Ex Parte Hamatake et al

Board of Patent Appeals and Interferences

May 8, 2012

10884291 (B.P.A.I. May. 8, 2012)

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.
10/884,291 07/02/2004 Bret Hamatake 101672.0025P 6066
34284 7590 05/09/2012
Rutan & Tucker, LLP.
611 ANTON BLVD
SUITE 1400
COSTA MESA, CA 92626
EXAMINER
SHUMATE, VICTORIA PEARL
ART UNIT PAPER NUMBER
3763
MAIL DATE DELIVERY MODE
05/09/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte BRET HAMATAKE, JASON R. STATS, AMIR OROME,
JOSEPH H. BARRETT, and DALLEN GLEN HERZOG
__________

Appeal 2011-000816
Application 10/884,291
Technology Center 3700
__________

Before LORA M. GREEN, STEPHEN WALSH, and
ERICA A. FRANKLIN, Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s rejection of claims 1, 22, 27, 41-47, and 68-71.
1
We have
jurisdiction under 35 U.S.C. § 6(b).

1
Claims 37-40 are also pending, but stand withdrawn from consideration
(App. Br. 3).
Appeal 2011-000816
Application 10/884,291

2
STATEMENT OF THE CASE
Claim 1 is representative of the claims on appeal, and reads as follows
(emphasis added):
1. A multi-lumen catheter for insertion into a mammalian body,
comprising:
an elongated catheter body having a proximal end and a distal end, said
catheter body including an outer wall enclosing at least a first, second and
third lumen, the first and second lumens sharing a first wall, the first and
third lumens sharing a second wall, the first and second walls meeting to
form an angle of approximately 120 degrees from the perspective of the first
lumen, the second and third lumens in fluid communication, respectively,
with second and third distal openings positioned side by side at
approximately the same location at a distal portion of the catheter body, a
first distal opening in fluid communication with the first lumen positioned
distally of the second and third lumen distal openings, the first lumen
transitioning from a first cross-sectional area to a second cross-sectional area
larger than the first cross-sectional area distally of the second and third distal
openings.

The following ground of rejection is before us for review:
Claims 1, 22, 27, 41-47, and 68-71 stand rejected under 35 U.S.C.
§ 103(a) as being rendered obvious by the combination of McGuckin,
2

Luther,
3
and Casey
4
(Ans. 3).
We reverse.
ANALYSIS
The Examiner relies on McGuckin for teaching a multi-lumened
catheter, but notes that McGuckin does not teach that “the angle between the

2
McGuckin, Jr. et al., US 2003/0093029 A1, published May 15, 2003.
3
Luther, US 4,668,221, issued May 26, 1987.
4
Casey et al., US 2002/0183781 A1, published Dec. 5, 2002.
Appeal 2011-000816
Application 10/884,291

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first and second walls from the view of the first lumen is 120 degrees” (Ans.
3-4).
The Examiner relies on Luther for teaching “a multilumen catheter
with lumen walls wherein the angle between them is 120 degrees (Fig. 16)”
(id. at 4). The Examiner concludes that it would have been obvious to
modify the catheter of McGuckin to include the lumen dimensions of Luther
“because doing so would allow for similar flow rates and volumes in all
three lumens” (id. at 5). Specifically, the Examiner notes that the
“longitudinal axes of both the first and second walls meet at a 120 degree
angle and the outer edges of the walls themselves would also meet at a 120
degree angle if the design choice to thicken the walls had been made” (id. at
6).
The Specification teaches that “catheters with three or more lumens
are needed to deliver and/or withdraw fluid from the patients’ circulatory
system” (Spec. 1). Figure 1B of the instant disclosure is reproduced below:

Figure 1B is a cross-sectional view of a catheter sectioned at the proximal
portion, wherein the interior is divided into three pie-shape lumens (id. at 4).
McGuckin is drawn “to a multi-lumen catheter which facilitates
hemodialysis” (McGuckin, p. 1, ¶ 3). Figure 48A, relied upon by the
Examiner (Ans. 4), is reproduced below:
Appeal 2011-000816
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Figure 48A is a transverse cross-sectional view of one the embodiments of
the catheter of McGuckin (id. at p. 6, ¶ 121). McGuckin teaches that the
catheter has a “first longitudinally extending central lumen configured to
deliver blood [that] terminates in an opening in the distal portion” (id. at p.
3, ¶ 32). As shown in Figure 48A, a central return (venous) lumen is
encircled by a series of intake lumens (id. at p. 10, ¶ 169). McGuckin
further teaches that a guidewire and stiffening member may be inserted
through the central lumen (id. at pp. 7-8, ¶¶ 144-145; see also id. at p. 6, ¶
134).).
According to McGuckin:
Th[e] positioning of the intake lumens in a circle-like
array around the catheter, i.e. radially displaced from the center
of the catheter, more evenly distributes the vacuum, as
compared to a side by side venous/arterial lumen configuration,
and ensures constant return flow since if one of the lumens
becomes stuck against the vessel wall or otherwise clogged, the
remaining lumens will maintain adequate flow. The openings in
the sidewalls communicating with the lumens can also be
elongated instead of circular, creating a series of longitudinally
extending openings for entry of suctioned blood.

Appeal 2011-000816
Application 10/884,291

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(Id. at p. 7, ¶143.)
Luther is drawn to an assembly for inserting a catheter into a patient,
wherein a stylet is inserted through the catheter to pierce a vein (Luther, col.
1, ll. 9-15). Luther teaches that after expansion due to hydration, the center
section may be plugged or used as an additional I.V. feed bore (id. at col. 5,
ll. 25-28). Figure 16 of Luther, relied upon by the Examiner, is reproduced
below:

Figure 16 is a transverse sectional view of a catheter following hydration
with blood, providing separate feed bores to a patient (id. at col. 3, ll. 13-16).
Appellants argue that Luther does not teach a catheter in which the
first and second walls meet to form an angle of approximately 120 degrees,
as the first and second walls do not meet, but instead each wall terminates in
a separate circular wall enclosing a separate central lumen (Reply Br. 3).
Appellants further assert that while the Examiner suggests thickening the
walls so they would meet, “the Examiner gives no rational support for such a
modification” (id. at 4).
We agree with Appellants that the combination of references as set
forth by the Examiner does not teach or suggest the limitation of the first
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Application 10/884,291

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first and second walls meeting to form an angle of approximately 120
degrees. The Examiner concludes that it would be only a matter of design
choice to thicken the walls and remove the central lumen of McGuckin and
Luther to arrive at the claimed invention. The Examiner does not, however,
provide any evidence or reason as to why the ordinary artisan would have
removed the central opening or bore of either the catheter of McGuckin or
Luther to allow the first and second walls as defined by the claim to meet,
rather than terminating at the central lumen. “[R]ejections on obviousness
grounds cannot be sustained by mere conclusory statements; instead, 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 Inc., 550
U.S. 398, 417-18 (2007). We are thus compelled to reverse the rejection.

REVERSED

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