Ex Parte Wong

Patent Trial and Appeal Board

Jun 25, 2015

12393039 (P.T.A.B. Jun. 25, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
12/393,039 02/26/2009 Albert Wong Wong 9994
7590 06/25/2015
Albert Wong
28 Ely Street
West Haven, CT 06516
EXAMINER
PREBILIC, PAUL B
ART UNIT PAPER NUMBER
3774
MAIL DATE DELIVERY MODE
06/25/2015 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 PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ALBERT WONG
____________________

Appeal 2012-012140
Application 12/393,039
Technology Center 3700
____________________

Before JENNIFER D. BAHR, JILL D. HILL, and
BRANDON J. WARNER, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Albert Wong (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claims 1–3. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

Appeal 2012-012140
Application 12/393,039

2
THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A method for surgically treating an occluded intraluminal
tissue, comprising:
(a) positioning a retractable intraluminal medical device at an
appropriate intraluminal tissue location, said intraluminal
medical device comprising a one-piece sheath which defines a
generally tubular body;
said sheath having a central longitudinal axis;
said sheath having at least one stable initial collapsed
state and at least one stable deployed expanded state;
said sheath in at least one stable initial collapsed state
having a plurality of portions having an equal radius of
curvature which project inward into said central longitudinal
axis;
an attachable, re-attachable, and detachable retractor
comprised of a plurality of rigid, connected prongs, forks, or
stems, or combinations of said prongs, forks, or stems;
said retractor having a plurality of rigid attachable
segments;
said retractor being mechanically attachable to and
mechanically re-attachable to said sheath along a plurality of
longitudinal indentations along said sheath;
said retractor being mechanically detachable from said
sheath;
said retractor acting on said sheath whereby movement of
said attachable segments of said retractor against said sheath in
a stable initial collapsed state causes said sheath to elastically or
semi-elastically expand radially from said collapsed state to a
stable deployed expanded state;
said retractor acting on said sheath whereby movement of
said attachable segments of said retractor against said sheath in
a stable deployed expanded state causes said sheath to collapse
radially from said stable deployed expanded state to a collapsed
state;
Appeal 2012-012140
Application 12/393,039

3
(b) elastically or semi-elastically radially expanding said sheath
from a stable initial collapsed state to a stable deployed
expanded state using said retractor;
(c) mechanically radially collapsing said sheath from said stable
deployed expanded state to a collapsed state using said
retractor.

REJECTIONS
I. Claims 1–3 stand rejected under 35 U.S.C. § 112, first
paragraph, “with regard to the provisional application
60/710,825, as based on a disclosure which is not enabling.”
Ans. 5; Final Act. 5.
II. Claims 1–3 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Dickson (US 2004/0034405 A1; pub. Feb.
19, 2004) and Sherburne (US 2007/0027520 A1; pub. Feb. 1,
2007).

OPINION
Rejection I—35 U.S.C. § 112, first paragraph
We do not sustain this rejection because the Examiner does not set
forth any coherent basis for rejecting claims 1–3 of the present application
under 35 U.S.C. § 112, first paragraph. See Reply Br. 2 (asserting that the
pending claims have not been rejected under 35 U.S.C. § 112 with regard to
the pending non-provisional application).
The Examiner captions the rejection as “with regard to the provisional
application 60/710,825, as based on a disclosure which is not enabling.”
Ans. 5; Final Act. 5. The only discussion in the rejection pertaining to
enablement reads as follows:
Appeal 2012-012140
Application 12/393,039

4
A clear set of figures and a disclosure of language which lays
out the essential elements of the claims - the grooves, the
retractor, and other support - critical or essential to the practice
of the invention, but not included in the claim(s), is not enabled
by the disclosure. See In re Mayhew, 527 F.2d 1229, 188
USPQ 356 (CCPA 1976).
Ans. 5; Final Act. 5.
This discussion is perplexing; it appears to suggest that grooves,
retractor, and other support, are essential to the practice of the invention, but
are not included in the claims. However, the Examiner does not explain the
basis for concluding that these elements are essential to the practice of the
invention. The Specification of the present application does not mention
either “grooves” or a “support,” much less characterize them as essential to
the practice of the invention. Appellant’s Specification does mention a
“retractor” numerous times, but claim 1, from which claims 2 and 3 depend,
recites a retractor.1 Appeal Br. 8–9, Claims App. Thus, even assuming that
the retractor is an essential element to the practice of the invention, it is not
apparent, and the Examiner does not explain, how this supports a conclusion
that the claims are based on a non-enabling disclosure.
When rejecting a claim for lack of enablement, the examiner bears the
initial burden of setting forth a reasonable explanation as to why the scope of
the claim is not adequately enabled by the description provided in the
specification. See In re Wright, 999 F.2d 1557, 1561–62 (Fed. Cir. 1993).
Insofar as the enablement requirement is concerned, the dispositive issue is
whether the applicant’s disclosure, considering the level of ordinary skill in

1 Further, although the claims do not recite “grooves,” claim 1 mentions
“indentations along said sheath.” Appeal Br. 8, Claims App. (emphasis
added).
Appeal 2012-012140
Application 12/393,039

5
the art as of the date of the appellant’s application, would have enabled a
person of such skill to make and use the appellant’s invention without undue
experimentation. In re Strahilevitz, 668 F.2d 1229, 1232 (CCPA 1982).
Although the provisional application, of which the present application
claims benefit, might not provide enabling disclosure for the subject matter
of claims 1–3, we are aware of no authority supporting a position that such a
deficiency in a provisional application would constitute a basis for a
rejection under 35 U.S.C. § 112, first paragraph, for lack of enablement.
The Examiner does not set forth any explanation as to why the scope of
claims 1–3 is not adequately enabled by the description provided in the
present application.
The Examiner remarks that
the brief “Operation” subsection of the provisional application
does not provide the appropriate level of support such that one
of ordinary skill in the art would recognize [A]ppellant had
possession of the claimed invention, particularly with respect to
the grooves. As such, [A]ppellant receives the benefit only of
the non-provisional application and not the provisional
application.
Ans. 5; Final Act. 5.
This discussion of “possession” of the claimed invention is germane
to the written description requirement of 35 U.S.C. § 112, first paragraph,
but not to the enablement requirement thereof, and, thus, provides no
support for the Examiner’s rejection based on lack of enablement. The
written description requirement found in the first paragraph of 35 U.S.C.
§ 112 is separate and distinct from the enablement requirement of that
provision. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed.
Cir. 2010) (en banc) (citing Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555,
Appeal 2012-012140
Application 12/393,039

6
1562–63 (Fed. Cir. 1991)). The purpose of the written description
requirement in 35 U.S.C. § 112, first paragraph, is to “‘clearly allow persons
of ordinary skill in the art to recognize that [the inventor] invented what is
claimed.’” Id. “[T]he test for sufficiency is whether the disclosure of the
application relied upon reasonably conveys to those skilled in the art that the
inventor had possession of the claimed subject matter as of the filing date.”
Id. Here, although the Examiner may be correct that the disclosure in the
provisional application fails to provide written description support for the
subject matter of claims 1–3, the consequence of such a deficiency in the
provisional application would not be a rejection under 35 U.S.C. § 112, first
paragraph, for lack of enablement; rather it would be that, as the Examiner
points out, the claims of the present application would be entitled to only the
filing date of the present application, not the filing date of the provisional
application.2
Rejection II—35 U.S.C. § 103(a)
The Examiner finds that Dickson discloses an axially expandable,
elastic implantable sheath that is capable of collapsing back on itself and that
is adapted to being positioned within a body lumen (i.e., a vascular vessel),
and a method of implanting the sheath via a catheter. Ans. 6–7; Final Act.
6–7. The Examiner further finds that the sheath has “‘folds’ or grooves 72
along its surface.” Ans. 6; Final Act. 6. However, the Examiner
acknowledges that Dickson fails to teach an attachable, re-attachable, and
detachable catheter “with attachment arms (prongs or forks) and attachable
segments being able to attach to a stent via grooves 72.” Ans. 7; Final Act.
7.

2 We need not reach that issue in this appeal.
Appeal 2012-012140
Application 12/393,039

7
The Examiner finds that Sherburne teaches such a catheter, and
determines it would have been obvious to implant or remove Dickson’s
device with the device of Sherburne “for at least to ‘draw stents into the
central lumen for removal from the body’ as well as navigating and
repositioning.” Ans. 7; Final Act. 7–8 (citing Sherburne ¶ 52).
Appellant concedes that Sherburne teaches an attachable retractor
capable of collapsing a stent, but stresses that Sherburne does not teach or
suggest that the retractor is capable of deploying a stent. Appeal Br. 5.
Appellant contends that it is not obvious how one would reverse Sherburne’s
intricate process of engaging and pulling a stent through a socket in a
balloon in order to deploy/expand a stent, rather than collapsing and
removing the stent. Appeal Br. 6. Appellant asserts that using Sherburne’s
device on a stent is likely to cause the stent to break, and argues that this
suggests that significant modifications would be required to adapt
Sherburne’s device to deliver and deploy a stent in vivo without breaking or
damaging it. Appeal Br. 6 (citing Sherburne ¶ 54).
In response, the Examiner asserts:
It is unclear why one of ordinary skill in the art would
come to this conclusion. Sherburne’s device teaches
expandable stents. It teaches a sleeve into which those stents
can be withdrawn by pulling the stents into the device. It stands
to reason that one of ordinary skill would recognize that the
device could be similarly utilized to do one of any of the
following: 1) push a stent outward, 2) pull a stent outward from
the opposite end, 3) clamp a stent and release it to deploy,
redeploy, or position the stent that had just been retracted.
Ans. 11–12.
The Examiner does not point to any evidence to support these
assertions, and it is not self-evident that this would be the case.
Appeal 2012-012140
Application 12/393,039

8
Consequently, the Examiner fails to establish a prima facie case of
obviousness of the subject matter of claim 1 or its dependent claims 2 and 3.
Accordingly, we do not sustain the rejection of claims 1–3 as unpatentable
over Dickson and Sherburne.
DECISION
The Examiner’s decision rejecting claims 1–3 under 35 U.S.C. § 112,
first paragraph, is reversed.
The Examiner’s decision rejecting claims 1–3 under 35 U.S.C.
§ 103(a) as unpatentable over Dickson and Sherburne is reversed.
REVERSED
hh