Ex Parte Teoh

Board of Patent Appeals and Interferences

Aug 27, 2008

10185671 (B.P.A.I. Aug. 27, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte TEOH CLIFFORD
__________

Appeal 2008-3042
Application 10/185,671
Technology Center 3700
__________

Decided: August 27, 2008
__________

Before LORA M. GREEN, RICHARD M. LEBOVITZ, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 89-111 and 143-148. We have
jurisdiction under 35 U.S.C. § 6(b).

Appeal 2008-3042
Application 10/185,671

STATEMENT OF THE CASE
The claims are directed to a vaso-occlusive device and a catheter
assembly for occluding a body cavity. Claims 89 and 101 are the
independent claims on appeal, and read as follows:
89. A vaso-occlusive device, comprising:
a primary coil having a proximal end, a distal end, and a lumen, the
primary coil comprising windings;
a stretch-resisting member extending through at least a portion of the
coil lumen and being coupled to the primary coil; and
an anchor assembly fixedly coupled with the primary coil, the anchor
assembly comprising an anchor coil having windings inter-wound between
the primary coil windings, wherein the primary coil and anchor coil have
approximately the same diameter.

101. A catheter assembly for occluding a body cavity comprising:
a delivery device having a distal end; and
a vaso-occlusive device associated with the distal end of the delivery
device, the vaso-occlusive device comprising:
a primary coil having a proximal end, a distal end, and a lumen, the
primary coil comprising windings;
a stretch-resisting member extending through at least a portion of the
coil lumen and being coupled to the primary coil; and
an anchor assembly fixedly coupled with the primary coil, the anchor
assembly comprising an anchor coil having windings inter-wound between
the primary coil windings, wherein the primary coil and anchor coil have
approximately the same diameter.

The Examiner relies on the following references:
Bashiri U.S. 6,165,178 Dec. 26, 2000
Ken et al. U.S. 6,193,728 B1 Feb. 27, 2001
Klint U.S. 2001/0044633 A1 Nov. 22, 2001

We reverse.

2
Appeal 2008-3042
Application 10/185,671

ISSUE (Anticipation)
The Examiner contends that claims 89-93, 96-111, 143, and 144 are
anticipated by Bashiri (Ans. 3). The Examiner further contends that as the
anchor coil of Bashiri is “within” the outer primary coil, and both are
wound, “one could have wound both simultaneously (just merely one above
the other) thereby interwinding them forming a lumen in the center.” (Ans.
4)
Appellant contends that Bashiri does not teach a vaso-occlusive
device wherein the anchor coil has “windings inter-wound between the
primary coil windings” (App. Br. 5) as required by the claims. Appellant
contends further that the Examiner has misinterpreted the term “inter-
wound.” (Id.)
Thus, the issue on appeal is: What is the proper interpretation of
“inter-wound” as used in the appealed claims?

FINDINGS OF FACT
FF1. “Vaso-occlusion devices are surgical implements or implants that are
placed within the vasculature of the human body, typically via a catheter, to
block the flow of blood through a vessel or an aneurysm stemming from the
vessel via formation of the embolus. One widely used vaso-occlusive device
is a helical wire coil having windings that may be dimensioned to engage the
walls of an aneurysm.” (Spec. 1.)
FF2. As to the claimed device, the Specification teaches, referring to
Figures 4A-4D, that the proximal end of the primary coil has an open pitch,
which allows windings from the anchor coil to be incorporated into the
3
Appeal 2008-3042
Application 10/185,671

space between the consecutive windings of the open coil (Spec. 22-23). The
Specification further teaches that:
[T]he anchor coil 232 . . . is inserted into the proximal end 204
of the primary coli 202 . . . by twisting the distal end 240 of the
anchor coil 232 into the lumen 205 of the primary coil 202,
such that the windings 216 from the anchor coil 232 are situated
in the space 214 between adjacent primary coil windings 212.

(Id. at 24.)
FF3. Claims 89-93, 96-11, 143, and 144 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Bashiri (Ans. 3).
FF4. Bashiri is cited for teaching a vaso-occlusive device (Ans. 3). The
Examiner specifically relies on Figure 3, finding that “the winding of each
anchor coil is located in-between adjacent windings of the primary coil.
Plus, initially, the first two windings of the anchor coil are located in-
between the first primary coil winding.” (Ans. 4.)
FF5. The Examiner finds further:
In regard to claims 89 and 101, the coils are interpreted
as reading on interwound. This is for several reasons.
Interwind according to Dictionary.com states that interwind
means to “wind together” or “intertwine.”
To wind often means to wrap about another object or to
generally move in a curving/twisting/circular motion. Both the
anchor and primary coils clearly “wind.” Therefore, it is more
of whether they are “inter”-wound. The prefix inter- means to
be between, among, in the midst of, or within. Since the anchor
coil is “within” the outer primary coil, and both are wound, one
could have wound both simultaneously (just merely one above
the other) thereby interwinding them forming a lumen in the
center. This is further supported by considering twine and
intertwine. Twine can mean to “encircle or coil about” and
intertwine can generally mean to “twine together.” So if both
4
Appeal 2008-3042
Application 10/185,671

the anchor and primary coils “encircle or coil about” together,
they are intertwined.

(Ans. 4.)
FF6. Figure 3 of Bashiri, relied upon by the Examiner, is reproduced
below:

Figure 3 shows a cross-section of a variation of the implant of Bashiri (col.
5, ll. 56-57). The implant 120 is a helically wound coil having a stretch
resistant member 134 through the center lumen, wherein the stretch resistant
member is attached to an interior anchor coil 136 having a distal hook 138
(Bashiri col. 5, l. 56-col. 6, l. 6).
FF7. Thus, we find that the anchor coil of Bashiri is completely within the
primary coil of the implant of Bashiri.

PRINCIPLES OF LAW
During prosecution before the Office, claims are to be given their
broadest reasonable interpretation consistent with the Specification as it
would be interpreted by one of ordinary skill in the art. In re American
Academy of Science Tech Center, 367 F.3d 1359, 1364 (Fed. Cir. 2004).
5
Appeal 2008-3042
Application 10/185,671

While it is true that limitations may not be imported into the claims
from the Specification, it is equally true that claim language must not be
read in isolation but, rather, must be interpreted in light of the disclosure in
the Specification. The Specification “is always highly relevant to the claim
construction analysis. Usually, it is dispositive; it is the single best guide to
the meaning of a disputed term.” See, e.g., Phillips v. AWH Corp., 415 F.3d
1303, 1315 (Fed. Cir. 2005) (en banc).

ANALYSIS
Claims 89 and 101, the independent claims on appeal, each require
that “the anchor assembly comprising an anchor coil having windings inter-
wound between the primary coil windings.” Based on the teachings of the
Specification (FF2-3), we interpret that phrase as requiring that the windings
of the anchor coil are between the windings of the primary coil, such that the
diameter of the winding of the anchor coil is approximately the same as the
diameter as the winding of the primary coil. This interpretation is also
consistent with the ordinary meaning of “interwound” to mean “intertwine”
(Ans. 4). That interpretation excludes the implant of Bashiri, wherein the
anchor coil of Bashiri is completely within the primary coil of the implant of
Bashiri (FF7). The Examiner has presented no evidence to suggest that a
reasonable interpretation of “interwound” would encompass the situation
where one coil is entirely within another coil, rather than requiring some
degree of “intertwining” of the coils. We thus reverse the rejection of claims
89-93. 96-11, 143, and 144 under 35 U.S.C. § 102(b) as being anticipated by
Bashiri.
6
Appeal 2008-3042
Application 10/185,671

Claims 94 and 95 stand rejected under 35 U.S.C. § 103(a) as being
obvious over the combination of Bashiri and Ken. As Ken is relied upon for
teaching that a stretch resistant member is attached to the distal end of the
primary coil, it fails to remedy the deficiencies of Bashiri, and the rejection
is reversed.

CONCLUSION
The rejection of claims 89-93, 96-11, 143, and 144 under 35 U.S.C.
§ 102(b) as being anticipated by Bashiri.
Claims 94 and 95 stand rejected under 35 U.S.C. § 103(a) as being
obvious over the combination of Bashiri and Ken (Ans. 5). As Ken is relied
upon for teaching that a stretch resistant member is attached to the distal end
of the primary coil, it fails to remedy the deficiencies of Bashiri, and the
rejection is reversed.
Claims 145 and 146 stand rejected under 35 U.S.C. § 103(a) as being
obvious over the combination of Bashiri and Klint (Ans. 5-6). Klint is relied
upon for teaching multi-filament coils (Ans. 8), and thus fails to remedy the
deficiencies of Bashiri. This rejection is also reversed.
Finally, claims 147 and 148 stand rejected under 35 U.S.C. § 103(a)
as being obvious over Bashiri (Ans. 6). This rejection suffers from the same
deficiencies as the anticipation rejection over Bashiri, and we therefore
reverse this rejection as well.

REVERSED

7
Appeal 2008-3042
Application 10/185,671

lp

VISTA IP LAW GROUP LLP
12930 SARATOGA AVENUE
SUITE D-2
SARATOGA, CA 95070

8