Ex Parte Diamantopoulos et al

Board of Patent Appeals and Interferences

Jun 19, 2009

10169523 (B.P.A.I. Jun. 19, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte LEONIDAS DIAMANTOPOULOS and
GLENN VAN LANGENHOVE
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Appeal 2009-004803
Application 10/169,523
Technology Center 3700
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Decided:1 June 19, 2009
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Before ERIC GRIMES, LORA M. GREEN and STEPHEN WALSH,
Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2009-004803
Application 10/169,523

This is an appeal under 35 U.S.C. § 134 involving claims to a vascular
catheter. The Patent Examiner rejected most claims as anticipated and one
as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We reverse.
STATEMENT OF THE CASE
The invention is a vascular catheter apparatus for temperature
measurement of vascular tissue. (Spec. 2:23-24.) Claims 1-6, 9 and 35-37,
which are all the pending claims, are on appeal. Claim 1 is representative
and reads as follows:
1. A vascular catheter apparatus for temperature measurement along a
length of vascular tissue, the apparatus comprising:

a flexible catheter body,

at least two thermal sensors respectively mounted on at least two
independent projections, each projection being deployable under an
associated resilient bias to an extent independent of the others, and

a carrier for transmitting temperature data at a vascular wall from the
sensors to a remote device,

wherein each projection is conformal to the vascular tissue
morphology during movement of the apparatus within the tissue.

The Examiner rejected the claims as follows:
• claims 1-6, 9 and 35-36 under 35 U.S.C. § 102(e) as anticipated by
Edwards;2 and
• claim 37 under 35 U.S.C. § 103(a) as obvious over Edwards and
Avitall.3

2 U.S. Patent No. 6,053,937, issued to Edwards et al., Apr. 25, 2000.
3 U.S. Patent No. 6,138,043, issued to Boaz Avitall, Oct. 24, 2000.
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Application 10/169,523

ANTICIPATION
The Anticipation Issue
The Examiner contends that Edwards described a temperature
measurement apparatus capable of measuring temperature along the length
of vascular tissue. (Ans. 3.) The Examiner found that Edwards’ apparatus
had all the parts Appellants claim in their apparatus. (Id. at 3-5.)
Appellants contend that Edwards’ apparatus did not include all the
claimed elements because it did not have a flexible catheter body. (App. Br.
4-5.) Specifically, Appellants dispute the Examiner’s finding that Edwards’
“trocar 14” was a “flexible catheter body.” (Id. at 4; Reply Br. at 1-3.)
The issue with respect to this rejection is whether Appellants have
demonstrated that the Examiner erred in finding that Edwards’ “trocar 14”
was a “flexible catheter body.”

Findings of Fact
1. The Specification states: “[w]ith the present invention, the vascular
catheter apparatus, hereinafter referred to as a thermography catheter,
is inserted into the artery to detect the temperature at the vascular
wall.” (Spec. 2:30-32.)
2. Edwards described “an ablation device which is introduced into a
selected tissue mass.” (Col. 2, ll. 19-21.)
3. Edwards’ device included “a handpiece 12, a trocar 14, and one or
more antennas [electrodes] 16.” (Col. 3, ll. 28-32.)
4. Edwards’ “[t]rocar 14 can be moved up and down, rotated about its
longitudinal axis, and moved back and forth . . . .” (Col. 3, ll. 52-54.)
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Application 10/169,523

5. Edwards’ “electrode 16 has a distal portion 16’ that can be
constructed to be less structurally rigid than trocar 14.” (Col. 4, ll. 7-
8.)
6. Edwards taught that structural rigidity was to be “determined by,
(i) choosing different materials for trocar 14 and distal end 16’ . . .,
(ii) using the same material but having less of it for electrode 16 . . .,
or (iii) including another material in trocar 14 or an electrode 16 to
vary their structural rigidity.” (Col. 4, ll. 9-15.)
7. In one embodiment, Edwards’ “[t]rocar 14 is made of a stainless-steel
hypodermic tubing.” (Col. 4, ll. 51.)

Principles of Law Relating to Anticipation
[T]he PTO applies to the verbiage of the proposed claims the
broadest reasonable meaning of the words in their ordinary
usage as they would be understood by one of ordinary skill in
the art, taking into account whatever enlightenment by way of
definitions or otherwise that may be afforded by the written
description contained in the applicant’s specification.

In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). “During the patent
examination process, claims receive their broadest reasonable meaning.
However, this does not relieve the [US]PTO of its essential task of
examining the entire patent disclosure to discern the meaning of claim words
and phrases.” Rowe v. Dror, 112 F.3d 473, 480 (Fed. Cir. 1997).
To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either explicitly or
inherently. Anticipation is an issue of fact, and the question
whether a claim limitation is inherent in a prior art reference is
a factual issue.
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In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (citations omitted).

Analysis of the Anticipation Issue
Edwards’ apparatus could function as required by Appellants’ claim 1,
but the description of the trocar 14 in the Edwards’ patent does not indicate
that it was flexible. Edwards’ trocar could be moved up and down, it could
be rotated, and it could be moved back and forth, but none of these suggest
flexibility. (FF4.) Edwards’ electrodes 16 were described as flexible, in
contrast to the “rigid” trocar (FF5), and were to be made of flexible material
in contrast to the trocar (FF6).
Appellants’ Specification describes a vascular catheter that can be
inserted into an artery. The Specification describes how the vascular
catheter having a flexible catheter body is to be used, and how it is
sufficiently flexible to track the interior surface of a vessel. While a rigid
thing like a trocar could be inserted into an artery, there is no evidence that
those of ordinary skill in the art would understand Edwards’ description of a
trocar to be a description of a vascular catheter having a flexible catheter
body.
The Examiner found that flexible merely means “capable of being
bent.” (Ans. 8.) Because almost anything can be bent if enough force is
brought to bear, Edwards’ trocar could be “flexible” in that sense. We do
not agree that a person of ordinary skill in the art would understand
“flexible” that broadly in light of Appellants’ Specification. Instead, we
think that Appellants’ Specification evinces a particular and distinct
structural meaning for flexible, and that Edwards’ rigid trocar does not meet
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it. See, e.g., Rowe v. Dror, 112 F.3d at 479 (“Without question, the Rowe
specification evinces a particular and distinct structural meaning for ‘balloon
angioplasty catheter’ that distinguishes it from ‘balloon catheters’
generally.”) (Emphasis in original.)

OBVIOUSNESS
The Obviousness Issue
The Examiner’s position is that Edwards described all the parts as
claimed in claim 37 but for a temperature measurement apparatus
comprising a rapid exchange catheter. (Ans. 5.) The Examiner found that
Avitall taught such a catheter, and concluded it would have been obvious to
combine the Edwards and Avitall components to provide “a temperature
measurement apparatus capable of being rapidly exchanged after vasculature
temperature measurement data indicates further medical procedures are
necessary.” (Id. at 6.)
Appellants contend that the rejection is “incomplete and improper”
because it is based on a flawed analysis of the Edwards reference, which
“does not teach or suggest every limitation of the [independent] claims.”
(App. Br. 8.)
The issue with respect to this rejection is whether Appellants have
demonstrated that the Examiner erred in finding that the Edwards reference
taught every limitation of independent claim 1, from which claim 37
depends.

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Application 10/169,523

Findings of Fact
8. Avitall described a recording and ablation catheter system.
(Abstract.)
9. Avitall described a thermocouple to monitor electrode temperature.
(Col. 13, ll. 40-47.)
10. The Examiner found that Avitall’s catheter 20 was capable of being
rapidly exchanged. (Ans. 5.)

Principles of Law Relating to Obviousness
Obviousness is a question of law based on fact findings. The scope
and content of the prior art are determined; differences between the prior art
and the claims at issue are ascertained; the level of skill in the art is resolved;
and objective record evidence of nonobviousness is considered. Graham v.
John Deere Co., 383 U.S. 1, 17-18 (1966). A rejection for obviousness must
include “articulated reasoning with some rational underpinning to support
the legal conclusion.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007), quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).

Analysis of the Obviousness Issue
We agree with Appellants that Edwards did not describe a vascular
catheter apparatus with a “flexible catheter body.” The explanation for the
obviousness rejection does not show how the missing flexible catheter body
would have been obvious over the combined teachings of Edwards and
Avitall.

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Application 10/169,523

CONCLUSIONS OF LAW
Appellants have demonstrated that the Examiner erred in finding that
Edwards’ “trocar 14” was a flexible catheter body. Appellants have also
demonstrated that the Examiner erred in concluding that a vascular catheter
apparatus with a “flexible catheter body” would have been obvious over the
combined teachings of Edwards and Avitall.

SUMMARY
We reverse the rejection of claims 1-6, 9 and 35-36 under 35 U.S.C.
§ 102(e) as anticipated by Edwards; and
we reverse the rejection of claim 37 under 35 U.S.C. § 103(a) as
obvious over Edwards and Avitall.

REVERSED

cdc
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