Ex Parte Bauer et al

Board of Patent Appeals and Interferences

Jul 25, 2012

11844294 (B.P.A.I. Jul. 25, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte RYAN THOMAS BAUER, PEDRO A. MEREGOTTE,
JOHN L. SOMMER, JOHN B. HORRIGAN,
PATRICK P. SENARITH, and H. ALLAN STEINGISSER
__________

Appeal 2011-005301
Application 11/844,294
Technology Center 3700
__________

Before MELANIE L. McCOLLUM, JEFFREY N. FREDMAN, and
STEPHEN WALSH, Administrative Patent Judges.

McCOLLUM, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a medical
delivery system. The Examiner has rejected the claims as anticipated or
obvious. We have jurisdiction under 35 U.S.C. § 6(b). We reverse.
STATEMENT OF THE CASE
Claims 1-8 are on appeal (App. Br. 2). We will focus on claim 1, the
only independent claim on appeal, which reads as follows:
Appeal 2011-005301
Application 11/844,294

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1. A medical delivery system comprising:
a medical electrical lead that includes a lumen;
a mapping guidelet inserted through the lumen, the mapping guidelet
includes an elongated member that includes first, second, and third coated
segments, a proximal uncoated segment, and an active distal segment; and
a programmer coupled to the uncoated segment.
Claims 1, 2, and 4-8 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Willis et al. (US 6,950,689 B1, Sep. 27, 2005) (Ans. 4).
Claim 3 stands rejected under 35 U.S.C. § 103(a) as obvious over
Willis (Ans. 5).
ANALYSIS
We understand that the Examiner is considering “the overall structure
of Willis’ device in Fig. 15 . . . [to be] a medical electrical lead” (Ans. 5).
However, given this understanding, we agree with Appellants that it is not
clear what the Examiner is considering the mapping guidelet, which is
inserted through a lumen in the lead (Reply Br. 2-3).
We note that Willis discloses “[f]our twisted pairs 26 of Teflon coated
forty-two gauge copper wire” (Willis, col. 10, ll. 40-41). It appears that the
Examiner may be considering these pairs of coated copper wire to be a
mapping guidelet (Ans. 4). However, the Examiner has not shown where
Willis teaches inserting these pairs of coated copper wire through a lumen in
the device in Willis Figure 15, which depicts mapping catheter 14 (Willis,
col. 13, ll. 54-55, & col. 11, ll. 47-49). We recognize that Willis teaches that
the twisted pairs of Teflon coated copper wire “extend . . . through
[reference] catheter 10” (id. at col. 10, ll. 40-43, & col. 8, ll. 60-61).
However, the Examiner has not pointed to any teaching of inserting
reference catheter 10 through a lumen in mapping catheter 14.
Appeal 2011-005301
Application 11/844,294

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Thus, we agree with Appellants that the Examiner has not set forth a
prima facie case of anticipation. We therefore reverse the anticipation
rejection of claim 1 and of claims 2 and 4-8, which depend from claim 1.
The Examiner has also failed to explain why the system of claim 1
would have been obvious. We therefore also reverse the obviousness
rejection of claim 3, which depends from claim 1.

REVERSED

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