Ex Parte Poncet

Board of Patent Appeals and Interferences

Apr 11, 2006

08968756 (B.P.A.I. Apr. 11, 2006)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PHILIPPE PONCET
____________

Appeal No. 2005-2621
Application No. 08/968,756
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ON BRIEF
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Before McQUADE, CRAWFORD, and LEVY, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 35 to 43
and 46 to 59, which are all of the claims pending in this application. Claims 1 to 34 and
44 and 45 have been canceled.
The appellant's invention relates to a device and method for delivering a fluid-
based agent to a selected site within the body (specification, p. 1). A copy of the claims
under appeal is set forth in the appendix to the appellant's brief.
THE PRIOR ART

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The prior art references of record relied upon by the examiner in rejecting the
appealed claims are:
Jervis 5,190,546 Mar. 2, 1993
Horzewski 5,873,865 Feb. 23, 1999

THE REJECTION

Claims 35 to 43 and 46 to 59 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Horzewski in view of Jervis.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellant regarding the above-noted rejections, we make reference to the answer
(mailed June 29, 2004) for the examiner's complete reasoning in support of the
rejections, and to the brief (filed March 26, 2004) and reply brief (filed August 30, 2004)
for the appellant's arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellant's specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the examiner. As a consequence
of our review, we make the determinations which follow.

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The examiner has rejected the claims under 35 U.S.C. § 103 as being
unpatentable of Horzewski in view of Jervis. We initially note that in rejecting claims
under 35 U.S.C. § 103, the examiner bears the initial burden of presenting a prima facie
case of obviousness. See In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956
(Fed. Cir. 1993). A prima facie case of obviousness is established by presenting
evidence that the reference teachings would appear to be sufficient for one of ordinary
skill in the relevant art having the references before him to make the proposed
combination or other modification. See In re Lintner, 9 F.2d 1013, 1016, 173 USPQ
560, 562 (CCPA 1972). Furthermore, the conclusion that the claimed subject matter is
prima facie obvious must be supported by evidence, as shown by some objective
teaching in the prior art or by knowledge generally available to one of ordinary skill in
the art that would have led that individual to combine the relevant teachings of the
references to arrive at the claimed invention. See In re Fine, 837 F.2d 1071, 1074, 5
USPQ2d 1596, 1598 (Fed. Cir. 1988).
The examiner is of the opinion that Horzewski describes the invention as claimed
except that Horzewski does not describe the intrinsic characteristics of the superelastic
shape memory alloy, such as that it exhibits a stress-induced martensite properties at
about a mammalian body temperature when the delivery element is in the first shape.
The examiner relies on Jervis for teaching a medical device made of a

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superelastic shape memory alloy that has a non-linear elastic range and exhibits stress-
induced martensite properties at about a mammalian body temperature upon insertion
in the body with a catheter in a straightened shape. The examiner concludes that it
would have been obvious to use the Jervis material in the Horzewski device.
The appellant argues that Horzewski does not describe a alloy wall containing
apertures or a constraining housing.
We do not agree.
Horzewski describes, as depicted in Figure 2, a delivery element in the form of
catheter 102 which has a wall defining a fluid passage extending between the proximal
portion and the distal portion and a plurality of apertures 114 at the distal portion which
are in fluid communication with the fluid passage (col. 7, lines 8 to 14, lines 30 to 44).
The wall of the catheter 102 which defines the fluid passage is made of a superelastic
shape memory alloy ( col. 7, lines 45 to 47). A housing 150, depicted in Figure 8, has a
first position with the distal end of the catheter 102 disposed within the housing 150 in
its first shape and a second position in which the catheter 102 is exterior to the housing
and in a second shape. The housing 150 has sufficient strength to constrain the distal
end of the catheter 102 in the first shape (col. 7, line 54 to col. 8, line 4).
As such, Horzewski discloses both a delivery element made of superelastic alloy
with apertures therein and a housing 150 that constrains the catheter 102 when it is in
its first shape. While appellant is correct that wire 122, which is also comprised of

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superelastic alloy does not contain aperatures, this is not relevant to the rationale of the
examiner because the examiner considers 102 to be the delivery device and 150 to be
the housing and does not consider 122 to be the delivery device and 102 the housing.
The appellant also argues that there is no suggestion to combine the teachings
of Horzewski with the teachings of Jervis. In appellant's view, as Horzewski does not
teach a delivery device made of superelastic alloy that deforms under stress, there
would be no motivation to substitute the superelastic alloy of Jervis in the formation of
the delivery device of Horzewski. As we have found above that Horzewski does indeed
describe a delivery element in the form of catheter 102 that deforms under stress, we do
not find this argument persuasive.
In addition, Jervis teaches that the process of isothermally deforming a the
catheter eliminates the need for temperature control (col. 9, lines 39 to 42) thereby
providing ample motivation to use the Jervis material in the Horzewski device.
Appellant also argues that as Horzewski teaches that the housing 150 may be
eliminated, it teaches away from the use of a housing.
Horzewski does disclose that, if desired, the housing may be eliminated so that
the catheter itself can be guided through the vasculature (col 11, lines 55 to 58).
As to the specific question of "teaching away," our reviewing court in In re Gurley,
27 F.3d 551, 553, 31 USPQ2d 1130, 1331 (Fed. Cir. 1994) stated:

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A reference may be said to teach away when a person of ordinary skill, upon
[examining] the reference, would be discouraged from following the path set out
in the reference, or would be led in a direction divergent from the path that was
taken by the applicant.

While Horzewski teaches that the housing 150 may be eliminated if desired, it
does not discourage one skilled in the art to use the housing. Therefore, we are not
persuaded by this argument.
In regard to claims 53 to 59, appellant argues that Horzewski does not disclose
delivering a fluid based agent.
We do not agree. Horzewski discloses at col. 7, lines 34 to 44 that catheter 102
allows the flow of fluid.

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For the foregoing reasons, we will sustain the examiner's rejection. The decision
of the board is affirmed.
AFFIRMED

JOHN P. MCQUADE )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
MURRIEL E. CRAWFORD ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
STUART S. LEVY )
Administrative Patent Judge )

Comment [jvn1]: Type address

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Application No. 08/968,756

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Sheldon & Mak
225 South Lake Avenue
9th Floor
Pasadena, CA 91101

MEC/ki