Ex Parte Weber et al

Board of Patent Appeals and Interferences

Jul 27, 2012

11079756 (B.P.A.I. Jul. 27, 2012)

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