Ex Parte HENDRICK

Patent Trial and Appeal Board

Oct 24, 2018

15145516 (P.T.A.B. Oct. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
15/145,516 05/03/2016 Brandon Thomas HENDRICK
24737 7590 10/26/2018
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus A venue
Suite 340
Valhalla, NY 10595
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.
2013 P02500US02 9927
EXAMINER
HERBERMANN, ERICH G.
ART UNIT PAPER NUMBER
3771
NOTIFICATION DATE DELIVERY MODE
10/26/2018 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):
patti. demichele@Philips.com
marianne.fox@philips.com
katelyn.mulroy@philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRANDON THOMAS HENDRICK
(APPLICANT: THE SPECTRANETICS CORPORATION)
Appeal2017-010953
Application 15/145,516 1
Technology Center 3700
Before DONALD E. ADAMS, RICHARD M. LEBOVITZ,
RYAN H. FLAX, Administrative Patent Judges.
ADAMS, Administrative Patent Judge.
DECISION ON APPEAL
This Appeal under 35 U.S.C. § 134(a) involves claims 21 and 32-36
(Final Act. 2). 2 Examiner entered a rejection under 35 U.S.C. § 103(a). We
have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Appellant identifies "THE SPECTRANETICS CORPORATION" as the
real party in interest (App. Br. 2).
2 Final Office Action mailed December 5, 2016.
Appeal2017-010953
Application 15/145,516
STATEMENT OF THE CASE
Appellant's disclosure "relates generally to guidewires, including
methods for using guidewires and systems incorporating guidewires for
capturing and removing unwanted plaque in a patient's vascular system"
(Spec. ,r 1). Appellant's claim 21 is representative and reproduced below:
21. A method of removing plaque within a blood vessel, the
method comprising the steps of:
inserting a guidewire into the blood vessel and into
plaque, wherein the guidewire comprises a plurality of radially
protruding tines attaching to the plaque;
inserting a laser catheter into the blood vessel over the
guidewire, wherein the laser catheter comprises a plurality of
laser emitters for ablating the portion of the plaque from the
blood vessel;
separating at least a portion of the plaque from the blood
vessel using the laser catheter;
and
concurrently removing, from the blood vessel, the
guidewire and the plaque attached to the guidewire.
(App. Br. 12.)
Ground of rejection before this Panel for review: 3
Claims 21 and 32-36 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over the combination of Dance, 4 Kurz, 5 and Bren Oren. 6
3 Examiner withdrew the Final rejection of Appellant's claim 36 under 35
U.S.C. § 112(a) (Ans. 2; cf Final Act. 2).
4 Dance et al., US 5,078,723, issued Jan. 7, 1992.
5 Kurz et al., US 7,008,434 B2, issued Mar. 7, 2006.
6 Ben Oren et al., US 2014/0031800 Al, published Jan. 30, 2014.
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Appeal2017-010953
Application 15/145,516
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
FACTUAL FINDINGS (FF)
We adopt Examiner's findings concerning the scope and content of
the prior art (Final Act. 3-5; see also Ans. 2---6), and provide the following
findings for emphasis.
FF 1. Dance "relates to devices for removing obstructions from blood
vessels" (Dance 1: 9-10).
FF 2. Dance's Figure 5 is reproduced below:
14 12
18
58 FIG. 5
I
102
Dance's "FIG. 5 is a perspective view of [Dance's] atherectomy device ...
entering [a] stenosis" (Dance 2:63---64 (emphasis omitted); see also Final
Act. 3).
FF 3. Dance's device "comprises a torque cable 12[] [and] a cutter cable or
ribbon cable 14 ... mounted on a guide wire 18" (Dance 3:4--7 (emphasis
omitted); see also Final Act. 3).
FF 4. Dance's device further comprises a "[s]crew 35 [that] has a leading
edge 40 which is sharpened for facilitating its entry into a stenosis," wherein
"sharpened edge 40 of screw 35 is turned in the stenosis as torque cable 12 is
rotated," thereby anchoring screw 35 in the stenosis (Dance 3:27--45
( emphasis omitted)).
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Application 15/145,516
FF 5. Dance' s Figure 6 is reproduced below:
' 14
35. 58
.........
FIG. 6
I
f02.
!8
Dance's "FIG. 6 shows [Dance's] atherectomy device of FIG. 5 with the
cutter advancing" (Dance 2:65--66; see also Final Act. 3).
FF 6. Dance discloses that after screw 35 is anchored in a stenosis,
[c]utter cable 14 is ... advanced ... over the screw 35 to cut
the steno sis and trap the cut material between screw 3 5 and
cable 14. Cutter head 58 and cable 12 interact much like a pair
of scissors, although only cutter head 5 8 is sharpened. The
device [] is then withdrawn from the vessel with the cut stenosis
material trapped inside.
(Dance 3:65--4:3 (emphasis omitted); see also Final Act. 3.)
FF 7. Examiner finds that Dance fails to disclose a "guidewire
compris[ing] a plurality of radially protruding tines attaching to the plaque"
as recited in claim 21 (Final Act. 3).
FF 8. Kurz
concerns a shape memory clot retrieval device having an
elongated catheter member with at least one clot retrieval
member connected to the elongated catheter member that is
movable between an initial compressed configuration in which
the clot retrieval device is inserted into the vasculature and an
expanded configuration extending outwardly from the
elongated catheter member to trap and hold clots within the
vessel.
(Kurz 1: 15-22.)
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Appeal2017-010953
Application 15/145,516
FF 9. Kurz's Figure 7 is reproduced below:
64
FIG. 7
68 60
~
Kurz's "FIG. 7 is a side elevational view of ... [Kurz's] clot retrieval device
... showing the clot retrieval members[, or tab members, 64, 66, 68,
projecting from tubular wall 65] in an expanded state" (Kurz 4:48-51, 6:40-
48; see also Final Act. 7).
FF 10. Kurz discloses that "[t]he elongated catheter member and clot
retrieval portion are dimensioned so as to be removable from the vessel
through the guiding catheter when the tab members are in the expanded
configuration, such that clots trapped by the tab members can be withdrawn
from the vessel" (Kurz 6:59---63).
FF 11. Examiner finds that the combination of Dance and Kurz fails to
disclose "a laser catheter with a plurality of laser emitters for ablating the
portion of plaque from the blood vessel" as required by claim 21 (Final Act.
3).
FF 12. Bren Oren discloses "a hybrid catheter for vascular or other
interventions" (Bren Oren ,r 1 ).
FF 13. Bren Oren discloses a "hybrid catheter ... based on a combination of
laser and mechanical removal ... of an undesired material from a bodily
lumen" (Bren Oren ,r 131; see also Final Act. 4 ("Bren Oren teaches a
catheter that uses a plurality of lasers (504) to ablate plaque ([Bren Oren]
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Appeal2017-010953
Application 15/145,516
paragraph 0131)."); Ans. 5 ("Ben Oren teaches that using a laser catheter in
combination with a blade that is cutting plaque is well known in the art.").
FF 14. Bren Oren discloses that "[t]he laser may change the mechanical
characteristics of tissue, and thereby improve performance of mechanical
tools such as various types of blades or shavers" (Bren Oren ,r 131; see also
Ans. 5 (Ben Oren's laser "changes the mechanical characteristics of the
tissue, thereby improving the blade performance.")).
FF 15. Bren Oren discloses that its hybrid catheter "may be useful in cases
... where a guidewire cannot normally be used" and, in other instances, "the
catheter is used with a standard guidewire" (Bren Oren ,r,r 144 and 161 ).
ANALYSIS
Based on the combination of Dance, Kurz, and Bren Oren, Examiner
concludes that, at the time Appellant's invention was made, it would have
been prima facie obvious to replace Dance' s "clot engaging mechanism"
with Kurz's "guide wire covered in tines" and include Ben Oren's laser
cutting means to "improve the performance of the [device's] blade cutting
means" (Final Act. 3--4; see also Ans. 2 and 5; and FF 1-15). In this regard,
Examiner reasons that "[ s ]imply substituting one plaque engaging means for
another would yield the predictable result of allowing a device to engage the
plaque in a vessel for it to be removed" (Ans. 2; id. at 4 ("By simply
substituting the screw attachment means with a tine attachment means, the
combined device would still be able to attach to plaque as it did before only
using a new tine attachment means instead of a screw."); see also FF 1-10).
We find no error in Examiner's conclusion of obviousness.
We agree with Examiner's reasoning that, because Dance' s cable 12
guides Dance's cutter cable 14, "it is accurate to interpret [Dance's cable 12]
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Application 15/145,516
as a guidewire" (see Ans. 3; see also FF 2---6). Therefore, we are not
persuaded by Appellant's contention that "item 12 of Dance is not a
guidewire" (App. Br. 5-7).
Further, Dance's device comprises a cutter head 58 attached to a
cutter cable 14 that passes over screw 35, which is attached to cable 12 and
interacts with the stenosis, allowing the "cutter head 58 and cable 12 [to]
interact much like a pair of scissors," thereby trapping "cut material between
screw 35 and cable 14" (see FF 2---6). Similarly, Kurz's device comprises
clot retrieval, or tab, members 64, 66, 68, which project from tubular wall 65
and interact with a clot, allowing removal of a clot through a guiding
catheter (see FF 9-10). As Examiner explains, Dance's screw 35 and Kurz's
clot retrieval, or tab, members 64, 66, 68 perform similar functions:
(a) interacting with a material in a body lumen and (b) allowing removal of
the material through a cable or catheter (FF 2-10; see also Ans. 2). Thus, on
this record, replacing Dance's screw 35 with Kurz's clot retrieval, or tab,
members 64, 66, 68 is nothing more than the substitution of one art-
recognized equivalent for another (see Ans. 2; cf App. Br. 7-8).
"Express suggestion to substitute one equivalent for another need not
be present to render such substitution obvious." In re Fout, 675 F.2d 297,
301 (CCPA 1982); see also In re Mayne, 104 F.3d 1339, 1340 (Fed. Cir.
1997) ("Because the [ A Jpplicants merely substituted one element known in
the art for a known equivalent, this court affirms [the rejection for
obviousness]."). Accord KSR Intern. Co. v. Teleflex Inc., 550 U.S. 398,416
(2007) ("[W]hen a patent claims a structure already known in the prior art
that is altered by the mere substitution of one element for another known in
the field, the combination must do more than yield a predictable result.").
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Application 15/145,516
Therefore, we are not persuaded by Appellant's contention that Examiner's
conclusion is conclusory or based on improper hindsight reconstruction
(App. Br. 7-8).
Because Dance's cutter head 58 cooperates with Dance's cable 12, to
produce a scissor-like action, and not with Dance's screw 35, we are not
persuaded by Appellant's contention that the replacement of Dance's screw
35 with Kurz's "tine engaging means" 64, 66, and 68 "would prevent the
cutter head 58 from operating in the way in which it was intended or
designed to operate-the cutter head acting like one of two scissor blades"
(see Reply Br. 3--4; cf FF 2---6). For the foregoing reasons, the evidence on
this record fails to support Appellant's contention that "replacing the cable
12 of Dance with the tine engaging means of Kurtz would prevent the cutter
head 58 from operating in the way in which it was intended or designed to
operate, thereby changing the principle operation of the cutter head 58 of
Dance" (Reply Br. 4 ).
As discussed above, Dance and Kurtz both disclose the use of a catheter-like
device, for retrieving material from a body lumen (see, e.g., FF 6 and 10).
Dance's catheter-like device, cutter cable 14, comprises a cutter head 58.
Ben Oren discloses a "hybrid catheter" comprising "a combination of laser
and mechanical [tool for] removal ... of an undesired material from a bodily
lumen" (FF 13). Ben Oren further discloses that "[t]he laser may change the
mechanical characteristics of tissue, and thereby improve performance of
mechanical tools such as various types of blades or shavers" (FF 14). Thus,
contrary to Appellant's unsupported contention, Ben Oren expressly
discloses that a laser will improve the performance of mechanical tools, such
as Dance's cutter head 58, by changing the mechanical characteristics of
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Appeal2017-010953
Application 15/145,516
tissue (see FF 14; cf App. Br. 9 ("Examiner's conclusion that 'adding the
laser cutting means of Ben Oren to the device of Dance would further
change the mechanical characteristics of tissue' is completely unsupported
and is even more speculative than that which the Federal Circuit warned of
in In [re] Van Os")).
Although Bren Oren discloses that its device may be used in
applications "wherein a guidewire cannot or should not be used" (Bren Oren
,r 168), we do not find, and Appellant does not identify, a disclosure in Bren
Oren that teaches away from the use of Bren Oren's hybrid catheter in
applications, such as those disclosed by the combination of Dance and Kurz,
wherein a guidewire is used (see App. Br. 9; cf FF 15 (Bren Oren's hybrid
"catheter is used with a standard guidewire") ). Therefore, we are not
persuaded by Appellant's contention that Bren Oren teaches away from
Appellant's claimed invention.
CONCLUSION
The preponderance of evidence relied upon by Examiner supports a
conclusion of obviousness. The rejection of claims 21 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Dance, Kurz, and Bren
Oren is affirmed. Claims 32-36 are not separately argued and fall with
claim 21.
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
9