Ex Parte Dicarlo et al

Patent Trial and Appeal Board

May 30, 2013

11503749 (P.T.A.B. May. 30, 2013)

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.
11/503,749 08/14/2006 Paul Dicarlo 10123/06002 (06-01378) 2628
30636 7590 05/30/2013
FAY KAPLUN & MARCIN, LLP
150 BROADWAY, SUITE 702
NEW YORK, NY 10038
EXAMINER
BOSWORTH, KAMI A
ART UNIT PAPER NUMBER
3767
MAIL DATE DELIVERY MODE
05/30/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PAUL DICARLO, JEFFREY M. CROSS, and
DAVID S. COOKE
____________

Appeal 2011-010767
Application 11/503,749
Technology Center 3700
____________

Before TONI R. SCHEINER, FRANCISCO C. PRATS, and
ULRIKE W. JENKS, Administrative Patent Judges.

JENKS, Administrative Patent Judge

DECISION ON APPEAL
This is an appeal
1
under 35 U.S.C. § 134 involving claims to a
catheter with a slidably coupled tensioning member lock. The Examiner has
rejected the claims for obviousness. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm.

1
Appellants state that the Real Party-In-Interest is Boston Scientific Scimed,
Inc. (App. Br. 2.)
Appeal 2011-010767
Application 11/503,749

2
STATEMENT OF THE CASE
The Specification “provides a pigtail catheter deployable by applying
tension to a suture that is largely internal to the catheter during and after
deployment, reducing the risk of infection and of degradation of the suture
material over time, as well as reducing chances of leakage.” (Spec. 3 ¶ 6.)
Claims 1-21 and 41-49 are on appeal, and can be found in the Claims
Appendix of the Appeal Brief (App. Br. 11-15). Claims 1 and 41 are
independent claims. Claim 1 is illustrative of the claims on appeal, and
reads as follows (emphasis added):
1. A catheter comprising:
an elongated body extending from a flexible distal portion to a
proximal portion and including a fluid transport lumen extending
therethrough;
a tensioning member lock collar slidably coupled to the
proximal portion for movement relative thereto, the tensioning
member lock collar including a connection for directly coupling the
proximal portion of the elongated body to a fluid receiving structure;
and a tensioning member coupled between the flexible distal
portion and the tensioning member lock collar so that movement of
the tensioning member lock collar proximally along the elongated
body draws the tensioning member proximally a first distance and
curls the flexible distal portion by a first amount, wherein the
connection with the fluid receiving structure is formed when the
flexible distal portion is curled by the first amount.

The Examiner has rejected the claims as follows:
I. claims 1-5, 7-9, 11-14, 20, and 41-46 under 35 U.S.C. § 103(a)
as obvious over Osborne
2
in view of Roll;
3

2
Thomas A. Osborne et al., US 5,041,085, Aug. 20, 1991.
3
John D. Roll, US 5,419,764, May 30, 1995.
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Application 11/503,749

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II. claim 6 under 35 U.S.C. § 103(a) as obvious over Osborne and
Roll in view of Slanda;
4

III. claim 10 under 35 U.S.C. § 103(a) as obvious over Osborne and
Roll in view of Paskar;
5
and
IV. claims 15-19, 21, and 47-49 under 35 U.S.C. § 103(a) as
obvious over Osborne and Roll in view of Landau.
6

The Issue: Obviousness over Osborne in view of Roll
The Examiner takes the position that:
Osborne discloses that the tensioning member lock collar and
the proximal end of the elongated body are slid relative to one
another by the act of pulling on either of the structures . . .
while Roll discloses that the tensioning member lock collar and
the proximal end of the elongated body are rotationally slid
(due to the interaction of threads) relative to one another by the
act of rotating either of the structures.
(Ans. 17.) The Examiner contends that “a threaded connection is a sliding
connection because the threads of one component slide along the threads of
another component.” (Id.)
The Examiner concludes that “it would have been obvious to one of
ordinary skill in the art at the time the invention was made to modify
Osborne et al. to include a connection, as taught by Roll, for the purpose of
allowing fluid to move between the elongated body and the fluid receiving
structure when the catheter is curled.” (Id. at 5.)

4
Jozef Slanda et al., US 6,699,233 B2, Mar. 2, 2004.
5
Larry D. Paskar, US 6,623,449 B2, Sep. 23, 2003.
6
Sergio Landau, US 5,782,802, July 21, 1998.
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Application 11/503,749

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The issue is: Does the evidence of record support the Examiner‟s
conclusion that the combination of Osborne and Roll renders obvious the
catheter as claimed?

Findings of Fact
The following findings of fact (“FF”) are supported by a
preponderance of the evidence of record.
FF 1. Osborne disclosed a lockable pig-tail drainage catheter shown
in Fig. 3, reproduced below, in the locked position:

(Osborne, Fig. 3; Ans. 4.) Fig. 3 shows a partially-sectioned view of the pig-
tail catheter in a fully drawn locked position.
In the locked position, the sleeve has been longitudinally
moved along the proximal end of the elongated member tube to
engage annular step 120 with outside surface 119 in annular
recess of collar 114. When the sleeve is pulled, the flexible
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Application 11/503,749

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tension member 121 is drawn through and out of elongated
member passageway 107 to close the loop between draw ports
122 and 123, thereby positioning the distal end of the elongated
member tube into the pigtail configuration.
(Osborne, col. 5, ll. 16-25; Ans. 4.)
FF 2. Roll disclosed a lockable drainage catheter, the components of
the catheter are depicted in Fig. 1 reproduced below:

(Roll, Fig. 1; Ans. 5.) Fig 1 depicts:
[C]atheter 101 includ[ing] a flexible tube 102, a flexible tension
member 103 . . . catheter body 130 consisting of a distal
member 104, an O-ring 105 and a proximal member 106. The
distal member 104 consists of a flared end 107 to prevent the
device from being unscrewed completely after manufacture. . . .
The reel 109 of the distal member 104 is where the flexible
tension member 103 is wound around the distal member 104
when the proximal member 106 is tightened against O-ring 105.
(Roll, col. 3, ll. 6-20.)
FF 3. Roll further disclosed:
By twisting the proximal member 106 and the distal member
104 the proper direction, the threaded portions 110 and 111 will
put the proximal and distal members 106 and 105 together
against O-ring 105 when spacers 122 are entirely removed from
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catheter 101. . . . [P]roximal member 106 will compress O-ring
105 against the distal member 104 resulting in a watertight seal.
. . . [With] flexible tension member 103 being wound around
reel 109 of distal member 104 . . . to result in complete looping
of the tip of flexible tube 102.
(Roll, col. 3, ll. 21-40; Ans. 5.)
FF 4. Fig. 2 of Roll is reproduced below:

(Roll, Fig. 2; Ans. 5.) Fig. 2 depicts the catheter in the locked position at a
first predetermined limit with the spaces 122 in place. (Roll, col. 2, ll. 57-
58.)

Analysis
We consider the four rejections together because the same issue is
dispositive for all four (see App. Br. 9-10: “Slanda does not cure the
deficiency of Osborne in view of Roll,” “Paskar does not cure the deficiency
of Osborne and Roll,” and “Landau does not cure the deficiency of Osborne
and Roll.”).
Appellants contend that “direct coupling is not „formed when the
flexible distal portion is curled,‟ as required by the recited claim.” (Reply
Br. 5.) Appellants contend that “the proximal and distal portions of the
proximal member 106 are formed of a single element such that rotation of
the proximal portion 106 does not facilitate a direct coupling between the
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distal portion 104 and the non-threaded portion of the proximal member 106
in the deployed configuration (i.e., locked) configuration.” (App. Br. 6.)
Appellants contend that “moving the threaded portion 110 of the proximal
member 106 into the locked configuration does not directly couple the distal
portion 104 to the non-threaded portion of the proximal member 106.” (Id.
at 6-7.) Appellants contend that “rotation of the proximal and distal
members 106, 104 relative to one another in no way connects the proximal
end of the distal member 104 to a fluid receiving structure.” (Reply Br. 4-5.)
We are not persuaded. The Examiner acknowledges that “Osborne et
al. does not explicitly disclose a connection for directly coupling the
proximal portion of the elongated body to a fluid receiving structure when
the flexible distal portion is curled by a first amount.” (Ans. 4-5; FF 1.) The
Examiner looks to Roll to supply the limitation of directly coupling the
elongated body to a fluid receiving structure (FFs 2-4). We agree with the
Examiner‟s finding that Roll disclosed a catheter with an elongated body
102 and a tensioning member 103 (Ans. 5). We also agree with the
Examiner‟s interpretation that the proximal portion of the elongated body of
the claimed catheter corresponds to structure 104 of Roll (Ans. 18). The
Examiner interprets the tensioning member lock collar of Roll to be the
“distal-most portion of member 106 having threaded portion” (Ans. 5; FF 2)
and fluid receiving structure to be the “proximal-most portion of member
106 having no threads as well as connector 112, tube 128, and reservoir 133
attached thereto” (Ans. 5; FF 2). The Examiner finds that Roll‟s structure
106 serves as the tensioning member lock collar as well as the fluid
receiving structure at the same time (Ans. 5).
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Roll‟s structure 106 does not become a fluid receiving structure until
contact with the O-ring 105 is made; it is at this time that the system
becomes sealed (FF 3). Furthermore, at the time the structure 106 forms a
seal with O-ring 105, the distal end of the catheter is curled (FF 3). The
direct coupling of the elongated body with the fluid receiving structure
happens when the O-ring is compressed by structure 106 that itself is the
combination of tensioning member lock collar and fluid receiving structure.
The tensioning member lock collar is the “distal-most portion of member
106 having threaded portion” (Ans. 5; FFs 2, 3) and fluid receiving structure
106 is the “proximal-most portion of member 106 having no threads as well
as connector 112, tube 128, and reservoir 133” (Ans. 5; FFs 2, 3).
We agree with the Examiner‟s conclusion that “it would have been
obvious to one of ordinary skill in the art at the time the invention was made
to modify Osborne et al. to include a connection, as taught by Roll, for the
purpose of allowing fluid to move between the elongated body and the fluid
receiving structure when the catheter is curled.” (Ans. 5.) “The
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 416 (2007). “Because the proximal portion
104 of the elongated body [Roll] comprises threads 110 that are directly in
contact with threads 111 and because the tensioning member lock collar and
the fluid receiving structure are an integral structure, the threaded connection
directly couples the proximal portion of the elongated body to the fluid
receiving structure.” (Ans. 18.) The connection between the proximal
portion of the elongated body and the fluid receiving structure is formed
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when the O-ring is compressed to form a watertight seal and at the same
time the distal portion of the catheter is curled (FF 2).
Appellants contend that “Roll does not show or suggest that the
threaded portion 110 directly couples the proximal end 107 of the distal
member 104 to either the reservoir tube 128 or the reservoir 133.” (App. Br.
7.) “[T]he threaded portion 110 of the proximal member 106 does not
directly couple the distal member 104 to the reservoir tube 128 and the
reservoir 133.” (Id.) “Roll does not show or suggest a tensioning member
lock collar directly coupling the proximal portion of the elongated body to a
fluid receiving structure in a deployed configuration and thus does not cure
the deficiency of Osborne.” (Reply Br. 4.)
We are not persuaded. Appellants‟ arguments are directed to
structures in Roll that the Examiner is not relying on in making the
rejections (Ans. 20). We find no disclosure in the Specification or the
claims that limit the “proximal portion of the elongated body” to be the very
end of the elongated body. We find that the Examiner has reasonably
interpreted Roll‟s structure 104 to meet the claim limitation of being the
“proximal potion of the elongated body” (Ans. 18). The Examiner finds that
structure 104 contains threads that make contact with the fluid receiving
structure 106, and the connection between the two structures is made once
the O-ring is compressed to form a watertight seal (FF 2).
We are also not persuaded by Appellants‟ arguments (App. Br. 7;
Reply Br. 4) that appear to be directed to the gap between the flat surface of
component 107 at the proximal end of member 104 and the interior back
wall of structure 106 seen in Fig. 2 of Roll (FF 4). “[I]t is well established
that patent drawings do not define the precise proportions of the elements
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and may not be relied on to show particular sizes if the specification is
completely silent on the issue.” Hockerson-Halberstadt, Inc. v. Avia Group
Intern., Inc., 222 F.3d 951, 957 (Fed. Cir. 2000) (citing In re Wright, 569
F.2d 1124, 1127 (CCPA 1977)). The claims do not recite what part of the
“proximal portion of the elongated body” must make contact with the fluid
receiving structure. The elongated body is made up of structure 102, 103
and 104 (FF 2). We find that the Examiner has reasonably interpreted that
the “proximal portion” of the elongated body to be the entire structure 104 of
Roll (Ans. 18). Forming the water tight seal between structures 104 and 106
of Roll (FFs 2-4) meets the limitation of directly coupling as recited in
claim 1.
We conclude that the preponderance of the evidence of record
supports the Examiner‟s conclusion that the combination of Osborne and
Roll renders obvious the catheter as recited in claim 1. We thus affirm the
rejection of claim 1 under 35 U.S.C. § 103(a) as being obvious, as claims 2-
21 and 41-49 were not separately argued, we affirm the rejection as to those
claims as well. 37 C.F.R. § 41.37(c)(1)(vii).

SUMMARY
We affirm the rejection of claims 1-5, 7-9, 11-14, 20, and 41-46 under
35 U.S.C. § 103(a) as obvious over Osborne in view of Roll.
We affirm the rejection of claim 6 under 35 U.S.C. § 103(a) as
obvious over Osborne and Roll in view of Slanda.
We affirm the rejection of claim 10 under 35 U.S.C. § 103(a) as
obvious over Osborne and Roll in view of Paskar.
We affirm the rejection of claims 15-19, 21, and 47-49 under 35
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Application 11/503,749

11
U.S.C. § 103(a) as obvious over Osborne and Roll in view of Landau.

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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