11041359 (B.P.A.I. May. 14, 2012)

Ex Parte Johnson

Board of Patent Appeals and InterferencesMay 14, 2012

11041359 (B.P.A.I. May. 14, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES __________ Ex parte ERIC T. JOHNSON __________ Appeal 2011-000989 Application 11/041,359 Technology Center 3700 __________ Before DONALD E. ADAMS, ERIC GRIMES, and JACQUELINE WRIGHT BONILLA, Administrative Patent Judges. GRIMES, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims to a catheter assembly. The Examiner has rejected the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. STATEMENT OF THE CASE The Specification discloses “guide catheter assemblies for delivery of cardiac pacing leads” (Spec. 1:11-12). Appeal 2011-000989 Application 11/041,359 2 Claims 1-11 and 21-24 are on appeal. Claim 1, the only independent claim, reads as follows: 1. A catheter assembly for cannulating a coronary sinus of the heart, the catheter assembly comprising: a flexible, elongated shaft having: a proximal end, a distal end preformed with a first curved segment and a second curved segment extending distal to the first curved segment, a central lumen, and a secondary lumen co-axial with the central lumen; and a tensioning member having a distal portion and a proximal portion, the tensioning member positioned in the secondary lumen, the distal portion coupled to the shaft proximal to the second curved segment for deflecting the first curved segment from a first configuration to a second configuration. The Examiner has rejected claims 1-9 and 21-24 under 35 U.S.C. § 103(a) as being obvious in view of Jacobs1 and Hebert.2 The Examiner has also rejected claims 10 and 11 under 35 U.S.C. § 103(a) as being obvious in view of Jacobs, Hebert, and Teague.3 The Examiner finds that Jacobs discloses a “catheter assembly comprising: a flexible, elongated shaft (2) having … a distal end … preformed with a first curved segment (proximal curve in Fig. 4) and a second curved segment (more distal curve) …, a central lumen (10), and a … tensioning member positioned in the lumen” (Answer 3-4). The Examiner finds that the distal portion of Jacobs’ tensioning member is coupled to the shaft as required by claim 1 (id. at 4). 1 Jacobs, US 6,074,361, June 13, 2000 2 Hebert et al., US 6,793,667 B2. Sept. 21, 2004 3 Teague et al., US 6,569,150 B2, May 27, 2003 Appeal 2011-000989 Application 11/041,359 3 The Examiner finds that Jacobs does not disclose a secondary lumen that contains the tensioning member (id.), but that Hebert discloses a catheter “that includes a shaft (40) with a central lumen (55) and a secondary lumen (42) co-axial with the central lumen, and a tensioning member (62) positioned in the secondary lumen” (id.). The Examiner finds that Hebert’s “catheter includes a balloon (44) at its distal tip.… The secondary lumen additionally is used to inflate the distal balloon.” (Id.) The Examiner concludes that it would have been obvious to modify Jacobs’ device “by including a balloon … so the catheter could be used for occlusion … and to have included an additional tube within the main catheter” for the delivery of other items, while the inflation media and tensioning member are contained in the coaxial lumen, as disclosed by Hebert (id. at 4-5). Appellant argues that modifying Jacobs’ catheter as suggested by the Examiner to include an inner tube so that the shaping wire (or tensioning member) would be contained in a coaxial lumen would not result in the invention of claim 1, because the shaping wire of Jacobs is not coupled to the shaft of the catheter, as claimed (Appeal Br. 7). The Examiner responds that “a common definition of ‘couple’ is ‘to fasten, link, or associate together in a pair or pairs’” (Answer 10). The Examiner reasons that “[t]his definition does not require that two objects which are ‘coupled’ cannot be coupled in a manner that is slidable. Rather, … in the broadest reasonable interpretation of the claim, the term requires that the two objects are ‘associated together in a pair’” (id.). In other words, according to the Examiner, merely contacting one object with another is sufficient for the objects to be “coupled” as recited in claim 1 (id.). Appeal 2011-000989 Application 11/041,359 4 We disagree with this claim interpretation. In addition, we agree with the Appellant that the Examiner has not adequately explained how modifying the Jacobs catheter to have a secondary lumen would result in a catheter with “a tensioning member having a … distal portion coupled to the shaft” as required by claim 1 in light of proper claim interpretation of the term “coupled.” “[T]he PTO applies to the verbiage of the proposed claims the broadest reasonable meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the written description contained in the applicant’s specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Here, the Specification states that a “distal end 72 of the tensioning member 70 is fixed to the shaft 48 at a fixation location 74…. Tension exerted on the tensioning member 70 at the proximal end 70a transmits an axial force to the shaft 48 at the fixation location 74, deflecting the shaft 48 to the fixation location 74.” (Spec. 7:3-10.) The Specification also states that “alternately, the tensioning member 70 is fixed to the inner shaft 58” (id. at 7:12-13). In view of the Specification’s description of the tensioning member as “fixed” to the shaft, the Examiner’s interpretation of the “coupled to the shaft” claim language as only requiring that the tensioning member and the shaft be “associated together in a pair” is not reasonable. The broadest reasonable interpretation of “coupled” in light of the Specification requires more than merely contacting two objects as disclosed in Jacobs. Thus, we reverse the rejection of claims 1-9 and 21-24. Appeal 2011-000989 Application 11/041,359 5 With respect to the rejection of claims 10 and 11, the Examiner relies on Jacobs and Hebert as discussed above, and relies on Teague only to supply dependent claim limitations. Thus, we also reverse this rejection. SUMMARY We reverse the rejection of claims 1-11 and 21-24 under 35 U.S.C. § 103(a). REVERSED lp