Ex Parte Heroux et al

Patent Trial and Appeal Board

Sep 10, 2018

11529672 (P.T.A.B. Sep. 10, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
11/529,672 09/29/2006 Lise-Helene Heroux
143331 7590 09/12/2018
Medtronic, Inc./RCS Shumaker
60 Middletown A venue
Mailstop 54, Legal Dept.
North Haven, CT 06473
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.
H-KN-00631US/1214-066US01 8529
EXAMINER
BUI,ANHT
ART UNIT PAPER NUMBER
3763
NOTIFICATION DATE DELIVERY MODE
09/12/2018 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):
rs. patents. two@medtronic.com
covidien@ssiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LISE-HELENE HEROUX, ADIN M. POTTER,
ROBERT FRECHETTE, and ROBERT FRECHETTE
Appeal2017-009029
Application 11/529,672
Technology Center 3700
Before ANTON W. PETTING, MICHAEL C. ASTORINO, and
CYNTHIA L. MURPHY, Administrative Patent Judges.
MURPHY, Administrative Patent Judge.
DECISION ON APPEAL
The Appellants 1 appeal under 35 U.S.C. § 134 from the Examiner's
rejections of claims 1-9, 12-28, 31-34, 36-46, 48-53, and 55. We have
jurisdiction over this appeal under 35 U.S.C. § 6(b ).
We REVERSE.
1 "The Real Party in Interest is Medtronic plc of Dublin, Ireland, which is
the ultimate parent entity of the assignee of record, Covidien LP, a Delaware
limited partnership, having a place of business in Mansfield, MA." (Appeal
Br. 3.)
Appeal2017-009029
Application 11/529,672
STATEMENT OF THE CASE
The Appellants' invention relates to "[ c ]atheters and methods of
making the catheters." (Spec. ,r 12.)
Illustrative Claim
Claim 1: A catheter, comprising:
a tubular body having an outer surface;
a hub disposed on the outer surface of the tubular body;
a tissue in-growth cuff disposed on the outer surface of
the tubular body distal to the hub; and
a sleeve disposed on only a portion of the outer surface of
the tubular body between the hub and the cuff, the sleeve
comprising an outer layer co-extruded on an inner layer, the
catheter comprising a water-soluble, anti-microbial agent
contained only in the outer layer of the sleeve,
wherein the inner layer has a thickness at least about
three times the thickness of the outer layer to reduce swelling of
the sleeve and anchor the outer layer.
Laurin
Walker
Martin
Gilchrist
Ragheb
Luthra
Moon
Rosenblatt
References
us 4,677,143
us 4,994,047
us 5,156,592
us 5,470,585
us 5,873,904
US 2004/0170752 Al
US 2005/0245671 Al
US 2007/0129690 Al
Rejections
June 30, 1987
Feb. 19, 1991
Oct. 20, 1992
Nov. 28, 1995
Feb.23, 1999
Sept. 2, 2004
Nov. 3, 2005
June 7, 2007
The Examiner rejects claims 1, 6-9, 16, 18, 19, 21-26, 28, 37, 38, 44,
46, 59, 50-53 and 55 under 35 U.S.C. § I03(a) as unpatentable over Martin.
Luthra, and Walker. (Final Action 3.)
The Examiner rejects claims 2, 3, and 31-34 under 35 U.S.C. § 103(a)
as unpatentable over Martin, Luthra, Walker, and Moon. (Final Action 9.)
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Appeal2017-009029
Application 11/529,672
The Examiner rejects claims 4 and 5 under 35 U.S.C. § 103(a) as
unpatentable over Martin, Luthra, Walker, and Ragheb. (Final Action 12.)
The Examiner rejects claims 12-15 and 40-43 under 35 U.S.C.
§ 103(a) as unpatentable over Martin, Luthra, Walker, and Gilchrist. (Final
Action 12-13.)
The Examiner rejects claims 17, 20, 36, 39, and 48 under 35 U.S.C.
§ 103(a) as unpatentable over Martin, Luthra, Walker, and Rosenblatt.
(Final Action 14-15.)
The Examiner rejects claims 27 and 45 under 35 U.S.C. § 103(a) as
unpatentable over Martin, Luthra, Walker, and Laurin. (Final Action 15-16.)
ANALYSIS
Claims 1, 28, and 50 are the independent claims on appeal, with the
rest of the claims on appeal (i.e., claims 2-9, 12-27, 31-34, 36-46, 48, 49,
51-53, and 55) depending therefrom. (See Appeal Br., Claims App.)
Independent claims 1, 28, and 50 recite a "tubular body" and "a sleeve
disposed on only a portion of the outer surface of the tubular body between
[a] hub and [a] cuff." (Appeal Br., Claims App.) The Examiner finds that
Martin discloses catheter 20 comprising a tubular body 47 and a sleeve 56
disposed on only a portion of the outer surface of the tubular body 4 7
between a hub 32 and a cuff 57. (See Final Action 3; see also Martin, col. 4,
11. 33-39, Figs. 1 and 2.)
Independent claims 1, 28, and 50 further require the sleeve to
comprise an "outer layer" and an "inner layer." (Appeal Br., Claims App.)
The Examiner acknowledges that Martin does not teach a sleeve having two
layers. (See Final Action 4.) However, according to the Examiner,
modifying the sleeve 56 of Martin's catheter to have a two-layer
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Appeal2017-009029
Application 11/529,672
construction would have been obvious in view ofLuthra and/or Walker.
(See id.)
The Appellants argue that the Examiner "fail[ s] to establish that a
person having ordinary skill in the art would have had an apparent reason to
modify the catheter described by Martin in view of Luthra, and further in
view of Walker, to arrive at the claimed subject matter." (Appeal Br. 6.) In
this regard, the Appellants assert that the Examiner does not explain
sufficiently why one of ordinary skill in the art would have arrived, without
impermissibly relying upon their Specification, at a catheter having the two-
layer sleeve required by independent claims 1, 28, and 50. (See Reply
Br. 3.)
We are persuaded by the Appellants' position that the Examiner does
not explain sufficiently why one of ordinary skill in the art would have been
inclined to provide Martin's catheter 20 with a two-layer sleeve.
As for Luthra, we, like the Appellants (see Reply Br. 3), question
whether this reference teaches a two-layer construction for a sleeve of a
catheter. Luthra teaches that its "polymeric network," which apparently
results in two layers, can be coated onto the "outside surface" of a medical
device, and that an example of a suitable medical device for this coating is a
"catheter[]." (Luthra ,r 75.) However, the Examiner does not address
adequately why one of ordinary skill in the art would appreciate that such a
coating could be applied so as to form a sleeve on a catheter as opposed to,
for example, coating the entire outer surface of the catheter's main tubular
body.
As for Walker, insofar as it "describes the co-extrusion of two layers,"
we, like the Appellants, question whether one of ordinary skill would have
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Appeal2017-009029
Application 11/529,672
"understood Walker to have described co-extrusion of a sleeve disposed on a
catheter." (Appeal Br. 8.) Walker describes a cannula having "multilayer
tubing" (Walker, col. 9, 1. 17; see also id., Fig. 1); it does not describe a
multi-layer sleeve. As such, the Examiner does not address adequately why,
if one of ordinary skill in the art were to incorporate Walker's multilayer
coextrusion technique into Martin's catheter 20 (with or without Luthra's
polymeric-network coating), the result would be a multi-layer sleeve 56
disposed on its tubular body 4 7.
Thus, we do not sustain the Examiner's rejection of independent
claims 1, 28, and 50 under 35 U.S.C. § 103(a) as unpatentable over Martin,
Luthra, and Walker.
The Examiner's finding and determinations with respect to the
dependent claims, and/ or the additional prior references, do not compensate
for the above-discussed shortcoming in the rejection of independent
claims 1, 28, and 50. (See Final Action 4--16.) Thus, we also do not sustain
the Examiner's rejections of the dependent claims 2-9, 12-27, 31-34,
36-46, 48, 49, 51-53, and 55 under 35 U.S.C. § 103(a) as unpatentable over
Martin, Luthra, and Walker, alone or further in view of Moon, Ragheb,
Gilchrist, Rosenblatt, or Laurin.
DECISION
We REVERSE the Examiner's rejections of claims 1-9, 12-28,
31-34, 36-46, 48-53, and 55.
REVERSED
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