Ex Parte Elliott

Board of Patent Appeals and Interferences

Apr 28, 2011

10626246 (B.P.A.I. Apr. 28, 2011)

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.
10/626,246 07/24/2003 Christopher J. Elliott 03-087US1 1009
41696 7590 04/29/2011
VISTA IP LAW GROUP LLP
12930 Saratoga Avenue
Suite D-2
Saratoga, CA 95070
EXAMINER
HOUSTON, ELIZABETH
ART UNIT PAPER NUMBER
3731
MAIL DATE DELIVERY MODE
04/29/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte CHRISTOPHER J. ELLIOTT
__________

Appeal 2011-004765
Application 10/626,246
Technology Center 3700
__________

Before DEMETRA J. MILLS, ERIC GRIMES, and
RICHARD M. LEBOVITZ, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to an
embolic coil, which the Examiner has rejected as obvious. We have
jurisdiction under 35 U.S.C. § 6(b). We reverse.
STATEMENT OF THE CASE
The Specification discloses that “[e]mbolic coils are one example of
devices that may be used to stop undesired blood flow in situations, for
example, requiring treatment of aneurysms” (Spec. 1, ¶ 1).
Appeal 2011-004765
Application 10/626,246

2
Claims 1, 2, 6-12, 24, and 26-29 are on appeal. Claim 1 is
representative and reads as follows:
1. An embolic coil comprising:
an elongated core element formed of a shape memory material and
movable between a straightened first configuration and a shape memorized
second coiled configuration;
an elongated outer element which, in the first configuration, is wound
around the elongated core element to form a primary coil; and
a plurality of fibers frictionally gripped between adjacent coils of the
primary coil.
Claims 24 and 27, the only other independent claims, also require the
claimed embolic coil to include a plurality of fibers (Appeal Br. 15-16).
The Examiner has rejected claims 1, 2, 6-10, 24, and 26 under 35
U.S.C. § 103(a) as obvious based on Kupiecki1 and Dormandy2 (Answer 4).
The Examiner finds that Kupiecki’s Figure 8 and accompanying description
disclose an embolic coil meeting all of the limitations of claim 1 except that
“Kupiecki does not disclose that the coil has fibers” (id.). The Examiner
finds that Dormandy discloses an embolic coil comprising fibers “looped
through the turns of the coils . . . such that they are gripped between adjacent
coil[s]” (id.). The Examiner concludes that it would have been obvious to
incorporate fibers in Kupiecki’s embolic coil “in order to increase the
diameter of the coil and the surface area thereby increasing thrombo-
genicity” (id. at 5).
Appellant argues, among other things, that
the coil shown in Fig. 8 of Kupiecki is a retaining device, the
function of which is to form a barrier at an aneurysm (4) and

1 Kupiecki et al., US 5,980,514, Nov. 9, 1999.
2 Dormandy, Jr. et al., US 5,382,260, Jan. 17, 1995.
App
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ht by Do
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Dormandy
its intend
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of Kupiec
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4, ll. 4-6).
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ance zone
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t col. 9,
devices
o

Appeal 2011-004765
Application 10/626,246

4
substantially space fill and the other’s is to form a barrier at the aneurysm
and also to keep the vessel lumen open” (id. at col. 8, ll. 60-64). Similarly,
Kupiecki states that the “retaining device forms a lumen having a diameter
that is sufficient to allow flow therethrough, and also forms a barrier that
prevents occlusion devices that are implanted in a body space from
migrating out of the body space” (id. at col. 4, ll. 14-17).
Thus, Kupiecki discloses that the retaining device keeps the blood
vessel lumen open and allows blood to flow through it. Kupiecki also
discloses that the device shown in Figure 8 is a retaining device (like device
19 in Fig. 1C), not an occlusion device (like devices 12 in Fig. 1C) (id. at
col. 14, ll. 1-7).
We agree with Appellant that, since Kupiecki discloses that retaining
devices are intended to allow blood to flow through them, the Examiner has
not adequately explained why it would have been obvious to modify the
device shown in Kupiecki’s Figure 8 by “incorpora[ting] the fibers into the
coil . . . thereby increasing thrombogenicity” as taught by Dormandy
(Answer 5), a different purpose than the one served by Kupiecki’s device.
The rejection of claims 1, 2, 6-10, 24, and 26 as obvious based on Kupiecki
and Dormandy is therefore reversed.
The Examiner rejected claims 11, 12, and 27-29 as obvious based on
Kupiecki, Dormandy, and Ferrera3 (Answer 5). This rejection, like the one
previously discussed, is based on the obviousness of “incorporat[ing] the use
of the multi-stranded micro cable into the embolic coil . . . in order to
achieve the advantages stated above” (Answer 5-6). For the reasons

3 Ferrera et al., US 6,171,326, Jan. 9, 2001
Appeal 2011-004765
Application 10/626,246

5
discussed above, however, we conclude that the Examiner has not
adequately shown that a person of ordinary skill in the art would have
recognized any advantage to incorporating fibers in the device of Kupiecki’s
Figure 8, when one function of that device is to allow blood to continue to
flow through it. The rejection of claims 11, 12, and 27-29 as obvious based
on Kupiecki, Dormandy, and Ferrera is therefore reversed.

REVERSED

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