Ex Parte Porter et al

Patent Trial and Appeal Board

Sep 14, 2018

13887589 (P.T.A.B. Sep. 14, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/887,589 05/06/2013
115127 7590 09/18/2018
Stryker - Vista IP Law Group
Nancy Rushton
21760 Stevens Creek Blvd.
Suite 100
Cupertino, CA 95014
FIRST NAMED INVENTOR
Stephen Christopher Porter
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.
04-0085 (US02) 1047
EXAMINER
WEI, CHARLES M
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
09/18/2018 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):
nnr@viplawgroup.com
sp@viplawgroup.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEPHEN CHRISTOPHER PORTER, TRI D. TRAN,
HANH HO, and THACH CAO
Appeal2017-008994
Application 13/887,589
Technology Center 3700
Before DONALD E. ADAMS, MICHAEL J. FITZPATRICK, and
JOHN G. NEW, Administrative Patent Judges.
FITZPATRICK, Administrative Patent Judge.
DECISION ON APPEAL
Stephen Christopher Porter, Tri D. Tran, Hanh Ho, and Thach Cao
("Appellants") 1 appeal under 35 U.S.C. § 134(a) from a decision finally
rejecting claims 1, 2, 4, 5, 7-10, 15, 18, and 19. We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.
1 The real parties in interest are identified as Stryker Corporation and Stryker
European Holdings I, LLC. Appeal Br. 2.
Appeal2017-008994
Application 13/887,589
STATEMENT OF THE CASE
The Specification
The claimed invention relates to the "repair and treatment of
aneurysms." Spec i-f2. The invention includes "vaso-occlusive device[s] for
placement within an aneurysm." Id. ,I9. Figure 1 is reproduced below.
85
FIG. 1
Figure 1, reproduced above, shows a side view of vaso-occlusive device 10
deployed within aneurysm 70 of blood vessel 15. Spec. ,r 37. As shown in
Figure 1, the device preferably covers neck 7 5 of the aneurysm. Thus,
Figure 1 shows how such devices occlude an aneurysm from an affected
blood vessel.
The rejected claims, however, are not directed to the device depicted
in Figure 1. They are directed rather to an embodiment depicted in Figure
5b. See Appeal Br. 2-3. Figure 5b is reproduced below.
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Application 13/887,589
FIG. SB
20
Figure 5b, reproduced above, shows a side view of a vaso-occlusive device.
Spec. i-f24. More specifically, the device of Figure 5b includes "upper (20)
and lower (30) members compris[ing] a plurality of wires that can expand
the overall diameter of the device. Central member ( 40) also comprises an
expandable member (55)." Id. ,I39.
The Rejected Claims
Of the rejected claims, claims 1 and 15 are independent. Claim 1 is
illustrative and reproduced below, with emphasis added to limitations
particularly critical to this Decision.
1. A vaso-occlusive device configured for placement
within an aneurysm, the aneurysm having a neck and a sac, the
device comprising:
a self-expanding resilient body having a linear
configuration for deployment through a delivery catheter, and an
expanded, substantially spherical deployed configuration,
wherein in the deployed configuration, the resilient body bridges
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Application 13/887,589
the neck of the aneurysm and occludes the aneurysm sac when
the device is placed within the aneurysm,
wherein the resilient body comprises a plurality of wires
that define a substantially spherical interior region when the
resilient body is in the deployed configuration,
each wire having a proximal end and a distal end, wherein
the proximal ends of the wires are coupled together in a
configuration forming an external concavity at a proximal end of
the resilient body, and the distal ends of the wires are coupled
together in a configuration forming an external concavity at a
distal end of the resilient body, respectively, when the resilient
body is in the deployed configuration.
June 6, 2017, Response to Notice of Non-Compliant Brief 3.
The Appealed Rejections
The following rejections are before us for review:
Claims 1, 2, 4, 5, 7-10, 15, and 19 under 35 U.S.C. § I02(b) (pre-
AIA) as being anticipated by Wallace2 (Final Act. 3); and
Claim 18 under 35 U.S.C. § I03(a) (pre-AIA) as unpatentable over
Wallace and Stack3 (Final Act. 7). 4
DISCUSSION
The Examiner rejected claims 1, 2, 4, 5, 7-10, 15, and 19 as
anticipated by Wallace, particularly the embodiment depicted in Wallace
Figure 1. Final Act. 3. The Examiner rejected dependent claim 18 as
2 US 2003/0195553 Al, published Oct. 16, 2003 ("Wallace").
3 US Patent No. 5,342,393, issued Aug. 30, 1994 ("Stack").
4 In the Appeal Brief, Appellants refer to claim 18 as being rejected as
"unpatentable over Pal in view of Chen." Appeal Br. 6. Pal and Chen are
not of record. This appears to be a typographical error.
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Appeal2017-008994
Application 13/887,589
unpatentable over Wallace and Stack, with Stack being relied on exclusively
to address the limitation added by claim 18. Final Act. 7.
Wallace Figure 1 is reproduced below.
Wallace Figure 1, reproduced above, shows vaso-occlusive device 10
deployed within aneurysm 40 ofblood vessel 60. Wallace ipo. In the
deployed state shown in Figure 1, the device includes "a central tubular
element 15 and proximal 20 and distal 30 ends that are flared open into
'umbrella shapes."' Id. The proximal end 20 covers neck 70 of the
aneurysm. Id.
In the non-deployed state, the device 10 is wholly tubular-shaped, as
shown in Figure 9a (ref. 10). Wallace ,I49. In fact, the device 10 is formed
from braided tubular element 1, the ends of which are then compressed by
umbrella or dome-shaped mandrels 85 to cause the ends to flare out. Id.
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Application 13/887,589
Wallace does not disclose a "resilient body compris[ing]
a plurality of wires that define a substantially spherical
interior region"
Each of independent claims 1 and 15 recites "a self-expanding
resilient body having [] a substantially spherical deployed configuration." In
addition, both claims further recite that "the resilient body comprises a
plurality of wires that define a substantially spherical interior region."
Appeal Br. 3--4.
The Examiner found that the device of Wallace Figure 1 has a
"resilient body compris[ing] a plurality of wires that define a substantially
spherical interior region when the resilient body is in the deployed
configuration." Final Act. 3. Appellants argue that the Wallace does not, in
fact, disclose such a feature "since the Wallace device is wide open between
the end caps." Appeal Br. 5. In his Answer, the Examiner responds that
"having the top and bottom domes of a sphere and having those domes be
configured to conform to a spherical aneurysm (see Figure 1 [of Wallace]) is
sufficient for a device to be 'substantially spherical' in that it is related to or
dealing with a sphere." Ans. 5.
We are persuaded by Appellants that the Examiner has erred in
finding that Wallace Figure 1 discloses a "resilient body [that] comprises a
plurality of wires that define a substantially spherical interior region," as
recited by claims 1 and 15. Although the Examiner shows that Wallace
Figure 1 discloses a substantially spherical aneurysm as well as a plurality of
wires, portions of which define two domes, the Examiner does not show that
Wallace discloses a plurality of wires "that define a substantially spherical
interior region." The Examiner's rejection appears premised on
extrapolating the curved exterior surfaces of the flared ends (20 and 30) until
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Application 13/887,589
they meet each other, thereby forming a shape that is spherical or
substantially spherical. Wallace, however, does not disclose that its wires so
extend to define a substantially spherical interior region. In fact, as
Appellants argue, the "Wallace device is wide open" between the flared
ends. Appeal Br. 5; Wallace Fig. 1. As such, the only "interior region" that
the wires of Wallace Figure 1 arguably define is a tubular-shaped one-
within the unflared medial portion of the device. See Fig. 1 (ref. 15).
For at least this reason, the rejection of claims 1, 2, 4, 5, 7-10, 15, and
19 cannot be sustained. For at least the same reason, the rejection of claim
18 also cannot be sustained.
Wallace does not disclose "ends of the wires are coupled
together ... forming an external concavity" at either end
of the resilient body
Each of independent claims 1 and 15 recites:
each wire having a proximal end and a distal end, wherein the
proximal ends of the wires are coupled together in a
configuration forming an external concavity at a proximal end of
the resilient body, and the distal ends of the wires are coupled
together in a configuration forming an external concavity at a
distal end of the resilient body, respectively, when the resilient
body is in the deployed configuration.
Appeal Br. 3--4.
The Examiner notes that the Specification does not describe explicitly
any "concavities." Final Act. 3. It only illustrates them. Id. The Examiner
initially construed "concavity" as "a shape that is curved inward," and he
found that the "caps of Wallace curve inward toward the lumen of the device
as shown in figure 2a," thus disclosing the concavity limitations. Id. at 8.
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The Examiner subsequently conceded that the curved mandrels 85,
which are the only curved surfaces shown in Wallace Figure 2a, are not part
of the asserted prior art vaso-occlusive device. Ans. 2; Wallace, Fig. 2a.
The Examiner nonetheless maintained that the Wallace vaso-occlusive
device does have concavities in its ends-after the shape of the ends have
been conformed to the shape of the mandrels, as shown in Wallace Figure 1.
Ans. 2-3. To map the concavity limitations onto Wallace, the Examiner
applied "a broad interpretation" of the limitations, stating the following:
[M]erriam-Webster defines concavity as "(1) a concave line,
surface or space; (2) the quality or state ofbeing concave." None
of the surfaces that form the indentations indicated below [i.e., in
an annotated Figure 5b of the Specification] are concave by
definition. A concavity, according to Merriam-Webster, would
form a U-shaped indentation rather than the V-shaped
indentation seen in Appellant[s'] figure. Therefore, it was
understood that Appellant[ s] were relying on a broader
definition, such as an inward cavity, and any external indentation
would read on a broad interpretation of the claimed "external
concavities."
Ans. 3.
Appellants argue that Wallace does not disclose the concavity
limitations, stating the following:
[T]he end caps in Wallace never inflect to form concavities.
Instead, the Wallace end caps maintain an even, spherical
curvature. The Examiner is apparently considering the interior
lumen wall of the tubular stem that connects the two caps in
Wallace as being part of the exterior surface of the end caps.
However, Appellants respectfully point out that the claim
language requires the exterior surface ends of the deployed
device form concavities; and the interior tubular wall surface of
the Wallace connecting stem of Wallace does not meet this
limitation for at least the reasons that is interior tubular wall is
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Application 13/887,589
not an exterior surface, and does not form a concavity. Instead,
the tubular surface has a circular cross-section.
Appeal Br. 5---6.
We are persuaded by Appellants' arguments regarding what Wallace
fails to teach. The Examiner merely points to the ends of a tubular lumen.
We disagree that the lumen or its open ends meet either concavity limitation
on this record.
Further, the claims require that the proximal end concavity be formed
by "the proximal ends of the wires [being] coupled together" and likewise
that that the distal end concavity be formed by "the distal ends of the wires
[being] coupled together." Yet, the Wallace holes, at the ends of the tubular
lumen, are not formed by the convergence of proximal ends or distal ends of
wires. Instead, they are formed by medial portions of meshed wires.
For at least these additional reasons, the rejection of claims 1, 2, 4, 5,
7-10, 15, and 19 cannot be sustained. For at least the same additional
reasons, the rejection of claim 18 also cannot be sustained.
SUMMARY
For the reasons discussed, we reverse the Examiner's rejection of
claims 1, 2, 4, 5, 7-10, 15, 18, and 19.
REVERSED
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