Ex Parte Coates

Patent Trial and Appeal Board

Jul 14, 2016

13088712 (P.T.A.B. Jul. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/088,712 04/18/2011 Paul Coates
28390 7590 07/28/2016
MEDTRONIC VASCULAR, INC.
IP LEGAL DEPARTMENT
3576 UNOCAL PLACE
SANTA ROSA, CA 95403
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
P40873.00 US 9049
EXAMINER
BRUTUS, JOEL F
ART UNIT PAPER NUMBER
3777
NOTIFICATION DATE DELIVERY MODE
07/28/2016 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):
rs.vasciplegal@medtronic.com
medtronic_cv_docketing@cardinal-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte PAUL COATES
Appeal2014-003532
Application 13/088,712
Technology Center 3700
Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
JACQUELINE T. HARLOW, Administrative Patent Judges.
PER CURIAM
DECISION ON APPEAL 1
This Appeal under 35 U.S.C. § 134(a) involves claims 1-20 (Br. 1).
Examiner entered rejections under 35 U.S.C. § 103(a).2 We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellant identifies the Real Party in Interest as Medtronic Vascular, Inc.
(see Br. 2).
2 The rejection of claim 1 under 35 U.S.C. § 112, second paragraph, has been
withdrawn (see Ans. 10).
Appeal2014-003532
Application 13/088,712
STATEMENT OF THE CASE
Appellant's invention "relates to a guide catheter, and more
particularly, to a guide catheter having flexible radiopaque filaments for
locating an ostium" (Spec. i-f 1 ). Independent claim 1 is representative and
reproduced in the Claims Appendix of Appellant's Brief.
Claims 1, 2, 6, 11, and 12 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Frassica, 3 Liddicoat,4 and Konstantino. 5
Claim 4 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Frassica, Liddicoat, Konstantino, and Stanish. 6
Claims 3, 5, 7, and 13-15 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Frassica, Liddicoat, Konstantino, and Clubb.7
Claims 8 and 16 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Frassica, Liddicoat, Konstantino, 8 Klint, 9 and Kinoshita. 10
Claims 9 and 17 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Frassica, Liddicoat, Konstantino, and Armstrong. 11
3 Frassica et al., US 5,944,712, issued Aug. 31, 1999.
4 Liddicoat et al., US 2002/0042651 Al, published Apr. 11, 2002.
5 Konstantino et al., US 2004/0143287 Al, published July 22, 2004.
6 Stanish, US 2004/0073282 Al, published Apr. 15, 2004.
7 Clubb et al., US 2004/0153118 Al, published Aug. 5, 2004.
8 Examiner's statement of the rejection includes an inadvertent typographical
error in omitting Konstantino as Examiner discussed Konstantino in the
rejection (see Ans. 7).
9 Klint, US 2004/0082879 Al, published Apr. 29, 2004.
1° Kinoshita et al., US 2008/0281230 Al, published Nov. 13, 2008.
11 Armstrong et al., US 2002/0099431 Al, published July 25, 2002.
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Appeal2014-003532
Application 13/088,712
Claims 19 and 20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Frassica, Liddicoat, Konstantino, and Mafi. 12, 13
Claims 10 and 18 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Frassica, Liddicoat, Konstantino, and Segal. 14
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 1. Frassica's Figure IA is reproduced below:
Figure IA shows a "catheter 10 [that] is in the form of a left coronary
catheter adapted to engage the ostium" (Frassica 3:64--65), having "a special
12 Mafi et al., US 2009/0264988 Al, published Oct. 22, 2009.
13 We note that Examiner incorrectly identified Mafi as "Marl" (see Ans. 8-
9).
14 Segal, US 5,695,469, issued Dec. 9, 1997.
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Appeal2014-003532
Application 13/088,712
curve formed at its distal end which is designed to facilitate engagement of
the distal tip 18 of the catheter with the ostium" (id. at 3:66-4:1) "in which
at least a substantial portion of the length of the catheter shaft is reinforced
internally by a braid 20" (id. at 4:4---6), and "the catheter is provided with
radiopaque indicia[,] ... the indicia may take the form of a single helical
stripe 22" (id. at 4:10-13; see also Ans. 3).
FF 2. Liddicoat teaches that
a wire, a catheter, a tube or any other filament can be placed from
the left atrium, through the ventricle and into the arterial system,
over (or through) which a prosthesis or device can be advanced
(pushed or pulled). As an example, a catheter with a balloon can
be placed through an incision in the left atrial wall. The balloon
can be inflated and this catheter can then be "floated" along the
flow of blood across the mitral valve, into the left ventricle, and
out into the arterial system.
(Liddicoat i-f 73; see also Ans. 4.)
FF 3. Konstantino' s Figure 3 is reproduced below:
Figure 3 shows "a scoring structure in the form of a single wire 24 wrapped
around a dilatation balloon 12 in a helical configuration" (Konstantino i-f 60;
see also Ans. 4; Br. 8-9).
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Appeal2014-003532
Application 13/088,712
FF 4. Konstantino's Figure 4 is reproduced below:
Figure 4 shows "an expansible scoring cage 100 comprises first and second
attachment elements 102 and 104, respectively, and an intermediate scoring
section 106 comprising a plurality of curved serpentine members 110"
(Konstantino i-f 7 6; see also Ans. 4; Br. 8-9).
FF 5. Konstantino's Figure 6 is reproduced below:
Figure 6 shows "scoring cage 120 comprises first and second attachment
elements 122 and 124 joined by a spine 126. Plurality of C-shaped scoring
elements 128 and 130 are attached to the spine and extend in opposite
circumferential directions" (Konstantino i-f 76; see also Ans. 4; Br. 8-9).
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Application 13/088,712
ANALYSIS
The combination of Frassica, Liddicoat, and Konstantino:
Appellant's independent claim 1 requires, inter alia, "a plurality of
filaments each having a proximal end coupled to a distal end of the
elongated device and a distal end unattached to and spaced distally from the
distal end of the elongated device in a deployed configuration" (see
Appellant's claim 1 ). Appellant's independent claim 11 requires, inter alia,
"a plurality of filaments are coupled to and extend distally from a distal end
of the elongated device" (see Appellant's claim 11).
We recognize, but are not persuaded by, Examiner's assertion that
"Frassica discloses catheters that include a braided tubular element formed
from a plurality of helically arranged filaments extending along the length of
the catheter into the distal end [see claim 2, Frassica]" (Ans. 10). We are
also not persuaded by Examiner's assertion that
Konstantino discloses that structures may float over the catheter
body, i.e., be unattached, or may be fixed to the catheter body
[see 007 4]. The attachment elements may be the tube structures;
therefore, they are the same elements that are relied on as the
filaments that are unattached. As disclosed therein and as
indicated in the final office action, Konstantino is relied on for
teaching unattached filaments and Frassica is relied on for the
teaching of extending distally from a distal end as explained
above.
(Id. at 11.) As Appellant explains,
Frassica does not show filaments extending from a distal end of
the catheter. . . . However, the braid 20, relied on by the
Examiner as including the stripe 22 of radiopaque material, is
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Application 13/088,712
disposed along the length of the catheter 10, and therefore is not
near, nor does it extend from, distal tip 18 of catheter 20.
(Br. 6-7; see also FF 1.) Appellant further explains that "[t]he scoring
structures of Konstantino with their attachment elements 'are positioned
over the balloon or other expansible shells of the catheter' (Konstantino,
para. [0073], lines 3-5, emphasis added), not extending distally from a
distal end of the catheter" (Br. 8; see also FF 3-5.)
Accordingly, we agree with Appellant that
when placed around the balloon or other expansible shell of a
catheter, the scoring structures of Konstantino are not "filaments
having a proximal end coupled to a distal end of the elongated
device and a distal end unattached to and spaced distally from
the distal end of the elongated device in a deployed
configuration", as recited in claim 1, or filaments that are
"coupled to and extend distally from a distal end of the elongated
device", as recited in claim 11. Instead, they are wrapped around
a balloon or other extensible portion of the catheter, as described
and shown in FIG. 3 ofKonstantino.
(App. Br. 9-10.)
The preponderance of evidence on this record fails to support
Examiner's conclusion that Frassica, Liddicoat, and Konstantino render
obvious "a plurality of filaments each having a proximal end coupled to a
distal end of the elongated device and a distal end unattached to and spaced
distally from the distal end of the elongated device in a deployed
configuration" or "a plurality of filaments are coupled to and extend distally
from a distal end of the elongated device" as claimed.
The combination of Frassica, Liddicoat, Konstantino, and Stanish:
Based on the combination of Frassica, Liddicoat, Konstantino, and
Stanish, Examiner concludes that, at the time Appellant's invention was
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Application 13/088,712
made, it would have been obvious to "combine Frassica et al[.], Liddicoat et
al[.] and Konstantino et al[.] with Stanish by using tantalum; because of its
radiographic density and excellent biocompatibility" (Ans. 5). Examiner,
however, failed to establish that Stanish, makes up for the deficiencies of
Frassica, Liddicoat, and Konstantino as discussed above.
The combination of Frassica, Liddicoat, Konstantino, and Clubb:
Based on the combination of Frassica, Liddicoat, Konstantino, and
Clubb, Examiner concludes that, at the time Appellant's invention was
made, it would have been obvious to "combine Frassica et al[.], Liddicoat et
al[.] and Konstantino et al[.] with Clubb et al[.] by having at least one of the
plurality of filaments is a polymer strands having a radiopaque distal tip;
because the radiopaque tip helps the physician verify suitable tip placement
during fluoroscopy" (id. at 6). Examiner, however, failed to establish that
Clubb, makes up for the deficiencies of Frassica, Liddicoat, and Konstantino
as discussed above.
The combination of Frassica, Liddicoat, Konstantino, Klint, and Kinoshita:
Based on the combination of Frassica, Liddicoat, Konstantino, Klint,
and Kinoshita, Examiner concludes that, at the time Appellant's invention
was made, it would have been obvious to "combine Frassica et al[.],
Liddicoat et al[.] and Konstantino et al[.] with Klint and Kinoshita et al[.] by
having at least one of the pluralities of filaments has a distally tapering cross
section such that a proximal end of the filament has a larger cross section
than a distal end of the filament; in order to facilitate insertion through the
blood vessel" (id. at 7). Examiner, however, failed to establish that Klint
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Application 13/088,712
and Kinoshita, make up for the deficiencies of Frassica, Liddicoat, and
Konstantino as discussed above.
The combination of Frassica, Liddicoat, Konstantino, and Armstrong:
Based on the combination of Frassica, Liddicoat, Konstantino, and
Armstrong, Examiner concludes that, at the time Appellant's invention was
made, it would have been obvious to "combine Frassica et al[.], Liddicoat et
al[.] and Konstantino et al[.] with Armstrong et al[.] by having a protective
outer sheath slidably disposed over the polymeric filaments; in order to
shield the filaments from the body fluids; thereby avoiding corrosion" (id. at
8). Examiner, however, failed to establish that Armstrong, makes up for the
deficiencies of Frassica, Liddicoat, and Konstantino as discussed above.
The combination of Frassica, Liddicoat, Konstantino, and Mafi:
Based on the combination of Frassica, Liddicoat, Konstantino, and
Mafi, Examiner concludes that, at the time Appellant's invention was made,
it would have been obvious to "combine Frassica et al[.], Liddicoat et al[.]
and Konstantino et al[.] with [Mafi] et al[.] by having a branch vessel ostium
as a fenestration of a graft; in order to accommodate side branches" (id. at
9). Examiner, however, failed to establish that Mafi, makes up for the
deficiencies of Frassica, Liddicoat, and Konstantino as discussed above.
The combination of Frassica, Liddicoat, Konstantino, and Segal:
Based on the combination of Frassica, Liddicoat, Konstantino, and
Segal, Examiner concludes that, at the time Appellant's invention was made,
it would have been obvious to "combine Frassica et al[.], Liddicoat et al[.]
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Application 13/088,712
and Konstantino et al[.] with Segal by using a water soluble adhesive to
releasably attach the filaments to the elongate device; in order to have the
filament dislodged easily into the region of interest" (id. at 9-10).
Examiner, however, failed to establish that Segal, makes up for the
deficiencies of Frassica, Liddicoat, and Konstantino as discussed above.
CONCLUSION OF LAW
The preponderance of the evidence relied upon by Examiner fails to
support a conclusion of obviousness.
The rejection of claims 1, 2, 6, 11, and 12 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Frassica, Liddicoat, and Konstantino is
reversed.
The rejection of claim 4 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Frassica, Liddicoat, Konstantino, and Stanish is
reversed.
The rejection of claims 3, 5, 7, and 13 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Frassica, Liddicoat, Konstantino, and
Clubb is reversed.
The rejection of claims 8 and 16 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Frassica, Liddicoat, Konstantino,
Klint, and Kinoshita is reversed.
The rejection of claims 9 and 17 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Frassica, Liddicoat, Konstantino,
Armstrong is reversed.
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Application 13/088,712
The rejection of claims 19 and 20 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Frassica, Liddicoat, Konstantino, and
Mafi is reversed.
The rejection of claims 10 and 18 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Frassica, Liddicoat, Konstantino, and
Segal is reversed.
REVERSED
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