Ex Parte Anderson et alDownload PDFPatent Trial and Appeal BoardApr 20, 201813953534 (P.T.A.B. Apr. 20, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/953,534 07/29/2013 11050 7590 04/24/2018 SEAGER, TUFTE & WICKHEM, LLP 100 South 5th Street Suite 600 Minneapolis, MN 55402 FIRST NAMED INVENTOR JAMES M. ANDERSON 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 1001.2884101 2266 EXAMINER FRERE, WILLIAM R ART UNIT PAPER NUMBER 3763 NOTIFICATION DATE DELIVERY MODE 04/24/2018 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): BSC.USPTO@stwiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JAMES M. ANDERSON, JOEL M. WASDYKE, and HUISUNWANG Appeal2017-005281 Application 13/953,534 1 Technology Center 3700 Before LINDA E. HORNER, LISA M. GUIJT, and JEFFREY A. STEPHENS, Administrative Patent Judges. HORNER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 1-9 under pre-AIA 35 U.S.C. § 103(a). Final Office Action (January 25, 2016) (hereinafter "Final Act."). We have jurisdiction under 35 U.S.C. § 6(b ). 1 Boston Scientific Scimed, Inc. ("Appellant") is the applicant as provided for under 37 C.F.R. § 1.46, and is identified as the real party in interest. Appeal Brief 3 (June 21, 2016) (hereinafter "Appeal Br."). Appeal2017-005281 Application 13/953,534 The claimed subject matter relates to a guide extension catheter. Minimally-invasive cardiac interventions, such as percutaneous transluminal coronary angioplasty, may make use of a guide catheter to assist the surgeon in positioning the treatment catheter at the intended target location adjacent the ostium of a coronary artery. Guide extension catheters are used to extend through and beyond a guide catheter to a position within a portion of the coronary artery to stabilize the positioning of the guide catheter and allow for improved access to the coronary artery. The claimed guide extension catheter has a distal sheath, a proximal shaft, and a coupling member for securing the distal sheath to the proximal shaft. For the reasons discussed below, we find that the Examiner has not demonstrated how the combination of prior art renders obvious the subject matter of claims 1-9. Accordingly, we REVERSE. CLAIMED SUBJECT MATTER Claim 1 is the sole independent claim on appeal and is reproduced below, with the relevant claim language shown in italics. 2 1. A guide extension catheter, comprising: a distal sheath having a proximal opening, a distal opening, and a central lumen extending therebetween; a proximal shaft having an outer diameter smaller than an outer diameter of the distal sheath, the proximal shaft including a distal opening; and a coupling member extending between the distal sheath and the proximal shaft, the coupling member including a distal portion fixedly attached to the distal sheath and a non-tubular 2 Claims 10-20 are pending, but these claims are withdrawn from consideration and not on appeal. 2 Appeal2017-005281 Application 13/953,534 proximal portion fixedly attached within the distal opening of the proximal shaft. Appeal Br. 15 (Claims Appendix). REJECTIONS The Final Office Action includes the following rejections: 3 1. Claims 1-3, 5, and 7 stand rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Melsheimer et al. (US 7,892,215 B2, issued February 22, 2011) ("Melsheimer '215") and Melsheimer (US 2010/0318068 Al, published December 16, 2010) ("Melsheimer '068"). 2. Claim 4 stands rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Melsheimer '215, Melsheimer '068, and Watson (US 2010/0234876 Al, published September 16, 2010). 3. Claims 6, 8, and 9 stand rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Melsheimer '215, Melsheimer '068, and Maguire et al. (US 2004/0059179 Al, published March 25, 2004) ("Maguire"). ISSUE With respect to claim 1, the Examiner found that Melsheimer '215 discloses a guide extension catheter comprising a distal sheath 80, a proximal shaft 50, and a coupling member 200 extending therebetween. Final Act. 4 (citing Melsheimer '215, Figs. 5, 6). The Examiner found that 3 The Final Office Action also included a rejection of claims 1-9 under pre-AIA 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Final Act. 3. The Examiner withdrew this ground of rejection in the Answer. Examiner's Answer 2 (December 8, 2016) (hereinafter "Ans."). 3 Appeal2017-005281 Application 13/953,534 coupling member 200 includes a distal portion 220 fixedly attached to distal sheath 80 and a proximal portion 210 fixedly attached within the distal opening 58 of proximal shaft 50. Id. (citing Melsheimer '215, col. 19, 1. 31 - col. 20, 1. 36). The Examiner acknowledged that Melsheimer '215 fails to disclose coupling member 200 having a non-tubular proximal portion fixedly attached within the distal opening of the proximal shaft. Id. The Examiner found that Melsheimer '068 discloses a guide extension catheter having a distal sheath 38, a proximal shaft 20, and a coupling member 36, where the coupling member has a non-tubular proximal portion 34 fixedly attached within the distal opening of proximal shaft 20. Id. (citing Melsheimer '068 i-f 25, Figs. 1, 2). The Examiner determined that it would have been obvious to one having ordinary skill in the art to modify coupling member 200 of Melsheimer '215 to have a non-tubular proximal portion fixedly attached within the distal opening of the proximal shaft as taught by Melsheimer '068 "which permits the distal sheath to deflect to one side." Id. at 4-5. Appellant argues that the device of Melsheimer '215, modified as proposed by the Examiner, does not result in the claimed invention because the non-tubular portion of the modified device is not "fixedly attached within the distal opening of the proximal shaft," as recited in claim 1. Reply Brief 4 (February 27, 2017) (hereinafter "Reply Br."). The issue before us is whether the Examiner's proposed modification to the coupling member of Melsheimer '215, based on the teachings of Melsheimer '068, results in the claimed coupling member including "a non-tubular proximal portion fixedly attached within the distal opening of the proximal shaft." 4 Appeal2017-005281 Application 13/953,534 ANALYSIS First Ground of Rejection: Obviousness over Melsheimer '215 and Melsheimer '068 The Examiner provided an edited drawing from Melsheimer '215 to depict the device incorporating the proposed modification. Ans. 5-6. Reproduced below are a copy of original Figure 6 of Melsheimer '215 (top) along with the Examiner's edited drawing (bottom) to show the proposed modification: t l2so 7 l-g F1g.6 Fig. 6 The top drawing above is a copy of Figure 6 of Melsheimer '215 showing a longitudinal section view of an insert 200 operatively coupling an outer guide channel member 80 and an outer sheath 50 of a delivery system. Melsheimer '215, col. 4, 11. 61-63, col. 19, 11. 8-10. As shown in Figure 6, insert 200 has a first end 205, which includes a first operative coupling 210 5 Appeal2017-005281 Application 13/953,534 for mechanically engaging the distal end of outer sheath 50, and a second end 215, which includes a second operative coupling 220 for mechanically engaging the proximal end of outer guide channel member 80. Id. at col. 19, 11. 31-37. The bottom drawing above is a copy of Figure 6 of Melsheimer '215 edited by the Examiner to show a portion of the tubular insert 200 modified to render it non-tubular. Specifically, the Examiner's proposed modification eliminates the top part of the portion of insert 200 that extends between the first operative coupling 210 and second operative coupling 220. As shown in this edited drawing, the non-tubular portion of insert 200 lies between first operating coupling 210 and second operative coupling 220. The problem with the Examiner's proposed combination is that the modified device does not include all of the elements of the claimed coupling member. Specifically, the non-tubular portion of modified insert 200 is not fixedly attached within the distal opening of outer sheath 50. As such, we agree with Appellant that the Examiner has not shown how the device of Melsheimer '215, modified based on the teaching of Melsheimer '068, would result in the coupling member including "a non-tubular proximal portion fixedly attached within the distal opening of the proximal shaft" of claim 1. For these reasons, we do not sustain the rejection of independent claim 1 and its dependent claims 2, 3, 5, and 7 under 35 U.S.C. § 103(a) as unpatentable over Melsheimer '215 and Melsheimer '068. 6 Appeal2017-005281 Application 13/953,534 Remaining Grounds of Rejection: Unpatentability over Melsheimer '215, Melsheimer '068, and either Watson or Maguire The remaining grounds of rejection of dependent claims 4, 6, 8, and 9 rely on the same combined teachings of Melsheimer '215 and Melsheimer '068 that we determined to be deficient in rendering independent claim 1 unpatentable. The Examiner does not rely on Watson or Maguire in any manner that would cure this deficiency. Final Act. 6-9. Accordingly, for the same reasons discussed above, we likewise do not sustain the rejections of claims 4, 6, 8, and 9 under 35 U.S.C. § 103(a). DECISION The decision of the Examiner rejecting claims 1-9 is reversed. REVERSED 7 Copy with citationCopy as parenthetical citation