Ex Parte Eidenschink et al

Patent Trial and Appeal Board

Jun 28, 2013

11481468 (P.T.A.B. Jun. 28, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD

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Ex parte TRACEE EIDENSCHINK, KARL A. JAGGER,
DEREK SUTERMEISTER, ANGELA KORNKVEN VOLK,
DEREK WISE, and MATT HEIDNER
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Appeal 2011-002718
Application 11/481,468
Technology Center 3700
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Before STEFAN STAICOVICI, GAY ANN SPAHN, and
JOHN W. MORRISON, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Tracee Eidenschink et al. (Appellants) appeal under 35 U.S.C. § 134
from the Examiner’s decision rejecting claims 1-25. We have jurisdiction
over this appeal under 35 U.S.C. § 6(b).

INVENTION
Appellants’ invention relates to “an expandable marker device.”
Spec. 3, l. 6 and fig. 8A.
Claim 1 is illustrative of the claimed invention and reads as follows:
1. A marker device, said marker device is adapted for
implantation in a subject and is expandable and/or contractible,
said marker device comprising radiopaque material, at least one
pre-delivery state, at least one delivery state, and at least one
active region, the at least one active region comprising
electroactive polymer material.

REJECTIONS
The following rejections are before us for review:
The Examiner rejected claims 1-10, 12, and 13-21 under 35 U.S.C.
§ 103(a) as unpatentable over Mattison (US 2005/0102017 A1, published
May 12, 2005) and Barsch (US 6,234,177 B1, issued May 22, 2001).
The Examiner rejected claim 11 under 35 U.S.C. § 103(a) as
unpatentable over Mattison, Barsch, and Voyles (US 6,540,721 B1, issued
Apr. 1, 2003).
The Examiner rejected claims 22-25 under 35 U.S.C. § 103(a) as
unpatentable over Mattison, Barsch, and Goicoechea (US 5,938,696, issued
Aug. 17, 1999).

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SUMMARY OF DECISION
We REVERSE.

ANALYSIS
Independent claim 1 requires, inter alia, a “marker device [that] is
adaptable for implantation in a subject.” App. Br., Claims Appendix.
Similarly, independent claim 14 requires a “marker device [that] is left
behind.” Id.
The Examiner found that “Mattison fails to disclose . . . the marker
device being adapted for implantation in a subject.” Ans. 6. However,
referring to paragraph [0010] of Mattison, the Examiner further found that
Mattison “suggest[s] [that] the sheath may be disengaged from the catheter
and left in the vasculature.” Ans. 5-6. Emphasis added. The Examiner then
concluded that:
It would have been obvious to one having ordinary
skill in the art at the time of invention, based on
this suggestion, that the sheath is left in the
vasculature for a certain period of time after the
catheter is withdrawn. That period of time would
be determined based on the requirements of the
user of the device at the time of use. The sheath
would be left behind, at least temporarily, in the
vasculature.

Ans. 8-9. Emphasis added.
In response, Appellants argue that the Examiner’s “interpretation of
Mattison’s paragraph [0010] is incorrect.” App. Br. 11. According to
Appellants, because the purpose of Mattison’s invention is to reduce
frictional forces between the delivery sheath and the delivery device (i.e.,
stent) when the delivery sheath is retracted, Mattison’s sheath is not adapted
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for implantation in the vasculature and is not left behind in the vasculature,
as called for by independent claims 1 and 14, respectively. App. Br. 12-13.
We agree.
Like Appellants, we find that Mattison discloses a medical device
deployment system that uses a “retractable sheath” for the purpose of
reducing frictional forces between the delivery sheath and the underlying
medical device. See App. Br. 12; see also Mattison, paras. [0005] and
[0011]. Although we appreciate that Mattison’s retractable sheath may be
disengaged from the catheter, nonetheless, because the stent is compressed
by the sheath during delivery, in order to allow the stent to expand and
anchor itself to the vasculature the sheath cannot be left in the vasculature,
even temporarily, as the Examiner opines, but rather must be retracted (using
a pullback wire) prior to expansion of the stent during stent deployment. See
Reply Br. 3; see also Mattison paras. [0010] and [0047].
Moreover, even assuming arguendo that because Mattison’s sheath is
merely introduced within the vasculature, it is “adapted for implantation in a
subject,” as the Examiner appears to opine, we note that an ordinary and
customary meaning of the term “implant” is “to fix or set securely or
deeply.” MERRIAM WEBSTER’S COLLEGIATE DICTIONARY (10th Ed. 1997).
In contrast, because Mattison’s sheath is retractable it is not “fix[ed] or set
securely or deeply” within the vasculature.
For the foregoing reasons, we do not agree with the Examiner that a
reasonable interpretation of Mattison suggests leaving the sheath in the
vasculature. See Ans. 5-6 and 8-9. Thus, the Examiner’s legal conclusion
of obviousness is not supported by facts, and hence, cannot stand. See In re
Warner, 379 F.2d 1011, 1017 (CCPA 1967) (holding that “[t]he legal
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conclusion of obviousness must be supported by facts. Where the legal
conclusion is not supported by facts it cannot stand.”). We thus agree with
Appellants that Mattison’s sheath “is not therefore adapted for implantation
i[n] a subject,” as called for by independent claims 1. See Reply Br. 4.
Likewise, for the same reasons, Mattison’s sheath is not “left behind” when
the catheter is withdrawn, as called for by independent claim 14.
Lastly, we note that the Examiner relied on the disclosure of Barsch
for “the combination of an imaging device in combination with markers,”
that is, “for the teaching of the imaging device for imaging the positioning of
the device.” Ans. 9. Thus, the Examiner’s application of Barsch fails to
remedy the deficiency of Mattison as described supra.
Accordingly, for the foregoing reasons, we do not sustain the rejection
of independent claims 1 and 14, and their respective dependent claims 2-10,
12, 13, and 15-21, under 35 U.S.C. § 103(a) as unpatentable over Mattison
and Barsch. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988).
With respect to the rejections under 35 U.S.C. § 103(a) of claims 11
and 22-25, the Examiner relied on Voyles for disclosing “a marker
comprising radiopaque polymers” and on Goicoechea for disclosing
“multiple markers on a stent positioned in the bifurcation of a vessel wherein
the markers are positioned in more than one branch of the bifurcating
vessel.” Ans. 7. Neither Voyles nor Goicoechea remedies the deficiencies
of Mattison as described supra. Therefore, we likewise do not sustain the
rejections under 35 U.S.C. § 103(a) of claim 11 as unpatentable over
Mattison, Barsch, and Voyles and of claims 22-25 as unpatentable over
Mattison, Barsch, and Goicoechea.

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SUMMARY
The decision of the Examiner to reject claims 1-25 is reversed.

REVERSED

JRG