Ex Parte Leonard et al

Patent Trial and Appeal Board

Feb 27, 2013

11957237 (P.T.A.B. Feb. 27, 2013)

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.
11/957,237 12/14/2007 Michael J. Leonard ACS 78487 (9133US01) 8937
68919 7590 02/27/2013
FULWIDER PATTON, LLP (ABBOTT)
John S. Nagy, Esq.
6060 CENTER DRIVE
10TH FLOOR
LOS ANGELES, CA 90045
EXAMINER
BOSWORTH, KAMI A
ART UNIT PAPER NUMBER
3767
MAIL DATE DELIVERY MODE
02/27/2013 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 MICHAEL J. LEONARD and BINH T. NGUYEN
____________

Appeal 2011-003731
Application 11/957,237
Technology Center 3700
____________

Before DONALD E. ADAMS, DEMETRA J. MILLS, and ERIC GRIMES,
Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims 1-18 (App. Br. 3;
Ans. 2). We have jurisdiction under 35 U.S.C. § 6(b).
STATEMENT OF THE CASE
The claims are directed to a catheter for delivering an agent to an
inner surface of a patient‟s body lumen wall (claims 1-13) and a method of
performing a medical procedure (claims 14-18). Claim 1 is representative
and is reproduced in the Claims Appendix of Appellants‟ Brief.

Appeal 2011-003731
Application 11/957,237

2
Claims 1, 12, and 14 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Saadat.
1

Claims 1-10, 12, 14-16, and 18 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Saadat and Valencia.
2

Claims 11 and 17 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Saadat, Valencia, and Barbut.
3

Claim 13 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Saadat, Valencia, and Machold.
4

We affirm.

Anticipation:
ISSUE
Should the rejection under 35 U.S.C. § 102(e) be summarily affirmed
by the Board?
ANALYSIS
“If a ground of rejection stated by the examiner is not addressed in the
appellant‟s brief, that ground of rejection will be summarily sustained by the
Board.” Manual of Patent Examining Procedure § 1205.02 (Rev. 8, July
2010). Appellants do not address the rejection under 35 U.S.C. § 102(e),
therefore it is summarily affirmed.
CONCLUSION OF LAW
The rejection of claims 1, 12, and 14 under 35 U.S.C. § 102(e) is
summarily affirmed.

1
Saadat et al., US 2008/0015569 A1, published January 17, 2008.
2
Valencia et al., US 2006/0030814 A1, published February 9, 2006.

3
Barbut et al., US 6,592,546 B1, issued July 15, 2003.

4
Machold et al., US 5,611,775, issued March 18, 1997.

Appeal 2011-003731
Application 11/957,237

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Obviousness:
ISSUE
Does the preponderance of evidence on this record support a
conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 1. Examiner finds that Saadat suggests all elements of Appellants‟
claim 1 with the exception of “a frame fixedly mounted to the distal shaft
and secured to the membrane” (Ans. 5).
FF 2. Valencia‟s Figures 9-11 are reproduced below:

“In [Valencia‟s] FIG. 9, a metal frame 100 is shaped in a scallop shape by
making an arc loop and bending it 90 degrees. The ends of frame 100 are
formed into a „V‟ shape. Agent delivery tube 102 with agent delivery port
103 is coupled to frame 100 at the wire ends” (Valencia 13: ¶ [0158]).
Valencia‟s “FIG. 10 illustrates a fabric covering 104 fastened over frame
100 to form a semi conical scallop assembly 106…. Because fabric 104 is
supported by frame 100, it maintains a predictable shape during use” (id. at
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Application 11/957,237

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¶ [0159]). “In [Valencia‟s] FIG. 11, two scallop assemblies 106 as shown in
FIG. 10, with concave surfaces facing outward, are connected by a center
tube 108 in fluid communication with agent delivery tubes 102 and agent
delivery ports 103 … to form a bifurcated scallop assembly 109” (id. at ¶
[0160]).
FF 3. Examiner finds that Valencia suggests
[A] frame 100 (Fig 11) fixedly mounted to a distal shaft section
102 (Fig 11; Para 158) … having … a radially expandable body
section 100c … between the proximal and distal ends of the
frame and a funnel shaped membrane 104 (Fig 10) secured to
the body section of the frame (Para 159) so that a mouth 104a
… radially expands with the frame away from the shaft … for
the purpose of supporting the membrane and maintaining a
predictable shape during use.

(Ans. 5.)
FF 4. Examiner‟s annotations of Saadat‟s Figure 46A and a portion of
Valencia‟s Figure 11 are reproduced below:

Examiner‟s annotation illustrates that Valencia‟s “frame is similar in
construction to the membrane of Saadat … as both have agent delivery distal
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Application 11/957,237

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ports … that open to deliver fluid to a mouth … which opens from a
collapsed configuration … to an expanded configuration wherein the mouth
engages a body lumen wall” (id. at 22-23).
FF 5. Examiner finds that the combination of Saadat and Valencia fails to
suggest a “frame possessing a plurality of struts” and relies on Barbut to
make up for this deficiency (id. at 14-15).
FF 6. Examiner finds that the combination of Saadat and Valencia fails to
suggest a “shaft compris[ing] an outer and an inner tubular member” and
relies on Machold to make up for this deficiency (id. at 16).
ANALYSIS
Based on the combination of Saadat and Valencia, Examiner
concludes that, at the time Appellants‟ invention was made, it would have
been prima facie obvious to “modify Saadat … to include a frame, as taught
by Valencia … for the purpose of supporting the membrane and maintaining
a predictable shape during use” (Ans. 5). Examiner explains that Valencia
“is not used to teach a funnel-shaped membrane or a chamber since these
structures are provided by … Saadat,” but instead, Valencia is relied upon to
suggest “that one of ordinary skill in the art at the time the invention was
made would have combined the frame of Valencia … with the structure of
Saadat … for the purpose of supporting the membrane and providing a
predictable shape to the membrane during use” (id. at 20; see also id. at 21).
Appellants contend that Valencia‟s “scallop assemblies … do not
form a funnel” (App. Br. 14; see FF 2). In this regard, Appellants contend
that
While the Examiner asserts that … Saadat … describes a
balloon structure that already provides …, (a) a funnel-shaped
membrane, (b) an inner surface of the membrane which defines
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a chamber, (c) the longitudinal axis of the funnel shaped
member being substantially perpendicular to the axis of the
shaft, and (d) the entire mouth of the funnel shaped membrane
being capable of engaging a body lumen wall, it is unclear why
one skilled in the art would be motivated … to combine such
balloon structure with a frame structure, as disclosed in …
Valencia … that is incapable of providing any of such features.

(Id. at 14-15.) We are not persuaded for the reasons set forth by Examiner
(FF 3-4). In sum, the combination suggests placing Valencia‟s frame in
Saadat‟s device in an orientation wherein the mouth of Valencia‟s frame
aligns with the mouth of Saadat‟s device so as to provide support to Saadat‟s
membrane (see FF 4). Therefore, notwithstanding Appellants‟ contentions
to the contrary, a person of ordinary skill in this art, at the time of
Appellants‟ claimed invention, would have recognized that the combination
of Valencia‟s frame with Saadat‟s device would facilitate rather than impede
all of the features outlined by Appellants above (see FF 3-4). Therefore, we
are not persuaded by Appellants‟ contention that “Examiner has simply
selected references which show various components recited in the claims
and has combined them without consideration as to whether a functioning
system would be created” (App. Br. 16).
Having found no deficiency in the combination of Saadat and
Valencia, we are not persuaded by Appellants‟ contention that Barbut and
Machold fail to make up for the deficiencies in the combination of Saadat
and Valencia (App. Br. 16-17).
CONCLUSION OF LAW
The preponderance of evidence on this record supports a conclusion
of obviousness. The rejection of claim 1 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Saadat and Valencia is affirmed.
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Application 11/957,237

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Claims 2-10, 12, 14-16, and 18 are not separately argued and fall together
with claim 1. The rejection of claim 11 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Saadat, Valencia, and Barbut is
affirmed. Claim 17 is not separately argued and falls together with claim 11.
The rejection of claim 13 under 35 U.S.C. § 103(a) as unpatentable over the
combination of Saadat, Valencia, and Machold is affirmed.
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