Ex Parte Weber et alDownload PDFBoard of Patent Appeals and InterferencesJul 27, 201211079756 (B.P.A.I. Jul. 27, 2012) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/079,756 03/14/2005 Jan Weber 1001.2271101 2885 11050 7590 07/27/2012 SEAGER, TUFTE & WICKHEM, LLC 1221 Nicollet Avenue Suite 800 Minneapolis, MN 55403 EXAMINER DOWE, KATHERINE MARIE ART UNIT PAPER NUMBER 3734 MAIL DATE DELIVERY MODE 07/27/2012 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 JAN WEBER, KARL A. JAGGER, and TRACEE EIDENSCHINK ____________________ Appeal 2010-001605 Application 11/079,756 Technology Center 3700 ____________________ Before EDWARD A. BROWN, MICHAEL L. HOELTER, and BENJAMIN D.M. WOOD, Administrative Patent Judges. BROWN, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-001605 Application 11/079,756 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the rejection of claims 1-16. (App. Br. 5). Claims 17 and 18 have been cancelled. (App. Br. 4). We have jurisdiction over this appeal under 35 U.S.C. § 6(b). We REVERSE. THE CLAIMED SUBJECT MATTER Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A catheter assembly comprising: a catheter shaft, the catheter shaft having a proximal region, a distal region, and a rotational seal therebetween, the rotational seal comprising a first component and a second component, the first component fixedly engaged to the proximal region of the catheter shaft, the second component fixedly engaged to the distal region of the catheter shaft, the first component and the second component being overlappingly engaged, and the rotational seal having an activated state and a non-activated state, in the non-activated state the first component and the second component being separated by a gap which provides for the distal region of the catheter shaft to be rotatable relative to the proximal region of the catheter shaft, in the activated state the first component and the second component being sealingly engaged together such that the distal region is made static relative to the proximal region; wherein a portion of the first component of the rotational seal is engaged with a portion of the second component of the rotational seal in both the activated and non-activated states to prevent axial Appeal 2010-001605 Application 11/079,756 3 separation of the proximal region of the catheter shaft from the distal region of the catheter shaft. THE REJECTIONS The following rejections under 35 U.S.C. § 103(a) are before us for review: 1. The rejection of claims 1, 5-9, 13, and 14 as unpatentable over Bigus (US 6,540,719 B2, issued Apr. 1, 2003) and Frost (US 2004/0041395 A1, pub. Mar. 4, 2004). 2. The rejection of claims 2-4 as unpatentable over Bigus, Frost, and Maseda (US 6,514, 237 B1, issued Feb. 4, 2003). 3. The rejection of claims 10, 15, and 16 as unpatentable over Bigus, Frost, and Fischell (US 5,749,825, issued May 12, 1998). 4. The rejection of claims 11 and 12 as unpatentable over Bigus, Frost, and Brown (US 6,471,672 B1, issued Oct. 29, 2002). ANALYSIS Claims 1, 5-9, 13, and 14 – Bigus and Frost The Examiner found Bigus discloses a catheter assembly comprising a rotational seal including a first component (sealing member 24) fixed to the proximal region of a shaft and a second component (balloon skirt 23) fixed to the distal region of the shaft. (Ans. 3; see also Bigus col. 4, ll. 52-54, col. 5, ll. 10-13, Fig. 2). The Examiner found Bigus' catheter assembly has a non-activated state, in which the first and second components are separated by a gap (lumen gap 35) and the distal region is rotatable relative to the proximal region of the shaft, and an activated state, in which the first and second components are sealingly engaged together such that the distal region Appeal 2010-001605 Application 11/079,756 4 is static relative to the proximal region. (Ans. 3-4, citing Bigus col. 5, ll. 22- 31, 35-44, Fig. 2). The Examiner found Bigus does not disclose that portions of the first and second components are engaged in the activated and non-activated states to prevent separation of the proximal region from the distal region of the catheter shaft. (Ans. 4-5). The Examiner found Frost discloses a rotational seal (swivel coupling 10) between a proximal shaft region (male member 12) and a distal shaft region (female member 14), and a rotational seal comprising a first component (end portion 24) and a second component (end portion 26) that are overlappingly engaged. (Ans. 5; see also Frost para. [0012], Fig. 2). The Examiner found Frost's "first component and second components are always engaged to prevent longitudinal axial separation of the proximal region of the shaft from the distal region of the shaft while still allowing axial rotation." (Ans. 5, citing Frost para. [0025]) (emphasis added). The Examiner concluded that it would have been obvious to one of ordinary skill in the art to modify Bigus' device "to prevent undesired longitudinal separation and give the operator increased control." (Ans. 5-6). Appellants contend that the combination of Bigus and Frost does not teach or suggest the claim limitation, "wherein a portion of the first component . . . is engaged with a portion of the second component . . . in both the activated and non-activated states to prevent axial separation of the proximal region of the catheter shaft from the distal region of the catheter shaft." (App. Br. 14) (emphasis added). Appellants state Frost discloses "[t]he ball bearings 18 serve as a thrust bearing to maintain the male member 12 in association with the female member." (App. Br. 15, citing Frost para. Appeal 2010-001605 Application 11/079,756 5 [0027]). Appellants contend "Frost appears to teach the ball bearings 18 in the ball race 74 defined by the annular shaped grooves 30 and 66 prevent the axial separation." (App. Br. 20-21). In response to these contentions, the Examiner stated: The Examiner notes the rotational seal of Frost contains additional components, such as the ball bearings, and that all the components work together to prevent axial movement between the proximal and distal ends of the device. However, the claim limitations do not recite the rotational seal 'consists of' the first and second components and thus the rotational seal is not limited to having only the first and second components. (Ans. 10) (emphasis added). Accordingly, we understand that the Examiner's combination incorporates Frost's ball bearings and "all the components" of the coupling that work together to prevent the axial movement with Bigus' catheter. Appellants contend that the Examiner's combination of Bigus and Frost does not meet the claim limitation "in the activated state the first component and the second component being sealingly engaged together such that the distal region is made static relative to the proximal region." (App. Br. 17). Appellants contend that "[m]odifying Bigus et al. to include the ball race (i.e. ball bearings and lubricant) would appear to result in a catheter that is rotatable relative to the female member at all times." (App. Br. 17; see also Reply Br. 2). We agree with Appellants that the Examiner has firstly not articulated an adequate reason why one of ordinary skill in the art would have turned to Frost's teaching of a swivel coupling used with hoses and including Appeal 2010-001605 Application 11/079,756 6 lubricating grease to provide rotation for use in an intravascular catheter assembly. (App. Br. 15-16). We also agree with Appellants that incorporating Frost's ball bearings and lubricant into Bigus' catheter would result in the distal region being rotatable, not static, relative to the proximal region, such that the combination does not meet every limitation of claim 1. Accordingly, we do not sustain the rejection of claim 1, and claims 5-9 which depend from claim 1. Independent claim 13 is directed to a system for delivery of a stent to a vessel bifurcation comprising a catheter similar to the catheter assembly recited in claim 1. Hence, we also do not sustain the rejection of claim 13, and claim 14 which depends from claim 13. Claims 2-4 – Bigus, Frost, and Maseda Claims 2-4 depend from claim 1. The Examiner's application of Maseda to claims 2-4 (Ans. 6-7) does not cure the deficiencies of the Examiner's reliance on Bigus and Frost with respect to claim 1, as discussed supra. Hence, we do not sustain the rejection of claims 2-4. Claims 10, 15, and 16 – Bigus, Frost, and Fischell Claims 10 and 15 depend from claims 1 and 13, respectively. The Examiner's application of Fischell to claims 10 and 15 (Ans. 7-9) does not cure the deficiencies of the Examiner's reliance on Bigus and Frost for claims 1 and 13, as discussed supra. Hence, we do not sustain the rejection of claims 10 and 15. Independent claim 16 is directed to a method of treating a vessel bifurcation comprising, inter alia, the step of providing a stent delivery system that has features similar to those recited in claim 1. The Examiner's Appeal 2010-001605 Application 11/079,756 7 application of Fischell to claim 16 does not cure the deficiencies of the Examiner's reliance on Bigus and Frost for claim 1. Hence, we also do not sustain the rejection of claim 16. Claims 11 and 12 – Bigus, Frost, and Brown Claims 11 and 12 depend from claim 1. The Examiner's application of Brown to claims 11 and 12 (Ans. 9) does not cure the deficiencies of the Examiner's reliance on Bigus and Frost for claim 1, as discussed supra. Hence, we do not sustain the rejection of claims 11 and 12. DECISION The Examiner's decision rejecting claims 1-16 is reversed. REVERSED mls Copy with citationCopy as parenthetical citation