Robert C. Farnan

Patent Trials and Appeals Board

Dec 4, 2019

13788039 - (D) (P.T.A.B. Dec. 4, 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.
13/788,039 03/07/2013 Robert C. Farnan 21819J-2038U-
C00016891.US
4385
89554 7590 12/04/2019
Christopher & Weisberg, P.A.
1232 N. University Drive
Plantation, FL 33322
EXAMINER
SO, ELIZABETH K
ART UNIT PAPER NUMBER
3792
NOTIFICATION DATE DELIVERY MODE
12/04/2019 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):
cwdocketing@cardinal-ip.com
ptomail@cwiplaw.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 ROBERT C. FARNAN
____________

Appeal 2018-005581
Application 13/788,039
Technology Center 3700
____________

Before GEORGE R. HOSKINS, WILLIAM A. CAPP, and
MICHAEL L. WOODS, Administrative Patent Judges.

WOODS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–9, 12, 13, 22, 25, and 26. Appeal
Br. 3. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). The Real Party in Interest is CircuLite, Inc. Appeal Br. 1.
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Application 13/788,039

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CLAIMED SUBJECT MATTER
Appellant’s invention relates “to cannulae for use in moving bodily
fluids.” Spec ¶ 1.
Of the rejected claims, claims 1 and 26 are independent. Appeal Br.
(Claims App’x). We reproduce claim 1, below, with emphasis added to a
particular limitation discussed in this Decision.
1. A malleable cannula for moving blood from a
chamber of the heart of a patient to a heart pump, the malleable
cannula comprising:
a polymeric jacket having proximal and distal ends,
wherein the proximal end is configured to be coupled to the
heart pump; and
a malleable member surrounded by the jacket, the
malleable member having a proximal end, a distal end, and a
lumen extending therebetween and along a lengthwise axis of
the malleable cannula, the lumen being configured to transfer
blood from the chamber of the heart to the heart pump, the
malleable member including a longitudinal strut extending
parallel to the lengthwise axis and a plurality of non-helical
transverse struts coupled to and extending laterally from the
longitudinal strut and around at least a portion of the lumen, the
malleable member configured to assume and maintain a formed
shape of the malleable cannula,
wherein the longitudinal strut is discontinuous along a
lengthwise dimension thereof and is comprised of a plurality of
spaced apart segments.
Id. (emphasis added).
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Jacobsen US 2003/0069522 A1 Apr. 10, 2003
Wübbeling US 2010/0036364 A1 Feb. 11, 2010

Appeal 2018-005581
Application 13/788,039

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REJECTION
Claims 1–9, 12, 13, 22, 25, and 26 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Jacobsen and Wübbeling. Final Act. 4.
OPINION

I. Examiner’s Rejection
In rejecting the claims, the Examiner relies on Jacobsen for meeting
several of the claimed limitations, citing in part Jacobsen’s Figure 13. Final
Act. 5 (rejecting independent claim 1); see id. at 10 (applying the rejection
of claim 1 to independent claim 26). We reproduce Jacobsen’s Figure 13,
below:

Figure 13 depicts “a perspective, partially fragmented, view of a guidewire
in accordance with principles” of one of Jacobsen’s embodiments. Jacobsen
¶ 25 (emphasis added). The Examiner finds that Jacobsen’s guidewire
satisfies the claimed “malleable member.” See Final Act. 5–6. The
Examiner cites to Jacobsen’s disclosure that its guidewire—the “malleable
member”—is “configured to have torsional stiffness and bending flexibility
for maneuvering in a patient’s vasculature.” Id. at 6 (citing Jacobsen ¶¶ 73,
82–83). The Examiner further finds that Jacobsen’s guidewire is a super
elastic material. Ans. 9 (citing Jacobsen ¶¶ 85, 99).
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Application 13/788,039

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To address the claimed “malleable member surrounded by [a
polymeric] jacket,” the Examiner relies on a combination of Jacobsen and
Wübbeling. Final Act. 6. The Examiner finds that Jacobsen discloses a
polymeric jacket, but the jacket is on the inside of the malleable member.
See id. at 6 (citing Jacobsen ¶¶ 10, 52) (“Jacobsen shows that the polymeric
jacket is inside the malleable member.”) The Examiner relies on Wübbeling
for addressing this deficiency, finding that Wübbeling teaches a polymeric
jacket that surrounds a malleable member. Id. (citing Wübbeling ¶¶ 7, 11,
25, Fig. 5a). In combining Jacobsen with Wübbeling, the Examiner reasons
that a skilled artisan would have modified Jacobsen’s jacket to surround its
malleable member, as taught by Wübbeling, “for the purpose of preventing
leakage of liquid through the slots.” Id.

II. Appellant’s Argument
Appellant contends that “the Examiner has construed the term
malleable to mean anything flexible, an unreasonably broad construction.”
Appeal Br. 4.
We agree.

III. Analysis
The issue is whether Jacobsen’s flexible, super elastic guidewire
satisfies a broad, but reasonable, construction of the claimed “malleable
member configured to assume and maintain a formed shape.”
The Examiner interprets “malleable” to mean “something as flexible,
pliable, and non-brittle so that it does not break when manipulated.” Ans. 8–
9. In applying this interpretation, the Examiner finds that Jacobsen’s
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“flexible guide wire . . . is a superelastic material” but “is malleable for
being compliant to maneuver through said vasculature without incurring
damage to the vasculature.” Id. at 9 (citing Jacobsen ¶¶ 85, 99) (emphasis
added).
Appellant, on the other hand, submits that “the malleable member . . .
provides plasticity—plasticity meaning ‘the ability to retain a shape attained
by pressure deformation.’” Appeal Br. 5 (citing https://www/merriam-
webster.com/dictionary/plasticity). Appellant proposes that a malleable
material “retain[s] its shape . . . on its own, without something else
imparting a force on it, and when that force is removed.” Reply Br. 2–3.
As an initial matter of claim construction, we look to the Specification
for context regarding the broadest reasonable interpretation of the claim term
“malleable.” See In re Morris, 127 F.3d 1048, 1054 (holding that during
prosecution, claim limitations are given the broadest reasonable
interpretation consistent with the specification) (internal citations omitted).
The Specification describes:
The malleable member 94 is configured to provide the inflow
cannula 50 with a degree of plasticity allowing the physician to
bend and shape the inflow cannula 50 to fit the patient’s
anatomy without breakage.
. . .
With the malleable member 94, the inflow cannula 50 is
configured to retain the desired shape without relaxing into an
unformed and loose shape.
Spec. ¶¶ 32, 33 (emphases added).
The Specification describes that the malleable member provides the
inflow cannula “a degree of plasticity” that allows a physician to bend and
shape the cannula. Id. ¶ 32. The Specification further describes that the
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inflow cannula retains its desired shape without relaxing “with the malleable
member.” Id. ¶ 33. We determine that the Specification supports
Appellant’s construction that the malleable member undergoes plastic
deformation that retains its shape after a deforming force is removed. See
Reply Br. 2–3.
Turning to the pertinent claim limitation, Claim 1 recites, inter alia,
“the malleable member configured to assume and maintain a formed shape
of the malleable cannula.” Appeal Br. 8 (Claims App’x) (emphasis added).
Because the claim explicitly requires that the malleable member is
configured to “assume and maintain a formed shape of the malleable
member,” the claim language itself supports Appellant’s proposed
construction, in that a malleable member retains its shape “on its own,
without something else imparting a force on it, and when that force is
removed.” Reply Br. 2–3.
Furthermore, the Examiner’s interpretation of the term “malleable” is
unreasonably broad because it encompasses any material that is flexible,
whether it undergoes plastic or elastic deformation. Indeed, the Examiner
finds that Jacobsen’s super elastic guidewire is malleable (see Ans. 9), even
though an elastic material undergoes elastic, rather than plastic, deformation.
In other words, even though an elastic material is flexible, upon removal of a
deforming force, the elastic material generally returns to its original shape,
which is opposite plastic deformation. See, e.g.,
https://www.britannica.com/science/plasticity (“Plasticity enables a solid
under the action of external forces to undergo permanent deformation
without rupture. Elasticity, in comparison, enables a solid to return to its
Appeal 2018-005581
Application 13/788,039

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original shape after the load is removed. . . . Plastic deformation is a
property of ductile and malleable solids.”) (last visited December 2, 2019).
Finally, the Examiner relies on Wübbeling for its teaching of a
polymeric jacket (Final Act. 6), and Wübbeling does not remedy the
Examiner’s reliance on Jacobsen.
For the foregoing reasons, we are not persuaded that Jacobsen’s super
elastic guide wire satisfies the claimed malleable member. As such, we
reverse the rejection of claims 1–9, 12, 13, 22, 25, and 26 as unpatentable
over Jacobsen and Wübbeling.
CONCLUSION
The Examiner’s rejection is reversed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–9, 12,
13, 22,
25, 26
103 Jacobsen,
Wübbeling
1–9, 12, 13,
22, 25, 26

REVERSED

Notice of References Cited

Application/Control No.

Applicant(s)/Patent Under Patent
Appeal No.
Examiner

Art Unit

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U.S. Patent and Trademark Office
PTO-892 (Rev. 01-2001) Notice of References Cited Part of Paper No.
Plasticity
Plasticity, ability of certain solids to flow or to change shape permanently when subjected to
stresses of intermediate magnitude between those producing temporary deformation, or elastic
behaviour, and those causing failure of the material, or rupture (see yield point). Plasticity
enables a solid under the action of external forces to undergo permanent deformation without
rupture. Elasticity, in comparison, enables a solid to return to its original shape after the load is
removed. Plastic deformation occurs in many metal-forming processes (rolling, pressing,
forging) and in geologic processes (rock folding and rock flow within the earth under extremely
high pressures and at elevated temperatures).
Plastic deformation is a property of ductile and malleable solids. Brittle materials, such as cast
iron, cannot be plastically deformed, though at elevated temperatures some, such as glass,
which is not a crystallized solid, do undergo plastic flow.
Plasticity, as the name of a science, refers either to mathematical descriptions of what happens
in plastic deformation in terms of stresses, strains, and loads or to physical explanations of
plastic flow in terms of atoms, crystals, grains, and motions of structural defects (dislocations)
within crystals.
CITATION INFORMATION
ARTICLE TITLE: Plasticity
WEBSITE NAME: Encyclopaedia Britannica
PUBLISHER: Encyclopaedia Britannica, Inc.
DATE PUBLISHED: 26 April 2016
URL: https://www.britannica.com/science/plasticity
ACCESS DATE: December 02, 2019
Page 1 of 1Plasticity -- Britannica Online Encyclopedia
12/2/2019https://www.britannica.com/print/article/463769