Ex Parte Jenson et al

Patent Trial and Appeal Board

Dec 15, 2014

11507103 (P.T.A.B. Dec. 15, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte MARK L. JENSON, WILLIAM J. DRASLER, and
TRACEE EIDENSCHINK
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Appeal 2012-006583
Application 11/507,103
Technology Center 3700
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Before DONALD E. ADAMS, ULRIKE W. JENKS, and
ROBERT A. POLLOCK, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL1
This appeal under 35 U.S.C. § 134 involves claims 1, 3–6, 8–11, 13–
17 (App. Br. 5; Ans. 3; Reply Br. 2).2 Examiner entered rejections under
35 U.S.C. § 103(a). We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 The Real Party in Interest is “Boston Scientific SciMed, Inc. . . . a
Minnesota corporation and a subsidiary of Boston Scientific Corporation”
(App. Br. 3).
2 Pending claims 2, 7, 12, 22, and 23 stand “objected to as being dependent
upon a rejected base claim, but would be allowable if rewritten in
independent form including all of the limitations of the base claim and any
intervening claims” (Ans. 4; see Reply Br. 2).
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Application 11/507,103

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STATEMENT OF THE CASE
The claims are directed to an alignment apparatus. Claims 1 and 11
are representative and are reproduced in the Claims Appendix of Appellants’
Brief.
Claims 1, 5, and 6 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of McGuckin3 and Der Leest.4
Claims 3 and 4 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of McGuckin, Der Leest, and Vardi.5
Claims 8 and 9 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of McGuckin, Der Leest, and Lau.6
Claim 10 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of McGuckin, Der Leest, and Richter.7
Claims 11, 13, and 14 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Colombo8 and Der Leest.
Claims 15–17 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Colombo, Der Leest, and Lau.

ISSUE
Does the preponderance of evidence relied upon by Examiner suggest
that the wall of at least the distal end of a first sheath is engaged to the wall

3 McGuckin, Jr. et al., US 6,908,477 B2, issued Jun. 21, 2005.
4 Der Leest et al., US 7,695,508 B2, issued Apr. 13, 2010.
5 Vardi et al., US 2003/0028233 A1, published Feb. 6, 2003.
6 Lau et al., US 5,873,906, issued Feb. 23, 1999.
7 Richter et al., US 6,251,133 B1, issued Jun. 26, 2001.
8 Colombo et al., US 6,520,988 B1, issued Feb. 18, 2003.
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of a second sheath so that the distal end of the first sheath has a fixed
position relative to the second sheath?
FACTUAL FINDINGS (FF)
FF 1. Examiner finds that McGuckin and Colombo both suggest a device
that comprises two sheaths, but fail to suggest that the first sheath is engaged
to the wall of the second sheath so that the distal end of the first sheath has a
fixed position relative to the second sheath (Ans. 5–6 and 9–10).
FF 2. To make up for the foregoing deficiency in McGuckin and Colombo,
Examiner relies on Der Leest to suggest a linking device for a catheter
system “that is sized and configured to hold the proximal sections . . . of the
first and second . . . catheters . . . together with sufficient friction that the
catheter system . . . can be advanced as a unit without any relative movement
of the two catheters” (Der Leest, col. 12, ll. 16-23 (emphasis added); see
generally Ans. 6, 10, 12, and 14–15; Cf. FF 1).
FF 3. Examiner finds that the combination of McGuckin and Der Leest
fails to suggest “a marker capable of being visualized by an imaging device
that is engaged to the wall of the central sheath” and relies on Vardi to make
up for this deficiency in the combination of McGuckin and Der Leest (Ans.
7).
FF 4. Examiner finds that the combination of Colombo or McGuckin with
Der Leest fails to suggest “a stent with at least one opening in the wall, the at
least one opening having a proximal end, a slit region, and a distal end
region, the proximal end of the opening being the proximal end of the
substantially tubular body” and relies on Lau to make up for this deficiency
in the combination of McGuckin and Der Leest (Ans. 8 and 10–11).
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FF 5. Examiner finds that the combination of McGuckin and Der Leest
fails to suggest “a proximal end region of the first stent having a first edge
that is complementary to a second edge of the proximal end region of the
second stent” and relies on Richter to make up for this deficiency in the
combination of McGuckin and Der Leest (Ans. 8–9).
ANALYSIS
Based on the combination of McGuckin or Colombo with Der Leest,
Examiner concludes that, at the time Appellants’ invention was made, it
would have been prima facie obvious “to provide the device of McGuckin
with temporary unitary delivery of both the alignment [(i.e., first)] sheath
and central [(i.e., second)] sheath as taught by Der Leest in order to advance
the stents as a unit and thereby maintain their relative positions” (Ans. 6; see
also Ans. 10). We are not persuaded.
As Appellants explain, even if a person of ordinary skill in this art
would use Der Leest’s linking device to “fix” the proximal end of the
sheaths suggested by either McGuckin or Colombo, the distal end of the
sheaths would still be capable of moving, e.g., flap against, rotate about, etc.,
relative to one another (see generally App. Br. 18 and 34; Reply Br. 5; see
also FF 1 and 2). This is not consistent with the requirements of Appellants’
claimed invention, which requires the wall of at least the distal end of a first
sheath to be engaged to the wall of a second sheath so that the distal end of
the first sheath has a fixed position relative to the second sheath (see
Appellants’ independent claims 1 and 11).
Examiner failed to establish an evidentiary basis on this record to
support a conclusion that any of Vardi, Lau, or Richter make up for the
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foregoing deficiencies in the combination of McGuckin or Colombo with
Der Leest (see FF 3–5).
CONCLUSION OF LAW
The preponderance of evidence relied upon by Examiner fails to
suggest that the wall of at least the distal end of a first sheath is engaged to
the wall of a second sheath so that the distal end of the first sheath has a
fixed position relative to the second sheath.
The rejection of claims 1, 5, and 6 under 35 U.S.C. § 103(a) as
unpatentable over the combination of McGuckin and Der Leest is reversed.
The rejection of claims 3 and 4 under 35 U.S.C. § 103(a) as
unpatentable over the combination of McGuckin, Der Leest, and Vardi is
reversed.
The rejection of claims 8 and 9 under 35 U.S.C. § 103(a) as
unpatentable over the combination of McGuckin, Der Leest, and Lau is
reversed.
The rejection of claim 10 under 35 U.S.C. § 103(a) as unpatentable
over the combination of McGuckin, Der Leest, and Richter is reversed.
The rejection of claims 11, 13, and 14 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Colombo and Der Leest is reversed.
The rejection of claims 15–17 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Colombo, Der Leest, and Lau is
reversed.

REVERSED
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