point,
Wallace discloses with respect to the lower member that “the proximal end
20 may densely cover the neck 70 and function as a retainer.” Wallace,
para. [0031]. Appellants’ argument that Wallace “do[es] not conform to the
shape of the aneurysm in that only the upper member contacts the
aneurysm” (App. Br. 6 and see Reply Br. 2) does not persuade us of error in
the Examiner’s explanation that the occlusion device does not need to
“conform to the entire aneurysm” in order to teach that the lower member
can “at least contact, the neck of an aneurysm.” Ans. 8. Notwithstanding
Appellants’ argument that Wallace’s lower member acts “as an expanded
umbrella [that] would cover a person’s head by extending over said head
without resting or otherwise contacting said head” (Reply Br. 2.), we agree
with the Examiner that Wallace’s lower member is capable of contacting the
neck of the aneurysm, just as an umbrella would be capable of contacting a
person’s head.1 Whether or not Wallace’s device conforms to the aneurysm,
does not vitiate the ability of the proximal end 20 (lower member) to contact
the neck of the aneurysm. We therefore agree with the Examiner that the
proximal end 20 of Wallace’s vaso-occlusive device is capable of, and hence

1 A limitation specifying a particular intended use of a claimed structural
element is anticipated by a prior art device capable of performing that
intended use. See, e.g., In re Schreiber, 128 F.3d at 1477.
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“configured to contact the dome and the neck of the aneurysm” as set forth
in claim 1.
With respect to Appellants’ argument that “Stack fails entirely to
teach devices that are placed within an aneurysm” (App. Br. 7), and that
“Stack’s ‘equivalent’ of the claimed ‘lower member’ would be outside the
aneurysm” (App. Br. 8), the Examiner has only “relied on Stack to teach a
means for adjusting the over-all dimensions of the deployed configuration of
a device.” Ans. 8. Here, Appellants presuppose that all of the teachings in
Stack, including all its structure and function, must be incorporated into
Wallace in order for the combination to be adequately supported. However,
all the features of the secondary reference need not be bodily incorporated
into the primary reference. See In re Keller, 642 F.2d 413, 425 (CCPA
1981) (explaining that “the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art.”).
In terms of the Examiner’s proposed combination of Wallace and
Stack, Stack discloses that,
the outer surface of the stem of the inner rivet portion may be
threaded and the inner surface of the outer rivet portion
correspondingly threaded so that opposite rotation of the
insertion tools about their longitudinal axes threadably engages
the rivets with one another and clamps the tissue surrounding
the perforation between the inner and outer rivet portions.

Stack, col. 4, ll. 5-11. The fact that Stack’s threaded compression device is
used on the outside of vascular tissue does not explain why one of skill in
the art would not be able “to modify the central member of Wallace et al. to
include a means for adjusting the distance between the upper and lower
members to allow the device to be adjusted to fit different depths of
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aneurysms” as explained by the Examiner. Ans. 4. We are thus not
apprised of any error in the Examiner’s position that for a device on the
placed inside of a vascular tissue as in Wallace such a threaded adjustment
means could “expand[] to fill the space within the aneurysm.” Ans. 4.
Appellants assert that Wallace teaches away from the presently
claimed device because Wallace’s device only conforms to the dome of the
aneurysm. App. Br. 8. For similar reasons as discussed supra, we are not
apprised of error in the Examiner’s reasoning. Whether or not Wallace’s
device conforms to the aneurysm is immaterial. Wallace discloses that the
“the relatively dense coverage of the proximal end 20 allows the vaso-
occlusive element 10 itself to function as a vaso-occlusive device” (Wallace
para. [0031]) and Appellants argument does not persuade us of error in the
Examiner’s position.
Appellants further argue that contrary to the presently claimed
adjustable upper and lower members, Wallace’s upper and lower members
are separated a fixed distance and are not adjustable. App. Br. 8-10.
Appellants’ argument here attacks Wallace in isolation, whereas the
Examiner's rejection is predicated on a combination of the teachings of
Wallace and Stack. See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed.
Cir. 1986) (“Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references”). Accordingly, we are also not apprised here of
error in the Examiner’s combination of references.
The Examiner has presented an articulated reasoning based on rational
underpinnings for modifying the vaso-occlusive device of Wallace to
include an adjustment means as taught by Stack, and thus we sustain the
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Application 11/031,421

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Examiner’s rejection of claim 1. As claims 2, 4, 5, 7, 8, 12, 14-17, 20-25
and 28-31 are dependent either directly or indirectly upon independent claim
1, these claims likewise fall with claim 1.

Claims 26 and 27 as unpatentable over Wallace, Stack and Linden.
Dependent claims 26 and 27 recite that the lower member comprises a
film, and that such film can be porous, a polymer or metallic. The Examiner
relies on Linden which discloses a medical device for plugging or occluding
a septal defect can be either a “solid film” or a “woven mesh” Linden col. 3,
l. 3. Appellants do not offer separate arguments regarding the Examiner’s
rejection of claims 26 and 27, and therefore for the reasons discussed supra,
we also sustain the rejection of dependent claims 26 and 27 as unpatentable
over Wallace, Stack and Linden.

DECISION
For the above reasons, the Examiner’s rejection of claims 1, 2, 4, 5, 7,
8, 12, 14-17, and 20-31 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)(1)(iv) (2009).

AFFIRMED
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