Ex Parte De Silva

Patent Trial and Appeal Board

Apr 6, 2018

13526611 (P.T.A.B. Apr. 6, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/526,611 06/19/2012
137834 7590 04/10/2018
MDT_RTGNV/Shumaker & Sieffert P.A.
Attn: IP Legal Department
826 Coal Creek Circle
Louisville, CO 80027
FIRST NAMED INVENTOR
Praveen De Silva
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.
H-KN-02492/1213-008US01 3840
EXAMINER
FARRAR, LAUREN PENG
ART UNIT PAPER NUMBER
3763
NOTIFICATION DATE DELIVERY MODE
04/10/2018 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):
pairdocketing@ssiplaw.com
Medtronic_rtg-nv _docketing@cardinal-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PRA VEEN DE SILVA
Appeal2017-004720
Application 13/526,611
Technology Center 3700
Before BRETT C. MARTIN, LYNNE H. BROWNE, and
NATHAN A. ENGELS, Administrative Patent Judges.
BROWNE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant 1 appeals under 35 U.S.C. § 134 from the rejection of claims
1-5, 7, 8, and 10-30 under 35 U.S.C. § 103(a) as unpatentable over
Sutherland (US 2010/0049165 Al, pub. Feb. 25, 2010), Kurrus (US
2012/0157854 Al, pub. June 21, 2012), and Campbell (US 2005/0273152
Al, pub. Dec. 8, 2005). We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 According to Appellant, the real party in interest is Medtronic plc. See
Appeal Br. 2.
Appeal2017-004720
Application 13/526,611
CLAIMED SUBJECT MATTER
Claims 1, 16, and 20 are independent. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A microcatheter comprising:
an elongate flexible tubular body having a proximal end, a
distal end and at least one lumen extending axially therethrough;
a tip body having a proximal end and a distal end and a
lumen extending axially therethrough;
a coupling covering a portion of both the tubular body and
tip body, the coupling comprising a first layer and a second layer
made from different materials, the first layer being made from a
first material and the second layer being made from a second
material, wherein the first material is different from the second
material; and
a hydrophilic coating applied to at least the coupling and
the tip body,
wherein the first material of the coupling is compatible
with the hydrophilic coating, and wherein the second material of
the coupling is configured to form a detachable bond with at least
one of the tubular body and the tip body.
DISCUSSION
The Examiner finds that Sutherland, Kurrus, and Campbell disclose or
suggest all of the limitations of claim 1. Final Act. 2-3. In particular, the
Examiner determines that "Campbell teaches a coupling (125) having a first
and second layer ([0091])." Id. at 3. We note that claim 1 not only requires
a coupling having first and second layers, it requires "a first layer and a
second layer made from different materials." Appeal Br. 22 (Claims App.).
Appellant contends that "Campbell fails to describe such a coupling."
Id. at 7. In support of this contention, Appellant explains:
Campbell describes that "the porous PTFE film was
coated with . . . the silicone elastomer dispersion, the
dispersion impregnating the porous PTFE film such that the
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Appeal2017-004720
Application 13/526,611
void spaces in the porous PTFE film [are] substantially filled by
the dispersion." According to Campbell, "[t]he dispersion was
[] used as an adhesive material to affix the porous PTFE film to
the underlying components." Therefore, to the best of
Appellant's understanding, the silicone elastomer dispersion
described by Campbell is impregnated through a thickness of
the PTFE film, from the surface that is coated with the
dispersion to the underlying surface that is affixed to underlying
components, such that the resulting layer 125 does not include a
first layer being made from the PTFE film and a second layer
being made from a silicone elastomer dispersion, as the Office
asserts. Instead, Campbell's layer 125 includes a silicone
elastomer filling void spaces in a porous PTFE film, where the
layer 125 does not include a first layer made from a first
material and a second layer made from a second material.
Id. at 7-8 (citing Campbell i-f 91) (emphasis and footnotes omitted). We
share Appellant's understanding of the prior art and note that although
Campbell discloses "approximately 3 overlapping layers" each of these
layers is made of the same material (i.e. PTFE film impregnated with a
silicone elastomer dispersion). Camp bell i-f 91. We further agree that under
the broadest reasonable interpretation standard, first and second layers of the
same material (such as Campbell's PTFE film impregnated with a silicone
elastomer dispersion) cannot fairly read on Appellant's claimed first and
second layers "made from different materials. "2
For this reason, we do not sustain the Examiner's decision rejecting
claim 1 and claims 2-5, 7, 8, 10-15, and 21-26 which depend therefrom.
2 We note that an ordinary and customary meaning of "layer" is "one
thickness, course, or fold laid or lying over or under another." Merriam-
webster.com, https://www.merriam-webster.com/dictonary/layer (last visited
April 2, 2018). Although the Specification does not use the term layer in
describing the first and second materials, this definition is consistent with
the description of the first and second materials and the illustration of the
first and second materials in Figure 5. See, e.g., Spec. i-fi-1 6-7.
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Appeal2017-004720
Application 13/526,611
Claims 16 and 20 contain similar limitations. See Appeal Br. 24, 26 (Claims
App.) Accordingly, we do not sustain the Examiner's decision rejecting
claims 16 and 20, and their dependent claims 17-19 and 27-30.
DECISION
The Examiner's rejection of claims 1-5, 7, 8, and 10-30 is
REVERSED.
REVERSED
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