Jim Harrison et al.

Patent Trials and Appeals Board

Jun 25, 2020

13534788 - (D) (P.T.A.B. Jun. 25, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
13/534,788 06/27/2012 Jim G. Harrison 8150BSC0063 2451
121974 7590 06/25/2020
KACVINSKY DAISAK BLUNI PLLC
2601 Weston Parkway
Suite 103
Cary, NC 27513
EXAMINER
DAVID, SHAUN L
ART UNIT PAPER NUMBER
3771
NOTIFICATION DATE DELIVERY MODE
06/25/2020 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):
bbonneville@kdbfirm.com
docketing@kdbfirm.com
ehysesani@kdbfirm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JIM G. HARRISON, STEVE A. PICKETT,
LESLIE P. SHERWOOD, and MARSHA M. WEINER
____________

Appeal 2019-006460
Application 13/534,788
Technology Center 3700
____________

Before BRETT C. MARTIN, MICHELLE R. OSINSKI, and
JEREMEY M. PLENZLER, Administrative Patent Judges.

OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1–5, 7–10, and 13–22.2 We have jurisdiction over
the appeal under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Boston Scientific
Scimed, Inc. Appeal Br. 2.
2 Claims 6, 11, and 12 are cancelled. Reply to Non-Final Office Action
(July 2, 2018), 2–3.
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Application 13/534,788

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THE CLAIMED SUBJECT MATTER
Claims 1, 13, and 17 are independent. Claim 1 is reproduced below.
1. A stent delivery system, comprising:
a guide catheter;
a push catheter slidably disposed over the guide catheter;
a stent slidably disposed over the guide catheter and
disposed adjacent to a distal end of the push catheter, the stent
having an opening formed therein;
a cylindrical member disposed between the guide catheter
and push catheter, the cylindrical member having a longitudinal
notch formed therein; and
a cantilever disposed within the longitudinal notch,
wherein the cantilever includes a proximal end fixed to the
cylindrical member and a free distal end extending from the fixed
proximal end, wherein the free distal end is configured to project
into the stent opening.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:

Name Reference Date
Pinchuk US 2007/0282436 A1 Dec. 6, 2007
Rust US 2011/0301702 A1 Dec. 8, 2011

REJECTIONS
I. Claims 1–5, 7, 9, 10, and 13–22 stand rejected under 35 U.S.C.
§ 102(e) as anticipated by Rust. Final Act. 2–6.
II. Claim 8 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Rust and Pinchuk. Id. at 7.

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OPINION
Rejection I
The Examiner finds that Rust discloses, among other things, (i) a stent
delivery system comprising a stent (prosthetic heart valve 114) disposed
adjacent to a distal end of a push catheter (sheath 104) and (ii) a cylindrical
member (coupling structure 502) disposed between a guide catheter
(connector shaft 115) and the push catheter (sheath 104). Final Act. 2–3
(citing Rust Figs. 1B, 2B, 5B).
With respect to the stent (prosthetic heart valve 114) being disposed
“adjacent” to a distal end of the push catheter (sheath 104) as claimed, the
Examiner determines “that ‘adjacent’ is a broad term” (Final Act. 8) and
interprets “adjacent” as meaning “situated near, close to, or adjoining”
(Ans. 5). The Examiner takes the position that the term “adjacent” provides
no indication as to whether adjacent elements overlap or not. Ans. 5. In
other words, the Examiner takes the position that “[e]lements can be
adjacent to each other when the[y] overlap, and elements can be adjacent to
each other without overlapping.” Id. The Examiner continues that “Rust
shows that the stent is disposed adjacent to the distal end of the sheath, when
‘adjacent’ is interpreted as discussed above.” Id. at 6.
More particularly the Examiner states, “Fig. 1B shows Rust’s delivery
device, and shows stent 114 disposed adjacent to a distal end of sheath 104,
because stent 114 is ‘situated near’ and is ‘close to’ the distal end of sheath
104” and that “Rust also shows this ‘adjacent’ relationship in Fig. 1C.” Id.
Moreover, the Examiner notes that “in Fig. 1B, the distal end of the sheath
104 is ‘adjacent’ to stent 114 while still having the coupling structure
(corresponding to the claimed cylindrical member) being disposed between
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the connector shaft (corresponding to the claimed guide catheter) and the
sheath (corresponding to the claimed push catheter).” Id. at 7.
Appellant disagrees with the Examiner regarding the proper
interpretation to be accorded to the claim term “adjacent.” According to
Appellant, “one of ordinary skill would readily understand the term
‘adjacent’ in the context of its plain meaning and the systems and method
recited in claims 1, 13, and 17, to mean nearby, having a common endpoint
or border, or immediately preceding or following; none of which refer to
components with any sort of overlap (let alone complete overlap), as the
Examiner argues.” Appeal Br. 12; Reply Br. 6. Appellant argues that the
Examiner relies on “a strained and unreasonable interpretation of ‘adjacent’
in that it . . . allows the heart valve 114, which is disposed entirely within the
sheath (104) . . . to be characterized as adjacent to a distal end of the sheath
104.” Appeal Br. 11.
We give claim terms “their broadest reasonable interpretation
consistent with the specification” and “in light of the specification as it
would be interpreted by one of ordinary skill in the art.” In re Am. Acad. Of
Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citations omitted).
According to the Federal Circuit:
The correct inquiry in giving a claim term its broadest reasonable
interpretation in light of the specification is not whether the
specification proscribes or precludes some broad reading of the
claim term adopted by the examiner. And it is not simply an
interpretation that is not inconsistent with the specification. It is
an interpretation that corresponds with what and how the
inventor describes his invention in the specification, i.e., an
interpretation that is “consistent with the specification.” In re
Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997) (citation and
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internal quotation marks omitted); see also In re Suitco Surface,
603 F.3d 1255, 1259–60 (Fed. Cir. 2010).
In re Smith Int’l, Inc., 871 F.3d 1375, 1382-83 (Fed. Cir. 2017).
The Specification states that “[t]he stent 20 may be positioned on a
distal portion of the guide catheter 12, which may be located distal of the
push catheter 14, and the stent 20 may abut or otherwise be disposed
adjacent to a distal end 30 of the push catheter 14.” Spec. 6:9–12 (emphasis
omitted). We note that the Specification uses different language to describe
the position of the stent relative to the distal portion of the guide catheter
(i.e., “positioned on”), as opposed to the position of the stent relative to the
distal end of the push catheter (i.e., “abut or otherwise be disposed adjacent
to”). The use of the term “positioned on” with respect to hollow, cylindrical
members like a stent and guide catheter would generally be viewed as
describing an overlapping and/or concentric relationship between the
components. That the Specification does not use “positioned on” when
describing the stent relative to the distal end of the push catheter, and instead
uses different terminology, is suggestive that the stent is not positioned on
(i.e., overlapping with) the distal end of the push catheter. In addition, the
claim also uses different language when describing the position of the stent
relative to the guide catheter (i.e., “slidably disposed over”), as opposed to
the position of the stent relative to the distal end of the push catheter (i.e.,
“disposed adjacent to”). The different terminology in the claim also
suggests that a stent disposed adjacent to a distal end of the push catheter is
not referring to a stent that is slidably disposed relative to a distal end of the
push catheter.
Moreover, the claim term “push catheter” implies a catheter that is
configured to transmit a pushing force to a component. The recitation that
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the “stent . . . [is] disposed adjacent to a distal end of the push catheter” (i.e.,
a catheter that pushes the stent along the guide catheter by virtue of the stent
being next to the push catheter) further supports that the stent is not simply
being contained within or enveloped by the push catheter.
When read in light of the Specification, and in context with rest of the
claim, we determine that it is unreasonable to interpret the term “adjacent” to
mean merely “situated near” or “close to,” as the Examiner proposes. See
American Heritage Online Dictionary (providing a first definition of
“adjacent” as “[c]lose to; lying near”). This is because in the context of the
Specification, the term “adjacent” relates to a positioning between the stent
and the push catheter (i) which is different than the overlapping relationship
between the stent and guide catheter and (ii) in which the push catheter can
transmit a pushing force on the stent. Thus, in the context of the
Specification, Appellant’s urged interpretation of “having a common
endpoint or border” (Appeal Br. 12; Reply Br. 6; Merriam-Webster Online
Dictionary (providing a second definition of “adjacent” as “having a
common endpoint or border”)) is invoked. See also American Heritage
Online Dictionary (providing a second definition of “adjacent” as “[n]ext to;
adjoining”).
The Examiner’s finding that Smith discloses “a stent . . . disposed
adjacent to a distal end of the push catheter” as recited in independent claims
1, 13, and 17 is not adequately supported when the term “adjacent” is given
its broadest reasonable interpretation in light of the Specification, which
requires the stent to “hav[e] a common endpoint or border” with the distal
end of the push catheter, such that the push catheter is capable of
transmitting a pushing force on the stent. The Examiner finds only that in
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Rust’s Figures 1B and 1C, stent 114 is close to the distal end of sheath 104,
but makes no finding regarding stent 114 having a common endpoint or
border with sheath 104, such that sheath 104 is capable of transmitting a
pushing force on stent 114. We further agree with Appellant that, although
sheath 104 is proximally retracted relative to stent 114 (Rust¶¶ 23, 27; Fig.
1C), such a configuration “which [might] allegedly teach or suggest the
recited ‘adjacent’ configuration necessarily/inherently lack[s] the recited
‘between’ configuration” of the coupling structure 122, 502 being “between
the guide catheter [(connector shaft 115)] and push catheter [(sheath 104)]”
as also required by independent claims 1, 13, and 17. Appeal Br. 12; Rust
Fig. 1C (depicting coupling structure 122 disposed distally of withdrawn
sheath 104).
For the foregoing reasons, we are persuaded by Appellant’s arguments
that the Examiner erred in finding that Rust discloses all of the limitations of
independent claims 1, 13, and 17. We do not sustain the rejection of claims
1, 13, and 17, nor claims 2–5, 7, 9, 10, 14–16, and 18–22 which depend
therefrom, under 35 U.S.C. § 102(e) as anticipated by Rust.

Rejection II
For the same reasons as discussed above in connection with
Rejection I, the Examiner’s rejection relies on the Examiner’s erroneous
finding that Rust discloses “a stent . . . disposed adjacent to a distal end of
the push catheter” and “a cylindrical member disposed between the guide
catheter and push catheter” as claimed. Final Act. 7. The Examiner does
not explain how Pinchuk would remedy the deficiency of Rust. Id.
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Accordingly, we do not sustain the rejection of claim 8 under 35 U.S.C.
§ 103(a) as unpatentable over Rust and Pinchuk.

CONCLUSION
In summary:
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1–5, 7, 9,
10, 13–22
102(e) Rust 1–5, 7, 9,
10, 13–22
8 103(a) Rust, Pinchuk 8
Overall
Outcome
1–5, 7–10,
13–22

REVERSED