Ex Parte Douk et al

Board of Patent Appeals and Interferences

Jan 30, 2008

10116238 (B.P.A.I. Jan. 30, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte NAREAK DOUK, NASSER RAFIEE, PETER G. STRICKLER,
MICHAEL S. NOONE, MUKUND R. PATEL, JEFFREY A. NOOL.
CELSO J. BAGAOISAN, AND HUNG V. HA
____________

Appeal 2007-1635
Application 10/116,238
Technology Center 3700
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Decided: January 30, 2008
____________

Before DEMETRA J. MILLS, LORA M. GREEN, and RICHARD M.
LEBOVITZ, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON REHEARNG
Appellants request rehearing under 37 C.R.F. § 41.52 of our Decision
entered June 29, 2007 (“Decision”) in which we affirmed the Examiner’s
final rejection of claim 26-31 over prior art.

Appeal 2007-1635
Application 10/116,238

ISSUES
The following issues are raised by Appellants in their Request for
Rehearing:
1. Whether we erred in rejecting claim 28 under a new ground of
rejection over Engelson (U.S. Pat. No. 6,066,158, May 23, 2000).
2. Whether we erred in rejecting claim 29 under a new ground of
rejection over Engelson.
ISSUE 1
Claim 28 is directed to the apparatus of claim 27, further comprising:
an elongate, hollow, deployment rod slidably and removably
disposed about the core wire, the deployment rod being
operable to push the protection element distally along the core
wire until the protection element is longitudinally compressed
between the deployment rod and the tip member, thereby
effectuating the transformation of the protection element from
the closed configuration to the expanded configuration.

In rejecting the claim over Engelson, we relied on the following
findings:
1. Engelson, at column 3, lines 39-45 (cited in the Decision as
Findings of Fact (“FF”) 2-5), states:
First, the device has a core element. The core element may be a
simple core wire . . . fixedly attached to the distal end of the
collection assembly or a tubular member attached to the
collection assembly having a removable core or guide wire in
its interim.

Thus, two variations of the core element are described by Engelson: 1) a
simple core wire; and 2) a tubular member having a removable core wire.

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2. Engelson’s Fig. 13 shows the second variation in which “the core
element comprises tubular member (387) which is fixedly attached distally
to the embolism collector element (372) but the core wire (388) is movable
and removable from the lumen of tubular element (387)” (Engelson, col. 12,
ll. 17-21; see Decision 9, FF 14).
3. “Of course, the core wire (388) is typically removed so to allow
maximum flow of the desired medication” (Engelson, col. 12, ll. 28-30; see
Decision 9, FF 15).
Based on the findings as summarized above, we concluded that a
person of ordinary skill in the art would have been motivated to replace the
1) simple core element in Fig. 7 of Engelson with 2) a tubular member
having a removable core wire – as taught by Engleson at column 3, lines 39-
45 – in order to allow the flow of medication during the process of using the
catheter device (Decision 15).
Appellants now contend that our “proposed modification is improper
because the resulting combination would render Engelson’s invention
unsatisfactory for its intended purpose or change the principle of operation”
(Request for Rehearing 4). They state that the “fixed distal attachment of
Engelson’s core element/wire (either 310 or 387) to the embolism collector
element is essential” to Engelson’s invention (Request for Rehearing 5).
“Removing the core element/wire (310) from its fixed distal attachment . . .
would eliminate the only means taught by Engelson for pulling the collector
element . . . from the patient’s blood vessel” (Request for Rehearing 6).
This argument is not persuasive. Engelson clearly states that the core
element can be a “simple core wire” (as shown in Fig. 7) or a “tubular
member … having a removable core or guide wire in its interim” (Engelson,
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Application 10/116,238

at col. 3, ll. 39-45; see 1. above). Thus, either of the two alternatives is
expressly described as suitable for Engelson’s device. Engelson also
provides a reason why persons of skill in the art would utilize the tubular
member/removable wire rather than the simple core wire: to introduce liquid
medication during the process of clot removal (Engelson, at col. 12, ll. 17-
21; see Decision 9, FF 14).
The “tubular member” is described by Engelson as “attached to the
collection assembly” (Engelson, at col. 3, ll. 39-45 and at col. 12, ll. 17-21;
see Decision 9, FF 14). Thus, removing the core wire 388 would not
eliminate “the only means taught by Engelson for pulling the collector
element . . . from the patient’s blood vessel” (Request for Rehearing 6)
because the tubular member is attached to the collector and therefore would
be used to remove it from the vessel. For this reason, we do not agree that
replacing 1) a simple core wire with 2) a tubular member having a
removable core or guide wire would “render Engelson’s invention
unsatisfactory for its intended purpose” (Request for Rehearing 5).
We also do not agree with Appellants that the coiled tip must be
“made small enough to be withdrawn through the collector element”
(Request for Rehearing 9). Engelson’s Fig. 13 shows collector 372 fixed to
the tubular member 387 and the deployment rod (the outermost tube;
referred to by Engelson as the “actuator”). The core wire 388 is “movable
and removable from the lumen of tubular element 387” (Engleson, at col. 12,
ll. 20-21). Because Engelson states that the core wire can be removed from
the lumen of the tubular member 387, a distal coiled tip (shown as 314 in
Figs. 7A and 7B) would not be fixed to the core wire, but instead would be
fixed to the collector 372 or tubular member 387. (This configuration is
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Application 10/116,238

consistent with Fig. 14 which also shows the coiled tip 406 attached to the
collector 402). Thus, the coiled tip would not interfere with removing the
core wire from the lumen of the tubular member.
Appellants’ also contend that “claim 28 specifically requires the
hollow rod to be removably disposed about the core wire, such that removal
of the rod leaves the core wire in the patient” (Request for Rehearing 9).
We do not agree with Appellant’s interpretation of the claim. Claim
28 recites that the “elongate, hollow, deployment rod” is “slidably and
removably disposed about the core wire.” As shown in Engelson’s Fig. 13,
the deployment rod, tubular member 387, and collector 372 are attached to
each other. The coiled tip is attached to the tubular member (see supra at
pp. 4-5). When assembling these attached parts with the core wire outside a
patient, the attached parts would be slid on to the core wire. They could also
be slid off the wire to remove it. Thus, the deployment rod – attached to the
tubular member, collector and tip – is “slidably and removably disposed
about the core wire” as required by claim 28.
Appellants argue “that removal of the rod leaves the core wire in the
patient” (Request for Rehearing 9). However, the claim does not require
that removal occur in the patient. The deployment rod (attached to the other
parts) can be easily slid off the wire outside a patient (see above), satisfying
the limitation of claim 28.
ISSUE 2
Claim 29 depends on claim 28, and further requires that “the
deployment rod comprises an interventional catheter.”
In finding claim 29 unpatentable over Engelson, we relied on Fig. 2 of
Engelson which shows an apparatus comprising a catheter 214 and micro-
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balloon 218 – which corresponds to an “interventional catheter” of claim 29
– and an actuator 212 – which corresponds to the deployment rod of the
claim (Decision 15-16).
Appellants contend that the “Board has interpreted the embodiment of
Engelson’s Fig. 2 to disclose that actuator (212) is somehow functionally
related to catheter assembly (216) with balloon (218) such that the actuator
and/or catheter assembly (216) anticipates all the elements of claim 29”
(Request for Rehearing 10)
This argument is not persuasive. Claim 29 does not require a
functional relationship between the actuator – the deployment rod of claim
29 – and the catheter assembly. The claim simply states that “the
deployment rod comprises an interventional catheter.” As shown in Fig. 2
of Engelson, the deployment rod 212 comprises, at its proximal end, a
catheter 214 and a micro-balloon 218, satisfying the limitations of the claim.
Appellants have not identified what language in the claim requires that the
actuator be “functionally related” to the catheter assembly with the balloon
(Request for Rehearing 10) nor have they provided a definition of
“comprises” that would have such a meaning.
Appellants also contend that Engelson teaches that the “actuator
element (212) is fixedly attached to sheath (214), which extends through
catheter assembly (216) to outside the patient. Neither actuator element
(212) nor sheath (214) is taught as being fixedly attached to catheter
assembly (216)” (Request for Rehearing 11). “Therefore, Engelson fails to
disclose (balloon) catheter assembly (216) as being capable of performing
the limitations of the deployment rod required in claim 29 and parent claim
28” (Request for Rehearing 12).
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This argument is not persuasive. We find no language in the claim
that requires the deployment rod (“actuator element (212)”) to be “fixedly
attached” to the sheath, nor does Appellant identify such claim language. In
addition, we do not interpret the term “comprises” in claim 29 to require that
the balloon catheter assembly be capable of serving as a deployment rod –
only that it be part of it.

CONCLUSION
We have considered Appellants’ Request for Rehearing, but decline to
modify our original Decision entered June 29, 2007.

DENIED

MEDTRONIC VASCULAR, INC.
IP LEGAL DEPARTMENT
3576 UNOCAL PLACE
SANTA ROSA CA 95403

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