Ex Parte Leuer et al

Patent Trial and Appeal Board

Sep 20, 2012

11273095 (P.T.A.B. Sep. 20, 2012)

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.
11/273,095 11/14/2005 Dennis Leuer 3273 3173
7590 09/20/2012
WALTER A. HACKLER, Ph.D.
PATENT LAW OFFICE
SUITE B
2372 S.E. BRISTOL STREET
NEWPORT BEACH, CA 92660-0755
EXAMINER
VU, QUYNH-NHU HOANG
ART UNIT PAPER NUMBER
3763
MAIL DATE DELIVERY MODE
09/20/2012 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 DENNIS LEUER and ROBERT SIEGEL
__________

Appeal 2011-011506
Application 11/273,095
Technology Center 3700
__________

Before DONALD E. ADAMS, ERIC GRIMES, and ERICA A.
FRANKLIN, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a method
for treating an intravascular blockage. The Examiner has rejected the claims
as anticipated and obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
STATEMENT OF THE CASE
“It is known that ultrasound imaging can be used to locate
intravascular thrombi … and it has been further demonstrated that the
utilization of ultrasonic waves can improve the diffusion and penetration of
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Application 11/273,095

2
medicinal fluids or the like into the vascular system” (Spec. 1:12-16). The
Specification discloses “introducing an agent to a thrombus, applying the
ultrasound to the site or area of the clot to enhance effectiveness, while
monitoring, and stopping agent introduction once monitoring shows that the
agent has been effective or undesired bleeding occurs” (id. at 1:27 to 2:3).
Claims 1-11 are on appeal. Claim 1, the only independent claim,
reads as follows:1
1. A method for treating an intravascular blockage, said method
comprising:
applying ultrasound to the blockage;
introducing an agent to the blockage;
monitoring the blockage to determine a status thereof; and
controlling the agent introduced while blockage monitoring.
The claims stand rejected as follows:
• Claims 1-3, 6, and 7 under 35 U.S.C. § 102(b) in view of Siegel;2
• Claims 8-11 under 35 U.S.C. § 103(a) in view of Siegel;
• Claims 4 and 5 under 35 U.S.C. § 103(a) in view of Siegel, Nyhart,3
and Theeuwes;4
• Claims 1-9 under 35 U.S.C. § 102(b) in view of Carter;5 and
• Claims 10 and 11 under 35 U.S.C. § 103(a) in view of Carter.

1 The Claims Appendix of the Appeal Brief incorrectly reproduces claim 1.
Claim 1 was amended to recite “controlling the agent introduced while
blockage monitoring” (see the amendment filed June 17, 2010).
2 Siegel et al., US 5,695,460, Dec. 9, 1997.
3 Nyhart, Jr., US 7,616,989 B2, Nov. 10, 2009.
4 Theeuwes et al., Patent Application Publication, US 2003/0032942 A1,
Feb. 13, 2003.
5 Carter, US 5,474,531, Dec. 12, 1995.
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I.
The Examiner has rejected claims 1-3, 6, and 7 as anticipated by
Siegel. The Examiner has also rejected claims 8-11 as obvious based on
Siegel and claims 4 and 5 as obvious based on Siegel, Nyhart, and
Theeuwes. The same issue is dispositive for all three rejections.
The Examiner finds that Siegel discloses “a method for treating
thrombosis or intravascular blockage comprising: applying ultrasound to the
blockage; and introducing an agent to the blockage including ultrasound
imaging agents to dissolve arterial thrombi” (Answer 3). The Examiner
cites several portions of Siegel as disclosing “monitoring the blockage to
determine a status of the blockage” (id.).
Appellants contend that “none of the citations by the Examiner to
Siegel are relevant in teaching the step of monitoring a blockage while
controlling the introduced agent as presently claimed” (Appeal Br. 9).
Appellants argue that “[t]here is absolutely no reference in Siegel to
concurrent monitoring of blockage and controlling of the agent introduced”
(id. at 9-10).
We agree with Appellants that the Examiner has not adequately
shown that Siegel discloses applying ultrasound, introducing an agent to a
blockage, and “controlling the agent introduced while blockage monitoring.”
Siegel discloses that “ultrasound diagnostic media, particularly echo contrast
agents containing microbubbles, utilized in conjunction with ultrasound,
provides a safe and effective method for dissolving arterial thrombi without
the use of thrombolytic drugs” (Siegel, col. 1, ll. 53-58).
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4
In a working example, Siegel describes an experiment in which
thrombi were induced in rabbits, which were then administered streptokinase
and treated with ultrasound (id. at col. 9, ll. 1-23). Siegel states that “[s]erial
angiograms were performed after thrombus induction, after thrombosis
occlusion and during and after ultrasound exposure” (id. at col. 9, ll. 23-25).
The Examiner argues that, by this disclosure, “Siegel is inherently
covering the method of controlling the agent introduced while blockage
monitoring” (Answer 4). The Examiner similarly argues that Siegel’s
description of administering different amounts of a contrast agent, before
ultrasound treatment, meets the limitation of controlling the agent while
blockage monitoring (id.).
We disagree with the Examiner’s claim interpretation. “[T]he PTO
applies to the verbiage of the proposed claims the broadest reasonable
meaning of the words in their ordinary usage as they would be understood
by one of ordinary skill in the art, taking into account whatever
enlightenment by way of definitions or otherwise that may be afforded by …
the applicant’s specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
1997).
The ordinary meaning of “controlling the agent introduced while
blockage monitoring” is that the agent is controlled at the same time as the
blockage is monitored. The Specification states that controlling includes
stopping the introduction of the agent, changing of the agent, or modifying
the concentration of the agent (Spec. 2:19-24). Regardless of how the agent
is controlled, however, the claim requires that the blockage is monitored at
the same time.
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The Examiner has not pointed to any disclosure in Siegel of
controlling an introduced agent while at the same time monitoring a
blockage. Siegel’s disclosure of administering set dosages of streptokinase
and administering ultrasound, and performing angiograms at different times
during the process, does not meet the claim limitation because it does not
describe simultaneously monitoring the blockage and controlling the
introduction of the streptokinase.
Thus, we reverse the rejection of independent claim 1 and dependent
claims 2, 3, 6, and 7 as anticipated by Siegel. We also reverse the rejection
of claims 4, 5, and 8-11 as obvious in view of Siegel (claims 8-11) or in
view of Siegel, Nyhart, and Theeuwes (claims 4 and 5) because the
Examiner relies on the same findings and reasoning with respect to Siegel as
discussed above for claim 1.
II.
The Examiner has rejected claims 1-9 as anticipated by Carter, and
has rejected claims 10 and 11 as obvious in view of Carter. The same issue
is dispositive for both rejections.
The Examiner finds that “Carter discloses a method for treating an
intravascular blockage comprising the step[s] of: applying ultrasound to the
blockage …; [and] introducing an agent to the blockage” (Answer 5). The
Examiner finds that Carter discloses “monitoring the blockage to determine
a status of initial weight … and final weight …, and the appearance of the
clot” (id.). Regarding controlling the agent, the Examiner finds that Carter
discloses that “by adjusting the feed rate of the seed fluid, the resulting
cutting/dissolution activity can be controlled for maximum effect” (id.,
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citing Carter at col. 6, l. 67 – col. 7, l. 3). The Examiner also reasons that
“Carter discloses the step of monitoring of blockage while controlling the
agent introduced” at column 7, line 56 through column 8, line 50 (Answer
10).
Appellants contend that “Carter does not disclose the step of
monitoring a blockage concurrently (while) controlling the introduced
agent as presently claimed” (Appeal Br. 14).
We agree with Appellants that the Examiner has not adequately
shown that Carter discloses the disputed limitation. As discussed above in
reference to Siegel, the ordinary meaning of this limitation, and the meaning
consistent with the Specification, requires simultaneously monitoring the
blockage and controlling the agent.
Carter discloses a method for dissolving intravascular clots which
“includes the steps of introducing ultrasonic waves proximate intravascular
blockages and promoting cavitation of intravascular fluid proximate the
intravascular blockages” (Carter, col. 3, ll. 25-29). Carter does disclose that
by “adjusting the feed rate of the seed fluid, the resulting cutting/dissolution
activity can be controlled for maximum effect” (id. at col. 6, l. 67 to col. 7,
l. 2), but does not disclose simultaneously monitoring the clot or blockage
while adjusting the feed rate of the seed fluid.
The Examiner also pointed to Carter’s working example at columns 7-
8 as describing simultaneously monitoring a blockage and controlling an
agent (Answer 10). That example describes an experiment in which a clot
was placed in a vial, covered with a streptokinase solution of defined
strength, and treated with ultrasound (Carter, col. 7, l. 56 to col. 8, l. 2).
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Thus, while this example describes introducing an agent (streptokinase) to a
clot and applying ultrasound, it does not describe any control of the agent
while the clot was being monitored, nor does it describe a “method of
treating an intravascular blockage” (claim 1, emphasis added). We
conclude that the Examiner has not adequately shown that Carter discloses
all of the limitations of claim 1.
We reverse the rejection of independent claim 1 and dependent claims
2-9 as anticipated by Carter. We also reverse the rejection of claims 10 and
11 as obvious in view of Carter, because the Examiner relies on the same
findings and reasoning with respect to Carter as discussed above for claim 1.
SUMMARY
We reverse all of the rejections on appeal.

REVERSED

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