Ex Parte Ray

Board of Patent Appeals and Interferences

Dec 14, 2011

09475768 (B.P.A.I. Dec. 14, 2011)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
09/475,768 12/30/1999 PINAKI RAY 3764P002 6849
45215 7590 12/15/2011
ABBOTT CARDIOVASCULAR SYSTEMS INC./BSTZ
BLAKELY SOKOLOFF TAYLOR & ZAFMAN LLP
1279 OAKMEAD PARKWAY
SUNNYVALE, CA 94085-4040
EXAMINER
BOUCHELLE, LAURA A
ART UNIT PAPER NUMBER
3763
MAIL DATE DELIVERY MODE
12/15/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte PINAKI RAY
________________

Appeal 2009-015369
Application 09/475,768
Technology Center 3700
________________

Before JENNIFER D. BAHR, STEFAN STAICOVICI and
MICHAEL L. HOELTER, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-015369
Application 09/475,768

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STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from a final
rejection of claims 1-13 and 48-64. We have jurisdiction under 35 U.S.C.
§ 6(b). We REVERSE.

The Claimed Subject Matter
The claimed subject matter pertains to delivery and collection
conduits used to isolate the fluid (i.e. blood) flowing to/from a biological
mass such as a heart, kidney, liver or brain; the collection conduit having a
seal for occluding the downstream channel. Independent claim 1 is
illustrative of the invention and is reproduced below:

1. A system for fluid isolation in a biological mass having at least
one upstream channel and at least one downstream channel,
comprising:
a delivery conduit for administering a fluid to the biological
mass, the delivery conduit having a length dimension suitable to be
positioned from a first externally accessible channel of a patient
adjacent to or into at least one upstream channel of the biological
mass by way of a percutaneous trans luminal route; and
a collection conduit for acquiring the administered fluid, the
collection conduit having a length dimension suitable to be positioned
from a second externally accessible channel of a patient adjacent to or
into at least one downstream channel of the biological mass by way of
a percutaneous transluminal route and having a collection seal having
a dimension, in one configuration, to occlude the at least one
downstream channel;
wherein the biological mass is selected from the group
consisting of a heart, a portion of a heart, a kidney, a portion of a
kidney, a stomach, a liver, and a brain.

References Relied on by the Examiner
Boddie US 4,192,302 Mar. 11, 1980
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Application 09/475,768

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Aigner US 4,540,402 Sep. 10, 1985
Sterman US 5,452,733 Sep. 26, 1995

The Rejections on Appeal
1. Claims 1-9, 12-13 and 48-60 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Boddie and Aigner (Ans. 3).
2. Claims 10-11 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Boddie and Aigner (Ans. 6).
3. Claims 61-64 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Boddie, Aigner and Sterman (Ans. 8).

ISSUE
Has the Examiner provided sufficient evidence and technical
reasoning to show that the combination of Boddie and Aigner, or the
combination of Boddie, Aigner and Sterman, render obvious a system as
called for in Appellant’s claims comprising a collection conduit seal that
occludes a downstream channel?

ANALYSIS
The rejection of claims 1-13 and 48-60 over Boddie and Aigner
Each of these claims require a collection conduit in a downstream
channel, the collection conduit having “a collection seal” for occluding fluid
flow in the downstream channel. The Examiner relies on Boddie for all the
claim limitations except that Boddie fails to disclose “collection seals having
a dimension to occlude such as elastomeric balloons” 1 (Ans. 5). However,

1 Boddie expresses a preference for a ligature to occlude blood flow into the
liver (Boddie 3:40-42).
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Application 09/475,768

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the Examiner states that “it would have been obvious to substitute balloons
for the ligatures of Boddie” since “balloons on catheter shafts are well
known in the catheter art to effectively, less-invasively and safely occlude
blood vessels. This is clearly taught by Aigner” (Ans. 5).
For purposes of discussion, the Examiner identifies Boddie’s catheter
34 and branches 35 and 36 inserted upstream the liver as the corresponding
“delivery conduit” and the Examiner identifies Boddie’s catheter 41 and
internal tube 61 inserted downstream the liver as the corresponding
“collection conduit” (Ans. 4-5, 10). Consistent with Boddie’s teachings, the
Examiner only identifies a vessel occlusion associated with an upstream
channel (i.e., branch 35) and not any downstream channel as claimed (Ans.
3). Boddie expressly teaches that the occlusion be “disposed upstream of the
location of the first branch catheter 35” (Boddie 3:17-21 and Fig. 3).
Appellant addresses this upstream/downstream occlusion discrepancy
stating that Boddie’s “ligature is associated with a delivery conduit as
identified by the Patent Office, not a collection conduit” as claimed (Reply
Br. 3). Appellant contends that to “substitute a balloon for the ligature
preferred by Boddie, one presumably would have to branch first branch
catheter 35 in a direction downstream (toward the liver) and a position
upstream” toward the occlusion (App. Br. 12, see also Reply Br. 3).
Appellant contends that such “a branch device is far beyond the teachings of
Aigner or Boddie” and that additional hardware would be required “to
contain the balloon catheter portion” (App. Br. 12, see also Reply Br. 3).
The Examiner reiterates Aigner’s preference for a balloon to occlude a
vessel over a ligature when adjacent an organ (Ans. 11-12) and even
presuming that Boddie’s ligature is replaced with Aigner’s balloon, the
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Application 09/475,768

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occlusion is still in Boddie’s upstream channel and not the claimed
downstream channel. The Examiner does not provide any explanation that
the location of Boddie’s occlusion can be moved from its present upstream
channel location to the claimed downstream channel location and still
function for its intended purpose (App. Br. 12, Reply Br. 3). Furthermore,
as far as we can tell, should either of Boddie’s downstream collection
conduits 41 or 61 occlude blood flow, the blood flow intended for the
patients’ heart or the heart-lung machine would be blocked and fluid flow
to/from Boddie’s liver would no longer be isolated from the rest of the body
as intended (see Boddie 1:11-15, Fig. 3). Absent such a showing and
because the Examiner has not provided a reason that a person of ordinary
skill in the art would have occluded Boddie’s collection conduit, the
Examiner’s rejections of claims 1-13 and 48-60 lack a rational underpinning.
Accordingly, we are not persuaded by the Examiner’s rationale that the
substitution of Aigner’s balloon catheter for Boddie’s ligature would make a
collection conduit occlusion seal obvious. In view of the record presented,
we reverse the Examiner’s rejections of claims 1- 13 and 48-60.
The rejection of claims 61-64 over Boddie, Aigner and Sterman
Dependent claims 61-64 are rejected over Boddie, Aigner and
Sterman (Ans. 8). Sterman is cited by the Examiner for its disclosure of a
method for accessing the heart and includes placing a catheter into the aorta
via the femoral artery and placing a catheter into the coronary sinus via the
jugular vein (Ans. 8). Sterman is not relied on nor does it overcome the
deficiencies of the combination of Boddie and Aigner supra. Accordingly,
for the reasons set forth above, we reverse the Examiner’s rejection of
claims 61-64.
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CONCLUSION
The Examiner has not provided sufficient evidence and technical
reasoning to show that the combination of Boddie and Aigner, or the
combination of Boddie, Aigner and Sterman, teach a collection conduit seal
that occludes a downstream channel.

DECISION
The rejection of claims 1-13 and 48-64 is reversed.

REVERSED

MP