Ex Parte Barbut

Patent Trial and Appeal Board

Apr 10, 2017

13323112 (P.T.A.B. Apr. 10, 2017)

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.
13/323,112 12/12/2011 Denise R. Barbut 1156.070 1769
24955 7590
ROGITZ & ASSOCIATES
Jeanne Gahagan
750 B STREET
SUITE 3120
SAN DIEGO, CA 92101
EXAMINER
BACHMAN, LINDSEY MICHELE
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
04/12/2017 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):
Noelle@rogitz.com
eofficeaction @ appcoll.com
John@rogitz.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DENISE R. BARBUT
Appeal 2015-005269
Application 13/323,112
Technology Center 3700
Before JAMES P. CALVE, LEE L. STEPINA, and
ARTHUR M. PESLAK, Administrative Patent Judges.
PESLAK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Denise R. Barbut (“Appellant”) appeals under 35 U.S.C. § 134(a)
from the Examiner’s decision rejecting claims 1 and 3—9.1 We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Claims 2 and 10—14 are cancelled. Amendment (filed January 14„
2014)(cancelling claim 2); Adv. Act. 1 (mailed January 29, 2015).
Appeal 2015-005269
Application 13/323,112
THE CLAIMED SUBJECT MATTER
Appellant’s invention relates to a method for reversing blood flow in a
carotid artery. Spec. 1. Claim 1, reproduced below, is illustrative of the
claimed subject matter.
1. A method for reversing blood flow in a cerebral artery,
comprising the steps of:
locating a first constricting member in the right common
carotid artery;
locating a second constricting member in the aorta
downstream of the left common carotid artery;
expanding the first constricting member to at least
partially obstruct the right common carotid artery; and
expanding the second constricting member to at least
partially obstruct the aorta, wherein blood flow is reversed in the
right internal carotid artery.
REJECTIONS
1) Claim 1 is rejected under 35 U.S.C. § 102(e) as anticipated by
Samson (US 6,673,040 Bl, issued Jan. 6, 2004).
2) Claim 1 is rejected under 35 U.S.C. § 102(e) an anticipated by
Barbut ’057 (US 6,555,057 Bl, issued Apr. 29, 2003).
3) Claims 1 and 4—9 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Solano (US 4,921,478, issued May 1, 1990) and
Barbut ’551 (US 6,231,551 Bl, issued May 15, 2001).
4) Claims 3—7 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Samson and Thramann (US 6,482,172 Bl, issued Nov. 19,
2002).
5) Claims 8 and 9 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Samson.
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Application 13/323,112
6) Claims 1 and 3—9 are rejected on the ground of nonstatutory
obviousness-type double patenting over claims 1—3, 7, 8, 11—13,
17, and 18 ofBarbut ’370 (US 6,146,370, issued Nov. 14, 2000)
and Weil (US 5,195,942, issued Mar. 23, 1993).
DISCUSSION
Rejection 1
Anticipation of Claim 1 by Samson
The Examiner finds that Samson discloses all the limitations of claim
1. Final Act. 4—5. The Examiner specifically finds that Samson’s elements
230 and 240 are the recited first constricting member. Id. at 4 (citing
Samson, Fig. 2).
Appellant contends that Samson’s element 230 is a stent, “which is
used to open an artery,” and hence cannot be used to obstruct the right
common carotid artery as recited in claim 1. Appeal Br. 3. Appellant also
contends that Samson does not disclose “expanding” element 230 or
element 240. Id.
The Examiner responds that “stent 230 is delivered by passing
through catheter 250” and “the expanded diameter of stent 230 is larger than
the diameter of catheter 250.” Ans. 4. With respect to Samson’s element
240, the Examiner submits that “stent delivery catheter 240 is clearly shown
as a balloon in Figure 2. The expansion of this balloon would also result in a
partial obstruction of the right common carotid artery.” Id. The Examiner
admits that Samson does not disclose how stent 230 is delivered, but directs
us to a number of patents referenced in Samson that disclose using balloons
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Appeal 2015-005269
Application 13/323,112
to expand a stent. Id. at 4—5. For the following reasons, we do not sustain
this rejection of claim 1.
Samson discloses “a carotid stent placement subsystem, including a
stent placement catheter 240, a stent 230, a guiding catheter 250 and a guide
wire 260.” Samson, col. 10,11. 21—23, Fig. 2. Stent placement catheter 240
“is advanced through the guiding catheter 250 to place the stent 230 in the
carotid artery.” Id. at col. 10,11. 28—29.
Claim 1 requires the step of “expanding the first constricting member
to at least partially obstruct the right common carotid artery.” (Emphasis
added). We understand the Examiner’s assertion that Samson’s stent 230
expands after it passes through guiding catheter 250, but the claim requires
expanding the second constricting member to at least partially obstruct the
right common carotid artery. The Examiner does not offer persuasive
technical reasoning as to how stent 230, which is a device for opening an
artery, expands to partially obstruct the artery after it passes through guiding
catheter 250. In addition, the Examiner has not directed us to any portion of
Samson where it is disclosed that stent delivery catheter 240 is expanded in
the right common carotid artery. The Examiner’s finding that Samson
anticipates claim 1 is not supported by a preponderance of the evidence.
We, therefore, do not sustain the rejection of claim 1 as anticipated by
Samson.
Rejection 2
Anticipation of Claim 1 by Barbut ’057
The Examiner finds that Barbut ’057 discloses all the steps of claim 1.
Final Act. 5 (citing Barbut ’057, Fig. 9). Appellant argues that Figure 9 of
Barbut ’057 illustrates that “oxygenated blood flows in the normal direction
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Appeal 2015-005269
Application 13/323,112
through the carotid arteries” and is not reversed in the right carotid artery as
recited in claim 1. Appeal Br. 4. The Examiner does not directly address
Appellant’s assertion that Barbut ’057 shows blood flowing in the normal
direction but, relying on MPEP § 2112.01, asserts that “the Office has
provided a sound basis for believing that the method of Appellant’s and the
method of the prior art is the same. Appellant has not provided evidence
showing that Barbut ’057 does not possess the characteristics of the claimed
method.” Ans. 5—6. For the following reasons, we do not sustain this
rejection of claim 1.
Barbut ’057 provides a description of Figure 9 at column 17 line 49 to
column 18 line 4. Barbut ’057 discloses that the system shown in Figure 9
causes oxygenated blood to “flow downwardly-from the balloon into the
lower arterial vasculature. After perfusing through tissue in the lower body,
the oxygen depleted blood or other medium will flow into the venous
system.” Barbut ’057, col. 17,11. 62—64.
The Examiner has not directed us to any disclosure in Barbut ’057 of
blood flow “reversed in the right internal carotid artery.” The Examiner’s
finding that Barbut ’057 anticipates claim 1 is not supported by a
preponderance of the evidence. We, therefore, do not sustain the rejection of
claim 1 as anticipated by Barbut ’057.
Rejection 3
Obviousness of Claims 1 and 4—9 over Solano and Barbut ’557
The Examiner finds that Solano discloses a method of locating and
expanding a first constricting member in the right common carotid artery but
not locating and expanding a second constricting member in the aorta
downstream of the left common carotid artery. Final Act. 6 (citing Solano,
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Application 13/323,112
Figs. 9A—9E). The Examiner finds that Barbut ’551 discloses “placing and
expanding a constricting member (410) in a cerebral artery and also placing
and expanding a constricting member (304) in the descending aorta
downstream of the left carotid artery for the purpose of aiding in increasing
blood flow to the other cerebral arteries.” Id. at 6—7. The Examiner
concludes it would have been obvious to modify Solano “by inserting and
expanding a second constrictor, as taught by Barbut '551, in order to provide
the stated advantages.” Id. at 7.
Appellant contends that the Examiner’s modification of Solano with
Barbut ’551 “would make no sense to the skilled artisan, since Solano seeks
to reverse flow in the right carotid artery to remove debris from destroying a
lesion . . . whereas the arrangement in relied-upon figure 23 of Barbut [’551]
increases normal blood flow through the carotid arteries.” Appeal Br. 5
(citing Solano, Abstract, Barbut ’551, col. 12,11. 15—29, col. 13,1. 8, Fig.
23). Appellant argues that these teachings would lead a skilled artisan away
from combining Solano and Barbut ’551. Id. at 6. The Examiner responds
that Barbut ’551 does not teach away from Solano but “enhances the method
taught by Solano [] by increasing the flow of blood to the brain through
arteries in the aortic arch that are not occluded.” Ans. 6.
Solano is directed to an “occlusion catheter for use during the
therapeutic intervention of a cerebral blood vessel.” Solano, Abstract, Figs.
9A—9F. “The device is used to briefly occlude the circulating blood flow in
the artery at the time the obstructive lesion is manipulated. Passages within
the cerebral circulation cause blood to flow retrograde towards the occlusion
device.” Id. at col. 1,11. 53—57. Barbut ’551 discloses that its system
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Application 13/323,112
increases flow in the right carotid artery. Barbut ’551, col. 12,11. 21—26, col.
13,11. 8-12.
The Examiner has not provided persuasive technical reasoning why
Barbut ’551, which teaches increasing normal blood flow in the right carotid
artery, would enhance the method of Solano which is directed to reversing
flow in the right carotid artery. We, therefore, do not sustain the rejection of
claim 1 as unpatentable over Solano and Barbut ’551 because the rejection
lacks a rational underpinning. Claims 4—9 depend directly or indirectly from
claim 1. Appeal Br. 9—10 (Claims App.). We do not sustain the rejection of
claims 4—9 for the same reasons.
Rejections 4 and 5
Obviousness of Claims 3—7 over Samson and Thramann; and
Claims 8 and 9 over Samson
Claims 3—9 depend directly or indirectly from claim 1. Appeal Br. 9—
10 (Claims App.). The Examiner rejects claims 3—7 based on Samson and
Thramann and claims 8 and 9 based on Samson. Final Act. 7—9. The
Examiner does not rely on Thramann to cure the deficiencies in the rejection
of claim 1 based on Samson as discussed above nor does the Examiner point
to any additional disclosure in Samson that would cure the deficiencies in
the rejection of claim 1. Id. We, therefore do not sustain the rejection of
claims 3—7 as unpatentable over Samson and Thramann or the rejection of
claims 8 and 9 as unpatentable over Samson for the same reasons discussed
above for claim 1.
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Appeal 2015-005269
Application 13/323,112
Rejection 6
Obviousness Type Double Patenting
Claims 1 and 3—9 over Barbut ’370 and Weil
The Examiner finds that claim 1 of Barbut ’370 “substantially
discloses [c]laim[] 1 of the instant application,” but fails to disclose
“occluding the aorta downstream of the left common carotid artery.” Final
Act. 11. The Examiner finds that Weil discloses it is “well known to place
an occlusive member in the aorta in order to provide the advantage of
increasing the blood flow to other parts of the body.” Id. (citing Weil, col. 3,
11. 10-37). The Examiner concludes it would have been obvious to modify
Barbut ’370 by Weil “in order to enhance the effects of the flow reversal
procedure.” Id.
Appellant argues that Barbut ’370 discloses placing a first balloon at a
common carotid artery and a second balloon at the external carotid artery “to
cause retrograde flow through an internal carotid artery.” Appeal Br. 6.
Appellant contends that the rejection is based on improper hindsight because
it would not have been obvious to relocate the balloon in Barbut ’370 from
the external carotid artery to the aorta based on Weil because “Weil teaches
occluding the aorta to increase blood flow to other parts of the body.” Id. at
6-7.
Claim 1 of Barbut ’370 recites a “method for flow reversal down an
internal carotid artery” with “an occluding member and a constricting
member distal the [occluding member].” Barbut ’370, col. 9.11. 4—5, 8—10.
The constricting member is located “within the external carotid artery” and
the occluding member is located “within the common carotid artery.” Id. at
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Application 13/323,112
col. 9,11. 14—17. Weil discloses a system that “increase^] flow into the
coronary arteries.” Weil, col. 3,11. 36—37.
The Examiner has not provided persuasive technical reasoning why
the effects of the flow reversal procedure in Barbut ’370 would be enhanced
by moving the balloon located in the external carotid artery to the aorta
downstream of the left common carotid artery as taught by Weil. We do not
sustain the obviousness type double patent rejection of claims 1 and 3—9
over Barbut ’370 and Weil because the rejection lacks a rational
underpinning.
DECISION
The Examiner’s decision rejecting claims 1 and 3—9 is reversed.
REVERSED
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