Ex parte BERG

Board of Patent Appeals and Interferences

Mar 10, 1998

08392609 (B.P.A.I. Mar. 10, 1998)

Application for patent filed February 22, 1995.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 24
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte TODD A. BERG
__________
Appeal No. 96-4138
Application 08/392,6091
__________
ON BRIEF
__________
Before McCANDLISH, Senior Administrative Patent Judge and
COHEN and ABRAMS, Administrative Patent Judges.
McCANDLISH, Senior Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner’s final
rejection of claims 1 through 9 and 14 under 35 U.S.C. § 103. No
other claims are pending in the application.
Appeal No. 96-4138
Application 08/392,609
Consistent with appellant’s specification, we have interpreted the2
word “effectively” to mean that the support member is completely removed
along the entire length of the counterbore.
2
Appellant’s invention relates to a catheter assembly in
which the improvement resides in a lap joint for connecting a
catheter segment (22) or catheter apparatus, as it is called in
claim 1, to a selected device such as another catheter segment
(12) (see Figure 3) or a tip (30) (see Figure 5). The catheter
or, more particularly, the catheter apparatus (22) is of the type
having inner and outer tubular members and a support member in
the form of a braid (15) between the tubular members. The lap
joint is made by forming a counterbore (25) in one end of the
catheter apparatus and by forming a reduced diametered male
portion or member (16) on the selected device for reception in
the counterbore.
According to appellant’s invention as defined in independent
claims 1 and 14, the counterbore has a sufficiently large
diameter to effectively remove all of the support member along
the length of the counterbore to provide what is called a
“flexibility transition area” in the appealed independent
claims. As stated in appellant’s specification, this lap joint2
construc-tion overcomes kinking problems with prior art catheter
joints.
Appeal No. 96-4138
Application 08/392,609
3
A copy of claim 1, which is representative of the claimed
subject matter, is appended to this decision.
The following references are relied upon by the examiner as
evidence of obviousness in support of his rejection under 35
U.S.C. § 103:
Tanabe et al. (Tanabe) 4,842,590 Jun. 27, 1989
Macaulay et al. (Macaulay) 5,234,416 Aug. 10, 1993
Claims 1 through 9 and 14 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Macaulay in view of Tanabe. The
examiner’s position is as follows:
Macaulay et al. clearly teach a catheter 10 having
an outer tube 22, an inner tube 21 and a support member
5A [sic, 21] mounted there between [sic, therebetween].
The apparatus further includes a joint connecting a
catheter tip 16, which is clearly a catheter apparatus,
to the catheter 10. The joint includes, as seen in
figure 4, a counterbore within the tip and a mating
male member on the catheter. Macaulay et al. do not
teach, however, a joint within which the counterbore is
found in the catheter and the mating male member is
found on the tip.
Tanabe et al. clearly teach a catheter 11 con-
nected by a joint to another catheter apparatus, tip
12. The catheter 11 is shown as having an inner tube,
an outer tube and a support member there between [sic,
therebetween]. The joint includes a counterbore within
the catheter and a mating male member on the other
catheter apparatus. Therefore, in view of the
teachings, it would have been obvious to one of
ordinary skill in the art, at the time the invention
was made, to modify the Macaulay et al. apparatus by
forming its joint in the opposite manner, that is, in
Appeal No. 96-4138
Application 08/392,609
4
the manner as set forth by Tanabe et al. where the
counterbore is within the catheter and the tip includes
the mating male member. Further, it is quite clear
form [sic, from] the Macaulay et al. reference that the
diameter of the counterbore is such that upon placing
it within the catheter end, the inner tube and support
structure of the catheter would effectively be removed.
[final office action, Paper no. 13, pages 2-3]
We have carefully considered the issues raised in this
appeal together with the examiner’s remarks and appellant’s
arguments. As a result, we conclude that the rejection of the
appealed claims cannot be sustained.
In the present case, the examiner seems to conclude that it
would have been obvious to switch the placement of the
counterbore and the mating male portion in Macaulay’s lap joint
simply because it is known to provide the counterbore in a
catheter body and the mating male portion on a catheter tip
portion as disclosed in Tanabe. However, the question presented
under 35 U.S.C. § 103 is not whether such an arrangement is
known.
Instead, the question is whether there is some reason or
motivation in the prior art that would have led one of ordinary
skill in the art to make the proposed modification in Macaulay’s
catheter assembly. See In re Lalu, 747 F.2d 703, 705, 223 USPQ
1257, 1258 (Fed. Cir. 1984) (The prior art must provide one of
Appeal No. 96-4138
Application 08/392,609
5
ordinary skill in the art with the motivation to make the
modification needed to arrive at the claimed invention.). The
examiner, however, has offered no reason or motivation to make
the needed modification. Moreover, even if it would have been
obvious to make such a modification, we find nothing that would
have motivated one of ordinary skill in the art to provide the
counterbore in Macaulay’s modified catheter body with a diameter
equal to or greater than the diameter of the counterbore in the
patentee’s tip to remove the patentee’s supporting braid 21.
Furthermore, Tanabe teaches away from eliminating the braid in
this manner inasmuch as Tanabe expressly teaches the art to
maintain the supporting braid along the length of the counterbore
as shown in Figure 2 of the patent drawings.
The examiner’s decision rejecting appealed claims 1 through
9 and 14 under § 103 is therefore reversed.
REVERSED
HARRISON E. McCANDLISH )
Senior Administrative Patent Judge )
)
Appeal No. 96-4138
Application 08/392,609
6
)
) BOARD OF PATENT
IRWIN CHARLES COHEN ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
NEAL E. ABRAMS )
Administrative Patent Judge )
Appeal No. 96-4138
Application 08/392,609
7
David M. Crompton
Nawrocki, Rooney & Sivertson
Suite 401 Broadway Place East
3433 Broadway Street NE
Minneapolis, MN 55413