11680834 (B.P.A.I. Sep. 5, 2012)

Ex Parte Duffy et al

Board of Patent Appeals and InterferencesSep 5, 2012

11680834 (B.P.A.I. Sep. 5, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES __________ Ex parte NIALL DUFFY, NOREEN MOLONEY, and TERRY GUINAN __________ Appeal 2011-011109 Application 11/680,834 Technology Center 3700 __________ Before TONI R. SCHEINER, LORA M. GREEN, and SHERIDAN K. SNEDDEN, Administrative Patent Judges. SNEDDEN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims to bifurcated catheters which can be linked together such that they can be tracked to a bifurcated region of a body lumen over a single guide wire. The Examiner has rejected the claims as anticipated. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Appeal 2011-011109 Application 11/680,834 2 STATEMENT OF THE CASE According to Appellants, the invention relates to bifurcated catheters which can be linked together such that they can be tracked to a bifurcated region of a body lumen over a single guide wire. Claims 24-26 are on appeal. Claim 24 is the only independent claim on appeal and reads as follows: 24. An apparatus for treating a bifurcated region of a body lumen, comprising: a catheter having a first catheter branch and a second catheter branch, wherein the first catheter branch includes a first distal portion and the second catheter branch includes a second distal portion; a sheath coupled to the first distal portion and the second distal portion such that the first and second distal portions are coupled to each other. The claims stand rejected as follows: I. Claims 24-26 stand rejected as anticipated by Johnson et al. (U.S. 2004/0143286 A1, published Jul. 22, 2004). Appeal 2011-011109 Application 11/680,834 3 I. Issue The Examiner finds that Johnson discloses “a catheter having a first catheter branch 36 and a second catheter branch 40, wherein the first catheter branch includes a first distal portion and the second catheter branch includes a second distal portion (a “distal portion” can be broadly defined); a sheath coupled to the first distal portion and the second distal portion such that the first and second distal portions are coupled to each.” (Ans. 3; citations omitted; emphasis added.) Appellants contend that Johnson fails to disclose a catheter device having first and second catheter branches with first and second distal portions, respectively, where “a sheath [is] coupled to the first distal portion and the second distal portion such that the first and second distal portions are coupled to each other.” (Appeal Br. 10; emphasis omitted.) The issue with respect to this rejection is: Whether Johnson discloses a catheter device with a branched catheter construction having distal portions coupled together using a sheath. Findings of Fact FF1. The Specification discloses “[a] bifurcated catheter [that] includes a first catheter branch having a first distal portion and a second catheter branch having a second distal portion.” (Spec. at ¶ [0014].) FF2. Figure 6 of the Specification, is reproduced below. App App Figu 121 bloo bifur other first ¶ [00 may them emb eal 2011-0 lication 11 re 6 illustr of the first d vessel 15 FF3. Th cated regi such that and secon 74], which be positio together i FF4. Fig odiment of 11109 /680,834 ates the po and secon 0, 152. e Specifica on, the firs the first an d vessel br provides ned indepe s removed ures 1 and the cathe sitioning o d catheter tion disclo t and seco d second anches, re that the d ndently o .) 2 of John ter device 4 f the first branches ses that “ nd distal p catheter b spectively istal portio f each othe son are rep disclosed b and secon 102, 104 w [u]pon del ortions ar ranches m .” (Spec. ns of the c r once the roduced b y Johnson d distal en ithin a bif ivery to th e released ay be track at ¶ [0014] atheter br sheath co elow. illu . ds 109, urcated e from each ed into ; see also, anches upling strate an App App Figu John guid 40 th guid eal 2011-0 lication 11 res 1 and 2 son. FF5. Jo ewire chan erein. (Se ewire chan 11109 /680,834 illustrate hnson disc nel 30, wh e Johnson nel 30 com an embod loses a cat ich is pro at Abstrac prises a s 5 iment of th heter devi portioned t and ¶ [0 leeve 32 a e catheter ce that inc to slidably 069]; emp ttached to device di ludes a dis receive a hasis adde a treatmen sclosed by ruptable guidewire d.) The t Appeal 2011-011109 Application 11/680,834 6 implement 34 (e.g., an expandable balloon) mounted on a catheter shaft 36. (Id.) Once treatment is completed, the guidewire channel can then be disrupted so as to free the guidewire from the catheter in situ. (Id.) FF6. The Examiner notes that the term “distal portion” of the claims may be defined broadly such that the device of Johnson reads on the claims. (Ans. 3.) Principles of Law Anticipation requires that every element and limitation of the claimed invention must be found in a single prior art reference, arranged as in the claim. Brown v. 3M, 265 F.3d 1349, 1351 (Fed. Cir. 2001). “[D]uring examination proceedings, claims are given their broadest reasonable interpretation consistent with the specification.” In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000). However, a claim element cannot be interpreted so broadly so as to read the limitation out of the claim. See Texas Instr. Inc. v. United States Int'l Trade Comm'n, 988 F.2d 1165, 1171 (Fed. Cir. 1993) (claim language cannot be mere surplusage. An express limitation cannot be read out of the claim). Analysis The Examiner would like us to interpret the term “distal portion” as used in the claim broadly such that the portions of guidewire 40 and catheter 36 shafts of the device in Johnson in contact with the sleeve 32 would read on the claim. We decline to do so as such an interpretation reads the term “distal” out of the claim. We thus, agree with Appellants that Johnson fails to disclose a catheter having a first catheter branch and a second catheter Appeal 2011-011109 Application 11/680,834 7 branch coupled together at their distal portions with a sheath. Rather, Johnson discloses an instrument where guidewire and catheter shafts (construed to represent a first and second catheter branch by the Examiner) are slidably configured to receive each other. (FF5.) The result is a configuration where portions of the guidewire and catheter shafts remain distal with regard to the sleeve (i.e., the sheath). The Examiner’s interpretation fails to account for these more distal portions of the guidewire and catheter shafts, and thus gives no meaning to the term “distal portion”. Conclusion of Law Because Johnson fails to teach all elements of the claim, we reverse the rejection of claim 24 under 35 U.S.C. § 102(b) as anticipated by Johnson. As claims 25 and 26 are dependent on claim 24, and thus incorporate all of the limitations of claim 24, we reverse the rejection as to those claims as well. REVERSED lp