10093264 (P.T.A.B. Mar. 25, 2013)

Ex Parte Carrison

Patent Trial and Appeal BoardMar 25, 2013

10093264 (P.T.A.B. Mar. 25, 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. 10/093,264 03/06/2002 Harold F. Carrison STR 01-107 (US01) 1881 41696 7590 03/25/2013 VISTA IP LAW GROUP LLP 12930 Saratoga Avenue Suite D-2 Saratoga, CA 95070 EXAMINER MASHACK, MARK F ART UNIT PAPER NUMBER 3773 MAIL DATE DELIVERY MODE 03/25/2013 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 HAROLD F. CARRISON ____________ Appeal 2010-000530 Application 10/093,264 Technology Center 3700 ____________ Before LINDA E. HORNER, NEIL T. POWELL, TIMOTHY J. O’HEARN, Administrative Patent Judges. O’HEARN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Examiner rejected claims 1-6, 8-14, 17, and 18. The Appellant appeals under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b). Appeal 2010-000530 Application 10/093,264 2 INVENTION The following claim illustrates the invention on appeal: 1. A method of occluding an aneurysm in a subject comprising accessing the aneurysm; and extruding a rapidly expanding and rapidly hardening composition from a catheter such that the composition fills only the aneurysm, wherein the composition hardens after extrusion from the catheter into the aneurysm, thereby occluding the aneurysm. REJECTIONS Claims 1-6, 8-14, 17 and 18 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Rosenbluth (US 2005/0004660 A1, publ. Jan. 6, 2005) and Hastings (US 5,725,568, iss. Mar. 10, 1998). Claims 1-6, 8-14, 17 and 18 are rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. The Examiner withdrew a rejection of all the claims under 35 U.S.C. § 112 for lack of enablement. ANALYSIS Rejection of claims 1-6, 8-14, 17, and 18 under 35 U.S.C. § 103(a) as unpatentable over Rosenbluth and Hastings The Examiner found that Rosenbluth discloses a method of filling only an aneurysm with an expandable polymeric material or foam. Ans. 5-7. The Examiner also found that Hastings teaches that “rapidly expanding and rapidly hardening polymeric foams were known to fill aneurysms.” Id. at 5. The Examiner determined that it would have been obvious to use the foam of Hastings in the aneurysm filling method of Rosenbluth. Id. Appeal 2010-000530 Application 10/093,264 3 The Appellant argues that the Hastings reference is not combinable with Rosenbluth because Hastings discloses the use of “rapidly expanding” foam only in connection with arteries that have no aneurysm. App. Br. 12 (citing Hastings, col. 4, ll. 21-24). We agree with the Examiner’s finding that Hastings teaches the filling of an aneurysm with foam. See Ans. 8 (citing Hastings, col. 1, ll. 18-24 and ll. 57-63). We further agree with the Examiner’s finding that Hastings refers to expansion of the foam material. Id. (citing Hastings, col. 3, ll. 4-14 and ll. 38-42; id. at col. 4, ll. 21-24). As such, we find the Examiner’s determination (Ans. 5) that Hastings discloses it was known in the art to use expanding foams to fill aneurysms to be supported by a preponderance of the evidence. Appellant also argues that the term “rapidly expanding” establishes patentability. App. Br. 12-13 (arguing that Hastings “fails to teach what is meant by ‘expansion’” and that “Hastings does not provide any clear teachings about whether the expansion is rapid (within seconds) as claimed.”) We agree with the Examiner’s assessment of Hastings. See Ans. 9 (reasoning that Hasting’s foam must expand prior to curing, and thus Hasting’s disclosure that the foam will polymerize or cure in place in several seconds (col. 2, ll. 61-66) supports a finding that the foam must expand within several seconds as well). Appellant also argues that the phrase “filling only the aneurysm” distinguishes the proposed claims from Rosenbluth because Rosenbluth includes a graft. Reply Br. 7. The Examiner counters that Rosenbluth discloses filling of the aneurysm sac. Ans. 6 (citing Rosenbluth, paras. [0050], [0051], and [0053]). The Examiner also notes that the graft shown in Rosenbluth need not enter the sac that forms the aneurysm and, therefore, Appeal 2010-000530 Application 10/093,264 4 would not interfere with accomplishing the claimed method. Ans. 6-7. We agree with the Examiner that the method recited in the proposed claims does not exclude the presence of a graft adjacent to the aneurysm. Further, the fact that in Rosenbluth the graft may remain in place after deployment of the foam material does not negate the fact that Rosenbluth discloses filling the aneurysm, i.e., the perigraft space surrounding the outer surface of the graft, with the foam material. See. e.g., Rosenbluth, para. [0050] and figs. 1D, 1E; id. at para. [0051] and figs. 2A-2D; and id. at paras. [0052]-[0053] and fig. 3. Further, Rosenbluth discloses “filling only the aneurysm” because the foam material is deployed only within the perigraft space and not along the vasculature outside of the aneurysm. Id. Rejection of claims 1-6, 8-14, 17, and 18 under 35 U.S.C. § 112, first paragraph, for failing to comply with the written description requirement Because our affirmance of the rejection based on obviousness disposes of all of the claims on appeal, we need not decide the written description rejection. CONCLUSIONS The Examiner’s findings of fact as to the scope and content of Rosenbluth and Hastings are supported by a preponderance of the evidence and the Examiner articulated adequate reasoning based on rational underpinnings to support the determination that it would have been obvious to one of ordinary skill in the art to combine the Rosenbluth and Hastings teachings to arrive at the inventions recited in claims 1-6, 8-14, 17, and 18 of the application. Appeal 2010-000530 Application 10/093,264 5 DECISION We affirm the rejection of claims 1-6, 8-14, 17, and 18. No time for taking any action connected with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Klh