Ex Parte AnwarDownload PDFBoard of Patent Appeals and InterferencesFeb 12, 201211034906 (B.P.A.I. Feb. 12, 2012) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte AZAM ANWAR ____________________ Appeal 2010-000830 Application 11/034,906 Technology Center 3700 ____________________ Before: JENNIFER D. BAHR, JOHN C. KERINS, and STEVEN D.A. MCCARTHY, Administrative Patent Judges. BAHR, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-000830 Application 11/034,906 2 STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1-8 under 35 U.S.C. § 103(a) as unpatentable over Don Michael (US 6,485,502 B2, iss. Nov. 26, 2002) and Crank (US 7,163,549 B2, iss. Jan. 16, 2007). The Examiner also rejected claims 1 and 3 under 35 U.S.C. § 112, second paragraph, as indefinite (Fin. Rej. 2-3), but subsequently withdrew the rejection (Ans. 2). We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. THE INVENTION The claims are directed to a system for providing embolic protection in a cardiovascular environment. Spec. 1, ll. 3-5. Claim 1, reproduced below, is illustrative of the claimed subject matter. 1. An apparatus, comprising: a single sponge operable to be positioned in an area of a patient who is to undergo a cardiovascular procedure, wherein the sponge is operable to collect debris present in or proximate to the area and to allow a portion of blood flow or no blood flow associated with the area to continue while the debris is collected, whereby the sponge is capable of achieving a complete lack of blood flow to the area such that a full occlusion can occur at the area, wherein the sponge is operable to deliver a drug to the area, and wherein the drug is provided in or on the sponge, wherein a coating is disposed on a portion of the sponge, the coating operable to limit friction or snagging in the area. Appeal 2010-000830 Application 11/034,906 3 OPINION Claim 1 is directed to an apparatus comprising a sponge having a coating “operable to limit friction or snagging in the area” disposed on a portion thereof. A dispositive issue presented is whether the Examiner articulated a reason with rational underpinnings for providing Don Michael’s sponge with a coating operable to reduce friction and snagging. See App. Br. 10-11; Reply Br. 5-7. Don Michael discloses three types or embodiments of distal protection means 314, one of which comprises a compressible sponge element. Col. 13, ll. 24-26. Another type (described with reference to figures 1-14) is an expandable filter cone or umbrella comprising a collapsible frame made of relatively thin memory metal such as nitinol covered on its outer surface with a thin sheet or membrane of filter material having pores therein. Col. 6, ll. 51-65; col. 13, ll. 24-31. The third type is a blocking balloon connected to an inflation lumen. Col. 13, ll. 25, 31-33. We understand the Examiner’s rejection as reading Appellant’s claimed sponge on the compressible sponge embodiment of Don Michael’s distal protection means. Ans. 3. Crank describes a method of manufacturing an embolic protection filter of the expandable filter cone or umbrella type. See, e.g., col. 1, ll. 48- 49; col. 2, ll. 57-62; col. 6, ll. 43-56. As part of the process for manufacturing such filters, Crank teaches that a lubricious or other type of coating may be applied over portions or all of the filter material to allow the filter material to more easily separate from the spray mold. Col. 4, ll. 55-61. In addressing the anti-friction or anti-snagging coating limitation of claim 1, the Examiner, relying on the teachings of Crank, reasons that it Appeal 2010-000830 Application 11/034,906 4 would have been obvious to provide Don Michael’s sponge with “a coating operable to reduce friction and snagging. Doing so would enable the sponge to treat the area while collecting debris, thus facilitating the healing process, and further limit friction between the sponge and the catheter lumen, thus facilitating deployment of the sponge.” Ans. 4. The Examiner’s articulated reasoning sets forth the result of the proposed modification (i.e., limiting friction between the sponge and the catheter lumen), but does not clearly articulate a reason for making the modification. Neither Don Michael nor Crank reveals any recognition that reducing friction between the filter and catheter lumen was of concern in the art at the time of Appellant’s invention, and the Examiner has not provided any cogent reasoning or evidence showing that this was the case. Crank’s reason for providing the coating is to allow the filter material to more easily separate from the spray mold. However, as mentioned above, Crank’s teachings are directed to a process for manufacturing an embolic protection filter of the expandable filter cone or umbrella type, not a compressible sponge element. It is not apparent, and the Examiner has not explained, how, if at all, Crank’s teaching to provide a coating during manufacturing would be applicable to a process of manufacturing a distal protection means of the compressible sponge element variety. We thus conclude that the Examiner failed to articulate a reason with rational underpinnings for providing Don Michael’s sponge with a coating operable to reduce friction and snagging. We reverse the rejection of claim 1 and its dependent claims 2-8 as unpatentable over Don Michael and Crank. Appeal 2010-000830 Application 11/034,906 5 DECISION For the above reasons, the Examiner’s decision is reversed. REVERSED hh Copy with citationCopy as parenthetical citation