Ex Parte GRAY et al

Patent Trial and Appeal Board

Jul 31, 2018

13653169 (P.T.A.B. Jul. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/653, 169 10/16/2012
121974 7590 08/02/2018
KACVINSKY DAISAK BLUNI PLLC
America's Cup Building
50 Doaks Lane
Marblehead, MA 01945
FIRST NAMED INVENTOR
JEFF GRAY
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.
8150BSC0064 1995
EXAMINER
TOWNSEND, GUY K
ART UNIT PAPER NUMBER
3761
NOTIFICATION DATE DELIVERY MODE
08/02/2018 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):
bbonneville@kdbfirm.com
docketing@kdbfirm.com
ehysesani@kdbfirm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEFF GRAY, ALISON LEPORDO, NATHAN ZAMARRIPA,
KARLA WEA VER, and THOMAS PEPIN
Appeal 2017-011785
Application 13/653,169 1
Technology Center 3700
Before MICHAEL C. ASTORINO, NINA L. MEDLOCK, and
BEYERL Y M. BUNTING, Administrative Patent Judges.
ASTORINO, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), the Appellants appeal from the
Examiner's decision rejecting claims 1-6 and 8-20 under 35 U.S.C. § 103(a)
as unpatentable over Dicarlo (US 2008/0125756 Al, pub. May 29, 2008)
and Accisano (US 7,824,367 B2, iss. Nov. 2, 2010). 2 We have jurisdiction
over the appeal under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
1 According to the Appellants, "[t]he real party in interest in this Appeal is
Boston Scientific Scimed, Inc." Appeal Br. 2.
2 Although claim 7 is listed as a rejected claim in the Office Action
Summary (PTOL-326, mailed Sept. 2, 2016), we do not understand the
Examiner to have rejected claim 7. See Appeal Br. 9 n.28.
Appeal 2017-011785
Application 13/653,169
STATEMENT OF THE CASE
Claimed Subject Matter
Claims 1 and 20 are the independent claims on appeal. Claim 20,
reproduced below, is illustrative of the subject matter on appeal.
20. A drainage catheter, comprising:
an elongate body member comprising a distal portion and
a proximal portion, at least a portion of the elongate body
member for placement within a patient;
an elongate flexible member operably coupled to the
distal portion of the elongate body member and extending
through the lumen in at least the proximal portion of the
elongate body member; and
a hub comprising:
a base having a proximal end, a distal end, and an
outer surface extending between the proximal and distal
ends, the base further including a screw thread disposed
on the outer surface, the outer surface having a mating
surface portion, the base distal end fixed to the elongate
body member proximal portion, the elongate body
member and base together defining a central device
lumen, and
a collar having a proximal end, a distal end, a
central lumen and a side lumen, an inner surface
extending from the proximal end to the distal end and an
outer surface extending from the proximal end to the
distal end, a screw thread disposed on the inner surface
and configured to mate with the screw thread of the base,
the inner surface comprising a mating surface portion, the
mating surfaces of the base and the collar having
mismatched profiles and configured such that when the
collar is tightened on the hub using the corresponding
screw threads, the mating surfaces are forced together to
lock the collar to the base,
wherein the elongate flexible member has a proximal
portion that exits the central device lumen proximal the
proximal end of the base and is disposed between at least a
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Application 13/653,169
portion of the outer surface of the base and the inner surface of
the collar such that when the collar is locked to the base, the
elongate flexible member proximal portion is fixed between the
base and the collar, and wherein the side lumen extends from
the inner surface to the outer surface, wherein the collar side
lumen is positioned between the proximal and distal end of the
collar.
ANALYSIS
The Examiner determines that claims 1---6 and 8-20 are unpatentable
under 35 U.S.C. § 103 based on the teachings of Dicarlo and Accisano.
Final Act. 7-16. To facilitate our analysis, we address the Examiner's
rejection of independent claim 20 and then the Examiner's rejection of
independent claim 1 and dependent claims 2---6 and 8-19.
Independent claim 20
The Appellants argue that Dicarlo' s suture 108 does not correspond to
"the elongate flexible member proximal portion is fixed between the base
and the collar," as recited in claim 20. Appeal Br. 11, 17 (Claims App.).
The Appellants attempt to distinguish the foregoing claim limitation from
Dicarlo' s drainage catheter by pointing to Figures 2A and 2B of the present
application, reproduced below. Id. at 11.
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Application 13/653,169
Figure 2A illustrates the drainage catheter in an unlocked position, while
Figure 2B shows the drainage catheter in a locked position. The Appellants
contend Dicarlo' s suture 108 is not fixed between first and second suture
lock collars 112, 114. Id. at 10-11 (citing Dicarlo ,r 29, Fig. 3); Reply Br. 5.
Also, the Appellants contend that a direct interaction is lacking between
Dicarlo's suture 108 and second suture lock collar 114. Appeal Br. 11;
Reply Br. 5. The Appellants' argument is not persuasive.
The Specification uses the term "fixed" and provides guidance to one
of ordinary skill in the art that the term may be construed as a reduction
and/or prevention of relative movement. See Spec. 3:27-29 ("In some
embodiments, tightening of the collar to the base reduces and/or prevents
relative movement between the elongate flexible member and the hub. To
this end, a portion of the elongate flexible member is fixed between the
collar and the base."); Ans. 15. Figures 2B and 3 show the drainage catheter
in a locked state, where elongate flexible member 104 is positioned between
the mating surfaces of base 118 and collar 120. Spec. 5:11-13. And, in this
position, there is a reduction and/or prevention of relative movement of
elongate flexible member 104 between base 118 and collar 120.
Turning to the Examiner's rejection of claim 20, the Examiner finds
that the proximal portion of Dicarlo' s suture 108 ( elongate flexible member)
is fixed between second suture lock collar 114 (base) and first suture lock
collar 112 (collar) at or within suture collar 136. See Final Act. 13-15,
Ans. 16; see also Dicarlo ,r,r 26-27, 29, Figs. 1, 3, 5. In view of the broadest
reasonable interpretation of the term "fixed" consistent with the underlying
specification we agree with the Examiner's finding. Indeed, Dicarlo' s
Figures 1, 3, and 5 likewise show the proximal portion of suture 108 fixed
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Appeal 2017-011785
Application 13/653,169
(i.e., having a reduction and/or prevention of relative movement), by suture
collar 136, between first and second suture lock collars 112, 114.
The Appellants contend that the Examiner's finding is in error
because Dicarlo does not use the term "fixed," or equivalents thereof, to
describe the interaction between suture 108 and first and second suture lock
collars 112, 114. Reply Br. 6. The Appellants' contention is not persuasive
because whether Dicarlo uses the term "fixed" or equivalents thereof to
explain the interaction between suture 108 and first and second suture lock
collars 112, 114 is not dispositive of Examiner error.
Additionally, we acknowledge that the Appellants' invention includes
a feature where the elongate flexible member has direct interaction with the
base and collar. Figures 2B and 3 show "a portion of the flexible member
104 (between the side lumen 124 and the side lumen 13 8) ... trapped
between the collar 120 and base 118, preventing any movement."
Spec. 11:16-18; see id. at 5:13, 11:19--23. Here, elongate flexible
member 104 has direct interaction with collar 120 and base 118. This direct
interaction is indicative of the application of forces to a portion of elongate
flexible member 104 by base 118 and collar 120, which fixes (e.g., reduces
and/or prevents) relative movement of a portion of elongate flexible member
104 between base 118 and collar 120. However, these features are not
claimed and do not impart patentability to the claims. See In re Hiniker Co.,
150 F.3d 1362, 1369 (Fed. Cir. 1998); In re Self, 671 F.2d 1344, 1348
(CCPA 1982). Stated otherwise, claim 20 does not recite or require the
elongate flexible member, or a portion thereof, to have direct interaction
with either the base or the collar. See Ans. 16.
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Application 13/653,169
The Appellants also contend that "suture collar 136 through which the
suture 108 extends is not a component of the second suture lock collar 114."
Reply Br. 6. The Appellants' contention is not persuasive. Suture
collar 13 6 does not need to be part of second suture lock collar 114 for the
Examiner's finding to be adequately supported. All that is required is for
suture collar 136, which fixes suture 108, to be positioned between first and
second suture locks collar 112, 114.
Thus, we sustain the Examiner's rejection of independent claim 20
under 35 U.S.C. § 103(a) as unpatentable over Dicarlo and Accisano.
Independent claim 1 and dependent claims 2-6 and 8-19
The Appellants argue that Dicarlo' s suture 108 does not correspond to
"the elongate flexible [member] clamped between the mating surface
portions of the base and the collar," as recited in claim 1. 3 Appeal Br. 11, 14
(Claims App.). The Appellants assert that "suture collar 136 through which
the suture 108 extends is not a component of the second suture lock collar
114." Reply Br. 6. The Appellants' argument is persuasive.
The Examiner finds that Dicarlo's suture 108 (elongate flexible
member) is clamped between the mating surface portions of second suture
lock collar 114 (base) and first suture lock collar 112 (collar) at or within
suture collar 136. See Final Act. 7-9, Ans. 19-20; see also Dicarlo ,r,r 26-
27, 29, Figs. 1, 3, 5. In support of this finding the Examiner annotates
3 For the purposes of this Appeal, we use the term "elongate flexible
element" interchangeably with "elongate flexible member." See Appeal
Br. 11 n.31 ("Appellants note the unintentional discrepancy recited in
independent claim 1, in which the elongate flexible member is later referred
to as an elongate flexible element.").
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Application 13/653,169
Dicarlo's Figure 5, reproduced below, which adds four lines pointing to
portions of the base's mating surface (the Examiner's refers to the base
mating surface as "BMS"). 4 Final Act. 8.
FIG. 5 annotated
,,CCE
,..--130
136
The Examiner annotated Figure 5 of Dicarlo to show, among other things,
the mating surface between second suture lock collar 114 and first suture
lock collar 112.
We agree with the Examiner that the three lines directed to the surface
of second suture lock collar 114, which is circumferentially and immediately
adjacent to first suture lock collar 112, identifies portions of second suture
lock collar 114's mating surface portion. However, suture 108, by use of
suture collar 136, is not clamped between the mating surface portions of
second suture lock collar 114 (base) and first suture lock collar 112 (collar)
at the points identified by these three lines. See Dicarlo, Fig. 5.
4 Dicarlo' s Figure 5 shows a cross-sectional view of the suture lock collars
112, 114 used in the catheter of Figure 3. See Dicarlo ,r 8.
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The fourth line appears to identify an outer surface of suture collar
136 rather than second suture lock collar 114's mating surface portion. See
Final Act. 8. Notably, Dicarlo does not disclose suture collar 136 as part of
second suture lock collar 114 such that the outermost circumferential surface
of suture collar 136 may be considered as the second suture lock collar 114's
mating surface portion. As such, the Examiner's finding that Dicarlo' s
suture 108, by use of suture collar 136, is clamped between the mating
surface portions of second suture lock collar 114 (base) and first suture lock
collar 112 ( collar), is not adequately supported.
The Examiner's findings based on Accisano's teachings and the
modification of Dicarlo's drainage catheter and catheter connector lock (id.
at 16) do not remedy the deficiency in the Examiner's finding that Dicarlo' s
suture 108, by use of suture collar 136, is clamped between the mating
surface portions of second suture lock collar 114 (base) and first suture lock
collar 112 ( collar).
Thus, we do not sustain the Examiner's rejection of independent
claim 1 under 35 U.S.C. § 103(a) as unpatentable over Dicarlo and
Accisano. For the same reason, we also do not sustain the Examiner's
rejection of dependent claims 2---6 and 8-19.
DECISION
We AFFIRM the Examiner's decision rejecting claim 20.
We REVERSE the Examiner's decision rejecting claims 1---6 and 8-
19.
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Appeal 2017-011785
Application 13/653,169
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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