Ex Parte Davis et al

Patent Trial and Appeal Board

Oct 30, 2012

11506083 (P.T.A.B. Oct. 30, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte RICHARD CHAMPION DAVIS III,
DONALD K. JONES, and JUAN A. LORENZO
__________

Appeal 2011-010859
Application 11/506,083
Technology Center 3700
__________

Before DEMETRA J. MILLS, ERIC GRIMES, and LORA M. GREEN,
Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s rejection of claims 1, 3-7, and 9-15. We have jurisdiction under
35 U.S.C. § 6(b).
Appeal 2011-010859
Application 11/506,083

2
STATEMENT OF THE CASE
Claim 1 is representative of the claims on appeal, and reads as follows
(emphasis added):
1. A vasoocclusive embolic device deployment system for use in placing
an embolic device at a preselected site within a vessel comprising:
an elongated flexible delivery catheter having proximal and distal
sections and a lumen extending therethrough;
an elongated flexible deployment catheter having proximal and distal
sections and a lumen extending therethrough and being slidably disposed
within the lumen of the elongated flexible delivery catheter;
a cylindrical embolic coil having proximal and distal ends and an
outer surface;
a stretch resistant fiber having proximal and distal ends, the proximal
end of the fiber is attached to the proximal end of the embolic coil, the fiber
then extends cylindrically around the outer surface of the embolic coil and
the distal end of the fiber is attached to the distal end of the embolic coil, the
stretch resistant fiber is a loosely spaced helically wound embolic coil;
a headpiece is mounted on the proximal end of the coil and is
disposed in a fluid tight engagement within the lumen of the distal section of
the deployment catheter; and,
a source of fluid pressure is coupled to the proximal section of the
deployment catheter for applying a fluid pressure to thereby release the
embolic coil from the deployment catheter.

The following grounds of rejection are before us for review:
I. Claims 1 and 3-6 stand rejected under 35 U.S.C. § 103(a) as being
rendered obvious by the combination of Diaz ’857,
1
Wallace,
2
and
Diaz ’964
3
(Ans. 3).

1
Diaz et al., US 6,179,857 B1, issued Jan. 30, 2001.
2
Wallace et al., US 6,585,754 B2, issued Jul. 1, 2003.
3
Diaz et al., US 2004/0087964 A1, published May 6, 2004.
Appeal 2011-010859
Application 11/506,083

3
II. Claims 7 and 9-15 stand rejected under 35 U.S.C. § 103(a) as
being rendered obvious by the combination of Diaz ’857 and
Wallace. (Ans. 6.)
We affirm.

ANALYSIS
The invention relates to “a stretch resistant vasoocclusive coil for the
treatment of aneurysms” (Spec. 1). According to the Specification:
A stretch resistant fiber is attached to the proximal end of the
embolic coil and extends cylindrically around the outer surface
of the embolic coil. The distal end of the fiber is attached to the
distal end of the embolic coil. Preferably, the stretch resistant
fiber takes the form of a loosely spaced helically wound
embolic coil. Additionally, the stretch resistant fiber may be
attached to the embolic coil at additional points along the length
of the coil.

(Spec. 5.)
Figure 2 of the Specification is reproduced below:

Appeal 2011-010859
Application 11/506,083

4
Figure 2 is an enlarged view of a stretch resistant embolic device (id. at 7, ll.
3-7). The device includes a “stretch resistant fiber 40 which has a proximal
end 48 bonded to the proximal end of the coil 32 and extends cylindrically
around the outer surface of the embolic coil 32” (id. at 8).
The Examiner rejects claims 1 and 3-6 as being rendered obvious by
the combination of Diaz ’857, Wallace, and Diaz ’964, and claims 7 and 9-
15 as being rendered obvious by the combination of Diaz ’857 and Wallace.
As to Rejection I, as Appellants do not argue the claims separately, we focus
our analysis on claim 1, and claims 3-6 stand or fall with that claim. As to
Rejection 2, as Appellants again do not argue the claims separately, we
focus our analysis on claim 7, and claims 9-15 stand or fall with that claim.
37 C.F.R. § 41.37(c)(1)(vii).
The issue as to both rejections is the same, that is, whether the
references relied upon by the Examiner render obvious a stretch resistant
fiber that is a loosely spaced helically wound embolic coil. We thus address
both rejections together.
In both rejections, the Examiner relies on Diaz ’857 for disclosing a
vasoocclusive embolic device (Ans. 3 and 6). The Examiner also finds that
Diaz ’857 also teaches that “it is desirable to provide on the outer surface of
the coil a stretch-resistant that has the helically wound shape (Fig. 2 and col.
5, lines 16-20)” (id. at 6-7).
Diaz ’857 is drawn to an embolic coil “which is stretch resistant but
which may be modified to vary the stiffness, or flexibility, of the coil” (Diaz
’857, col. 1, ll. 5-9). Diaz ’857 teaches an embodiment in which
“substantially all of the turns from the proximal end of the coil to the distal
Appeal 2011-010859
Application 11/506,083

5
end of the coil are spot welded to an adjacent turn such that the spot welded
joints between adjacent turns form a helical path which extends around the
longitudinal axis of the coil” (id. at col. 3, ll. 26-30; see also Fig. 2). Diaz
’857 also teaches that the turns “may be connected by other methods, such
as by glueing [sic] or attachment by wrapping with thread” (id. at col. 3, ll.
11-13).
The Examiner notes that Diaz ’857 does not disclose “a stretch
resistant fiber having proximal and distal ends, the proximal end of the fiber
is attached to the proximal end of the embolic coil, the fiber then extends
cylindrically around the outer surface of the embolic coil and the distal end
of the fiber is attached to the distal end of the embolic coil” (Ans. 4 and 6).
The Examiner finds that Wallace teaches a “stretch-resistant member
in the form of absorbable suture [that] can be fixedly attached to near the
ends or more points on the outer surface of the absorbable embolic coil (col.
6, lines 4-15)” (id. at 6).
Wallace discloses an absorbable vaso-occlusive device, which
includes “one or more stretch-resistant members fixedly attached to at least
two locations of the absorbable material” (Wallace, col. 2, ll. 25-35).
According to Wallace:
In certain embodiments, for example where the vaso-occlusive
member is configured as a helical coil having a plurality of
helical winds, a first end, a second end and lumen between said
first and second ends, the stretch-resistant member extends
through said lumen of the coil and is attached to said first and
second ends. Alternatively, the stretch-resistant member can be
threaded through holes, perforations or winds of the three-
dimensional member (e.g., threaded through winds of a coil or
through perforations of a tube). Furthermore, in any of the
Appeal 2011-010859
Application 11/506,083

6
vaso-occlusive members described the stretch-resistant member
can be attached to the interior or, alternatively, exterior of the
members (e.g., helical coil or tube).

(Id. at col. 2, ll. 39-51.)
Wallace teaches that the stretch-resistant member may be attached to
the device at one or more locations, such as at the ends and on the outer
surface, and may be attached by any means, such as by soldering, threading,
knotting, etc. (id. at col. 6, ll. 12-17).
The Examiner concludes it would have been obvious to use a stretch
resistant member, such as a suture (id. at col. 6, ll. 8-11), as taught by
Wallace on the outer surface of the coil of Diaz ’857 as it is a substitution of
one known element for another to retain a predictable result, that is, stretch
resistance (Ans. 4). The Examiner further concludes that it would have been
obvious to position the stretch resistant member in a helically wound pattern
as Diaz ’857 discloses using a helically wound pattern to impart stretch
resistance (id. at 4-5; see also id. at 8-9).
Appellants argue that independent claims 1, 7, and 12 all require that
“the stretch resistant fiber 40 is a loosely spaced helically wound embolic
coil 32” (App. Br. 6). Appellants assert, however, that none of Diaz ’857,
Wallace, or Diaz ’964 “teach or suggest that the stretch resistant fiber is a
loosely spaced helically wound embolic coil” (id.). As to Figure 2 of Diaz
’857, Appellants argue that “the silicone is fixed to the coil at each adjacent
turn of the coil,” and thus “the stretch resistant coil in Diaz cannot be said to
be loosely spaced on the outer surface of the coil, despite the Examiner's
assertion to the contrary” (id.). That is, according to Appellants, as the
“stretch resistant is fixed to the coil at each turn,” it “is not loosely spaced on
Appeal 2011-010859
Application 11/506,083

7
the outer surface of the coil, but is very tightly attached to the coil at each
and every turn” (id. at 6-7).
We have carefully considered Appellants’ arguments, but do not find
them convincing.
During prosecution before the Office, claims are to be given their
broadest reasonable interpretation consistent with the Specification as it
would be interpreted by one of ordinary skill in the art. In re American
Academy Of Science Tech Center, 367 F.3d 1359, 1364 (Fed. Cir. 2004).
“An essential purpose of patent examination is to fashion claims that are
precise, clear, correct, and unambiguous. Only in this way can uncertainties
of claim scope be removed, as much as possible, during the administrative
process.” In re Zletz, 893 F.2d 319, 322 (Fed. Cir. 1989). Moreover, it is
during prosecution that applicants have “the opportunity to amend the claims
to obtain more precise claim coverage.” American Academy, 367 F.3d at
1364.
Independent claims 1 and 7 each require “a stretch resistant fiber
having proximal and distal ends, the proximal end of the fiber is attached to
the proximal end of the embolic coil, the fiber then extends cylindrically
around the outer surface of the embolic coil and the distal end of the fiber is
attached to the distal end of the embolic coil, the stretch resistant fiber is a
loosely spaced helically wound embolic coil.” Appellants appear to be
asserting that “loosely” should be interpreted as describing how the stretch
resistant fiber is attached to the surface of the vasoocclusive coil, but do not
point to any portion of the Specification that supports that interpretation.
The Examiner interprets the term “loosely” as encompassing the winding of
Appeal 2011-010859
Application 11/506,083

8
the stretch resistant fiber around the vasoocclusive coil, such that the
windings are not packed tightly against one another, but form a “loose” coil
around the vasoocclusive coil, such that the windings take a generally helical
coil where there is spacing between the coils, and also as including a single
coil around the vasoocclusive coil.
We adopt the Examiner’s interpretation. The Specification states that
the “stretch resistant fiber takes the form of a loosely spaced helically wound
coil” (Spec. 6). As the Specification is defining the “form” of the stretch
resistant fiber, the term “loosely” would encompass how closely together the
windings of the fiber are wound around the vasoocclusive coil, and would
include a single coil of the stretch resistant fiber around the vasoocclusive
coil, in a form as shown in Figure 2 of Diaz ’857. We thus conclude that the
Examiner has set forth a prima facie case of obviousness as to both claims 1
and 7.

SUMMARY
We affirm the rejection of claims 1 under 35 U.S.C. § 103(a) as being
rendered obvious by the combination of Diaz ’857, Wallace, and Diaz ’964.
Claims 3-6 fall with claim 1. We also affirm the rejection of claim 7 under
35 U.S.C. § 103(a) as being rendered obvious by the combination of Diaz
’857 and Wallace. Claims 9-15 fall with claim 7.

Appeal 2011-010859
Application 11/506,083

9
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

cdc