Ex Parte Gerber

Patent Trial and Appeal Board

Nov 27, 2013

11606627 (P.T.A.B. Nov. 27, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte MARTIN T. GERBER
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Appeal 2012-002319
Application 11/606,627
Technology Center 3700
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Before TONI R. SCHEINER, ERIC GRIMES, and ERICA A. FRANKLIN,
Administrative Patent Judges.

SCHEINER, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal1 under 35 U.S.C. § 134 from the final rejection of
claims 1-13, 15, and 19-23, directed to a device for aiding the implantation
of an implantable medical device. The Examiner has rejected the claims as
obvious, indefinite, and lacking written descriptive support. We have
jurisdiction under 35 U.S.C. § 6(b).

1 Appellant identifies the Real Party-In-Interest as Medtronic, Inc. of
Minneapolis, Minnesota (App. Br. 3).
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Application 11/606,627
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STATEMENT OF THE CASE
Claims 1-13, 15, and 19-23 are pending and on appeal. Claims 24-37
are also pending, but have been withdrawn from appeal, while claims 14 and
16-18 have been canceled (App. Br. 3).
The Examiner relies on the following evidence:
Mamo et al. US 2002/0147485 A1 Oct. 10, 2002
Konstorum et al. US 6,749,560 B1 Jun. 15, 2004
Griffin et al. US 2004/0193140 A1 Sep. 30, 2004
Harris et al. US 2005/0049664 A1 Mar. 3, 2005
Claims 1-13, 15, and 19-23 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Mamo, Griffin, and Konstorum (Ans. 6-11).
Claim 15 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Mamo, Griffin, Konstorum, and Harris (Ans. 12).
Claims 12 and 22 stand rejected under 35 U.S.C. § 112, first
paragraph, as lacking written descriptive support (new matter) (Ans. 3-5).
Claim 11 stands rejected under 35 U.S.C. § 112, second paragraph, as
indefinite (Ans. 5).
We reverse the obviousness rejections of the claims; affirm the written
description rejection with respect to claim 12 and reverse with respect to
claim 22; and affirm the indefiniteness rejection of claim 11.
Representative claim 1 is reproduced below:
1. An apparatus to facilitate implantation of a therapy element into tissue
of a patient, the apparatus comprising:
a dilator; and
a sheath defining an inner lumen configured to interchangeably
receive the dilator and the therapy element,
wherein a first portion of the dilator is configured to preferentially
flex in at least a first direction over at least a second direction that is
different from the first direction, and wherein a second portion of the dilator
is configured to preferentially flex in the second direction.
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DISCUSSION
Obviousness
Both obviousness rejections are premised on the Examiner’s finding
that Konstorum discloses a device wherein a “first flexible portion is
configured to preferentially flex in at least a first direction over a second
direction and [a] second portion is configured to preferentially flex in the
second direction” (Ans. 7). Accordingly, we will discuss the rejections
together.
The Examiner finds that Mamo discloses a dilator, but does not
“disclose the flexibility characteristics of the dilator” (Ans. 6), while Griffin
“teaches the importance of flexibility of an elongated device of this purpose”
(id.). The Examiner further finds that Konstorum “teaches the design of an
elongated medical device where . . . preferentially flexing in at least a first
direction over at least a second direction can be achieved” (id.), as shown in
Konstorum’s Figure 3, reproduced below:

Figure 3 of Konstorum depicts tube 40, with slots 46 along at least
part of its length.
“[I]n this embodiment, the slots 46, are configured into three sections
52, 54, 56. Each section has a different pattern of the slots 46” (Konstorum,
col. 3, ll. 32-35). Konstorum teaches that first section 52 represents an
active deflection section of the tube, while second section 54 represents a
passive deflection section (id. at col. 3, ll. 52-54; col. 4, ll. 11-12). In this
embodiment section 52 is provided with two slot directions, “A and B . . .
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which are 180º offset from each other” (id. at col. 3, ll. 59-61), while section
54 is provided with slots “in four directions A, B, C and D which are offset
90º from each other” (id. at col. 4, ll. 15-17). Thus, section 52 is “two-way
deflectable” (id. at col. 3, ll. 52-61), while the slots in section 54 “provide
four way deflection capability” (id. at col. 4, l. 46).
According to the Examiner, Konstorum’s “first flexible portion [52] is
configured to preferentially flex in at least a first direction over a second
direction and the second portion [54] is configured to preferentially flex in
the second direction” (Ans. 7). Specifically, the Examiner finds that:
Appellant’s “first direction” reads upon Konstorum et al.’s two-
way deflection, and Appellant’s “second direction” reads upon
the other of the two directions in Konstorum et al.’s four
directions such that “the first portion is configured to
preferentially flex in at least a first direction over at least a
second direction that is different from the first direction, and
wherein the second portion of the dilator is configured to
preferentially flex in the second direction” as required by
claim 1.
(Id. at 14.)
The Examiner concludes that it would have been obvious for one of
ordinary skill in the art to modify Mamo’s dilator with “the slot design of
Konstorum et al. as suggested by Griffin et al. to enable the elongated body
to preferentially flex in at least a first direction over at least a second
direction, in order to provide different flexibility and column strength
patterns along the dilator length” (id. at 7).
Appellant contends, in relevant part, that Konstorum’s endoscope is
“configured to flex in multiple directions without . . . any particular
preferential flexing” (App. Br. 9), and “preferential flexing, as required by
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Appellant’s claim 1, is not the same as multi-directional flexibility” (Reply
Br. 8).
Specifically, Appellant contends that:
The first section 52 of the endoscope of Konstorum may be
deflectable in two directions, e.g. in an up and down direction
from the perspective of the view of FIG. 3 in Konstorum. The
second section 54 . . . is deflectable in four directions, e.g., in
the up and down directions of the first section 52 and in two
directions into and out of the page on which FIG. 3 of
Konstorum lies. This design of the endoscope of Konstorum
yields a device that, in one example, will deflect up in the first
section 52 and also in the same up direction in the second
section 54. In another example, the first section 52 will deflect
down and the second section 54 will also deflect in the same
down direction. In the multi-directional deflection arrangement
of the Konstorum endoscope, these results in which the first and
second sections identified by the Examiner deflect in the exact
same direction is just as likely as the first section deflecting,
e.g., in the up direction and the second section 54 deflecting in
a different direction, e.g., down. Thus, the endoscope of
Konstorum does not exhibit preferential flexing, let alone, a
first portion of a dilator that is configured to preferentially flex
in at least a first direction over at least a second direction that is
different from the first direction and a second portion of the
dilator that is configured to preferentially flex in the second
direction, as required by Appellant's claim 1.
(Id.)
Appellant’s argument is persuasive. Konstorum teaches that different
slot patterns “can be used to form endoscopes with different shaft properties,
such as different stiffness properties along their lengths and different active
deflection capabilities at their active deflection sections” (Konstorum, col. 6,
ll. 7-10). However, the Examiner has not identified any embodiment of
Konstorum’s device wherein a first portion “is configured to preferentially
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flex in at least a first direction over at least a second direction that is
different from the first direction, and wherein a second portion of the dilator
is configured to preferentially flex in the second direction,” as required by
claim 1.
Accordingly, we will reverse both obviousness rejections of the
claims.
Written Description
Claims 12 and 22 stand rejected as lacking written descriptive support
(new matter).
Appellant acknowledges the rejection of claim 12, but has not
addressed it (App. Br. 3; Reply Br. 3).
Accordingly, the rejection of claim 12 as lacking written descriptive
support is summarily affirmed.
With respect to claim 22, we agree with Appellant that the “disclosure
conveys to one having ordinary skill in the art that Appellant had possession
of an apparatus that comprises a sheath defining an inner lumen that has a
diameter in a range of approximately one millimeter to approximately ten
millimeters” (App. Br. 7), given the size range described for the dilator,
which is designed to fit inside it (see e.g., Spec. ¶ 15).
Accordingly, the rejection of claim 22 as lacking written descriptive
support is reversed.
Indefiniteness
Appellant acknowledges the rejection of claim 11 as indefinite under
35 U.S.C. § 112, second paragraph (App. Br. 3; Reply Br. 3), but has not
otherwise addressed the rejection.
The rejection of claim 11 as indefinite is summarily affirmed.
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SUMMARY
The rejection of claims 1-13, 15, and 19-23 under 35 U.S.C. § 103(a)
as unpatentable over Mamo, Griffin, and Konstorum is reversed.
The rejection of claim 15 under 35 U.S.C. § 103(a) as unpatentable
over Mamo, Griffin, Konstorum, and Harris is reversed.
The rejection of claims 12 and 22 under 35 U.S.C. § 112, first
paragraph, as lacking written descriptive support is affirmed with respect to
claim 12 and reversed with respect to claim 22.
The rejection of claim 11 under 35 U.S.C. § 112, second paragraph, as
indefinite is affirmed.
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-IN-PART

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