Endobar Solutions, LLC

Patent Trials and Appeals Board

Oct 27, 2021

2021001292 (P.T.A.B. Oct. 27, 2021)

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.
14/597,398 01/15/2015 Nickolas Kipshidze 1464-0011US01 4573
137713 7590 10/27/2021
Potomac Law Group, PLLC
8229 Boone Boulevard
Suite 430
Vienna, VA 22182
EXAMINER
ORKIN, ALEXANDER J
ART UNIT PAPER NUMBER
3771
NOTIFICATION DATE DELIVERY MODE
10/27/2021 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):
eofficeaction@appcoll.com
patents@potomaclaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte NICKOLAS KIPSHIDZE and RONALD JAY SOLAR

____________

Appeal 2021-001292
Application 14/597,398
Technology Center 3700
____________

Before STEFAN STAICOVICI, MICHAEL J. FITZPATRICK, and
LISA M. GUIJT, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE.
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision in the Final Office Action (dated Sept. 23, 2019, hereinafter “Final
Act.”) rejecting claims 11, 13, and 16 under 35 U.S.C. § 103 as being

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Endobar Solutions LLC is identified as the real party in
interest in Appellant’s Appeal Brief (filed Aug. 20, 2020, hereinafter
“Appeal Br.”). Appeal Br. 2.
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unpatentable over Peterson,2 Bodenlenz,3 and Vinten-Johansen.4,5,6 We
have jurisdiction over this appeal under 35 U.S.C. § 6(b).

SUMMARY OF DECISION
We REVERSE.

INVENTION
Appellant’s invention is directed to a catheter for introducing a
plurality of embolization particles to a patient’s artery to modify blood flow
in the artery. Spec. paras. 8, 25.
Claims 11 and 12 are independent. Claim 11 is illustrative of the
claimed invention and reads as follows:
11. A catheter for delivering embolization particles to a
target artery of a patient, the catheter having a distal end and a
proximal end, the catheter comprising:
a first lumen that provides a fluid-tight path for particles
to flow between the proximal end of the catheter and the distal
end of the catheter;
a balloon located near the distal end of the catheter,
wherein the balloon is configured so that when the balloon is
inflated, the balloon prevents blood from flowing through the
target artery;

2 Peterson et al., US 2001/0031982 Al, published Oct. 18, 2001.
3 Bodenlenz et al., US 2011/0224628 Al, published Sept. 15, 2011.
4 Vinten-Johansen, US 2004/0243057 Al, published Dec. 2, 2004.
5 Claims 1–10 are withdrawn, and claims 14, 15, and 17–20 are canceled.
Appeal Br. 26–28, 31–32 (Claims App.).
6 The rejection of claim 12 under 35 U.S.C. § 103 as unpatentable over the
combined teachings of Peterson, Bodenlenz, and Vinten-Johansen is
withdrawn. Examiner’s Answer (dated Oct. 21, 2020, hereinafter “Ans.”) 3.
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an inflation lumen that is used to inflate the balloon, the
inflation lumen having a distal end that is in fluid
communication with an interior of the balloon;
a second lumen that has an input port that is located
within the artery proximal to the balloon and an output port that
is located distal to the balloon, wherein the second lumen is
configured to provide a fluid-tight path for blood to flow from
the input port to the output port; and
a strainer that prevents the particles from flowing through
the second lumen, wherein the strainer is fine enough to prevent
particles with sizes between 300 and 500 µm from passing,
wherein the strainer is coarse enough to permit all types of
blood components to pass, and wherein the strainer
comprises a mesh having a mesh spacing between 150 and 250
microns,
wherein the input port is disposed at a position such that
when the distal end of the catheter is positioned in the target
artery, blood from an artery in the patient's body can enter the
second lumen via the input port, flow through the second
lumen, exit the second lumen via the output port, and flow from
the output port into the target artery.

Appeal Br. 29–30 (Claims App.).

ANALYSIS
The Examiner finds that Peterson discloses “a catheter [16] capable of
delivering embolization particles to a target artery of a patient” including,
inter alia, an inflation lumen to inflate balloon 40 to prevent blood from
flowing through the target artery, a second lumen 38 having input port 42
and output port 46, and a strainer 50 to prevent particles from flowing
through second lumen 38. Final Act. 3–4 (citing Peterson, paras. 22, 25, 26,
Figs. 2, 3). The Examiner further finds that Peterson discloses using other
catheters with its catheter system in similar interventional procedures. Id. at
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4 (citing Peterson, para. 29). The Examiner also relies on Bodenlenz to
disclose a strainer 102 with the recited mesh size and on Vinten-Johansen to
disclose a catheter with a first lumen 27 “that provides a fluid-tight path for
particles to flow,” a second lumen 8 “to deliver therapeutic drugs,” and a
third lumen 30 “to measure fluid pressure.” Id. at 4–5 (citing Bodenlenz,
paras. 44, 45, 130, Figs. 1, 2; Vinten-Johansen, paras. 23, 27, 29–31, Fig. 2);
see also Vinten-Johansen, Fig. 6.
Thus, the Examiner determines that it would have been obvious for a
person of ordinary skill in the art to modify Peterson’s strainer 50 to have
the mesh size of Bodenlenz’s strainer because “it has been held that where
the general conditions of a claim are disclosed in the prior art, discovering
the optimum or workable ranges involves only routine skill in the art.” Final
Act. 4–5. The Examiner further concludes that it would have been obvious
for a skilled artisan to employ the first lumen of Vinten-Johansen with
Peterson’s catheter, as modified by Bodenlenz, “in order to allow the
delivery of a therapeutic drug through the catheter and/or be able to measure
fluid pressure at the distal end of the catheter.” Id. at 5.
As such, the catheter of claim 11 delivers embolization particles by
providing, inter alia, a first lumen for particle flow, a second lumen for
blood flow, and a strainer that prevents particles from flowing through the
second lumen. See Appeal Br. 29–30 (Claims App.). In contrast, the
catheter of Peterson, as modified by Bodenlenz and Vinten-Johansen,
captures embolic material using a second lumen 38 for blood and particle
flow and a strainer 50 that permits flow of embolic particles in second lumen
38. Therefore, in contrast to the strainer of independent claim 11, which
prevents particles from flowing through the second lumen, the strainer of
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Peterson, as modified by Bodenlenz and Vinten-Johansen, permits flow of
embolic particles through second lumen 38.
Furthermore, we appreciate that the catheter of Peterson, as modified
by Bodenlenz and Vinten-Johansen, includes an additional first lumen to
deliver a therapeutic drug and/or measure pressure. See Final Act. 5.
However, this by itself does not adequately explain how strainer 50 prevents
embolic particles 12 from flowing through second lumen 38, as required by
independent claim 11. Moreover, assuming arguendo that embolization
particles, i.e., therapeutic drug, flow through the first lumen in the catheter
of Peterson, as modified by Bodenlenz and Vinten-Johansen, it is not clear
from the Examiner’s rejection how strainer 50 prevents such particles from
flowing through second lumen 38. In other words, Appellant is correct that
it is not clear from the Examiner’s rejection how the claimed relationship
between the first lumen and the strainer is achieved such that the strainer
“prevents the particles (delivered using the first lumen) from flowing
through the second lumen.” Reply Brief (filed Dec. 11, 2020, hereinafter
“Reply Br.”) 6. We, thus, agree with Appellant that “the claimed
relationship between the particles and the screen recited in claim 11” is not
clear from the Examiner’s rejection. See Appeal Br. 18.
As such, for the foregoing reasons, the Examiner’s legal conclusion of
obviousness is not supported by sufficient factual evidence, and thus, cannot
stand. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (holding that
“[t]he legal conclusion of obviousness must be supported by facts. Where
the legal conclusion is not supported by facts it cannot stand.”).
Accordingly, for the foregoing reasons, we do not sustain the rejection under
35 U.S.C. § 103 of independent claim 11, and its dependent claims 13 and
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16, over the combined teachings of Peterson, as modified by Bodenlenz and
Vinten-Johansen.

CONCLUSION

Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed
11, 13, 16 103 Peterson,
Bodenlenz,
Vinten-
Johansen
11, 13, 16

REVERSED