Ex Parte Hörnig

Patent Trial and Appeal Board

Jun 13, 2016

11142757 (P.T.A.B. Jun. 13, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111142,757 0610112005
7590 06/13/2016
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
170 WOOD A VENUE SOUTH
!SELIN, NJ 08830
FIRST NAMED INVENTOR
Mathias Hornig
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.
2004P06228US 8403
EXAMINER
WEATHERBY, ELLSWORTH
ART UNIT PAPER NUMBER
3768
MAILDATE DELIVERY MODE
06/13/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATHIAS HORNIG 1
Appeal2014-004845
Application 11/142,757
Technology Center 3700
Before JENNIFER D. BAHR, GEORGE R. HOSKINS, and
AMANDA F. WIEKER, Administrative Patent Judges.
WIEKER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Mathias Hornig ("Appellant") appeals under 35 U.S.C. § 134(a) from
the Examiner's final rejection of claims 3 and 6-8. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellant, the Real Party in Interest is Siemens
Aktiengesellschaft. Br. 1.
Appeal2014-004845
Application 11/142,757
CLAIMED SUBJECT MATTER
The invention concerns a"[ c ]atheter with improved illumination of
the target region." Spec., Abstract. Claim 3, the sole independent claim, is
illustrative of the subject matter on appeal, and recites:
3. A catheter for examining and for performing
interventions in a cavity, comprising:
a catheter sheath comprising an outside surface and a free
catheter end for inserting the catheter into the cavity, the sheath
made of a transparent material at least at the free catheter end;
an illumination device including at least a first glass fiber
for illuminating a target area included in the cavity, the first glass
fiber having an inserting end arranged within the free catheter
end·
'
a central continuous lumen arranged within the catheter
sheath and passing through the free end of the catheter sheath to
define an axially open tip at the free catheter end, the central
continuous lumen defining an inside surface of the catheter
sheath; and
at least one further lumen for accommodating the first
glass fiber, the at least one further lumen arranged within the
catheter sheath between the outside surface and the inside
surface, wherein the at least one further lumen:
passes through at least part of the catheter sheath, and
is closed at the free catheter end;
whereby illumination emitted axially from the first glass
fiber inserting end continues straight through the transparent
sheath material at the free catheter end to illuminate a target area
axially downstream of the free catheter end.
Br. 8, Claims App. (emphases added).
2
Appeal2014-004845
Application 11/142,757
REJECTION
Claims 3 and 6-8 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Gregory (US 6,660,001 B2, iss. Dec. 9, 2003) and
Herman (US 4,850,351, iss. July 25, 1989).
ANALYSIS
The Examiner finds that Gregory discloses a catheter substantially as
claimed, including catheter sheath 10, glass fiber illumination device 16
(optic fiber for laser tissue ablation), central lumen 18, and at least one
further lumen for accommodating the glass fiber. Final Act. 2-3 (citing
Gregory, 3:58---62, 5: 15---6:50, Figs. 1-9). The Examiner finds that "Gregory
is silent with respect to the further lumen being closed at the free catheter
end [and] that the sheath is made of a transparent material at least at the free
catheter end." Id. at 3. The Examiner finds that Herman discloses a catheter
having these features and concludes that it would have been obvious to a
person of ordinary skill in the art at the time the invention was made "to
modify the catheter of Gregory in view of the transparent distal portion of
Herman ... to securely mount the distal ends of the fibers, as taught by
Herman (Abstract) or, otherwise, maintain clean fibers." Id. (citing Herman,
Abstract, 6: 18---63).
Appellant argues that the Examiner's proposed combination renders
Gregory unsatisfactory for its intended purpose because Gregory's catheter
includes mechanical ablation means, e.g., a rotary cutter, which is required
to extend past the distal end of the catheter through an open distal end.
Br. 3--4.
3
Appeal2014-004845
Application 11/142,757
We are unpersuaded by Appellant's argument. We agree with the
Examiner that Gregory discloses mechanical tissue ablation means as an
alternative to the optic fiber laser tissue ablation means. Ans. 2--4. Gregory
states, "the catheter of the present invention need not be limited to laser
tissue-ablating means [ 16]. Other devices, such as ... mechanical means,
can be used in the catheter constructs described herein." Gregory, 5:56---61,
7:5-7 (disclosing disabling means used with "optical, mechanical or
electrical tissue-ablating means") (emphasis added). Therefore, in the
embodiment upon which the Examiner relies (e.g., a catheter with optical
fiber laser tissue ablation means 16), the distal end of the catheter need not
be open to permit passage of a mechanical cutter.
Appellant argues also that because Gregory discloses that reflectance
fiber 12 may advance beyond the distal end of the catheter, in the
embodiment shown in Figure 1 C, "it is reasonable to conclude that Gregory
is requiring the distal end be open." Br. 5 (discussing Gregory, 5:50-55).
We are unpersuaded by Appellant's argument. Although Gregory
discloses that reflectance fiber 12 may be advanced beyond the distal end of
central lumen 18, Gregory is silent as to whether the further lumens' ends,
which house optic fiber laser tissue ablation means 16, are also open.
Modifying the ends of Gregory's further lumens to be closed, as proposed by
the Examiner, does not render Gregory ineffective for its intended purpose
because central lumen 18 may remain open to permit distal advancement of
reflectance fiber 12. See Ans. 4; Herman, 6: 18---63 (disclosing that
transparent end cap 52 isolates optic fibers from the vascular environment
4
Appeal2014-004845
Application 11/142,757
and includes central aperture 64 to permit passage of guidewire through the
distal end). 2
Finally, Appellant argues that even if Gregory's further lumen ends
were modified to be closed, it is not clear that the light emitted by Gregory's
optic fiber laser tissue ablation means 16 could pass through the closed end
accurately without undue experimentation. Br. 4, 6.
We are unpersuaded by Appellant's argument. Appellant does not
provide any persuasive evidence to support this argument. Further, Herman
discloses expressly that cap 52 is transparent to laser energy emitted by optic
fibers, so as to deliver laser energy to bodily tissue. Herman, Abstract,
6: 18-28. Appellant provides no persuasive basis to find that Gregory's
lasers would be unable to penetrate accurately such a transparent end cap.
See Ans. 5.
DECISION
The rejection of claims 3 and 6-8 under 35 U.S.C. § 103(a) as
unpatentable over Gregory and Herman is AFFIRMED.
2 We are also unpersuaded by Appellant's discussion of Figures 5 and 6 of
Gregory's provisional application. Br. 5---6 (citing Appendix of Evidence).
Even if these figures show further lumens having open ends, the Examiner
proposes to modify those ends to be closed, in light of Herman's teachings.
Final Act. 3. Further, nothing in these Figures supports Appellant's
contention that Gregory would be unsatisfactory for its intended purpose if
the further lumen's ends were closed. As discussed above, reflectance fiber
12 may extend past the end of central lumen 18, even in the combination of
Gregory and Herman.
5
Appeal2014-004845
Application 11/142,757
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
6