Ex Parte Marks et alDownload PDFPatent Trial and Appeal BoardMay 26, 201612275126 (P.T.A.B. May. 26, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/275, 126 11120/2008 Michael P. Marks 37374 7590 05/31/2016 INSKEEP INTELLECTUAL PROPERTY GROUP, INC 2281W.190TH STREET SUITE 200 TORRANCE, CA 90504 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. 388700-514 1518 EXAMINER RODJOM, KATHERINE MARIE ART UNIT PAPER NUMBER 3731 NOTIFICATION DATE DELIVERY MODE 05/31/2016 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): inskeepstaff@inskeeplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MICHAEL P. MARKS and MICHAEL ROSS Appeal2014-002198 Application 12/275,126 Technology Center 3700 Before EDWARD A. BROWN, JAMES P. CALVE, and GEORGE R. HOSKINS, Administrative Patent Judges. CAL VE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from the rejection of claims 1--4, 6-12, 14, 15, 17, and 18. See Appeal Br. 2. Claims 5, 13, and 16 were cancelled. Id. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. Appeal2014-002198 Application 12/275,126 CLAIMED SUBJECT MATTER Claims 1, 9, 12, and 15 are independent. Claim 1 is reproduced. 1. A delivery system for an intracorporeal device compnsmg: an elongated shaft having an inner lumen; a degradable link associating the elongated shaft and an intracorporeal device without covering an external circumference of the intracorporeal device; and at least one signal transmission element disposed within the inner lumen of the elongated shaft, the at least one signal transmission element operable to transmit a direct current to initiate degradation of the degradable link thereby completely disassociating the intracorporeal device from the elongated shaft. REJECTION1 Claims 1--4, 6-12, 14, 15, 17, and 18 are rejected under 35 U.S.C. § 103(a) as unpatentable over Barry et al. (US 6,277,126 Bl, iss. Aug. 21, 2001) ("Barry"), Ogawa et al. (US 5,759,161, iss. June 2, 1998) ("Ogawa"), and Unsworth et al. (US 5,846,247, iss. Dec. 8, 1998) ("Unsworth"). ANALYSIS Appellants argue claims 1-3, 6-9, and 11 as a group and present separate arguments for claims 4 and 10. Appeal Br. 6-19. We select claim 1 as the representative claim and separately address Appellants' arguments for claims 4 and 10. See 37 C.F.R. § 41.37(c)(l)(iv). Claims 2, 3, 6-9, and 11 stand or fall with claim 1. We also address Appellants' separate arguments for claims 12 and 15. See Appeal Br. 19-33. 1 The Examiner withdrew the rejection of claims 1--4, 6-11, and 14 under 35 U.S.C. § 112, second paragraph, in view of an Amendment that was filed on March 21, 2013, by Appellants. Ans. 6. 2 Appeal2014-002198 Application 12/275,126 Claims 1-3, 6-9, and 11 The Examiner found that Barry discloses an elongated shaft as coil deployment mechanism 14 with an inner lumen, degradable link as coupling member 30, and signal transmission element as energy conductors 28 that is disposed in the inner lumen and transmits a signal to initiate degradation of degradable link 30 to dissociate intracorporeal device (embolic coil 20) from elongated shaft 14. Non-Final Act. 3. The Examiner found that Barry does not disclose the complete degradation or dissolution of degradable link 30, but Ogawa teaches a similar detachment system with an elongated shaft (wire body 10) coupled to intracorporeal device (implanted device 16) by a degradable link Uoint member 15) that breaks and releases intracorporeal device 16 in a single step that delivers intracorporeal device 16 in as little as 1-3 seconds. Id. at 3--4. The Examiner determined that it would have been obvious to modify Barry with this teaching of Ogawa so degradable link 30 degrades and severs completely upon initiation of degradation by signal transmission element instead of merely softening, as taught by Barry, to ensure quick release of intracorporeal device 30. Id. at 3--4; Ans. 7. The Examiner found that Unsworth teaches an intravascular device that uses a heating mechanism to detach coil element 5 from delivery device in Figures 18A-18D and heating mechanism may comprise electrical probe 28 that delivers electrical energy using direct current, as claimed. Id. at 4--5. The Examiner determined that it would have been obvious to modify Barry and Ogawa to use a direct current electrical signal to heat and decouple the space filling device because such an electrical signal has been shown to be an effective energy source for a heating element and involves a substitution of one known element for another to yield predictable results. Id. at 5. 3 Appeal2014-002198 Application 12/275,126 Appellants argue first that the proposed modification of Barry would not have had a reasonable expectation of success that coupling member 30 would be degraded sufficiently to sever completely because Barry teaches that coupling member softens or melts rather than degrades upon heating. Appeal Br. 9-10. This argument is not persuasive because the Examiner proposes to modify Barry's degradable link 30 to sever completely in as little as 1-3 seconds, as taught by Ogawa. Non-Final Act. 3--4; Ans. 9. The Examiner's findings are supported by a preponderance of evidence. Ogawa, 5:48-58. The Examiner determined that it would have been obvious to modify the degradable link 30 of Barry with Ogawa's material to sever the polymeric joint very quickly and thereby greatly reduce the stress on the surgeon and patient, as taught by Ogawa. Non-Final Act. 4; Ans. 9. The Examiner's reason for combining these teachings of Ogawa and Barry is supported by rational underpinning. See Ogawa, 5:59-65 (use of polymer also reduces the risk of metal ions and fragments in a patient's body). Appellants also argue that the proposed modification would render positioning member 22 moot if coupling member 30 severed completely. Id. at 11. Appellants further argue that the proposed modification would change the principle of operation of Barry, which disassociates embolic coil 20 from system 10 by softening coupling member 30 and retracting delivery member 24. Id. at 12-13. These arguments are not persuasive because the proposed modification does not change the use of delivery member 24. Detachment of intracorporeal device 20 is improved by retracting delivery member 24 in conjunction with the severing of link 30 to ensure the quick release of intracorporeal device 20. See Non-Final 3--4; Ans. 9. As such, we sustain the rejection of claims 1-3, 6-9, and 11. 4 Appeal2014-002198 Application 12/275,126 Claims 4 and 10 Dependent claims 4 and 10 recite that "a portion of the degradable link is disposed within the inner lumen of the elongated shaft" (claim 4) or "disposing a portion of the degradable link within the inner lumen of the elongated shaft" (claim 10). The Examiner found it is well known in the art to add adhesive material to cover a greater area to improve the bond between the two members. Non-Final Act 6. The Examiner determined that it would have been obvious to provide additional adhesive material in Barry so the degradable link extends into the lumen of the elongated shaft to improve the connection between the shaft and intracorporeal device. Id. Alternatively, the Examiner found that Barry's outer catheter 12 is an elongated shaft and degradable link 30 is disposed therein. Id. The Examiner's reason for modifying Barry by extending degradable link 30 into the inner lumen of positioning member 22 is not supported by rational underpinning. See Appeal Br. 15-19; Reply Br. 13-14. Barry teaches that degradable link 30 softens as it is warmed by heating element 26 and breaks when delivery system 24 retracts. Barry, 4:29-57, Figs. 2---6. The Examiner proposes to improve Barry's delivery system by substituting Ogawa' s joint member 15 in Barry to provide a material that severs even more quickly and completely. Non-Final Act. 4; Ans. 9. The Examiner has not explained why a skilled artisan would have extended degradable link 30 into the lumen of positioning member 22 of Barry to make the bond between coil 20 and positioning member 22 more secure when the Examiner already modified Barry with teachings of Ogawa to make link 30 easier to sever. The modification would connect positioning member 22 and coil 20 with more adhesive that must be heated and severed to release coil 20. 5 Appeal2014-002198 Application 12/275,126 We also are not persuaded by the Examiner's alternative findings that outer catheter 12 corresponds to the elongated shaft with degradable link 30 disposed therein. Non-Final Act. 6; see Ans. 9-10. Outer catheter 12 is not associated with embolic coil 20 by degradable link 30. See Barry, 4: 1-18, Figs. 1, 2. Therefore, the Examiner has not established by a preponderance that this configuration of Barry teaches an elongated shaft (outer catheter 12) associated with an intracorporeal device ( embolic coil 20) and a degradable link (coupling member 30), as recited in claims 1 and 9 from which claims 4 and 10 depend. As such, we do not sustain the rejection of claims 4 and 10. Claims 12, 14, 15, 17, and 18 Claims 12 and 15 recite "at least a portion of the degradable polymer link is disposed within the inner lumen" (claim 12) and "a polymer link disposed within an inner lumen of said delivery system" (claim 15). The Examiner determined that this feature would have been obvious for the same reasons as claims 4 and 10. Non-Final Act. 6; Ans. 9-10. The Examiner's reason is not supported by rational underpinnings for the reasons discussed above for claims 4 and 10. See Appeal Br. 20-33; Reply Br. 14--23. We do not sustain the rejection of claims 12, 14, 15, 17, and 18. DECISION We AFFIRM the rejection of claims 1-3, 6-9, and 11, and REVERSE the rejection of claims 4, 10, 12, 14, 15, 17, and 18. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED-IN-PART 6 Copy with citationCopy as parenthetical citation