Ex Parte Isch

Patent Trials and Appeals Board

Jan 31, 2019

14108694 - (D) (P.T.A.B. Jan. 31, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/108,694
48003 7590
BGL/Cook - Chicago
PO BOX 10395
CHICAGO, IL 60610
12/17/2013
01/31/2019
FIRST NAMED INVENTOR
Andrew P. Isch
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.
10922-1006
(PA-7331-RFB)
EXAMINER
3306
TOWA,RENET
ART UNIT PAPER NUMBER
3791
MAIL DATE DELIVERY MODE
01/31/2019 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 PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREW P. ISCH
Appeal 2018-002911
Application 14/108, 694
Technology Center 3700
Before KEVIN F. TURNER, DANIELS. SONG, and BRETT C. MARTIN,
Administrative Patent Judges.
MARTIN, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2018-002911
Application 14/108, 694
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1--4 and 6-14. Claims 5 and 15-20 were cancelled
during prosecution. App. Br. 5. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
THE INVENTION
Appellant's claims are directed generally "to medical devices and
more particularly to a guide wire for placement of a tubular medical device
within a body lumen." Spec. ,r 2. Claim 1, reproduced below, is illustrative
of the claimed subject matter:
1. A guide wire comprising:
a core member about a longitudinal axis of the guide wire
and comprising a distal end;
an outer coil disposed about the core member and
comprising a proximal end and a distal end disposed proximal of
the distal end of the core member, the outer coil extending
longitudinally along a majority of a length of the guide wire and
being longitudinally movable relative to the core member
between a retracted position and an advanced position, the distal
end of the outer coil being longitudinally spaced from the distal
end of the core member by a greater distance in the retracted
position than in the advanced position, wherein the outer coil
comprises an outer diameter of between about 0.032 inches and
about 0.038 inches;
an anchor member comprising an elongate wire extending
longitudinally between the distal end of the outer coil and the
distal end of the core member and comprising a proximal end
attached to the distal end of the outer coil and a distal end
attached to the distal end of the core member, whereby, in
response to longitudinal movement of the outer coil relative to
the core member, the anchor member is movable between a
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Appeal 2018-002911
Application 14/108, 694
delivery configuration and a deployed configuration, at least a
portion of the anchor member being positioned radially away
from the longitudinal axis of the guide wire by a greater distance
in the deployed configuration than in the delivery configuration;
and
a retaining mechanism comprising a tubular member
removably positionable about the core member and in abutting
contact with a proximal end of the outer coil, the retaining
mechanism being engageable with the core member to inhibit
longitudinal movement of the outer coil proximally relative to
the core member.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Gunther et al.
Galdonik et al.
us 5,329,942
US 2010/0010476 Al
REJECTION
The Examiner made the following rejection:
July 19, 1994
Jan. 14,2010
Claims 1--4 and 6-13 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over Galdonik and Gunther. Final Act. 2.
ANALYSIS
Appellant first argues that the Examiner erred because "Galdonik' s
actuation tool 200 is not removably positionable about a core member." Br.
9. Appellant asserts that this is so because "Galdonik does not disclose an
operable device whereby the actuation tube is moved from one position of
the corewire (the properly loaded position) to another properly loaded
position about the corewire." Br. 10. We agree with the Examiner,
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Appeal 2018-002911
Application 14/108, 694
however, that "the features upon which applicant relies ... are not cited in the
rejected claim( s)." Ans. 5.
Appellant does not assert that the combination results in a device that
is in conflict with other aspects of the claim, but merely asserts that we are
to read the above-described feature or function of the actuation tube being
moved from one position of the corewire to another into the claims via the
term "about." Appellant's arguments appear to be directed toward some
repositionability of the actuation tool about the core member, but the claims
only require that the actuation tool be "removably positioned about a core
member." We agree with the Examiner that the prior art teaches what is
claimed and that Appellant's arguments are not commensurate in scope with
what is actually claimed. Further, we do not agree that the additional
requirements can be read into the term "about" as asserted by Appellant.
Appellant next argues that the "rejection of claim 1 also fails to
present a prima facie case of obviousness" because "the Examiner has failed
to provide any factual support for its conclusion of obviousness." Br. 10.
Appellant further argues that "[ t ]he Examiner makes no citation to the prior
art, or any other evidence, to show that that this motivation existed in the art
at the time of the disclosed subject matter." Id. The Examiner is correct,
however, that it is not required "that the claimed invention must be expressly
suggested in any one or all of the references." Ans. 7. That said, however,
the Examiner does point out that Gunther specifically touts the use of a
resilient element, such as a coil, to provide a desired degree of flexibility,
which facilitates steering of the guide wire. Id. Using this teaching in
Gunther, the Examiner has articulated a reasoning with a rational
underpinning for making the proposed combination. Accordingly, we are
not persuaded of error in the Examiner's rejection.
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Appeal 2018-002911
Application 14/108, 694
DECISION
For the above reasons, we AFFIRM the Examiner's decision to reject
claims 1--4 and 6-13 .
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 )(iv).
AFFIRMED
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