Kenneth D. Harlan

Patent Trials and Appeals Board

Sep 26, 2019

15061594 - (D) (P.T.A.B. Sep. 26, 2019)

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.
15/061,594 03/04/2016 Kenneth D. Harlan 2006P02878US03 2425
24737 7590 09/26/2019
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus Avenue
Suite 340
Valhalla, NY 10595
EXAMINER
HERRING, LISA L
ART UNIT PAPER NUMBER
1741
NOTIFICATION DATE DELIVERY MODE
09/26/2019 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):
katelyn.mulroy@philips.com
marianne.fox@philips.com
patti.demichele@Philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KENNETH D. HARLAN
____________

Appeal 2019-001567
Application 15/061,594
Technology Center 1700
____________

Before CATHERINE Q. TIMM, JEFFREY B. ROBERTSON, and
JAMES C. HOUSEL, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL1

STATEMENT OF THE CASE

Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 22–25, 28, and 30. (Appeal Br. 1.) We have
jurisdiction pursuant to 35 U.S.C. § 6(b).
We AFFIRM.

1This Decision includes citations to the following documents: Specification
filed March 4, 2016 (“Spec.”); Final Office Action mailed April 19, 2018
(“Final Act.”); Appeal Brief filed August 20, 2018 (“Appeal Br.”);
Examiner’s Answer mailed October 16, 2018 (“Ans.”); and Reply Brief filed
December 14, 2018 (“Reply Br.”).
2 We use the word “Appellant” to refer to “Applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as
Koninklijke Philips N.V. (Appeal Br. 3.)
Appeal 2019-001567
Application 15/061,594

2
THE INVENTION
Appellant states the invention relates to “improved devices and
methods for the delivery of laser energy within a mammalian subject[,] and
more specifically, to fiber optic guidewires.” (Spec. ¶ 2.)
Claim 22 is representative and reproduced below from the Claims
Appendix to the Appeal Brief:
22. A method of manufacturing a guidewire, comprising:
providing a hypotube having a proximal end and a distal
end and a plurality of apertures disposed in a wall of the
hypotube between the proximal end and the distal end;
placing two or more optical fibers at least partially within
the hypotube; and
introducing an adhesive material into the hypotube, and
allowing the adhesive material to wick along the optical fibers
and into at least one of the plurality of apertures of the wall of
the hypotube, such that the adhesive material forms an
adhesive plug that fixes the optical fibers relative to the
hypotube.

(Appeal Br. (Claims Appendix) 7.)
REJECTIONS
1. The Examiner rejected claims 22–24, 28, and 30 under pre-AIA 35
U.S.C. § 103(a) as obvious over Hillsman et al. (US 5,643,251, issued
July 1, 1997, hereinafter “Hillsman”), O’Connor et al. (US 6,887,235
B2, issued May 3, 2005, hereinafter “O’Connor”), and Jacobsen et al.
(US 7,878,984 B2, issued February 1, 2011, hereinafter “Jacobsen”).
2. The Examiner rejected claim 25 under pre-AIA 35 U.S.C. § 103(a) as
obvious over Hillsman, O’Connor, Jacobsen, and Powers et al. (US
5,810,789, issued September 22, 1998, hereinafter “Powers”).
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(Final Act. 3–5.)
We select independent claim 22 for disposition of this appeal, which
is representative of the subject matter claimed, and decide the appeal as to
all grounds of rejection on the basis of the arguments presented for this
claim (see Appeal Br. 6). 37 C.F.R. § 41.37(c)(1)(iv).
Rejection 1
ISSUE
The Examiner found Hillsman discloses a method of manufacturing a
guide wire for a catheter with a flexible body where the guide wire assembly
comprises a hypotube, a glue plug, and an optical fiber bundle. (Final
Act. 3.) The Examiner found Hillsman fails to disclose a plurality of
apertures disposed in a wall of the hypotube between the proximal end and
the distal end, and allowing the adhesive material to wick into at least one of
the plurality of apertures. (Id.) The Examiner found O’Connor discloses a
catheter including a reinforcing tube, such as a hypotube similar to Hillsman,
where the hypotube comprises a plurality of apertures extending in a
direction between the proximal and distal ends of the heating catheter to
provide for variable stiffness to enhance performance of the catheter. (Id.)
The Examiner determined it would have been obvious to have added a
plurality of apertures in the hypotube of Hillsman based on the teachings in
O’Connor in order to enhance the guide wire of Hillsman to provide for
variable stiffness. (Id. at 3–4.) The Examiner relied on Jacobson for support
that adhesives placed in the vicinity of apertures in a wall would have
wicked into at least one of the plurality of apertures. (Id. at 4.)
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4
Appellant argues Hillsman’s device includes a coil that provides
certain flexibility characteristics to Hillsman’s device, whereas O’Connor
does not disclose adding a plurality of apertures to a flexible coiled device to
provide for variable stiffness to enhance performance. (Appeal Br. 4.) In
particular, Appellant contends the Examiner’s reasoning is conclusory
because neither Hillsman nor O’Connor disclose a need to provide a device
with both coils and a plurality of apertures, such that the Examiner’s
rationale is directed to solving a problem that doesn’t exist. (Id. at 5.)
Accordingly, the dispositive issue with respect to this rejection is:
Has Appellant identified a reversible error in the Examiner’s position
that it would have been obvious to have added a plurality of apertures to the
hypotube of Hillsman as disclosed in O’Connor?
DISCUSSION
We are not persuaded by Appellant’s argument that one of ordinary
skill in the art would not have had a reason to incorporate a plurality of
apertures into the hypotube of Hillsman as disclosed in O’Connor.
O’Connor discloses a “reinforcing tube” includes apertures in order “to
provide variable stiffness” to a heating catheter shaft. (O’Connor, col. 1, l.
64 – col. 2, l. 4.) O’Connor discloses the reinforcing tube may be a stainless
steel hypotube, which is provided with apertures in order to obtain a
torqueable and pushable catheter at the proximal end and is soft and flexible
at the distal end. (O’Connor, col. 4, l. 59 – col. 5, l. 10, Fig. 1A, describing a
reinforcing tube 18 with slits, slots, channels, or grooves 20.) Thus, in
contrast to Appellant’s argument that the Examiner’s rationale is conclusory,
O’Connor provides support for the Examiner’s position that incorporating
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the apertures into Hillsman’s hypotube would provide for additional
flexibility. (See Ans. 4–5.)
In addition, Appellant’s arguments rely heavily on the presence of
coils in Hillsman in order to contend the proposed modification of Hillsman
would be superfluous, because there would be no need to provide a device
with coils and a plurality of apertures. (Appeal Br. 4–5.) We are not
persuaded by Appellant’s position. In this regard, Hillsman discloses coils
may be used instead of the polymer jacket at the distal end of the hypotube.
(Hillsman, col. 8, ll. 54–61.) Thus, the presence of coils is not required by
Hillsman; rather the presence of coils is an alternative embodiment. Indeed,
the Examiner’s proposed modifications are consistent with Hillsman itself,
which provides for different combinations of materials (polymer jacket, coil)
in order to adjust the flexibility of the overall guidewire as discussed above.
(Hillsman, col. 8, l. 22 – col. 9, l. 10.) Thus, we agree with the Examiner
that O’Connor addresses a mechanism for providing variable stiffness to the
hypotube, which, even in the presence of coils in Hillsman, would provide
additional ability for providing flexibility to the overall guidewire in
Hillsman. (Ans. 4–5.)
Accordingly, we affirm the Examiner’s rejection of claim 22, and
claims 23, 24, 28, and 30 dependent therefrom.
Rejection 2
Regarding claim 25, which depends from claim 22, Appellant does
not present any additional arguments, but rather relies on the dependency of
claim 25 from claim 22 as a basis for patentability. Accordingly, we affirm
the Examiner’s rejection of claim 25 for similar reasons as discussed above
for claim 22.
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DECISION
Claims
Rejected
Basis Affirmed Reversed
22–24 and
28–30
§ 103(a)
Hillsman,
O’Connor,
Jacobsen
22–24 28,
and 30

25 § 103(a)
Hillsman,
O’Connor,
Jacobsen, Powers
25
Overall
Outcome
22–25, 28,
and 30

FINALITY AND RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED