Michael P. Marks et al.

Patent Trials and Appeals Board

Aug 25, 2020

2019002767 (P.T.A.B. Aug. 25, 2020)

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.
15/190,047 06/22/2016 Michael P. Marks LIKMA.006P1D1 5819
20995 7590 08/25/2020
KNOBBE MARTENS OLSON & BEAR LLP
2040 MAIN STREET
FOURTEENTH FLOOR
IRVINE, CA 92614
EXAMINER
DANG, ANH TIEU
ART UNIT PAPER NUMBER
3771
NOTIFICATION DATE DELIVERY MODE
08/25/2020 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):
efiling@knobbe.com
jayna.cartee@knobbe.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MICHAEL P. MARKS and LIKE QUE

Appeal 2019-002767
Application 15/190,047
Technology Center 3700
____________

Before KENNETH G. SCHOPFER, BRADLEY B. BAYAT, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

SCHOPFER, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–16. We have jurisdiction under
35 U.S.C. § 6(b). A hearing was held on July 30, 2020.
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as ThrombX
Medical, Inc. Appeal Br. 3.
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BACKGROUND
The Specification discloses that the “disclosure is generally related to
a device used in a body lumen and a method of using the same.” Spec. 1.
More specifically, the Specification describes “a method of removing at least
part of an occlusion from a first location in a body lumen.” Id. at 3.
ILLUSTRATIVE CLAIM
Claim 1 is the only independent claim on appeal and recites:
1. A method of removing an occlusion present in a first
position of a blood vessel comprising:
introducing a device comprising a central wire, a pusher
tube, a distal structure, and a proximal structure into the blood
vessel, said distal structure being closed at a proximal end
thereof;
locating the distal structure of the device at a position of
the occlusion in the blood vessel such that the proximal end of
the distal structure is distal to the proximal end of the occlusion
and proximal to the distal end of the occlusion, the distal
structure comprising an angled lateral side and a parallel lateral
side distal to the angled lateral side;
expanding the distal structure at said position, so as to
engage the occlusion with the parallel lateral side of the distal
structure and a wall of the blood vessel substantially parallel to
the parallel lateral side;
grabbing the occlusion between the proximal structure and
the distal structure by adjusting the distance between the
proximal and distal structures; and
removing the occlusion by moving the device while
holding the occlusion in both of the following ways:
(a) engaging the occlusion between the parallel
lateral side of the distal structure and the wall of the blood
vessel, and
(b) grabbing the occlusion between the proximal
structure and the distal structure,
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so as to remove the occlusion from the first position;
wherein, while said removing the occlusion, the proximal
end of the distal structure is proximal to a distal end of the
occlusion.
Appeal Br. 21.
REJECTIONS
1. The Examiner rejects claims 1–6 and 8–16 under 35 U.S.C. § 103(a) as
unpatentable over Martin2 in view of Palmer.3
2. The Examiner rejects claim 7 under 35 U.S.C. § 103(a) as unpatentable
over Martin in view of Palmer and Bates.4
DISCUSSION
As discussed below, we are persuaded of error by Appellant’s
argument that the Examiner has not articulated an adequate reason to support
the combination proposed. See Appeal Br. 18–19.
With respect to claim 1, the Examiner finds that Martin discloses a
method of removing an occlusion including “removing the occlusion by
moving the device while holding the occlusion” by grabbing it between
distal and proximal structures. Final Act. 6–7. The Examiner acknowledges
that Martin does not disclose a distal structure with a closed proximal end
such that the distal structure would also engage the occlusion between the
lateral side of the distal structure and the wall of the blood vessel during the
removal step. Id. at 7. However, the Examiner finds that Palmer teaches an
emboli extraction structure with a closed proximal end that is used to extract

2 Martin et al., US 2009/0299393 A1, pub. Dec. 3, 2009.
3 Palmer et al., US 6,458,139 B1, iss. Oct. 1, 2002.
4 Bates, US 6,096,053, iss. Aug. 1, 2000.
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an occlusion by compressing it against the vessel wall. Id. The Examiner
determines that it would have been obvious to use a distal structure, as
taught by Palmer, in Martin’s device because it would constitute only a
simple substitution of art-recognized equivalents that involves only routine
skill in the art. Id. at 7. The Examiner also determines that “it would have
been within the level of one with ordinary skill in the art at the time of the
invention to still grab the occlusion between the modified distal structure
and the proximal structure of the method of Martin in view of Palmer.” Id.
at 2. Still further, the Examiner indicates that the use of an extraction tool as
disclosed by Palmer would result in “improved blood flow through the distal
end of the embolic capturing device.” Ans. 6.
The key to supporting a conclusion of obviousness under 35 U.S.C.
§ 103 is the clear articulation of a reason why the claimed invention would
have been obvious. The Court in KSR International Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007) indicated that the analysis supporting a rejection
under 35 U.S.C. § 103 should be made explicit. The Federal Circuit has
stated that “rejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with
approval in KSR, 550 U.S. at 418.
Here, we determine that none of the proposed reasons provided by the
Examiner amount to a sufficient articulated reason with rational
underpinning to support the conclusion that the claimed method would have
been obvious. Regarding the Examiner’s reliance on equivalents, we agree
with Appellant that the Examiner has not established adequately that the
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elements to be substituted are equivalents. Although Palmer’s extractor
structure 90 and Martin’s proximal and distal structures may each ultimately
act to remove an occlusion, the Examiner does not persuade us that these are
art-recognized equivalents, at least because they operate in different ways.
See Appeal Br. 10. As evidence that these are art recognized equivalents,
the Examiner notes only that Palmer discloses the structure depicted in
Figure 8, which is relied upon in the rejection, and a different extractor
structure 80 in Figure 7, which the Examiner finds is similar to Martin’s
structure. Final Act. 3. Yet, the mere similarity in results between these two
devices in Palmer does not explain adequately how the art recognizes the
equivalence between Martin’s distal structure and Palmer’s extractor
structure 90.
Rather, we find that the art of record provides evidence that these are
not equivalent structures based on their different modes of operation. Martin
discloses a method of extraction in which an occlusion is encapsulated by
proximal and distal structures in order to “overcome the friction forces
acting on the obstruction” and the occlusion is removed “without losing or
fractionating the obstruction.” See Martin ¶¶ 23, 114. In contrast, Palmer
discloses “a hollow knitted or mesh extractor 90” that is designed “to trap
undesirable material in a blood vessel or compress the same against the
vessel wall.” Palmer col. 8, l. 55–col. 9, l. 2. Thus, Palmer contemplates
pressing the occlusion against a vessel wall in order to extract it, which
undoubtedly provides an increase in the friction forces acting on the
obstruction. Given this difference, we disagree with the Examiner that one
of ordinary skill in the art would have recognized these as equivalent
structures.
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The Examiner additionally concludes that “it would have been within
the level of one with ordinary skill in the art at the time of the invention to
still grab the occlusion between the modified distal structure and the
proximal structure of the method of Martin in view of Palmer.” Id. at 2.
Yet, this conclusion does not provide an articulated reason as to why a
person of ordinary skill in the art would have made the substitution
proposed.
Finally, the Examiner also states that the rejection “relies on the
improved blood flow through the distal end of the embolic capturing device
in Figure 8 of Palmer,” in addition to the reasons provided above. See Ans.
6. The Examiner does not explain adequately how this feature of Palmer
would have led to a modification of Martin’s device. For example, the
Examiner does not explain why improved blood flow would have been
desirable in using Martin’s device and the Examiner does not provide any
evidence or explanation showing that the proposed substitution would have
actually resulted in improved blood flow over the distal structure disclosed
by Martin.
Based on the foregoing, we determine that the Examiner has not
provided a sufficient reason with rational underpinning to support the legal
conclusion of obviousness. Accordingly, we do not sustain the rejection of
claim 1. With respect to the remaining claims on appeal, the Examiner relies
on the same reasoning for the combination of Martin and Palmer and does
not provide additional findings or reasoning that cures the deficiency in the
rejection of claim 1. Thus, we also do not sustain the rejections of
dependent claims 2–16.

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CONCLUSION
We REVERSE the rejections of claims 1–16.
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–6, 8–16 103(a) Martin, Palmer 1–6, 8–
16
7 103(a) Martin, Palmer,
Bates
7
Overall
Outcome
1–16

REVERSED