Ex Parte Quinn et al

Patent Trial and Appeal Board

Dec 19, 2014

11607638 (P.T.A.B. Dec. 19, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CHRIS QUINN, STEVE ZAVER, and KEVIN ANDERSON
____________

Appeal 2012-007032
Application 11/607,6381
Technology Center 3700
____________

Before CHRISTOPHER G. PAULRAJ, ROBERT A. POLLOCK, and
ELIZABETH A. LaVIER, Administrative Patent Judges.

LaVIER, Administrative Patent Judge.

DECISION ON APPEAL

On appeal are the Examiner’s rejections of claims 16–19 as obvious
under 35 U.S.C. § 103(a), which were entered as new grounds of rejection in
the Examiner’s Answer. (Ans. 3–4.) Appellants chose to maintain the
appeal by filing a Reply Brief, pursuant to 37 C.F.R. § 41.41, and seek
reversal pursuant to 35 U.S.C. § 134(a). We have jurisdiction under
35 U.S.C. § 6(b).
For the reasons set forth below, we REVERSE.

1 According to Appellants, the real party in interest is Atritech, Inc. (Appeal
Br. 4.)
Appeal 2012-007032
Application 11/607,638

2
BACKGROUND
The Specification generally describes an implantable device with a
retrieval portion for facilitating device removal in the event of embolization
of the device. (Spec. ¶ 5.) Claim 16 is representative:
16. The method for removing an embolized implant from a
patient, wherein the embolized implant is of the type having a
dedicated retrieval loop forming a retrieval portion located apart
from implant sealing surfaces, released from the left atrial
appendage, comprising:
positioning a sheath near the embolized implant;
inserting a retrieval device of the type having a snare through
the sheath;
coupling the retrieval device snare to said retrieval loop portion
of the embolized implant, the retrieval loop portion extending
from the distal end of the implant; and
retracting the embolized implant into the sheath.
(Appeal Br. 14 (Claims App.) (emphasis added).)
REJECTIONS
On appeal, the Examiner enters the following new grounds of
rejection:
1. Claims 16, 18, and 19 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Khairkhahan2 in view of Eskuri,3 as evidenced by

2 U.S. Patent Application Pub. No. US 2003/0195555 A1, published Oct. 16,
2003.
3 U.S. Patent Application Pub. No. US 2004/0138693 A1, published July 15,
2004.
Appeal 2012-007032
Application 11/607,638

3
dictionary definitions of “embolize,”4 “loop,”5 and “embolus.”6 (Ans.
3–4.)
2. Claim 17 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Khairkhahan and Eskuri, as evidenced by the dictionary definitions of
“embolize,” “loop,” and “embolus,” in view of Borillo.7 (Ans. 4.)
DISCUSSION
Appellants argue, inter alia, that the Examiner misinterpreted the
phrase “embolized implant” in rejecting the claims, and that the rejections
cannot stand in light of the proper definition of the term. (See Reply Br. 7–
8.) During prosecution, an application’s claims take their broadest
reasonable construction consistent with the specification, as one of ordinary
skill in the art would interpret them. In re Am. Acad. of Sci. Tech. Ctr., 367
F.3d 1359, 1364 (Fed. Cir. 2004).
The Examiner relies on dictionary definitions to conclude that the
appropriate interpretation of “embolized” is “to lodge in and obstruct.”
(Ans. 5.) Thus, in the Examiner’s view, “an embolus is merely defined as a
foreign body lodged in or obstructing a blood vessel and the left [atrial]
appendage (LAA) is a vessel within the heart which carries or holds blood.”
(Ans. 10.) Accordingly, the Examiner finds that Khairkhahan discloses a
method of removing an embolized implant because Khairkhahan describes

4 Dictionary.com, “embolize,”
http://dictionary.reference.com/browse/embolize (last visited Jan. 9, 2012).
5 Dictionary.com, “loop,” http://dictionary.reference.com/browse/loop (last
visited Jan. 9, 2012).
6 Dictionary.com, “embolus,”
http://dictionary.reference.com/browse/embolus (last visited Jan. 9, 2012).
7 U.S. Patent Application Pub. No. US 2002/0035374 A1, published Mar.
21, 2002.
Appeal 2012-007032
Application 11/607,638

4
“an implant that is delivered and positioned” in the LAA, which “travels in
the blood stream” (because “in order to pass the catheter to the targeted
position it must travel within the blood stream”), such that “once delivered
[it] is lodged in or obstructs the LAA which would then be considered a
foreign body lodged in or obstructing the LAA. . . .” (Ans. 5 (citing
Khairkhahan ¶¶ 60, 80).)
In contrast, Appellants argue that “an embolus is an obstruction that
was carried by the blood prior to lodging in the blood vessel.” (Reply Br.
10.) In support, Appellants cite the Specification, which states that “if an
implantable device becomes dislodged from the site to which it was
delivered it may be carried by bodily fluids from the delivery site. When
this occurs, the device may be described as having embolized.” (Id. (quoting
Spec. ¶ 6).8) Further, referring to claim 16’s recitation of “[t]he method for
removing an embolized implant from a patient . . . released from the left
atrial appendage,” Appellants observe that “[a]n implant cannot be both
embolized in the left atrial appendage (according to the Examiner’s
interpretation of Khairkhahan) and also released from the left atrial
appendage. But an implant can be embolized in the sense of having broken
free and released from the left atrial appendage to lodge elsewhere.” (Reply
Br. 10.) Thus, as Khairkhahan “teaches the implantation of an implant in the
left atrial appendage and optional retrieval from the left atrial appendage, but
fails to teach anything about a dislodged or embolized implant,” (id. at 11),
Appellants conclude that under the proper interpretation of “embolized

8 We note this quotation appears to come from paragraph 4 of the
Specification, not paragraph 6.
Appeal 2012-007032
Application 11/607,638

5
implant,” the Examiner’s reliance on Khairkhahan in rejecting claim 16 is
misplaced.
We agree with Appellants. The Specification concerns itself with
how to retrieve an implanted device that has become “in the unlikely event
of embolization.” (Spec. ¶ 5; see also Spec. ¶¶ 2, 8, 59–60, 71–72.) The
Specification describes a device as “having embolized” when it dislodges
“from the site to which it was delivered.” (Id. at ¶ 4.) Figure 3, for example,
illustrates an embolized implant that has become lodged in a patient’s aorta.
(Spec. Fig. 3; ¶¶ 12, 59.) We see no indication in the Specification, and the
Examiner points to none, to support the broader definition on which the
Examiner relies. The Specification consistently refers to an “embolized”
implant as an implant that has become dislodged from the intended site of
delivery (Spec. ¶ 4), and does not consider a properly-situated implant to be
“embolized.”
As the Examiner has not established that Khairkhahan teaches what to
do with an implant that has become dislodged from the position to which it
was delivered, we conclude the Examiner erred in relying on Khairkhahan to
teach the “method for removing an embolized implant” recited in claim 16.
As claims 17–19 depend from claim 16, we reverse the Examiner’s
rejections of claims 16–19.
CONCLUSION
The rejections of claims 16–19 as unpatentable under 35 U.S.C.
§ 103(a) are reversed.

REVERSED

Appeal 2012-007032
Application 11/607,638

6

cdc