Ex Parte GARDESKI et al

Patent Trial and Appeal Board

Feb 8, 2019

14293382 (P.T.A.B. Feb. 8, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/293,382 06/02/2014
27581 7590 02/12/2019
Medtronic, Inc. (CVG)
8200 Coral Sea Street NE.
MS:MVC22
MINNEAPOLIS, MN 55112
FIRST NAMED INVENTOR
Kenneth C. GARDESKI
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.
C0007430.USU1 1774
EXAMINER
ORKIN, ALEXANDER J
ART UNIT PAPER NUMBER
3771
NOTIFICATION DATE DELIVERY MODE
02/12/2019 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.patents.five@medtronic.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KENNETH C. GARDESKI, JAMES K. CARNEY,
MELISSA G.T. CHRISTIE, MICHAEL R. LENERS,
LONNIE D. RONNING, and
AMYE. THOMPSON-NAUMAN 1
Appeal2018---001487
Application 14/293,382
Technology Center 3700
Before KEVIN F. TURNER, JILL D. HILL, and LEE L. STEPINA,
Administrative Patent Judges.
HILL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Kenneth C. Gardeski et al. ("Appellants") appeal under 35 U.S.C.
§ 134(a) from the Examiner's final decision rejecting claims 1-9, 11, 12, and
23-262. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellants identify the real parties in interest as Medtronic, Inc. of
Minneapolis, Minnesota, the Assignee of Record, and Medtronic, plc of
Dublin Ireland, the ultimate parent entity of Medtronic, Inc. Appeal Br. 1.
2 Claims 10 and 13-22 have been canceled. Appeal Br. 8 (Claims App.).
Appeal2018---001487
Application 14/293,382
BACKGROUND
Independent claims 1 and 26 are pending. Independent claim 1,
reproduced below, illustrates the claimed invention, with a limitation
italicized.
1. A medical device, comprising:
an elongate shaft defining a major longitudinal axis and
including a proximal end and a distal end;
a necked portion coupled to and extending from the distal
end, the necked portion defining a first thickness and a
substantially planar surface, the necked portion being at least
resiliently movable in a direction normal to the major
longitudinal axis; and
a tip disposed at a distal end of the necked portion, the tip
defining a second thickness greater than the first thickness, the
tip is not movable in a direction binormal to the major
longitudinal axis.
Appeal Br. 15 (Claims App.).
REJECTIONS
I. Claims 1-3, 8, 9, and 11 stand rejected under 35 U.S.C.
§ I02(a) as anticipated by Fogarty (US Patent No. 6,405,733 Bl, iss. June
18, 2002). Final Act. 3.
II. Claims 1-9, 11, 12, and 23-25 stand rejected under 35 U.S.C.
§ 103 as unpatentable over Zinn (US 2009/0030426 Al, pub. Jan. 29, 2009)
and Fogarty. Final Act. 5.
III. Claim 26 stands rejected under U.S.C. § 103 as unpatentable
over Cruz (US 5,571,093, iss. Nov. 5, 1996) and Fogarty. Final Act. 8.
ANALYSIS
Independent claims 1 and 26 recite, inter alia, a tip 24 that "is not
movable in a direction binormal to the major longitudinal axis." Relevant to
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Appeal2018---001487
Application 14/293,382
this limitation, Appellants' Specification discloses that "a force applied to
the tip 24 in direction 'F' (as shown in FIG. 4, for example) may cause the
tip 24 and the stem 22 to ... move in a direction normal to and toward the
major longitudinal axis 'x,' while being substantially immovable in the
direction binormal to the major longitudinal axis 'x, "' and that "the stem 22
is substantially planar, thin, and immovable in the direction binormal to the
major longitudinal axis 'x. "' Spec. ,r,r 27, 29. The dispositive issue in this
case is whether Fogarty discloses a tip that is also not movable in a direction
binormal to its device's longitudinal axis.
The Examiner finds that Fogarty discloses a medical device having a
shaft defining a major longitudinal axis, a necked portion resiliently movable
in a direction normal to the major longitudinal axis, and a tip 220 at a distal
end of the necked portion, wherein "the tip is not movable in a direction
binormal to the major longitudinal axis." Final Act. 3--4 (citing Fogarty
Figs. 7 A-7C, 15:40-55). The Examiner also finds that Fogarty discloses
that its tip 220 can have an "arcuate profile which is similar to the
mechanism of the present application that will allow the tip is [sic] not
movable in a direction binormal to the major longitudinal axis." Id. at 4.
The Examiner contends that it is the bias of Appellants' tip that causes "the
tip not to be movable in a direction binormal to the major longitudinal axis"
(Spec. ,r 26), and that Fogarty similarly discloses a tip "that is biased to
curve in a single direction." Id. at 9 (citing Fogarty 15:40-55 (discussing the
degree of curvature and shape of the locator 200 "when unconstrained or
constrained only by tissue may be designed into the element for a variety of
tailored applications")).
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Appeal2018---001487
Application 14/293,382
Appellants argue that Fogarty is silent about its tip 220 "being
immovable in any direction, let alone in the direction binormal to the major
longitudinal axis," and that 'just because [Fogarty's] locator element 200 is
flexible or biased in one direction does not necessarily mean it is immovable
in another." Appeal Br. 2-3. Moreover, to the extent that the Examiner's
rejection relies on inherency, Appellants argue that "Fogarty's nebulous
disclosure of its locator element is insufficient to establish inherency." Id.
Further, according to Appellants, "the list of materials that Fogarty
discloses [ for its] locator element all could be constructed to move in all
directions." Id., see Fogarty 15 :21--40 ( disclosing locator element materials
facilitating curvature thereof).
Appellants lastly argue that the Examiner erred in finding that it is the
bias of Appellants' tip that causes "the tip not to be movable in a direction
binormal to the major longitudinal axis," and that Fogarty's similarly biased
tip would have the same binormal movability constraints. Appeal Br. 3--4
(addressing Final Act. 9). According to Appellants, it is not the biasing of
their tip that constrains binormal movement, because biasing does not
necessarily constrain binormal movement. Id. at 4.
The Examiner responds that claims 1 and 26 recite that "the tip is not
movable in a direction binormal to the major longitudinal axis," rather than
the tip and the necked portion not being movable - "[ w ]ith this in mind, the
neck can move that may adjust the tip along the direction, but just the tip
itself cannot move." Ans. 3.
It is unclear to us how movement of Fogarty's neck in a binormal
direction would not also cause movement of its tip in a binormal direction,
such that the Examiner's reasoning does not appear to have a rational basis.
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Appeal2018---001487
Application 14/293,382
It appears that the Examiner has conflated the terms "move" and "bend," as
Fogarty's tip may not bend when the neck bends, but a skilled artisan would
understand that Fogarty's tip will move when its neck bends.
The Examiner also responds that an embodiment of Fogarty's tip
includes "a thin planar tip that is biased in a single curve, similar to the tip of
the present application, which will then have a tip not movable in a direction
binormal to the major longitudinal axis." Ans. 3. Considering the disclosure
of Fogarty as a whole, and particularly the embodiments of its Figures 3A-
3C and 7 A-7C relied on by the Examiner, we are not persuaded that a
skilled artisan would understand that the structure of Fogarty's shaft, necked
portion, and tip 220 are so similar to the structure of the claimed invention
that Fogarty's tip 200 would not be movable in a direction binormal to the
longitudinal axis of its shaft. For this reason, the Examiner's findings are in
error, and we do not sustain the pending rejections.
DECISION
We REVERSE the rejection of claims 1-3, 8, 9, and 11 as anticipated
by Fogarty.
We REVERSE the rejection of claims 1-9, 11, 12, and 23-25 as
unpatentable over Zinn and Fogarty.
We REVERSE the rejection of claim 26 as unpatentable over Cruz
and Fogarty.
REVERSED
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