COOK MEDICAL TECHNOLOGIES LLC

Patent Trials and Appeals Board

Jan 24, 2020

13953022 - (D) (P.T.A.B. Jan. 24, 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.
13/953,022 07/29/2013 Darin Schaeffer 1000-553 4286
42715 7590 01/24/2020
Buchanan Van Tuinen LLC
P.O. Box 700
Perrysburg, OH 43552
EXAMINER
FREHE, WILLIAM R
ART UNIT PAPER NUMBER
3783
NOTIFICATION DATE DELIVERY MODE
01/24/2020 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):
pair@ipbybv.com
uspto@ipbybv.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DARIN SCHAEFFER and KAREN KOST
Appeal 2018-005214
Application 13/953,022
Technology Center 3700
Before EDWARD A. BROWN, JAMES P. CALVE, and
JILL D. HILL, Administrative Patent Judges.
HILL, 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 2–17, 21, and 23–25. Appellant’s
representative presented oral argument on January 7, 2020. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Cook Medical
Technologies LLC. Appeal Br. 3.
Appeal 2018-005214
Application 13/953,022

2
BACKGROUND
Independent claims 2 and 11 are pending. Claim 2, reproduced below
with certain limitations italicized, illustrates the claimed subject matter:
2. A medical device for treating a bodily passage having a
wall, said medical device comprising:
an elongate member having an elongate member proximal
end and an elongate member distal end, the elongate member
defining an infusion lumen and an inflation lumen and an outer
surface extending between the elongate member proximal end
and the elongate member distal end;
a first balloon attached to the outer surface of the elongate
member and adapted to move between a deflated configuration
and an inflated configuration, the first balloon comprising a first
balloon wall defining an infusion chamber and at least one
protuberance extending radially outward from the first balloon
wall, the infusion chamber in communication with the infusion
lumen, the at least one protuberance having a protuberance outer
surface and defining at least one protuberance pore in
communication with the infusion chamber such that fluid
introduced into the infusion chamber can pass through the at least
one protuberance pore, the protuberance outer surface disposed
radially outward from the first balloon wall; and
a second balloon attached to the outer surface of the
elongate member and disposed radially inward of the first
balloon, the second balloon adapted to move between a deflated
configuration and an inflated configuration and comprising a
second balloon wall defining an inflation chamber in
communication with the inflation lumen;
wherein the protuberance outer surface is adapted to
damage said wall of said bodily passage when the second balloon
is in the inflated configuration;
wherein the at least one protuberance pore comprises a
plurality of protuberance pores, each pore of the plurality of
protuberance pores having an opening defined on the
protuberance outer surface; and
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Application 13/953,022

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wherein the plurality of protuberance pores extends along
a length of the at least one protuberance relative to a longitudinal
axis of the elongate member.

REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Vigil US 5,873,852 February 23, 1999
Schaeffer US 2011/0060276 A1 March 10, 2011
Baumbach US 2011/0166547 A1 July 7, 2011

REJECTION
I. Claims 2–17, 21, and 23–25 stand rejected under 35 U.S.C.
103(a) as unpatentable over Schaeffer, Vigil, and Baumbach. Final Act. 2.
ANALYSIS
The Examiner finds, inter alia, that Schaeffer discloses a catheter
comprising an elongate member 300 with proximal and distal ends 242a,
242b, infusion and inflation lumens 216, 206, and a first balloon 42 with an
infusion chamber 242 and pores 243. Final Act. 2–3. The infusion lumen
216, infusion chamber 242, and pores 243 are in fluid communication. Id. at
3. The Examiner finds that the wall of Schaeffer’s first balloon 42 does not
have a protuberance extending radially outwardly therefrom, the
protuberance having an outer surface defining a protuberance pore “disposed
radially outward from the first balloon wall, wherein the protuberance outer
surface is adapted to damage said wall of a bodily passage.” Id. The
Examiner finds, however, that Vigil discloses a catheter with a balloon 16,
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4
18 having a protuberance 50 extending radially outward from the balloon
wall, the protuberance having a protuberance outer surface defining a
protuberance pore 48 in communication with an infusion chamber, “wherein
the protuberance outer surface is adapted to damage” the wall of the body
passage and to “provid[e] fluid communication between the internal body
vessel wall and balloon interior via the protuberance.” Id. at 4. The
Examiner concludes that it would have been obvious to modify Schaeffer to
include “at least one protuberance extending radially outward from the
balloon wall, the at least one protuberance” (1) “having a protuberance outer
surface,” (2) “defining at least one protuberance pore,” and (3) being
“adapted to damage said wall of a bodily passage as disclosed by Vigil for
the purpose of providing fluid communication between the internal body
vessel wall and balloon interior via the protuberance.” Id.
Claims 2, 11, 21, 23, and 24
Appellant argues claims 2, 11, 21, 23, and 24 as a group. We select
independent claim 2 as representative. Claims 11, 21, 23, and 24 stand or
fall with claim 2.
Appellant initially “traverses the rejection of these claims because the
Examiner has failed to satisfy the notice requirement established by
35 U.S.C. § 132 and because the Examiner has failed to establish a prima
facie showing of the obviousness of any rejected claim.” Appeal Br. 6.
According to Appellant, the Examiner “has failed to satisfy the notice
requirement at least because he has not identified each limitation of the
rejected claims in the cited references.” Id. at 8. More specifically,
Appellant contends that “the Examiner failed to identify any specific feature
or disclosure within the Vigil reference, or any other reference, as disclosing
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a surface on which an opening is defined for each pore of a plurality of
protuberance pores.” Id.
The Examiner responds that a skilled artisan “would have looked at
Vigil Figs. 2, 3, 5A, and 5B . . . and recognized that elements 50 and 48 have
outer surfaces.” Ans. 7.
We are not persuaded by Appellant’s argument. The Examiner’s
rejection does not reasonably prevent Appellant from recognizing the
evidentiary basis for, and seeking to counter, the grounds for rejection. The
Examiner finds that Vigil’s protuberance 50 has an outer surface. The outer
surface of element 50 of Vigil is shown in its Figures 5A and 5B, and the
outer surface of element 50 can be visually ascertained. That the Examiner
did not also annotate Figures 5A and 5B, or identify each area of the outer
surface of Vigil’s element 50, does not reasonably prevent Appellant from
recognizing and seeking to counter the grounds for rejection. Further,
Appellant’s disagreement with the Examiner’s finding does not establish a
failure to satisfy the notice requirement. Rather, it evidences that Appellant
was on notice of the basis of the Examiner’s rejection and was able to
respond accordingly. See Appeal Br. 12 (discussing Vigil, Figs. 4A, 4B, 5A,
5B); see also Ans. 2–4 (providing findings with annotations on Vigil’s
drawings); Reply Br. 1–2 (responding to findings in the Answer).
Appellant next argues that, even if the Examiner satisfied the notice
requirement, the combination of Schaeffer, Vigil, and Baumbach fails to
establish prima facie obviousness. Appeal Br. 9. According to Appellant,
the combination of Schaeffer, Vigil, and Baumbach fails to teach or suggest
“a protuberance outer surface on which an opening is defined for each pore
of the plurality of protuberance pores,” and the Examiner “omitted any
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discussion of the limitations that require a protuberance outer surface on
which an opening is defined for each pore of the plurality of protuberance
pores.” Id. at 10. Appellant contends that the Examiner fails to identify any
surface of Vigil “on which an opening is defined for each pore of the
plurality of pores,” instead making “conclusory statements that such an outer
surface exists ‘as seen in Vigil Figs. 5A and 5B.’” Id. at 11 (citing Final
Act. 9). Appellant further contends that each opening 48 of Vigil’s element
50 “is defined by a separate surface,” rather than being defined by a single
“protuberance outer surface.” Id. at 12; Reply Br. 3. Appellant provides the
following annotated version of Vigil’s Figure 5A, which is reproduced
below with numbering what Appellant contends are six separate surfaces.

Appellant thus argues that the above-identified six surfaces in Vigil’s
Figure 5A do not define a “protuberance outer surface” as claimed, because
the surfaces do not form a single contiguous surface. This argument requires
that we construe “protuberance outer surface” to be such a single contiguous
surface. The only possible support for such a narrow construction might
come from, for example, Appellant’s Figures 1, 2, and 5–9. However, we
decline to define “a protuberance outer surface” to be limited to such a
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single planar contiguous surface based solely on several of Appellant’s
drawings of various catheter embodiments (see Spec. ¶¶ 1122). It is well-
settled that limitations are not to be read into the claims from the
specification and a particular embodiment appearing in the written
description may not be read into a claim when the claim language is broader
than the embodiment. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir.
1993); Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875
(Fed. Cir. 2004). We, thus, are not persuaded that the above annotated six
surfaces in Vigil’s Figure 5A fail to teach a “protuberance outer surface,”
and we discern no error in the Examiner’s finding.
For these reasons, we are not persuaded that the Examiner’s rejection
of claim 2 contains error. Claims 11, 21, 23, and 24 fall with claim 2.
Claims 3–10 and 12–16
The Examiner finds that Schaeffer discloses the limitations of each of
dependent claims 3–10 (Final Act. 5–7) and 12–16 (Final Act. 10–12).
Regarding the rejection of these dependent claims, Appellant repeats
the above unavailing argument, and further argues, with respect to each of
claims 3–10 and 12–16, that the Examiner fails to provide “any articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.” Appeal Br. 13–14.
It appears to us that, because the Examiner finds the limitations set
forth in claims 3–10 and 12–16 to be disclosed by the primary reference
Schaeffer, and thus, the Examiner is not proposing to further modify
Schaeffer or the combination to include any of these limitations, the
Examiner is relying on the initial reason for combining Schaeffer with Vigil
(Final Act. 4) and for combining Schaeffer with Baumbach (id. at 5), as
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articulated for the rejection of independent claims 2 and 11. While such
practice may not be ideal, Appellant’s general argument does not inform us
of any reason why the Examiner’s findings for the dependent claims based
on Schaeffer are in error, or why the Examiner’s actual proffered reasoning
lacks a rational underpinning in the Examiner’s analysis of independent
claim 2, nor does Appellant point out any explicit way that the rejection of
the dependent claims lacks a rational basis or contains error. We, therefore,
are not persuaded that the Examiner’s reasoning in the stated rejection is in
error.
For these reasons, we sustain the rejection of claims 2–17, 21, and 23–
25 as unpatentable over Schaeffer, Vigil, and Baumbach.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
2–17, 21,
23–25
103 Schaeffer, Vigil,
Baumbach
2–17, 21, 23–
25

Overall
Outcome
2–17, 21, 23–
25

TIME PERIOD FOR 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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED