Ex Parte Scheller et al

Patent Trial and Appeal Board

Jan 25, 2019

12675394 (P.T.A.B. Jan. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/675,394 09/08/2010
77218 7590 01/29/2019
Medtronic Vascular - APV Division
c/o IP Legal Department
3576 Unocal Place
Santa Rosa, CA 95403
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Bruno Scheller
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.
P39112.06 4025
EXAMINER
COLELLO, ERIN L
ART UNIT PAPER NUMBER
3771
NOTIFICATION DATE DELIVERY MODE
01/29/2019 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):
rs. docketingapv@medtronic.com
rs.patents.five@medtronic.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRUNO SCHELLER and ULRICH SPECK
Appeal2018-004242
Application 12/675,394 1
Technology Center 3700
Before PHILIP J. HOFFMANN, CYNTHIA L. MURPHY, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellants appeal from the
Examiner's rejection of claims 20, 21, 23, 24, 26, 27, 33, 40-47, and 50-52.
We have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
1 According to Appellants, "[ t ]he real party in interest ... is Invatec
Technology Center GMBH, the assignee of record, and by way of
acquisition, Medtronic, Inc. and Medtronic plc ... , the ultimate parent entity
of Medtronic, Inc." Appeal Br. 2.
Appeal2018-004242
Application 12/675,394
According to Appellants, the "invention concerns a balloon catheter
coated with at least one active substance including a distally assembled
catheter balloon and an expandable protection against expansion which
surrounds this[,] where the catheter balloon is on the one hand protected
against premature unfolding ... [,] and on the other hand ... can refold itself
better after dilatation has taken place." Spec. 1. Claims 20 and 33 are the
independent claims on appeal. Below, we reproduce claim 20 as illustrative
of the appealed claims.
20. A balloon catheter comprising:
a catheter shaft;
a protective tube on the catheter shaft, wherein the
protective tube comprises a distal end and a proximal end;
a self expanding stent located inside the protective tube;
a catheter balloon located inside the protective tube;
at least one active substance located between the catheter
balloon and the protective tube;
a seal located in the protective tube proximate the distal
end of the protective tube and between the protective tube and
the catheter shaft, wherein the seal prevents penetration of bodily
fluids between the protective tube and the catheter shaft, and
wherein the seal comprises a pharmaceutical and physiologically
inactive substance in solid form that is soluble in blood, wherein
the seal is configured to dissolve such that blood can penetrate
into the protective tube within five minutes of placement of the
seal and the protective tube in blood;
the protective tube compresses the self expanding stent to
protect against premature expansion of the self expanding stent
and against premature loss of the at least one active substance.
REJECTIONS AND PRIOR ART
The Examiner rejects the claims as follows:
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Appeal2018-004242
Application 12/675,394
I. Claims 20, 21, 23, 24, 26, 27, 33, 42, 44--47, and 50 under
35 U.S.C. § I03(a) as unpatentable based on Andreas
(US 2004/0215312 Al, pub. Oct. 28, 2004), Stinson
(US 7,004,962 B2, iss. Feb. 28, 2006), and Thompson
(US 2002/0111601 Al, pub. Aug. 15, 2002);
II. Claims 40 and 51 under 35 U.S.C. § I03(a) as unpatentable
based on Andreas, Stinson, Thompson, and Lubock et al.
(US 2003/0233101 Al, pub. Dec. 18, 2003) (hereinafter
"Lubock"); and
III. Claims 41, 43, and 52 under 35 U.S.C. § I03(a) as unpatentable
based on Andreas, Stinson, Thompson, and McDermott et al.
(WO 2007 /008829 A2, pub. Jan. 18, 2007) (hereinafter
"McDermott").
ANALYSIS
Reiection I
In support of the obviousness rejection of independent claim 20, the
Examiner finds that Andreas discloses most of the claim's recitations, and
further finds that although "Andreas discloses ... a distal tip [(nosecone 28)]
that forms a seal with the protective tube," Andreas "does not disclose that
the tip can be blood soluble." Answer 3. Nonetheless, the Examiner finds
that "Stinson teaches a similar system ... , where ... the distal tip ...
comprise[ s] a blood soluble material" (id.), and that
it [ would have been] obvious to modify the distal tip of Andreas
to be dissolvable as suggested by Stinson, since such a
modification allows the distal tip to degrade to a smaller size
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Appeal2018-004242
Application 12/675,394
after placement which allows the distal tip to be withdrawn
through the deployable device for removal of the system
(id. at 3--4).
Appellants argue that the Examiner errs, because there is no reason to
replace Andreas's nosecone 28 with a blood-soluble tip. Appeal Br. 7-8;
see also Reply Br. 2--4. Based on our review, we determine that the
Examiner does not provide an articulated reasoning with a rational
underpinning adequate to establish that it would have been obvious to
replace Andreas's nosecone 28 with a blood-soluble tip. See KSR Int'! Co.
v. Teleflex Inc., 550 U.S. 398,418 (2007). In particular, we agree with
Appellants that there is no indication whether or not Andreas provides, in
part with nosecone 28, "a seal to prevent penetration of bodily fluids
between the sheath ... and the shaft," and it is not clear what might result
from allowing bodily fluids from entering this space between the sheath and
shaft, which presumably would occur after the blood-soluble tip dissolves.
Appeal Br. 8. As Appellants further point out, in Andreas, "a distal end of
the balloon member 70 is 'bonded to an annular stop 78, which is mounted
to nosecone 28. "' Id. ( citing Andreas ,r 51 ). It is not at all clear to us what
may occur to multiple components of Andreas' s device, including annular
stop 78 and balloon member 70, when the blood-soluble top that is used in
place of Andreas's nosecone 28 dissolves.
Thus, based on the foregoing, we do not sustain the Examiner's
rejection of independent claim 20. We also do not sustain the Examiner's
rejection of independent claim 33, which the Examiner rejects for similar
reasons as claim 20. Further, we do not sustain the Examiner's rejection of
claims 21, 23, 24, 26, 27, 42, 44--47, and 50 that depend from the
independent claims.
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Appeal2018-004242
Application 12/675,394
Rei ections II and III
Claims 40-43, 51, and 52 depend from independent claims 20 and 33.
The Examiner does not rely on either McDermott or Lubock to remedy the
above-discussed deficiency in the independent claims' rejection. Thus, we
do not sustain the rejections of claims 40-4 3, 51, and 5 2.
DECISION
We REVERSE the Examiner's obviousness rejections of claims 20,
21, 23, 24, 26, 27, 33, 40-47, and 50-52.
REVERSED
5