11062304 (B.P.A.I. May. 20, 2012)

Ex Parte Maschke

Board of Patent Appeals and InterferencesMay 20, 2012

11062304 (B.P.A.I. May. 20, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 11/062,304 02/18/2005 Michael Maschke 2003P18592US 5749 7590 05/21/2012 SIEMENS CORPORATION INTELLECTUAL PROPERTY DEPARTMENT 170 WOOD AVENUE SOUTH ISELIN, NJ 08830 EXAMINER MEHTA, PARIKHA SOLANKI ART UNIT PAPER NUMBER 3737 MAIL DATE DELIVERY MODE 05/21/2012 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte MICHAEL MASCHKE ____________________ Appeal 2010-003375 Application 11/062,304 Technology Center 3700 ____________________ Before: EDWARD A. BROWN, CHARLES N. GREENHUT, and WILLIAM V. SAINDON, Administrative Patent Judges. SAINDON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-003375 Application 11/062,304 2 STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 10, 12, 16, 17, 19, 21, and 22. Claims 1-9, 11, 13- 15, 18, and 20 are canceled. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE and enter a NEW GROUND of REJECTION. Claim 10, reproduced below, is illustrative of the claimed subject matter. 10. A catheter device for performing and monitoring medical atherectomy, comprising: an atherectomy catheter assembly including a single external elongate casing having first and second opposing ends with a catheter tip at the first end, an inlet for receiving contrast agent or rinsing fluid near the second end and an outlet for discharging contrast agent or rinsing fluid and a rotatable cutting knife positioned between the first end and the inlet, the casing including an opening in a wall portion thereof through which the catheter tip projects; an inflatable balloon operatively positionable along the casing to press the cutting knife against a vascular wall; an OCT sensor comprising a rotatable mirror positioned in the casing between the first and second casing ends, with the casing including a ring-shaped window positioned about the sensor; a flexible drive assembly including a hollow shaft extending between the first and second ends and operatively coupled to simultaneously rotate both the mirror and the knife; an external OCT signaling line drive and evaluation unit coupled to the catheter assembly at the second end and connectable to drive said OCT sensor, wherein a fiber signaling line is positionable in the hollow flexible drive shaft to effect operative coupling of said unit to the OCT sensor, wherein configuration of the knife, the sensor, the hollow shaft, the unit and the balloon about the single casing enable provision of one catheter capable of providing both OCT images and atherectomy along the vascular wall. Appeal 2010-003375 Application 11/062,304 3 REJECTIONS I. Claims 10, 12, 16, and 22 are rejected under 35 U.S.C. § 103(a) as obvious over Boppart (US 6,485,413 B1, iss. Nov. 26, 2002) in view of Belknap (US 5,366,464, iss. Nov. 22, 1994). II. Claim 17 is rejected 35 U.S.C. § 103(a) as obvious over Boppart and Belknap in view of Ream (US 5,957,941, iss. Sep. 28, 1999). III. Claim 19 is rejected 35 U.S.C. § 103(a) as obvious over Boppart and Belknap in view of Hastings (US 2002/0019644 A1, pub. Feb. 14, 2002). IV. Claim 21 is rejected 35 U.S.C. § 103(a) as obvious over Boppart and Belknap in view of Barbut (US 5,662,671, iss. Sep. 2, 1997). OPINION Appellant raises the dispositive issue of whether Boppart discloses “a ring-shaped window positioned about [an OCT] sensor,” as required by sole independent claim 10. App. Br. 6. The Examiner found that Boppart teaches a catheter assembly with a ring-shaped window about the mirror. Ans. 3. In particular, the Examiner asserts that Boppart teaches the catheter has an open distal end, creating a circular or ring-shaped window “about,” or, “in the vicinity of,” the sensor. Ans. 5. Appellant argues that the circular opening at the end of Boppart’s catheter is not ring-shaped. Reply Br. 2-3. This argument is persuasive. The Specification does not set forth a particular definition of “ring.” However, a “ring” is generally accepted to mean a “circular band.” Merriam Webster’s Collegiate Dictionary, 1074 (11th ed., 2008); see also Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010) (if the Specification does not define or suggest a particular meaning for a term, it is appropriate to consult a general dictionary). The Examiner identifies a Appeal 2010-003375 Application 11/062,304 4 circular opening at the distal end of the Boppart catheter (which is itself cylindrical) and equates that circular shape to a ring shape. Ans. 3, 5 (citing Boppart, fig. 21a and 8a, respectively). However, the two-dimensional opening at the end of a cylindrical shape is disc-shaped, not ring-shaped, because a ring is the portion around the circle, not the circle itself. Put another way, the opening in Boppart is not a circular band but the circle defined by a circular band. As such, one of ordinary skill in the art would not reasonably consider the flat disc-like opening at the end of Boppart’s catheter to be a ring-shaped window. Consequently, the Examiner erred in finding that Boppart teaches a ring-shaped window positioned about the sensor in the manner required by sole independent claim 10 and, by dependency, remaining claims 12, 16, 17, 19, 21, and 22. The Examiner does not make any finding or set forth any analysis with respect to Hastings, Ream, Barbut, or Belknap that remedies this deficiency. New Ground of Rejection Pursuant our authority under 37 C.F.R. § 41.50(b), we enter a new ground of rejection for claim 22 under 35 U.S.C. § 112, second paragraph, for being indefinite. In particular, claim 22 is drawn to the “device according to claim 10 applied according to the following steps,” and then proceeds to set forth the method steps of using the device. Such a hybrid claim, drawn to a device and the method for using that device, is indefinite. IPXL Holdings, LLC v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005) (a claim to “both a system and the method for using that system … does not apprise a person of ordinary skill in the art of its scope, and it is invalid”). Appeal 2010-003375 Application 11/062,304 5 CONCLUSION We do not sustain the Examiner’s rejection of claims 10, 12, 16, 17, 19, 21, and 22. We enter a new ground of rejection for claim 22 as indefinite. FINALITY OF DECISION This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner.… (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record.… No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). REVERSED; 37 C.F.R. § 41.50(b) hh