Ex Parte Chaouk et alDownload PDFBoard of Patent Appeals and InterferencesFeb 2, 200910350744 (B.P.A.I. Feb. 2, 2009) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES __________ Ex parte HASSAN CHAOUK, GEORGE SHENGELAIA, and BRUKTAWIT ASFAW __________ Appeal 2009-0874 Application 10/350,744 Technology Center 3700 __________ Decided:1 February 2, 2009 __________ Before DEMETRA J. MILLS, LORA M. GREEN, and JEFFREY N. FREDMAN, Administrative Patent Judges. FREDMAN, Administrative Patent Judge. DECISION ON APPEAL 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 CFR § 1.304, begins to run from the decided date shown on this page of the decision. The time period does not run from the Mail Date (paper delivery) or Notification Date (electronic delivery). Appeal 2009-0874 Application 10/350,744 This is an appeal under 35 U.S.C. § 134 involving claims to a method of forming a catheter device. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Statement of the Case Background “Dual lumen catheters are used for a number of purposes. Generally, one is used when two components are to be delivered and it is desirable to deliver the components separately” (Spec. 1:12-14). The Specification teaches that “[d]ual lumen catheters can have side by side lumens or coaxial lumens” (Spec. 1:15-16). The Claims Claims 1, 3-7, and 9-14 are on appeal. Claims 1 and 10 are representative and read as follows: 1. A method of forming a coaxial catheter device in vivo that will deliver two solutions to a site in a body, comprising the steps: threading a guidewire into position in the body; threading a first (outer) catheter to a site in the body using the guidewire; removing the guidewire; and inserting a second (inner) catheter through the first catheter in a coaxial relationship so that a space for fluid flow is formed between the outside surface of the inner catheter and the inside surface of the outer catheter and a second space for fluid flow is defined by the inside surface of the inner catheter. 10. A coaxial catheter delivery device for delivering two solutions to a site in a body, comprising: 2 Appeal 2009-0874 Application 10/350,744 a first (outer) catheter; a second (inner) catheter; wherein the second catheter can be inserted through the first catheter in a coaxial relationship after the first catheter is placed in the body so that a first space for fluid flow is formed between the outside surface of the inner catheter and the inside surface of the outer catheter and a second space for fluid flow is defined by the inside surface of the inner catheter and the first solution can be delivered through the first catheter and the second solution can be delivered through the second catheter. The prior art The Examiner relies on the following prior art references to show unpatentability: Dunn U.S. Patent 3,870,043 Mar. 11, 1975 Cragg et al. U.S. Patent 6,146,373 Nov. 14, 2000 The issues A. The Examiner rejected claims 1, 3, 4, 6, 7, 9-11, 13, and 14 under 35 U.S.C. § 102(b) as being anticipated by Cragg (Ans. 2-3). B. The Examiner rejected claims 5 and 12 under 35 U.S.C. § 103(a) as being obvious over Cragg and Dunn (Ans. 3). A. 35 U.S.C. § 102(b) over Cragg The Examiner found that Cragg et al disclose threading a guidewire into position (column 7, lines 30-34), inserting a first catheter into the body using a guidewire (column 7, lines 30-34), removing the guidewire, and inserting a second catheter through the first catheter (column 6, lines 45-49) providing a space for flow between the outer surface of the inner catheter and inner surface of the outer catheter and another space for flow inside the inner catheter (Figure 6). 3 Appeal 2009-0874 Application 10/350,744 (Ans. 3.) The Examiner found that “Appellant has claimed the steps, but has not claimed any specific sequence (ie ‘first’, ‘next’, or ‘then’) in which they must be carried out.” (Ans. 4). The Examiner found that “Cragg et al would disclose this feature, as Cragg et al clearly disclose in Figures 1 and 2 the inner catheter 12 being positioned (ie guided) in outer catheter 14” (Ans. 5). Appellants contend that “Cragg does not teach assembling a coaxial catheter in situ and Craig's catheter system does not work the same as the claimed catheter system. . . . The catheter of Cragg is placed all at once- the inner and outer catheters are placed at the same time” (App. Br. 3). In view of these conflicting positions, we frame the anticipation issue before us as follows: Did the Examiner err in finding that Cragg teaches a method of forming a coaxial catheter device as required by claim 1? Findings of Fact (FF) 1. Cragg teaches a “catheter having at least two lumens for delivery of a liquid embolic composition through a first lumen and delivery of a solidification agent through a second lumen” (Cragg, col. 4, ll. 25-28). 2. Figure 1 of Cragg is reproduced below: 4 Appeal 2009-0874 Application 10/350,744 “FIG. 1 is a side view of the catheter system” (Cragg, col. 3, l. 59). 3. Cragg teaches “insertion of the multiple lumen catheter of the catheter system 10 endovascularly to a vascular site such as an aneurysm” (Cragg, col. 4, ll. 46-48). 4. Cragg teaches that the “inner and outer tubes 12, 14 for use in the present invention are particularly designed to have sufficient rigidity to be inserted with or without a guide wire to a location within a blood vessel for embolization and to have sufficient flexibility at the distal end to prevent damage to tissue” (Cragg, col. 7, ll. 30-34). Principles of Law Claim terms are interpreted using the broadest reasonable interpretation in light of the Specification. See, e.g., In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000) (“[D]uring examination proceedings, claims are given their broadest reasonable interpretation consistent with the specification.”). Also see In re Morris, 127 F.3d 1048, 1054-56 (Fed. Cir. 1997). (“Absent an express definition in their specification, the fact that appellants can point to definitions or usages that conform to their 5 Appeal 2009-0874 Application 10/350,744 interpretation does not make the PTO’s definition unreasonable when the PTO can point to other sources that support its interpretation.”). “A rejection for anticipation under section 102 requires that each and every limitation of the claimed invention be disclosed in a single prior art reference.” In re Paulsen, 30 F.3d 1475, 1478-79 (Fed. Cir. 1994). See In re Omeprazole Patent Litigation, 483 F.3d 1364, 1371 (Fed. Cir. 2007). (“Anticipation requires disclosure of each and every claim limitation in a single prior art reference, either explicitly or inherently.”). Analysis Cragg teaches a coaxial catheter (FF 1-2) and the use of a guidewire to assist in the insertion of the catheter (FF 3-4). In the instant context, the issue of whether Cragg anticipates claim 1 depends upon whether claim 1 is interpreted so that the method steps are required to be performed in the order listed. The first three steps of “threading a guidewire into position in the body,” “threading a first (outer) catheter to a site in the body using the guidewire,” and “removing the guidewire” are written in a sequential manner in which the second and third steps depend upon first performing the first step. However, the claim does not require a specific timing relative to the first three steps for the fourth listed step of “inserting a second (inner) catheter through the first catheter in a coaxial relationship.” We agree with the Examiner that claim 1 does not expressly indicate that the recited method steps have a temporal order regarding the step of “inserting a second (inner) catheter.” Rather, the claim 1 simply requires that 6 Appeal 2009-0874 Application 10/350,744 the inner catheter is inserted “in a coaxial relationship so that a space for fluid flow is formed” (Claim 1). See Interactive Gift Exp., Inc. v. Compuserve Inc., 256 F.3d 1323, 1342 (Fed. Cir. 2001) (“Unless the steps of a method actually recite an order, the steps are not ordinarily construed to require one.”). We are not persuaded by Appellants’ argument that “Cragg does not teach assembling a coaxial catheter in situ” (App. Br. 3). The preamble of claim 1 does not state “assembling” the “catheter in situ,” but rather states “forming a coaxial catheter device in vivo” (Claim 1). Applying the broadest reasonable interpretation to Appellants claim 1, the preamble statement of “forming a coaxial catheter in vivo” does not necessarily require that the inner catheter and outer catheter are assembled in vivo. The preamble of “forming” may reasonably be understood as simply requiring the placement of the coaxial catheter into the in vivo location. Conclusion of Law The Examiner did not err in finding that Cragg teaches a method of forming a coaxial catheter device as required by claim 1. 7 Appeal 2009-0874 Application 10/350,744 B. 35 U.S.C. § 103(a) rejection over Cragg and Dunn The Examiner relies on Cragg and Dunn to teach the limitations of claims 5 and 12 as discussed above. The Examiner specifically relies on Dunn to teach stainless steel catheters. We will affirm this rejection since Appellants do not separately argue these claims and rely upon overcoming the rejection over Cragg, which was affirmed above. SUMMARY In summary, we affirm the rejection of claim 1 under 35 U.S.C. § 102(b) over Cragg. Pursuant to 37 C.F.R. § 41.37(c)(1)(vii)(2006), we also affirm the rejection of claims 3, 4, 6, 7, 9-11, 13, and 14 as these claims were not argued separately. We affirm the rejection of claims 5 and 12 under 35 U.S.C. § 103(a) over Cragg and Dunn. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv)(2006). AFFIRMED cdc LAW OFFICE OF COLLEN A. BEARD, LLC P. O. BOX 1064 DECATUR GA 30031-1064 8 Copy with citationCopy as parenthetical citation