Ex Parte Hendriksen et al

Patent Trial and Appeal Board

Sep 27, 2016

12792414 (P.T.A.B. Sep. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121792,414
48003 7590
EGL/Cook - Chicago
PO BOX 10395
CHICAGO, IL 60610
06/02/2010
09/27/2016
FIRST NAMED INVENTOR
Per Hendriksen
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
8627-2475 (PA-6727-RFB) 4688
EXAMINER
WEISBERG, AMY REGINA
ART UNIT PAPER NUMBER
3731
MAILDATE DELIVERY MODE
09/27/2016 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 PER HENDRIKSEN and JACOB LUND CLAUSEN
Appeal2014-007424
Application 12/792,414
Technology Center 3700
Before MICHAEL L. HOELTER, JILL D. HILL, and
PAUL J. KORNICZKY, Administrative Patent Judges.
KORNICZKY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellants, Per Hendriksen et al., 1 appeal under 35 U.S.C. § 134 from
the Examiner's decision rejecting claims 1-15, 17, and 18.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appellants identify the real party in interest as Cook Incorporated and
William Cook Europe ApS. Appeal Br. 2.
2 Claim 16, 19, and 20 are cancelled. Appeal Br. 2.
Appeal2014-007424
Application 12/792,414
THE CLAIMED SUBJECT MATTER
The claims are directed to "medical devices. More particularly, the
invention relates to an occlusion device for occluding a lumen of a blood
vessel." Spec. i-f 1. Claims 1 and 11 are independent. Appeal Br. 13-14,
Claim App. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. An occlusion device comprising:
a tube having a proximal end extending to a distal end and
a tubular wall defining a lumen formed there through, the tube
defining a first collar at the proximal end and a second collar
disposed between the proximal and distal ends, a plurality of cuts
extending through the tubular wall defining a plurality of radially
expandable struts, the plurality of struts being biased to a radially
expanded state, wherein the plurality of struts defines a bulbous
portion extending between the first and second collars and a first
conical portion extending from the second collar to the distal end
of the tube, the bulbous portion configured to expand to a first
maximum diameter and the first conical portion configured to
expand to a second maximum diameter approximately equal to
the first maximum diameter,
wherein the first conical portion is defined by a first set of
cuts extending through the tubular wall in a first pattern, wherein
the bulbous portion includes a second conical portion and a third
conical portion, wherein the second conical portion is defined by
a second set of cuts extending through the tubular wall in a
second pattern and the third conical portion is defined by a third
set of cuts extending through the tubular wall in a third pattern,
the second conical portion being adjacent to both the first and the
third conical portion, wherein the third pattern has a larger space
between adjacent struts than both the first and the second pattern,
wherein the first and second patterns of respective first and
second conical portions are defined by a plurality of diamond
shapes formed by the plurality of struts of each of the first and
second conical portions.
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Appeal2014-007424
Application 12/792,414
REFERENCES
In rejecting the claims on appeal, the Examiner relied upon the
following prior art:
Palestrant
Kladakis
Angel
Neuss
us 4,832,055
US 2008/0077180 A 1
US 2010/0217304 Al
US 2011/0054519 Al
REJECTIONS
May 23, 1989
Mar. 27, 2008
Aug.26,2010
Mar. 3, 2011
The Examiner made the following rejections:
1. Claims 1-8, 11-15, 17, and 18 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Palestrant, Angel, and Neuss.
2. Claims 9 and 10 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Palestrant, Angel, Neuss, and Kladakis.
Appellants seek our review of these rejections.
ANALYSIS
The Rejection of Claims 1--8, 11-15, 17, and 18
As Unpatentable Over Palestrant, Angel, and Neuss
Appellants argue claims 1-8, 11-15, 17, and 18 as a group. Appeal
Br. 6-11. The Examiner and Appellants agree that independent claims 1 and
11 have the same inventive concept but the recited structural limitations
have differently numbered portions. Adv. Act. 2 (mailed December 5,
2013); see also Appeal Br. 10-11 ("the arguments made above in appealing
the rejection of claim 1 apply in analogy to claim 11."); Ans. 5---6; and Reply
Br. 3--4. We select claim 1 as the representative claim, and claims 2-8, 11-
15, 17, and 18 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
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Appeal2014-007424
Application 12/792,414
The Examiner finds that Palestrant discloses all of the limitations of
claim 1 except that the first, second, and third conical portions disclosed in
Palestrant do not have the different patterns recited in claim 1. Adv. Act. 3-
4. The Examiner further finds that (1) Angel discloses a first conical
portion having a "lattice like structure" (id. at 3), (2) Neuss discloses second
and third conical portions having "differing patterns" (id. at 4), and (3)
because the Angel and Neuss "cutting patterns were art-recognized
equivalents at the time the invention was made, one of ordinary skill in the
art would have found it obvious to substitute the cutting patterns of Angel
and Neuss for the linear cutting arrangement as taught by Palestrant." Id. at
5; see also Adv. Act. 3--4 ("It would have been obvious at the time of the
invention to utilize the shape taught by Angel as to have a plurality of
support rings to form petal like projections (225) as to better engage the
vasculature [0076]. See figure US 2010/0217304 above."); and id. at 4 ("It
would have been obvious at the time of the invention to utilize the shape
taught by Neuss as to provide a filtering, catch micro-embolisms [0149],
capability.").
In response, Appellants argue that "[i]ncorporating Angel's lattice in
Palestrant' s filter would render Palestrant' s filter non-operational because
the core wire would be unable to flatten the initially bulbous portion," and
"the occluding device according to Neuss would render the Palestrant device
non-functional." Appeal Br. 9. However, Appellants do not address the
Examiner's finding that Angel's and Neuss' cutting patterns are "art
recognized equivalents," nor do Appellants address it being "obvious to
substitute the cutting patterns of Angel and N euss for the linear cutting
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Appeal2014-007424
Application 12/792,414
arrangement as taught by Palestrant" (Adv. Act. 4), and, thus, Appellants do
not show Examiner error.
Appellants' "bodily incorporation" arguments also are not persuasive.
"The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference .... [r]ather, the test is what the combined teaching of those
references would have suggested to those of ordinary skill in the art." In re
Keller, 642 F.2d 413, 425 (CCPA 1981); see also In re Sneed, 710 F.2d
1544, 1550 (Fed. Cir. 1983) ("[I]t is not necessary that the inventions of the
references be physically combinable to render obvious the invention under
review."); KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) ("[I]f a
technique has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar devices in the
same way, using the technique is obvious unless its actual application is
beyond his or her skill."). Here, Appellants do not contest that the prior art's
cutting patterns are "equivalents," and Angel and Neuss do not disclose any
problems deploying and retracting their occluding filters. Consequently,
Appellants do not show that the Examiner's proposed modification is
beyond the skill of one skilled in the art. Thus, Appellants do not apprise us
of error.
We sustain the Examiner's rejections of independent claim 1.
Because Appellants do not allege any other patentable distinctions for claims
2-8, and 11-15, 17, and 18, we likewise sustain the Examiner's rejections of
these claims under 35 U.S.C. § 103(a).
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Appeal2014-007424
Application 12/792,414
The Rejection of Claims 9 and 10 As Unpatentable
Over Palestrant, Angel, Neuss, and Kladakis
Appellants argue that "[ c ]laims 9 and 10 depend from claim 1 and
include all limitations thereof. Kladakis fails to cure the deficiencies of
Palestrant, Angel and N euss, and thus it is submitted that claims 9 and 10 are
allowable for at least the reasons provided above with respect to claim 1."
Appeal Br. 11-12. Because we sustain the rejection of claim 1 and do not
find any deficiencies with respect to Palestrant, Angel, and Neuss, we
likewise sustain the rejections of claims 9 and 10.
DECISION
For the above reasons, the Examiner's rejection of claims 1-8, 11-15,
17, and 18 under 35 U.S.C. § 103(a) is AFFIRMED.
The Examiner's rejection of claims 9 and 10 under 35 U.S.C. § 103(a)
is AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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