Ex Parte Davis et al

Patent Trial and Appeal Board

Mar 16, 2018

13536477 (P.T.A.B. Mar. 16, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/536,477 06/28/2012
11050 7590 03/20/2018
SEAGER, TUFTE & WICKHEM, LLP
100 South 5th Street
Suite 600
Minneapolis, MN 55402
FIRST NAMED INVENTOR
Scott A. Davis
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.
2001.1449101 8862
EXAMINER
FARRAR, LAUREN PENG
ART UNIT PAPER NUMBER
3763
NOTIFICATION DATE DELIVERY MODE
03/20/2018 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):
BSC.USPTO@stwiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SCOTT A. DA VIS and ERIC SCHNEIDER
Appeal2017-003127
Application 13/536,477
Technology Center 3700
Before LINDA E. HORNER, MICHELLE R. OSINSKI, and
ERIC C. JESCHKE, Administrative Patent Judges.
OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Scott A. Davis and Eric Schneider (Appellants)1 appeal under 35
U.S.C. § 134(a) from the Examiner's decision rejecting claims 1-10 and 18.2
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify the real party in interest as Boston Scientific Scimed,
Inc. Appeal Br. 3.
2 Claims 11-17 are withdrawn. Final Act. 1.
Appeal2017-003127
Application 13/536,477
THE CLAIMED SUBJECT MATTER
Claims 1 and 18 are independent. Claim 1, reproduced below, is
illustrative of the claimed subject matter on appeal.
1. A catheter comprising:
a catheter shaft and a catheter tip, the catheter shaft
comprising a polyether block amide material and the catheter tip
comprising a polyether block amide material, the catheter tip
comprising a first longitudinal section and a second longitudinal
section, the first longitudinal section formed of polyether block
amide having a first durometer and the second longitudinal
section formed of a polyether block amide having a second
durometer greater than the first durometer, the first longitudinal
section being distal to the second longitudinal section and the
second longitudinal section being bonded to the catheter shaft
and to the first longitudinal section, the polyether block amide
material of the catheter shaft having a third durometer greater
than the second durometer, at least a portion of the first
longitudinal section being tapered and at least a portion of the
second longitudinal section being tapered;
wherein the catheter tip includes a guidewire lumen
extending through the tapered portion of the first longitudinal
section and the tapered portion of the second longitudinal
section, and wherein the guidewire lumen extends to a distalmost
extent of the catheter tip.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Tremulis
Appling
US 2007 /0219466 A 1
US 2008/0108975 Al
THE REJECTIONS
Sept. 20, 2007
May 8, 2008
I. Claims 1, 6-10, and 18 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Tremulis. Final Act. 2--4.
2
Appeal2017-003127
Application 13/536,477
II. Claims 2-5 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Tremulis. Id. at 4-5.
III. Claims 1-10 and 18 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Tremulis and Appling. Id. at 5-8.
OPINION
Rejection I
On this record, the Examiner has not shown that Tremulis anticipates
the claimed invention. The Examiner invokes Tremulis' s teaching in
paragraphs 38 and 39 for a catheter shaft and tip comprising materials of
various durometers. Final Act. 2. These paragraphs relate to an
embodiment of an atraumatic tip and shaft illustrated in Figures 5A, 5B, and
6A-6D. See Tremulis iii! 37-39. The Examiner also invokes Tremulis's
teaching of a purported guidewire lumen illustrated in Figure 7 A. Final Act.
2. Figure 7 A of Tremulis relates to an "alternative embodiment of an
atraumatic tip in accordance with the present invention." Tremulis iJ 41.
Appellants point out that "the Examiner inaptly combined elements of
various structurally distinct embodiments of Tremulis." Appeal Br. 9; see
also id. at 12 ("The discussion related to multiple durometer hardness grades
found in the Final Office Action referred to embodiments which did not
include a guidewire lumen reaching to a distalmost extent of the catheter tip
and thus refer to structurally distinct embodiments which may not properly
be combined in a rejection under§ 102."). Picking and choosing from
distinct embodiments in the art, while permissible in an obviousness inquiry,
is generally inappropriate to show anticipation. In re Arkley, 455 F.2d 586,
587 (CCPA 1972) (explaining that anticipation requires the art "clearly and
unequivocally disclose the claimed [invention] or direct those skilled in the
3
Appeal2017-003127
Application 13/536,477
art to the [invention] without any need for picking, choosing, and combining
various disclosures not directly related to each other by the teachings of the
cited reference"); see also Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d
1359, 1371 (Fed. Cir. 2008) (in an anticipation rejection, "it is not enough
that the prior art reference ... includes multiple, distinct teachings that [an
ordinary] artisan might somehow combine to achieve the claimed
invention"). Here, the Examiner has not adequately explained how the
different embodiments are directly related to each other by the teachings of
Tremulis so as to support an anticipation rejection.
Accordingly, we do not sustain the Examiner's rejection of claims 1,
6-10, and 18 as anticipated by Tremulis.
Rejection II
Because the Examiner's rejection of claims 2-5 (Final Act. 4-5) is
based on the same deficient findings discussed supra in connection with
Rejection I, with no further explanation as to why one of ordinary skill
would have been led to combine the various embodiments of Tremulis, we
likewise do not sustain the rejection of claims 2-5 under 35 U.S.C. § 103(a)
as unpatentable over Tremulis.
Rejection III
Appellants argue claims 1-10 and 18 as a group. Appeal Br. 13-16.
We select claim 1 as the representative claim, and claims 2-10 and 18 stand
or fall therewith. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner rejects claims 1-10 and 18 as unpatentable over
Tremulis and Appling. Final Act. 5-8; see also id. at 8 ("[A] further
rejection (Tremulis in view of Appling) has been made in the case that
Tremulis does not explicitly teach the amended claims."). In this rejection,
4
Appeal2017-003127
Application 13/536,477
the Examiner relies on Appling' s teaching of a guidewire lumen and
concludes that it would have been obvious "to modify the device of
Tremulis with the guidewire lumen of Appling for the purpose of facilitating
insertion of the catheter through tissue into the target vessel." Id. at 6 (citing
Appling iJ 54).
Appellants argue that the Examiner's characterization of portions of
Tremulis's device as the claimed first and second longitudinal sections is
erroneous because such characterization "is not consistent with the
concentric structure disclosed by Tremulis." Reply Br. 5; see also id. at 4
(Appellants asserting that the embodiment of Figure 5A of Tremulis has
"uniform composition of the bulk of the tip wall identified as outer portion
62" and "[ o ]uter portion 62 is shown as concentric with, and located radially
outward from, central portion 53"). Although we appreciate Appellants'
description of Tremulis' s device, we do not find it persuasive of Examiner
error. In particular, Appellants have not persuasively explained why the
concentric nature of central portion 53 and a first part of outer portion 62, as
illustrated in Fig. 5A, precludes the Examiner from finding that Tremulis
teaches a "first longitudinal section formed of polyether block amide having
a first durometer" and a "second longitudinal section formed of a polyether
block amide having a second durometer greater than the first durometer," as
claimed. In particular, a second part of outer portion 62 extending distally of
central portion 53 comprises a 35 D PEBAXâ„¢ material, and has been
identified by the Examiner as a first longitudinal section having a first
durometer. Central portion 53 comprises a 40 D PEBAXâ„¢ material, and
has been identified by the Examiner as a second longitudinal section having
a second durometer greater than the first durometer. Although central
5
Appeal2017-003127
Application 13/536,477
portion 53 is concentric with the first part of outer portion 62, which
comprises a 3 5 D PE BAXâ„¢ material like the second part of outer portion
62, Appellants have not persuasively explained why this concentric structure
prevents central portion 53 from being a second longitudinal section formed
of a polyether block amide having a second durometer greater than a first
durometer, as found by the Examiner.
Appellants also argue that the Examiner has not "identif[ied] a
deficiency of the devices of Tremulis" and that "[t]he catheters of the cited
figures of Tremulis ... are not characterized as requiring a guidewire to
facilitate advancement through tissue into a target vessel and thus there is no
motivation for the combination." Appeal Br. 14. The Supreme Court has
rejected the rigid requirement of demonstrating a teaching, suggestion, or
motivation to combine references in order to show obviousness. KSR Int 'l
Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007). Rather, rejections based on
obviousness must be supported by "some articulated reasoning with some
rational underpinning" to combine known elements in the manner required
by the claim. Id. at 418 (citing In re Kahn, 441F.3d977, 988 (Fed. Cir.
2006)). Appellants do not point out any flaw in the Examiner's reasoning
relating to a guidewire facilitating insertion of a catheter through tissue into
a target vessel. Accordingly, Appellants' arguments do not persuasively
explain how the Examiner's articulated reasoning in support of the
conclusion of obviousness lacks rational underpinnings.
Appellants additionally argue that Appling's guidewire lumen 37 does
not extend through a tapered second longitudinal portion "as described by
the Examiner," but "through guidewire wall segment 100 which separates
lumen 37 from outflow lumen 9 and from distal tip 8 to its proximal end
6
Appeal2017-003127
Application 13/536,477
41." Appeal Br. 15. The Examiner finds that Appling's catheter tip has "a
similar shape as that of Tremulis having a slanted distal opening (35) and
further first longitudinal section (see near 39)." Final Act. 5. The Examiner
also finds that "Appling further teaches a guidewire lumen (37) extending
through the tapered portion of the first longitudinal section and the tapered
portion of the second longitudinal section." Id. at 5-6. We understand the
Examiner to consider Appling's rounded tip (near 39) as the first
longitudinal section and the portion of Appling' s catheter having slanted
distal opening 3 5 as the second longitudinal section. Appellants do not
persuade us of error in the Examiner's finding that Appling has first and
second tapered longitudinal sections with a guidewire lumen extending
therethrough. Final Act. 5-6. In particular, Appellants have not
persuasively explained why the Examiner's division of Appling' s tip into
first and second sections is in error, considering that a "tip c[ an be] divided
into two sections at any point along the tip because the term section does not
imply any certain length or dimension to it" (Ans. 2-3). Moreover, to the
extent that Appellants are arguing that Appling's catheter is of uniform
composition (Appeal Br. 14-15), this argument is not persuasive where the
Examiner's rejection is based on the combination of Tremulis and Appling.
See In re Keller, 642 F.2d 413, 425 (CCPA 1981) (one cannot show
nonobviousness by attacking references individually when the rejection is
based on a combination of the references). As explained by the Examiner,
"Appling is not used to teach the different sections of ... the catheter tip"
(Ans. 5), but rather is used to teach the inclusion of a guidewire lumen
extending to a distalmost extent of a catheter tip (id. (citing Appling Fig.
5A)).
7
Appeal2017-003127
Application 13/536,477
As to Appellants' arguments that "the catheter tip of Tremulis at Figs.
7 A and 7B expressly includes material completely encasing the internal
support wire 70, which defines the distalmost tip" (Appeal Br. 15) and that
there is no suggestion "how the embedded support wire of Tremulis would
correspond functionally to a guidewire so as to suggest the combination to
one of skill in the art" (id. at 16), we are not persuaded of Examiner error.
This is because we do not view the Examiner's rejection as making the
embedded support wire of Figures 7 A and 7B of Tremulis into a guidewire
based on functional equivalence, but rather on modifying the embodiment of
Figures 5A and 5B of Tremulis so as to include a guidewire lumen extending
to a distalmost extent of a catheter tip (as taught by Appling) so as to
facilitate insertion of the catheter. See Final Act. 6; Ans. 5.
For the foregoing reasons, we do not find that the Examiner erred in
concluding that the combination of Tremulis and Appling renders obvious
the subject matter of claim 1. We sustain the Examiner's rejection of claim
1, and of claims 2-10 and 18 falling therewith, under 35 U.S.C. § 103(a) as
unpatentable over Tremulis and Appling.
DECISION
The Examiner's decision to reject claims 1, 6-10, and 18 under
35 U.S.C. § 102(b) as anticipated by Tremulis is reversed.
The Examiner's decision to reject claims 2-5 under 35 U.S.C.
§ 103(a) as unpatentable over Tremulis is reversed.
The Examiner's decision to reject claims 1-10 and 18 under 35 U.S.C.
§ 103(a) as unpatentable over Tremulis and Appling is affirmed.
8
Appeal2017-003127
Application 13/536,477
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a)(l )(iv).
AFFIRMED
9