Ex Parte Teoh et alDownload PDFPatent Trial and Appeal BoardOct 14, 201410631928 (P.T.A.B. Oct. 14, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte CLIFFORD TEOH, JOSEPH C. EDER, MICHAEL P. WALLACE, STEPHEN C. PORTER, and DAVID C. BARRY __________ Appeal 2012-004689 Application 10/631,928 Technology Center 3700 __________ Before DEMETRA J. MILLS, JEFFREY N. FREDMAN, and ULRIKE W. JENKS, Administrative Patent Judges. FREDMAN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal1 under 35 U.S.C. § 134 involving claims to an assembly for treating an aneurysm. The Examiner rejected the claims as anticipated. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 Appellants identify the Real Party in Interest as Stryker Corporation and Stryker NV Operation Ltd. (see App. Br. 2). Appeal 2012-004689 Application 10/631,928 2 Statement of the Case Background “An aneurysm is a localized stretching or distension of an artery due to a weakening of the vessel wall” (Spec. 1:16–18). According to the Specification, “treatments include endovascular occlusion where the interior of the aneurysm is entered with a guidewire or a microcatheter. An occlusion is formed within the sac with an intention to preserve the parent artery” (Spec. 2:8–12). The Specification teaches that a “means for forming a mass in the aneurysm sac involves the placement of an expandable balloon or liner in the aneurysm” (Spec. 2:23–25). The Claims Claims 15, 16, 18, 19, and 21–23 are on appeal. Claim 15 is representative and reads as follows: 15. An assembly for treating an aneurysm, the aneurysm having a neck and a sac, comprising: a liner having a proximal portion and a distal portion, and defining an substantially spherical interior volume within the proximal and distal portions; wherein the distal portion has perforations sized to permeate embolics and is more permeable than the proximal portion, such that the distal portion preferentially permeates embolics from the substantially spherical interior volume into the aneurysm sac, and an elongated delivery member releasably connected to the liner. The issue The Examiner rejected claims 15, 16, 18, 19, and 21–23 under 35 U.S.C. § 102(e) as anticipated by Wallace2 (Ans. 4–13). 2 Wallace, M.P., US 6,454,780 B1, issued Sep. 24, 2002. Appeal 2012-004689 Application 10/631,928 3 The Examiner finds that Wallace discloses an assembly for treating an aneurysm (col. 2, lines 66-67, col. 3, lines 1-12), the aneurysm having a neck and a sac, comprising: a liner 64/66 having a proximal portion and a distal portion (see annotated below, fig. 7a), and defining an substantially spherical interior volume (it is noted that the aneurysm device 64 comprises a body that has a shape of a sphere which embolics can go through an opening in the proximal portion of the liner into the substantially spherical interior volume of the liner) within the proximal and distal portions; wherein the distal portion has perforations sized to permeate embolics and is more permeable than the proximal portion (it is noted that the distal portion has larger aperture which is inherently more permeable than the proximal portion which has smaller aperture), such that the distal portion preferentially permeates embolics from the substantially spherical interior volume into the aneurysm sac, and an elongated delivery member 16 releasably connected to the liner 64. (Ans. 4). The issue with respect to this rejection is: Does the evidence of record support the Examiner’s conclusion that Wallace teaches an aneurysm assembly with “a liner having a proximal portion and a distal portion, and defining an substantially spherical interior volume” as required by claim 15? Findings of Fact 1. Wallace teaches a “method of treating an aneurysm in a parent vessel having a lumen, the aneurysm having a neck and inner wall defining a cavity that is in communication with the lumen. The method includes a step of providing a collapsible neck bridge that incorporates an actuation mechanism and is detachably connected to a distal end of an elongated delivery member” (Wallace, col. 2, l. 67 to col. 3, l. 6). Appeal 2012-004689 Application 10/631,928 4 2. Figure 7A of Wallace is reproduced below: “FIG. 7A is a perspective side view of a collapsible aneurysm obstruction device” (Wallace, col. 4, ll. 1–2). 3. The Examiner identifies the upper portion in Figure 7A as “distal” and the lower portion including struts 66 as “proximal” (see Ans. 8). 4. Wallace teaches that: Device 64 includes radio-opaque bands or markers 22 and 24 . . . marker 22 illustratively serves as a connection point for a plurality of struts 68 that extend from a material base 66. . . . struts 68 are illustratively connecting tethers. In accordance with one embodiment, struts 68 are constructed of shape memory material. Illustratively, struts 68 are utilized rather than additional material 66 so as to eliminate some of the bulk of device 64. In accordance with one embodiment, a portion of each strut 68 is woven into material 66. Material cut-outs 70 are an optional element of the present invention and illustratively enable a further elimination of bulk from the treatment device 64. Material 68 could illustratively be constructed of any of a number of materials suitable to obstruct the neck portion of an aneurysm. In accordance with one embodiment, the material utilized is permeable to blood flow. (Wallace, col. 11, ll. 24–43). 5. The Specification teaches that “[s]ince the distal portion of struts 54 are not covered by liner material, the embolic material being Appeal 2012-004689 Application 10/631,928 5 delivered occupies substantially the entire portion of aneurysm sac 16” (Spec. 15, ll. 6-9) 6. The Specification teaches that “[d]evice 60 is similar to device 50 shown in FIGS. 3A and 3B, except that liner portion 52 extends to substantially cover struts 54” (Spec. 15, ll. 25–27). Principles of Law The Examiner bears the initial burden of establishing a prima facie case of anticipation. In re King, 801 F.2d 1324, 1326–27 (Fed. Cir. 1986). Anticipation under 35 U.S.C. § 102 requires that “each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999). Analysis Claim 15 requires “a liner having a proximal portion and a distal portion, and defining an substantially spherical interior volume within the proximal and distal portions.” In order for Wallace to anticipate claim 15, Wallace must teach not only the existence of a liner, but that the liner defines a “spherical interior volume”. There is no dispute that element 66 in Figure 7A of Wallace constitutes a liner which defines a hemispherical interior volume at a proximal portion of the device of Wallace (see FF 2). The Examiner contends that “Wallace which discloses a liner 64/66 having a proximal portion (see annoted [sic] fig. 7a) and a distal portion (see annoted [sic] fig. 7a). In this case, Wallace, fig. 7a looks and functions similar to claim 15 and applicant’s fig. 3b” (Ans. 5). Appellants contend that “no ‘liner’ is depicted in the distal portion of the device 64, nor is there any depicted liner having a proximal portion and a Appeal 2012-004689 Application 10/631,928 6 distal portion which defines a substantially spherical interior volume” (Reply Br. 3). We find that Appellants have the better position. There is no requirement that the claims cover every embodiment disclosed in the Specification, and the Examiner’s reliance on Figure 3b of the Specification is misplaced. Regarding Figure 3b, the Specification teaches that “[s]ince the distal portion of struts 54 are not covered by liner material, the embolic material being delivered occupies substantially the entire portion of aneurysm sac 16” (Spec. 15, ll. 6–9; FF 5). This is also consistent with the Specification, which explains regarding Figure 4, that “[d]evice 60 is similar to device 50 shown in FIGS. 3A and 3B, except that liner portion 52 extends to substantially cover struts 54” (Spec. 15, ll. 25–27; FF 6). Thus, the embodiment in Figure 3b lacks a liner at the distal end, and would not fall within the scope of claim 15. We agree with Appellants that the ordinary reading of Figure 7A of Wallace teaches a liner 66 connected to struts 68 (FF 3). These struts 68 are not themselves a liner, nor does the Specification use the term “liner” so broadly as to permit a claim interpretation where the struts 68 are understood as part of the liner 66 in Wallace. We, therefore, agree with Appellants that Wallace does not teach a liner which defines a “spherical interior volume” as required by claim 15. Conclusion of Law The evidence of record does not support the Examiner’s conclusion that Wallace teaches an aneurysm assembly with “a liner having a proximal portion and a distal portion, and defining an substantially spherical interior volume” as required by claim 15 Appeal 2012-004689 Application 10/631,928 7 SUMMARY In summary, we reverse the rejection of claims 15, 16, 18, 19, and 21– 23 under 35 U.S.C. § 102(e) as anticipated by Wallace. REVERSED lp Copy with citationCopy as parenthetical citation