Covidien LP

Patent Trials and Appeals Board

Dec 1, 2021

2021002352 (P.T.A.B. Dec. 1, 2021)

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.
15/980,465 05/15/2018 Charles Senness H-KN-02959.USC4 5363
77218 7590 12/01/2021
Medtronic Vascular - APV Division
c/o IP Legal Department
3576 Unocal Place
Santa Rosa, CA 95403
EXAMINER
TON, MARTIN TRUYEN
ART UNIT PAPER NUMBER
3771
NOTIFICATION DATE DELIVERY MODE
12/01/2021 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):
rs.patents.five@medtronic.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHARLES SENNESS, JOHN WHITE, and
WANDA DENT
Appeal 2021-002352
Application 15/980,465
Technology Center 3700
Before JOHN C. KERINS, CHARLES N. GREENHUT, and
BRANDON J. WARNER, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–6, 10–16, and 19–21. See Final
Act. 1; Ans. 7.2 We have jurisdiction under 35 U.S.C. § 6(b).

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Covidien LP. Appeal
Br. 3.
2 The Examiner corrected the status of claims 7–9, 17, and 18 in the Answer
to indicate these claims were not rejected and “should instead be objected to
as being dependent upon a rejected base claim, but would be allowable if
rewritten in independent form.” Ans. 7; Appeal Br 21.
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Application 15/980,465

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We AFFIRM IN PART.
CLAIMED SUBJECT MATTER
The claims are directed to a stent delivery system. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A medical device delivery system comprising:
a handle defining a channel;
an elongate catheter extending from the handle, the
elongate catheter comprising:
an inner member; and
an outer member mounted about the inner member
and configured for longitudinal movement, relative to the inner
member, from an extended position to a retracted position;
a medical device mounted about the inner member;
a thumbwheel mounted to the handle, the thumbwheel
being configured for rotational movement to cause
corresponding movement of the outer member from the extended
position to the retracted position; and
a clip connected to the outer member, the clip comprising
an anti-rotation wing configured to be received within the
channel, traverse the channel in response to rotation of the
thumbwheel, and prevent rotational movement of the outer
member relative to the handle.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Truckai US 5,397,304 Mar. 14, 1995
Wu US 2005/0060016 A1 Mar. 17, 2005
Matsuoka US 2006/0259124 A1 Nov. 16, 2006
Shumer US 2009/0210046 A1 Aug. 20, 2009
Melsheimer US 2013/0013049 A1 Jan. 10, 2013

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REJECTIONS
Claims 1–4, 6, 10, 12–14, 16, and 19–213 are rejected under 35 U.S.C.
§ 103 as being unpatentable over Shumer, Wu, and Melsheimer. Final
Act. 4.
Claims 5 and 15 are rejected under 35 U.S.C. § 103 as being
unpatentable over Shumer, Wu, Melsheimer, and Matsuoka. Final Act. 10.
Claim 11 is rejected under 35 U.S.C. § 103 as being unpatentable over
Shumer, Wu, Melsheimer, and Truckai. Final Act. 11.
OPINION
Claims 1–6, 10, 12–16, 19, and 20
Appellant argues claims 1, 3, 4, 6, 10, 12, 14, 16, 19, and 20 as a
group for which claim 1 is representative under 37 C.F.R. § 41.37(c)(1)(iv).
Appeal Br. 7–14. Appellant’s arguments concerning claims 2 and 13 are
essentially an extension of those advanced regarding claim 1. Separate
arguments are not set forth regarding claims 5 and 15.
The Examiner found Shumer to disclose the basic delivery system of
claim 1. Final Act. 4–5. The Examiner cited Wu regarding aspects of the
recited catheter (Final Act. 6) and Appellant does not raise any issues with
respect to the Examiner’s reliance on Wu. The Examiner cited Melsheimer
for teaching “anti-rotation wing[s]” “received within [a] channel” to
“prevent rotational movement of the [catheter] outer member relative to the
handle.” Final Act. 6 (citing Melsheimer Fig. 34 and para. 74). The
Examiner proposed to incorporate Melsheimer’s anti-rotation lateral

3 Claim 21 appears to have been inadvertently omitted from the Examiner’s
statement of the claims rejected. See Final Act. 9–10.
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projections 160 into Shumer “to provide lateral stability to prevent the outer
member from rotating in the housing of the handle and to ensure the outer
member moves smoothly within the handle.” Final Act. 6.
Appellant does not argue that lateral stability or preventing rotation,
per se, would not provide a suitable motivation for the Examiner’s proposed
modification. Rather, Appellant first argues that Shumer’s sheath 78 would
already have been prohibited from rotating, therefore there would be no
reason to incorporate Melsheimer’s anti-rotation projections because they
would be redundant. Appeal Br. 8–11. Appellant bases this argument on the
fact that Shumer’s sheath 78 is attached to Shumer’s shuttle 36 (para. 30, 33)
which is, in turn, attached to Shumer’s trigger sub-assembly 32 (para. 39),
which includes, or is connected to, a generally rectangular trigger slider 50
sized and shaped to move longitudinally along a trigger retainer assembly 44
that is also generally rectangular in shape and has a central cavity 46 (paras.
28–29).
Although not expressly discussed by Shumer, it is reasonable based
on Shumer’s description and figures for Appellant to conclude that the
generally rectangular trigger slider 50 cannot rotate within the generally
rectangular trigger retainer assembly cavity 44, 46. Appeal Br. 8–9.
However, Appellant’s reasoning does not hold true when considering the
connection between the Shumer’s shuttle 36 and Shumer’s trigger sub-
assembly 32. The mechanism for effectuating motion of the Shumer’s
shuttle 36 via the trigger is described in paragraph 39 of Shumer:
Here, as the trigger is moved proximally, the trigger slider 50
travels proximally along the trigger retainer assembly 44 (See
FIGS. 4 and 5). By way of a fixed connection, the trigger slider
50 brings the pulley proximally thereby reconfiguring the pattern
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through which the belt 56 must travel from its connection to the
shuttle assembly 36. Since this path reconfiguration is essentially
an attempt to lengthen an otherwise fixed length belt 56, the
shuttle assembly 32 is caused to move proximally.
Thus, as Appellant seems to recognize (Appeal Br. 7, 9; Reply Br. 6),
Shumer’s belt 564 is what serves to connect Shumer’s trigger sub-assembly
32 to Shumer’s shuttle 36. Although there may be some point at which a belt
may begin to resist twisting and there may even be some resistance to initial
twisting, belts would generally not be considered by a skilled artisan to
amount to a rigid connection and would not generally be regarded by a
skilled artisan as inhibiting their own twisting. Thus we cannot agree with
Appellant that the skilled artisan would regard Shumer’s arrangement,
including, among other things, the trigger sub-assembly 32 coupled to the
shuttle 36 via belt 56, as inhibiting rotation of Shumer’s shuttle, and
therefore Shumer’s sheath 78, to any meaningful degree. We recognize that
the specific makeup and nature of Shumer’s belt is not disclosed. To the
extent Shumer’s arrangement could possibly be regarded as potentially
limiting rotation of Shumer’s shuttle 36 and sheath 78, like the Examiner we
see no reason why one skilled in the art would regard it as doing so nearly as
well as Melsheimer’s projections particularly designed for that specific
purpose. Final Act. 3.
Acknowledging the differences between Melsheimer’s trigger slider
and Shumer’s, as Appellant urges we must (Reply Br. 5–6), we still agree
with the Examiner that Melsheimer’s use of both slider 162 and anti-rotation
projections 160 (Fig. 34) weighs in favor of the Examiner’s position that

4 Undisputedly regarded by the Examiner as falling within the scope of the
recited term “cable” for purposes of claims 10–12.
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these are not, as Appellant would have us believe, mutually exclusive
arrangements. Ans. 3–4. Melsheimer employs a deployment knob 14
cooperating with a slot 16 in a manner similar to the trigger slider 50 and
trigger retainer 44 of Shumer. Melsheimer para. 57. Although we recognize
the arrangements are not identical, Appellant has not apprised us as to why
they differ in any meaningful way with regard to the rather limited reason
for which the Examiner mentions this—to demonstrate sliders with triggers
or knobs that do not appear to be subject to rotation may, contrary to
Appellant’s assertion, still benefit from the inclusion of structure for the
specific purpose of preventing rotation of a shuttle and attached components
of a catheter. This point is not critical to the Examiner’s rejection, but the
Examiner has provided some evidence regarding this point and Appellant
has provided only unsupported attorney argument. Thus, we agree that the
evidence here weighs in favor of the Examiner’s position.
Appellant next argues that, even if one desired to incorporate
Melsheimer’s lateral projections 162 into Shumer, such an incorporation
would be impossible because there is no space for them due to the presence
of Shumer’s belt 56 and trigger retainer 44. Appeal Br. 11–13; Reply Br 7–
8. Appellant expounds on this point further with respect to claim 2, which
requires additional anti-rotation structure: “diametrically opposed anti-
rotation wings” and “a pair of channels.” Appeal Br. 15. This is the only
point argued with respect to claim 2 (representative of claims 2 and 13).
The Examiner’s premise on this point is correct, in that one need not
use the precise locations taught in Melsheimer (Ans. 4–5; Final Act. 3–4)
because “[i]t is well-established that a determination of obviousness based
on teachings from multiple references does not require an actual, physical
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substitution of elements.” In re Mouttet, 686 F. 3d 1322, 1332 (Fed. Cir.
2012). As the Examiner points out, Melsheimer’s projections could be
incorporated into Shumer’s shuttle so as to cooperate with rails or grooves in
Shumer’s already existing cavity 46 or could be disposed at essentially any
other circumferential positions about Shumer’s shuttle without detracting
from their capacity to prevent rotation. Neither claim 1 nor claim 2 contains
any language precluding such an arrangement.
For the foregoing reasons we affirm the Examiner’s rejection of
claims 1 and 2, and the rejections of those claims argued therewith.

Claim 21
In rejecting claim 21, as with claim 1 from which claim 21 depends,
the Examiner relied upon the embodiment depicted in Figure 34 of
Melsheimer. In particular, the Examiner has consistently referred to
Melsheimer’s slide’s main body 162 as contributing teachings relevant to the
recited “clip,” which the Examiner regards as shuttle 36 in Shumer. Final
Act. 4–5. The Examiner asserts that Melsheimer’s teaching to put the anti-
rotation lateral projections 160 along the entire length of the main body 162
would suggest doing the same for Shumer’s shuttle 36. Final Act. 9–10.
Appellant does not dispute that such a modification would yield an “anti-
rotation wing [that] is positioned at a proximal end of the clip” as required of
claim 21 because, according to the Examiner, the wing would span the entire
clip and claim 21 does not preclude the anti-rotation wing from being
positioned at other portions of the clip in addition to the proximal end so
long as it is also positioned at the proximal end. Ans. 6.
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The sole point of contention raised by Appellant with regard to claim
21 is that “Melsheimer, however, does not describe anti-rotation wing
extending along the entire length of a clip.” Appeal Br. 17–18; Reply Br. 8–
9. In making this assertion, Appellant reproduces and discusses the
embodiment of Melsheimer depicted in Figure 26. Id. This embodiment is
distinct from the one cited by the Examiner. Melsheimer para. 66. Although
a version of slide 38 is depicted, Figure 26 in Melsheimer does not depict the
main body 162 of the slide or the anti-rotation projections 160 of the cited
Figure 34 embodiment. It is recognized that there are some similarities
between the embodiments, in that body 104 may be similar to main body
162, and, although not expressly discussed, the slide 38 of the Figure 34
embodiment might also include a distal threaded portion 102 for retaining
flared sheath end 98 in nut 100 (Melsheimer Fig. 25). In addition, indicator
tab 114 appears to have some similarities to the anti-rotation projections 160
but those are distinct structures so it is not clear how Appellant is deducing
anything about anti-rotation projections 160 based on Figure 26 of
Melsheimer.
Appellant does not expressly argue, but as best as we can understand
it, Appellant’s position appears to presume that, in order for the Examiner’s
assertion regarding Melsheimer’s teachings to be valid, anti-rotation
projections 160 must extend over the entire length of slide 38 as opposed to
over the entire length of main body 162. Appellant’s argument fails, firstly,
because it does not address the Examiner’s rejection. Secondly, as discussed
above, “a determination of obviousness based on teachings from multiple
references does not require an actual, physical substitution of elements.” In
re Mouttet, 686 F. 3d at 1332. The relevant inquiry is whether in light of
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Melsheimer’s teaching of the projection positions it would have been
obvious to the skilled artisan to place anti-rotation elements along the entire
length of, and therefore at least at the proximal end of, Shumer’s shuttle.
This issue is not addressed by Appellant and, as noted above, Appellant does
not dispute that the modification proposed by the Examiner would yield the
subject matter of claim 21. Appellant’s arguments ultimately fail here for not
addressing the grounds of rejection set forth by the Examiner. 37
C.F.R. § 41.37(c)(i)(iv).

Claim 11
It is well-settled that “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
Int’l. Co. v. Teleflex, 550 U.S. 398, 418 (2007). With regard to claim 11,
according to the Examiner, it would have been obvious “to have the pull
cable of the Shumer reference include the ball segment of the [Truckai]
reference and to have the ball segment engage with the outer clip to retain
the intermediate section of the pull cable within the opening to provide a
strong pivotal connection between the pull cable and the outer clip.” Final
Act 11 (citing Truckai col. 6, ll. 51–57). According to the Examiner, this
modification “would additionally impart the advantage of being pivotal in
nature.” Ans. 7.
Appellant correctly argues “the Examiner has not shown that a person
of ordinary skill in the art would have understood there to have been a
reason to provide a pivotal connection between Shumer’s belt 56 (the ‘pull
wire’ according to the Examiner) and shuttle assembly 36 (a ‘clip’ according
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to the Examiner)” (Appeal Br. 20 (footnotes and emphasis omitted)) and
“[t]he Examiner, however, failed to establish that the applied art indicates a
pivotal attachment mechanism is an advantage” (Reply Br. 10 (emphasis
omitted)). For the reasons articulated by Appellant we do not sustain the
Examiner’s rejection of claim 11.
CONCLUSION
The Examiner’s rejection of claim 11 is REVERSED.
The Examiner’s other rejections are AFFIRMED.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–4, 6, 10,
12–14, 16,
19–21
103 Shumer, Wu,
Melsheimer
1–4, 6, 10,
12–14, 16,
19–21

5, 15 103 Shumer, Wu,
Melsheimer,
Matsuoka
5, 15
11 103 Shumer, Wu,
Melsheimer,
Truckai
11
Overall
Outcome
1–6, 10, 12–
16, 19–21
11
RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED IN PART