Ex Parte Sloan et al

Patent Trial and Appeal Board

May 24, 2013

11446946 (P.T.A.B. May. 24, 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.
11/446,946 06/05/2006 Todd Sloan 10124/05901
(05-01491US1)
2039
30636 7590 05/24/2013
FAY KAPLUN & MARCIN, LLP
150 BROADWAY, SUITE 702
NEW YORK, NY 10038
EXAMINER
DANG, PHONG SON H
ART UNIT PAPER NUMBER
3773
MAIL DATE DELIVERY MODE
05/24/2013 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 TODD SLOAN and JON T. MCINTYRE
__________

Appeal 2011-011271
Application 11/446,946
Technology Center 3700
__________

Before TONI R. SCHEINER, DEMETRA J. MILLS, and
MELANIE L. McCOLLUM, Administrative Patent Judges.

McCOLLUM, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal
1
under 35 U.S.C. § 134 involving claims to a blood
vessel occluding device. The Examiner has rejected the claims as obvious.
We have jurisdiction under 35 U.S.C. § 6(b). We reverse.

1
Appellants identify the real party in interest as Boston Scientific Scimed,
Inc. (App. Br. 2).
Appeal 2011-011271
Application 11/446,946

2
STATEMENT OF THE CASE
Claims 1-5, 7, and 10 are on appeal (App. Br. 2).
2
We will focus on
claim 1, the only independent claim on appeal, which reads as follows:
1. A device for occluding a blood vessel, comprising:
a blunt dissection needle;
a first occlusion clip releasably mounted to a distal end of the blunt
dissection needle, the first occlusion clip being biased to assume a clamped
configuration;
a retaining element which, in a first configuration, encapsulates the
first occlusion clip and retains the first occlusion clip in an insertion position
against an outer surface of the blunt dissection needle and, in a second
configuration, releases the first occlusion clip to assume the clamped
configuration; and
a first anchor member releasably coupling the first occlusion clip to
the needle and a separating mechanism actuatable to permanently shear the
first anchor member to release the first occlusion clip from the needle.
Claims 1-5 and 7 stand rejected under 35 U.S.C. § 103(a) as obvious
over Brock et al. (US 2002/0087169 A1, Jul. 4, 2002) (Ans. 3).
Claim 10 stands rejected under 35 U.S.C. § 103(a) as obvious over
Brock in view of Yeung et al. (US 6,626,916 B1, Sep. 30, 2003) (Ans. 5).
In both grounds of rejection, the Examiner finds that Brock teaches:
A device for occluding a blood vessel, comprising: a blunt
dissection needle (364, Fig. 34); a first occlusion clip (350, 362,
Fig. 31,34) releasably mounted to a distal end of the blunt
dissection needle (364, Fig. 34), the first occlusion clip (350,
362, Fig. 31, 34) being biased to assume a clamped
configuration (paragraph 274); a retaining element (349,
Fig. 31) which, in a first configuration, encapsulates the first
occlusion clip (350, 362, Fig. 31,34) and retains the first
occlusion [clip] (350, 362, Fig. 31,34) in an insertion position
against an outer surface of the blunt dissection needle (364,

2
Claims 8, 9, and 11-27 are also pending but have been withdrawn from
consideration (Ans. 2).
Appeal 2011-011271
Application 11/446,946

3
Fig. 34) and, in a second configuration, releases the first
occlusion clip (350, 362, Fig. 31, 34) to assume the clamped
configuration; and a first anchor member (312, Fig. 31 )
releasably coupling the first occlusion clip (350, 362,
Fig. 31,34) to the needle and a separating mechanism
(paragraph 270) actuatable to permanently shear the first anchor
member (312, Fig. 31) to release the first occlusion clip (350,
362, Fig. 31,34) from the needle.
(Ans. 3-4 & 5.) The Examiner also finds that “Brock fails to teach a clip
biased to assume a clamped configuration and mounted on a blunt needle
encapsulated by a retaining element in one embodiment,” but concludes that
it would have been obvious “to draw from the different embodiments in
Brock and make such a modification . . . in order to enhance delivering of
the clips inside the body without having another step of crimping the clip”
(id. at 5).
ISSUE
With regard to both grounds of rejection, a dispositive issue is: Has
the Examiner set forth a prima facie case that Brock teaches or suggests “a
first anchor member releasably coupling the first occlusion clip to the needle
and a separating mechanism actuatable to permanently shear the first anchor
member to release the first occlusion clip from the needle,” as recited in
claim 1?
FINDINGS OF FACT
1. Brock discloses “a system for closing the base of a cardiac
valve . . . by a stapling technique in which staples are attached to the valve
ring or annulus to draw the annulus into a smaller diameter” (Brock,
¶ [0261]).
2. In one embodiment, Brock discloses:
Appeal 2011-011271
Application 11/446,946

4
FIG. 31 illustrates a staple array comprising delivery
system 342 including storage housing 349 for a plurality of
staples 350. . . . Cable or wire 312 interconnects and loops
through each of staples 350. . . . The staple 350 at the most
distal end of housing 351 (i.e. nearest the exit of housing 351)
has cable 312 attached fixedly at loop 353. . . . For the
remaining staples, cable or wire 312 freely loops through center
loop 353. . . . FIG. 31 also schematically illustrates a clamping
mechanism 352 at the distal end of housing 349, for closing
each of staples 350 as they exit housing 349.
(Id. at ¶ [0262].)
3. Brock also discloses: “Flexible catheter 340 is manipulated to
cause a stapling about annulus 211 of mitral valve 210. . . . Once all of the
stapling has occurred, wire 312 is pulled in the direction of arrow 361 in
FIG. 32. This pulling causes a closure of valve annulus 211.” (Id. at
¶ [0269].)
4. In addition, Brock discloses that, “[o]nce the clinician is
satisfied that the repair is complete, the cable 312 is then locked off with a
crimp, such as illustrated at 365 in FIG. 33,” “or by some other technique
and the cable may then be cut” (id. at ¶¶ [0269] & [0271]).
5. Brock also discloses:
An alternate embodiment of a staple is illustrated in FIG. 34.
Staple 362 may be an elastic-like staple, such as a nitinol staple.
Staple 362 is normally biased to a closed position. A delivery
system employs rod 364, or the like, to hold staple 362 open.
As the rod is moved longitudinally to the array, each staple in
sequence is sprung closed. Such an arrangement would avoid
the necessity of a clamping mechanism 352 as illustrated in
FIG. 31.
(Id. at ¶ [0274].)
Appeal 2011-011271
Application 11/446,946

5
ANALYSIS
The Examiner relies on Brock’s rod 364 (Fig. 34) for being the
needle, staple 362 (Fig. 34) for being the occlusion clip that is biased to
assume a clamped configuration, and cable or wire 312 (Fig. 31) for being
the anchoring member (Ans. 4-5 & 7). We agree with the Examiner that the
“clip in figure 34 [staple 362] is configured to [be] attached to suture 312 for
constrict[ing] the heart valve [and that] therefore suture 312 is required to be
inserted through the eyelet of clips [362] connecting [a] plurality of clips
[362]” (id. at 7). We also agree with the Examiner that Brock teaches or
suggests a separating mechanism actuatable to permanently shear cable 312
(Finding of Fact 4). However, we agree with Appellants that the Examiner
has not adequately explained how cable 312 couples staple 362 to rod 364
and therefore has not adequately explained how Brock teaches or suggests a
separating mechanism actuatable to permanently shear the cable 312 to
release the staple 362 from the rod 364 (App. Br. 4; Reply Br. 3-5).
CONCLUSION
The Examiner has not set forth a prima facie case that Brock teaches
or suggests “a first anchor member releasably coupling the first occlusion
clip to the needle and a separating mechanism actuatable to permanently
shear the first anchor member to release the first occlusion clip from the
needle,” as recited in claim 1. We therefore reverse the obviousness
rejections of claim 1 and of claims 2-5, 7, and 10, which depend from
claim 1.
REVERSED

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