Ex Parte Anwar

Board of Patent Appeals and Interferences

Feb 12, 2012

11034906 (B.P.A.I. Feb. 12, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte AZAM ANWAR
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Appeal 2010-000830
Application 11/034,906
Technology Center 3700
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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

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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

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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

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DECISION
For the above reasons, the Examiner’s decision is reversed.
REVERSED

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