Ex Parte Saab

Board of Patent Appeals and Interferences

Jul 27, 2007

11017710 (B.P.A.I. Jul. 27, 2007)

The opinion in support of the decision being entered today was 1
not written for publication and is not binding precedent of the Board. 2
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UNITED STATES PATENT AND TRADEMARK OFFICE 5
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BEFORE THE BOARD OF PATENT APPEALS 8
AND INTERFERENCES 9
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Ex parte MARK A. SAAB 12
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Appeal No. 2007-1580 15
Application No. 11/017,710 16
Technology Center 3700 17
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Decided: July 27, 2007 20
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Before WILLIAM F. PATE, III, HUBERT C. LORIN, and JENNIFER D. BAHR, 23
Administrative Patent Judges. 24
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PATE, III, Administrative Patent Judge. 26
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DECISION ON APPEAL 29
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STATEMENT OF THE CASE 32
This is an appeal from the final rejection of claims 74 and 75. The 33
other claims in the application, viz., claims 1-73, have been cancelled. We have 34
jurisdiction under 35 U.S.C. §§ 134 and 6(b). 35
Appeal 2007-1580
Application 11/017,710

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The claimed invention is directed to a heat transfer catheter. The 1
specific feature at issue is the helical passage shown in Fig. 6. Claim 74, 2
reproduced below, is further illustrative of the claimed subject matter. 3
74. A heat transfer catheter apparatus, comprising: 4
(a) a substantially elongate shaft; 5
(b) at least one first lumen internal to said substantially elongate shaft, 6
said at least one internal lumen configured; 7
(i) to circulate a working fluid; 8
(ii) to inflate under pressure of said working fluid; and 9
(iii) to collapse under vacuum; and 10
(c) a second lumen external and adjacent to said substantially elongate 11
shaft, said second lumen having a spiral shape; 12
wherein said second lumen is configured to extract said circulating 13
working fluid. 14
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Claims 74 and 75 stand rejected under 35 U.S.C. § 112, first 16
paragraph, as based on a specification and drawing that fail to satisfy the 17
written description requirement. 18
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ISSUE 20
The sole issue for our consideration is whether Appellant’s application, as 21
filed, provides descriptive support for the subject matter of claims 74 and 75. 22
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PRINCIPLES OF LAW 24
Whether a specification complies with the written description requirement of 25
35 U.S.C. § 112, first paragraph, is a question of fact. Regents of Univ. of Cal. v. 26
Appeal 2007-1580
Application 11/017,710

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Eli Lilly and Co., 119 F.3d 1559, 1566, 43 USPQ2d 1398, 1404 (Fed. Cir. 1997), 1
cert. denied, 523 U.S. 1089 (1998)(citing Vas-Cath Inc. v. Mahurkar, 935 F.2d 2
1555, 1563, 19 USPQ2d 1111, 1116 (Fed. Cir. 1991)). To fulfill the written 3
description requirement, a patent specification must describe an invention and do 4
so in sufficient detail that one skilled in the art can clearly conclude that “the 5
inventor invented the claimed invention.” Id. (citing Lockwood v. Am. Airlines, 6
Inc., 107 F.3d 1565, 1572, 41 USPQ2d 1961, 1966 (1997) and In re Gosteli, 872 7
F.2d 1008, 1012, 10 USPQ2d 1614, 1618 (Fed. Cir. 1989) (“[T]he description 8
must clearly allow persons of ordinary skill in the art to recognize that [the 9
inventor] invented what is claimed.”)). Thus, an applicant complies with the 10
written description requirement “by describing the invention, with all its claimed 11
limitations, not that which makes it obvious,” and by using “such descriptive 12
means as words, structures, figures, diagrams, formulas, etc., that set forth the 13
claimed invention.” Id. (citing Lockwood, 107 F.3d at 1572, 41 USPQ2d at 1966). 14
It is important to note that "[t]he invention is, for purposes of the ‘written 15
description’ inquiry, whatever is now claimed.” Vas-Cath, 935 F.2d at 1564, 19 16
USPQ2d at 1117. 17
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FINDINGS OF FACT 19
The relevant portion of Appellant’s Specification reads as follows: 20
Fluid flow connection means, for example one or more 21
apertures, may be provided in the integrally formed wall means that 22
separates the interior of balloon segment 236 and one or more of the 23
adjacent, external lumens 242, 244 and 246. In this embodiment, 24
instead of having coaxial inner sleeve 234, fluid may be supplied to 25
balloon segment 236 through sleeve 232 and withdrawn through an 26
externally extending adjacent, external lumen such as lumen 242. As 27
seen in Fig. 4, external, adjacent lumen 242 can be formed so as to run 28
Appeal 2007-1580
Application 11/017,710

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the entire length of sleeve 232, including balloon segment 236 and 1
conical ends 238 and 240. Thus, in still another embodiment of this 2
invention, an apparatus similar to that shown in Fig. 4 but having two 3
perimetrica1 lumens like lumen 242 running the entire length of 4
sleeve 232 could be used to deliver heat transfer fluid to a body 5
location distal of balloon segment 236. The flow of heat transfer 6
fluid, in through one of said perimetrical lumens and out through the 7
other, would not be significantly interrupted even during dilatation of 8
balloon segment 236. Similarly, and for other applications, external, 9
adjacent lumen 244 can be formed so as to run from one end of the 10
middle or working section of balloon 236 to the other. Similarly, 11
external, adjacent lumen 246 can be formed so as to begin and end 12
within the working section of balloon 236. By proper selection of the 13
forming wires, external, adjacent lumens can be created of the same or 14
different diameters, of uniform or non-uniform cross-section, and of 15
circular or other cross-sectional shape, as desired for particular 16
applications. Employing a similar preparation technique, a heat 17
transfer balloon dilatation catheter apparatus can be prepared as 18
shown in Fig. 6 wherein an external, adjacent lumen 252 runs in a 19
helical pattern around the outside wall of balloon 236. Helical lumen 20
252 may comprise, in one embodiment, a plurality of pinholes 254 21
along its length to precisely deliver medication or other fluids to select 22
body locations. 23
(Specification 23:9-24:9). 24
This passage would have conveyed to those skilled in the art that an external 25
adjacent lumen as described and illustrated in Figures 4 and 5 could optionally be 26
provided on the exterior surface of balloon 236 in a helical pattern. The 27
Specification plainly conveys that the pinhole embodiment of Figure 6 is merely 28
“one embodiment” of the external, adjacent lumen of helical shape. Accordingly, it 29
is our finding that Appellant’s disclosure would have conveyed to those of 30
ordinary skill possession of the subject matter of claims 74 and 75. 31
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Appeal 2007-1580
Application 11/017,710

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CONCLUSION 1
The decision of the Examiner is reversed. 2
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REVERSED 4
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OBLON, SPIVAK, MCCLELLAND, MAIER & NEUSTADT, P.C. 27
1940 DUKE STREET 28
ALEXANDRIA, VA 22314 29