Ex Parte Heruth

Board of Patent Appeals and Interferences

Aug 8, 2012

11069187 (B.P.A.I. Aug. 8, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KENNETH T. HERUTH
____________

Appeal 2011-007876
Application 11/069,187
Technology Center 3700
____________

Before DONALD E. ADAMS, MELANIE L. McCOLLUM, and
ERICA A. FRANKLIN, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL

This appeal under 35 U.S.C. § 134 involves claims 1, 2, 5-23, 28-30,
32, and 33 (App. Br. 2; Ans. 2). We have jurisdiction under 35 U.S.C.
§ 6(b).
STATEMENT OF THE CASE
The claims are directed to an implantable tunneling guide (claims 1, 2,
and 5-15); a system (claims 16-23 and 33); and a method for delivering a
therapeutic agent associated with implantation of a therapy delivery element
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(claims 28-30 and 32). Claim 1 is representative and is reproduced in the
Claims Appendix of Appellant’s Brief.
Claims 1, 2, 5, 6, 8-23, 28-30, 32, and 33 stand rejected under 35
U.S.C. § 103(a) as unpatentable over the combination of Avellanet,1
Darouiche,2 Walker,3 and Good.4
Claim 7 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Avellanet, Darouiche, Walker, Good, and Yamamoto.5
We affirm.

ISSUE
Does the preponderance of evidence on this record support a
conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 1. Examiner finds that Avellanet suggests “an implantable tunneling
guide comprising a polymeric body member . . . with a lumen . . . [that] is
capable of receiving a delivery catheter” (Ans. 3).
FF 2. Examiner finds that Avellanet fails to suggest “one or more
therapeutic agents disposed on, in, or about the body member” as required
by Appellant’s claimed invention (id.).
FF 3. Darouiche suggests “[a] medical device of metallic or non-metallic
material coated with a combination of antiseptics” “to protect against
infection during a surgical procedure” (Darouiche, Abstract; Ans. 3-4)

1 Avellanet et al., US 5,514,236, issued May 7, 1996.
2 Darouiche, US 6,162,487, issued December 19, 2000.
3 Walker et al., US 4,994,047, issued February 19, 1991.
4 Good, US 5,342,283, issued August 30, 1994.
5 Yamamoto et al., US 5,059,186, issued October 22, 1991.
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FF 4. “Applicants do not contest . . . that one may have included the
antimicrobial coating of Daroiuche on or in the device of Avellanet” (App.
Br. 7; see also Ans. 4 (“it would have been obvious to one of ordinary skill
in the art at the time the invention was made to include the therapeutic
coating of Darouiche on the device of Avellanet . . . to protect against
infection during a surgical procedure”)).
FF 5. Examiner finds that the combination of Avellanet and Darouiche
fails to suggest “a metal layer diffusion barrier” (Ans. 4).
FF 6. Walker suggests a cannula that includes “a diffusion barrier . . . in a
tubular member to eliminate diffusion of a therapeutic agent from a body
member into a lumen” (id.; Walker, Abstract and col. 7, ll. 59-61 (“The
inner layer . . . serves to prevent medicament from migrating from the outer
layer . . . into the lumen.”)).
FF 7. Examiner relies on Good to suggest a device comprising “a titanium
metal diffusion barrier” (Ans. 4).
ANALYSIS
The combination of Avellanet, Darouiche, Walker, and Good:
The claims have not been argued separately and therefore stand or fall
together. 37 C.F.R. § 41.37(c)(1)(vii). Claim 1 is representative.
Based on the combination of Avellanet, Darouiche, Walker, and
Good, Examiner concludes that, at the time of Appellant’s claimed
invention, it would have been prima facie obvious to a person of ordinary
skill in this art to include a metal diffusion barrier as suggested by Walker
and Good in the body member of the device suggested by Avellanet and
Darouiche to prevent the therapeutic agents (i.e. antiseptics) that are coated
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on the device from passing into the lumen of the body member (Ans. 4; FF
1-7).
Notwithstanding Appellant’s contention to the contrary, we find no
error in Examiner’s prima facie case of obviousness (Cf. App. Br. 9). The
combination of Avellanet and Darouiche suggests a medical device (i.e.
tunneling guide) with an antiseptic coating (FF 1-4). The combination of
Walker and Good suggests a medical device that includes a metal “diffusion
barrier . . . in a tubular member to eliminate diffusion of a therapeutic agent
from a body member [of the device] into a lumen” of the device (FF 6 and
7).
For the foregoing reasons, we are not persuaded by Appellant’s
contention that Examiner’s rejection is based on “impermissible hindsight”
(App. Br. 8).
Since Avellanet and Darouiche are not relied upon in isolation, we are
not persuaded by Appellant’s contention that Avellanet and Darouiche fail to
suggest a diffusion barrier (id. at 10).
We are not persuaded by Appellant’s contention that “there is no
indication in Walker that it would be desirable to isolate the therapeutic
agent from the therapy delivery agent (cannula), as Walker discusses
incorporating such agents in the cannula” (id. at 11; Reply Br. 2; Cf. FF 6).
Because Walker suggests isolating a therapeutic agent present on a medical
device from the lumen of the medical device, we are not persuaded by
Appellant’s contentions regarding the motivation to combine references
(Reply Br. 3; Cf. FF 6).
Appellant fails to establish, through a preponderance of evidence on
this record that the modification of Avellanet with a metal diffusion barrier
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layer, as suggested by the combination of references relied upon by
Examiner, would “eviscerat[e] the desired properties of Allevanet [sic]”
(Reply Br. 3).

The combination of Avellanet, Darouiche, Walker, Good, and Yamamoto:
Having found no deficiency in the combination of Avellanet,
Darouiche, Walker, and Good, we are not persuaded by Appellant’s
contention that Yamamoto fails “to cure the deficiencies of the combined
teachings of Avellanet et al., Darouiche, Walker and Good” (App. Br. 12).
CONCLUSION OF LAW
The preponderance of evidence on this record supports a conclusion
of obviousness.
The rejection of claim 1 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Avellanet, Darouiche, Walker, and Good is
affirmed. Claims 2, 5, 6, 8-23, 28-30, 32, and 33 are not separately argued
and fall together with claim 1. 37 C.F.R. § 41.37(c)(1)(vii).
The rejection of claim 7 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Avellanet, Darouiche, Walker, Good, and
Yamamoto 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
cdc