Covidien LP

Patent Trials and Appeals Board

Jul 2, 2020

2020000376 (P.T.A.B. Jul. 2, 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.
14/932,433 11/04/2015 Frank SCARPINE 356258US01 1776
137574 7590 07/02/2020
Medtronic
826 Coal Creek Circle
Louisville, CO 80027
EXAMINER
LABRANCHE, BROOKE N
ART UNIT PAPER NUMBER
3771
NOTIFICATION DATE DELIVERY MODE
07/02/2020 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):
docketing@fortemip.com
rs.patents.two@medtronic.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte FRANK SCARPINE, RICK WILLIAMS,
FRANCIS BERNARD, and MARIA DE JESUS SANSON
____________

Appeal 2020-000376
Application 14/932,433
Technology Center 3700
____________

Before BENJAMIN D. M. WOOD, BRANDON J. WARNER, and
LISA M. GUIJT, Administrative Patent Judges.

GUIJT, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the rejection
of claims 1–14 and 24–26.2 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 Medtronic plc as the real party in
interest. Appeal Br. 3.
2 There are no standing rejections for claims 12 and 15–17, which depend
ultimately from independent claim 8, in view of the Examiner’s withdrawal
of the rejection of claims 12 and 15–17 under 35 U.S.C. § 102(a)(1) as
anticipated by Milner. Ans. 8.
Appeal 2020-000376
Application 14/932,433
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THE INVENTION
Appellant’s invention relates to “Clot Removal by Adhesion.” Spec.,
Title. Claims 1 and 8 are the independent claims on appeal. Claim 1,
reproduced below with emphasis added, is illustrative of the subject matter
on appeal.
1. A method for removing thrombus from a blood vessel, the
method comprising:
positioning a distal segment of an aspiration catheter in a
blood vessel, a distal end of the aspiration catheter being closed,
the distal segment comprising a unitary, tubular sidewall having
an array of ports extending through the sidewall, the ports of the
array positioned along a longitudinal length of the distal segment
and about a circumference of the distal segment,
positioning the distal segment in contact with a thrombus
in the blood vessel, wherein the array of ports is in fluid
communication with a space exterior to the aspiration catheter
during the positioning;
applying aspiration through the array of ports while the
distal segment is in contact with the thrombus; and
withdrawing the aspiration catheter form the blood vessel
with the thrombus at least partially on an exterior of the distal
segment.

Appeal 2020-000376
Application 14/932,433
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THE REJECTIONS3
The Examiner relies upon the following as evidence in support of the
rejections:
NAME REFERENCE DATE
Hart US 6,254,571 B1 July 3, 2001
Hayase US 7,449,010 B1 Nov. 11, 2008
Morsi US 7,914,549 B2 Mar. 29, 2011
Milner US 2015/0133973 Al May 14, 2015
The following rejections are before us for review:
I. Claims 1–5, 7–11, 13, 14, 24, and 26 stand rejected under
35 U.S.C. § 102(a)(1) as anticipated by Hart.
II. Claim 6 stands rejected under 35 U.S.C. § 103 as
unpatentable over Hart and Morsi.
III. Claim 254 stands rejected under 35 U.S.C. § 103 as
unpatentable over Hart.

OPINION
Rejection I
Regarding independent claim 1, the Examiner finds that Hart
discloses, inter alia, a method of positioning a distal segment having a

3 The Examiner’s rejections of claims 8, 10, and 13–17 under 35 U.S.C.
§ 102(a)(1) as anticipated by Milner, and of claim 12 under 35 U.S.C. § 103
as unpatentable over Milner and Hayase, have been withdrawn. Ans. 8;
Final Act. 5–7, 9.
4 We consider the Examiner’s reference to claim 24 in Rejection IV to be a
typographical error as the Examiner’s rejection addresses the subject matter
of claim 25. See Final Act. 9–10; Appeal Br. 15 (Claims App.).
Appeal 2020-000376
Application 14/932,433
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unitary, tubular sidewall, as claimed. Final Act. 2. In particular, the
Examiner finds that Hart’s segmented distal portion 14 is “a unitary body,
because it is assembled into one connected element” (id. at 2–3), as Hart’s
expandable and non-expandable segments 17, 18 are “fused together and
comprise the same wall 49.” Ans. 8 (citing Hart 5:63–6:7, Figs. 2A, 2B).
The Examiner also finds that apertures 17a in expandable segments 17 of
segmented distal portion 14 are ports, as claimed. Final Act. 2–3; see also
Ans. 8 (“the array of port[s] 17a extend through the sidewall” (citing Hart
4:36–43)).
Regarding the meaning of the claim term “unitary,” the Examiner
finds that the Specification “provides no special definition of the term
‘unitary,’” and thus, the Examiner refers to the “plain meaning” of the claim
term “unitary” as “‘having the characteristic of a single thing that is a
constituent of a whole’ and/or ‘forming a single unit.’” Ans. 8 (citing
“Merriam-Webster”). Based on this interpretation, the Examiner finds that,
“[r]egardless of the material of element 17 compris[ing] a plurality of wires,
once woven or braided into a singular material sidewall, [the wires] become
a unitary structure,” wherein “[e]ach element of the distal segment 14 is
mechanically connected and indivisible, . . . thereby forming a tubular,
unitary sidewall.” Id.
Appellant argues that “Hart’s distal portion 14 is not unitary,” as
claimed. Appeal Br. 6. In support, Appellant submits that “[a]s is well
known in the field of medical devices, an expandable element formed of a
‘woven, braided, or meshed’ material is formed of a plurality of wires that
have been woven, braided, or meshed together,” and that “Hart depicts such
a structure in Figures 1A and 1B.” Id. at 7 (citing “Google’s online
Appeal 2020-000376
Application 14/932,433
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dictionary,” which “defines ‘mesh’ as ‘material made of a network of wire
or thread’”). Appellant submits that a person of ordinary skill in the art
“would not interpret the sidewall of Appellant’s distal segment to cover
braided filaments.” Reply Br. 2.
Appellant also acknowledges that “a dictionary definition of ‘unitary’
may be considered,” however, Appellant submits that the dictionary
definition is “still limited by the bounds of Appellant’s specification” and
states that the figures, which are a part of the Specification, “do not
contemplate a sidewall formed of a plurality of wires.” Reply Br. 2.
Appellant argues that Figures 1A and 1C of the Specification “clearly show
the claimed unitary, tubular sidewall,” and that “any construction of
‘unitary’ to cover braided filaments (as in Hart) is inconsistent with the
present specification and thus improper.” Id.
Similarly, Appellant argues that “Hart does not disclose the claim 1
feature of ‘ports extending through the sidewall,’ as . . . Hart does not
disclose . . . a distal segment including ‘a tubular, unitary sidewall having an
array of ports extending through the sidewall,” as claimed. Appeal Br. 6
(emphasis added).
During examination of a patent application, pending claims are given
their broadest reasonable construction consistent with the specification. In
re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under
the broadest reasonable interpretation standard, claim terms are given their
ordinary and customary meaning as would be understood by one of ordinary
skill in the art in the context of the entire disclosure. In re Translogic Tech.,
Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
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Application 14/932,433
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Claim 1 requires a distal segment of an aspiration catheter to have a
unitary sidewall, wherein an array of ports extend through the sidewall. The
claim term “unitary” does not appear in the Specification, nor does
Appellant propose a definition for the claim term “unitary.” See Appeal Br.
6–7; Reply Br. 1–2. The Specification also does not use the claim term
“sidewall,” but refers to a “distal segment” (e.g., Spec. ¶ 3) having a “tubular
body” (e.g., id., claim 13). The Specification discloses, with reference to
Figures 1A to 1D, that “distal segment 104 can comprise a tubular body
having the array of ports 106 arranged around the circumference of the distal
segment 104” (id. ¶ 27), and Figures 1A to 1D depict ports 106 extending
through the circumferential sidewall of distal segment 104. Spec. ¶ 20. The
Specification does not disclose that a sidewall formed of a solid, single piece
is required, or that a sidewall formed of wires, as in Hart, would not be
encompassed by the invention. Although Figures 1A to 1D depict a sidewall
that appears to be a solid, single piece of material, Figures 1A to 1D
“illustrate an example of a catheter 100 according to some aspects of the
subject technology.” Spec. ¶ 19 (emphasis added). Further, Appellant’s
definition of the term “mesh” fails to inform us as to why the Examiner’s
dictionary definition of “unitary” would be overly broad.
In the absence of an express definition of the claim term “unitary” in
the Specification, we adopt the Examiner’s dictionary definition supra, or
plain meaning, namely, “forming a single unit.” Moreover, we find that this
definition is consistent with the Specification, which does not exclude a
tubular member being made of woven, braided, or meshed material. Cf.
Spec. ¶ 12 (“[t]he detailed description is . . . intended as a description of
various configuration of the subject technology and is not intended to
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Application 14/932,433
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represent the only configurations in which the subject technology may be
practiced,” wherein “[t]he appended drawings are incorporated herein and
constitute a part of the detailed description,” and also wherein “it will be
clear and apparent to those skilled in the art that the subject technology is
not limited to the specific details set forth [in the Specification]”).
We also find that the sidewall of Hart’s woven, braided, or meshed
material tubular member is unitary, because the woven, braided, or meshed
fibers form a single unit, namely, the sidewall of the tubular member. In
other words, we decline to import into claim 1 particular structure depicted
in Figures 1A to 1D of the Specification (e.g., a solid sidewall), which is
beyond the plain meaning of the claim term “unitary,” as a requirement of
the claimed sidewall. Nor are we persuaded by Appellant’s argument that
the Examiner erred in finding that the apertures in Hart’s woven, braided, or
meshed material are an array of ports extending through the sidewall of the
tubular member, as claimed. Rather, we agree with the Examiner’s findings
supra that claim 1 reads on Hart’s catheter.
Accordingly, we sustain the Examiner’s rejection of independent
claim 1. Appellant chose not to present arguments for the patentability of
independent claim 8 and dependent claims 2–5, 7, 9–11, 13, 14, 25, and 26,
apart from the arguments presented for claim 1 supra. Appeal Br. 8. Thus,
for essentially the same reasons as discussed supra, we sustain the
Examiner’s rejection of claims 2–5, 7–11, 13, 14, 25, and 26.
Rejections II and III
Appellant chose not to present arguments for the patentability of
claims 6 and 25 apart from the arguments presented for claim 1 supra.
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Appeal Br. 10. Thus, for essentially the same reasons as discussed supra,
we sustain the Examiner’s rejection of claims 6, 12, and 25.
CONCLUSION
In summary:
Claims
Rejected
35
U.S.C. §
Reference(s) Affirmed Reversed
1–5, 7–11,
13, 14, 24,
26
102(a)(1) Hart 1–5, 7–11,
13, 14, 24,
26

6 103 Hart, Morsi 6
25 103 Hart 25
Overall
Outcome
1–17, 24–
26

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