Ex Parte Morris et al

Patent Trial and Appeal Board

Mar 20, 2013

11754759 (P.T.A.B. Mar. 20, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte MARY M. MORRIS, TIMOTHY G. LASKE,
KENNETH T. HERUTH, MICHAEL R. UJHELYI, JESUS W. CASAS,
and DAVID S. OLSON
__________

Appeal 2011-004932
Application 11/754,759
Technology Center 3700
__________

Before DONALD E. ADAMS, ERIC GRIMES, and ULRIKE W. JENKS,
Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to catheters.
The Examiner has rejected the claims as anticipated and obvious. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
The Specification discloses that “[c]onventional catheters include at
least one pressure responsive valve, such as a sleeve valve … [which] is
formed by covering an exit port of the catheter with a sleeve” (Spec. 1,
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¶ 07). The Specification discloses that “when the pressure differential
exceeds a threshold, the fluid in the lumen of the catheter expands the sleeve
and flows out of the catheter” (id.). Figure 1 of the Specification is shown
below:

Figure 1 shows “a schematic diagram illustrating a sleeve valve catheter 10
… inserted into … a vessel 12 of the patient” (id. at 3, ¶ 26). The figure
shows sleeve 24 of sleeve valve 22 covering exit port 26 near distal end 18
of the catheter (id. at 4, ¶¶ 28-29).
The Specification also discloses that “a material is applied at the
interface between sleeve 24 and body 14 in order to prevent blocking
between the[m]…. The term „blocking‟ refers to the cross-linking between
the silicone material of sleeve 30 with the silicone material of catheter tube
14.” (Id. at 6, ¶ 34.)
Claims 1, 2 and 4-12 are on appeal. Claim 1 is representative:
1. A medical device comprising:
a catheter body including an interior surface defining a lumen and an
exterior surface;
an exit port formed within the catheter body to allow material to exit
the lumen of the catheter body;
a pressure responsive sleeve fitting around the exterior surface and
covering the exit port, expandable from a closed position to an open position
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and having a thickness in the closed position varying from a greater
thickness to a lesser thickness proximate the exit port; and
an anti-blocking interface between the sleeve and the catheter body,
proximate the exit port.

Issue
The Examiner has rejected claims 1, 2, 4-7, 11, and 12 under 35
U.S.C. § 102(e) as anticipated by Fischell,
1
and has rejected claims 8-10
under 35 U.S.C. § 103(a) as obvious in view of Fischell and either
Moorehead
2
or Hurt.
3
We will consider these rejections together since
Appellants have waived any argument based on Moorehead or Hurt (Appeal
Br. 7).
The Examiner finds that Fischell discloses a device meeting the
limitations of claim 1, including “a thickness varying from a greater to lesser
thickness (Figure 5, where the angled edges of the sleeve provide for a
sleeve having a varying thickness)” (Answer 3).
Appellants contend that Fischell does not disclose a pressure
responsive sleeve that has “a thickness in the closed position varying from a
greater thickness to a lesser thickness proximate the exit port,” as recited in
claim 1, because in Fischell, the sleeve portion proximate the exit ports “is
the thickest portion of the sleeve” (Appeal Br. 5).
The issue presented is: Does the broadest reasonable interpretation of
a pressure responsive sleeve “having a thickness in the closed position
varying from a greater thickness to a lesser thickness proximate the exit

1
Fischell, US 2004/0049169 A1, published Mar. 11, 2004.
2
Moorehead, US 5,147,332, issued Sept. 15, 1992.
3
Hurt, US 2003/0216710 A1, issued Nov. 20, 2003.
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port,” as recited in claim 1, encompass the configuration of Fischell‟s
device?
Findings of Fact
1. Fischell discloses “a check valve for placement near the distal end
of a catheter” (Fischell, abstract).
2. Fischell discloses that the “check valve is … formed from a low
durometer, highly elastic, elastomer cylindrical tube” (id.).
3. Fischell discloses that “[w]hen pressurized fluid is injected through
the catheter, the cylinder that is placed over one or more holes in the …
catheter is forced to expand radially outward which allows the fluid to be
injected into the blood vessel” (id.).
4. Figure 5 of Fischell is shown below:

Figure 5 shows a longitudinal cross section of one embodiment of Fischell‟s
check valve, which has an angled joint at the proximal and distal ends of
check valve 22 (id. at 2, ¶¶ 0016, 0027).
5. Fischell discloses that “holes 24 are placed through the wall of the
catheter 21 within the generally cylindrical groove 29” (id. at 2, ¶ 0026).
6. Fischell discloses that an “angled junction 25, when used with a
tube 22 that is shrunk into the groove 29, assures that there will be no crack
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formed at the junction 25 into which a blood clot could form” (id. at 2,
¶ 0027).
7. The Specification states that Figure 1 shows “[s]leeve valve 22
compris[ing] a sleeve 24 that surrounds a portion of catheter body 14
proximate an exit port 26 and covers exit port 26” (id. at 4, ¶ 29).
8. Figure 7 of the Specification is shown below:

Figure 7 shows “a cross-sectional end view of a sleeve valve catheter [ ]
with a non-uniform thickness about the circumference of catheter body 14”
(Spec. 11, ¶ 52). The Specification discloses that the “reduced thickness of
sleeve 51 [sic, 30] proximate exit port 26 … decreases the pressure
differential needed to separate sleeve 51 [sic] from catheter body[ ]14” (id.).
Principles of Law
[A]s an initial matter, the PTO applies to the verbiage of the
proposed claims the broadest reasonable meaning of the words
in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever
enlightenment by way of definitions or otherwise that may be

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afforded by the written description contained in the applicant's
specification.
In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).

During patent examination the pending claims must be
interpreted as broadly as their terms reasonably allow. … The
reason is simply that during patent prosecution when claims can
be amended, ambiguities should be recognized, scope and
breadth of language explored, and clarification imposed. …
Only in this way can uncertainties of claim scope be removed,
as much as possible, during the administrative process.
In re Zletz, 893 F.2d 319, 321-322 (Fed. Cir. 1989).
Analysis
Claim 1 is directed to a medical device comprising a catheter body
with a pressure responsive sleeve fitting around its exterior surface and
covering an exit port, where the pressure responsive sleeve has “a thickness
in the closed position varying from a greater thickness to a lesser thickness
proximate the exit port.”
4

Appellants argue that the claim language requires that the sleeve
“must display a decrease in thickness proximate to the exit port as compared
to its thickness less proximate to the exit port.… Fischell displays exactly
the opposite structure.” (Appeal Br. 5.)
The Examiner responds that the language of claim 1 does not require
that the “lesser thickness portion of the sleeve must be the portion of the
sleeve „nearest to‟ the exit port” (Answer 5). The Examiner reasons that
“the term „proximate‟ can properly be defined as either „very close‟ or as

4
Appellants do not dispute that Fischell‟s device inherently includes the
anti-blocking interface recited in claim 1. See Appeal Br. 6-7.
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„nearest‟” (id.); that the claim language does not require applying the
definition of “proximate” as “nearest” (id.); and that the broadest reasonable
interpretation of the claim language encompasses Fischell‟s device (id.).
We agree with the Examiner‟s claim interpretation. The Specification
does not expressly define “proximate” and therefore we give the term its
ordinary definition. Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed.
Cir. 2005) (“[T]he words of a claim „are generally given their ordinary and
customary meaning.‟”); CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d
1359, 1366 (Fed. Cir. 2002) (A “claim term will not receive its ordinary
meaning if the patentee acted as his own lexicographer and clearly set forth a
definition of the disputed claim term in either the specification or
prosecution history.”). Appellants do not dispute the Examiner‟s position
that the ordinary meaning of “proximate” can be either “very close” or
“nearest.”
In accord with In re Morris, claim terms in prosecution are given the
broadest reasonable interpretation that is consistent with the specification.
The Specification characterizes the portion of catheter body 14 that
surrounded by sleeve 24 in Figure 1 as “proximate an exit port 26” (FF 7).
The Specification also characterizes Figure 7 as showing a sleeve having
reduced thickness “proximate exit port 26” (FF 8), where the area of reduced
thickness extends around the circumference of the sleeve well beyond the
exit port itself. Thus, interpreting “proximate” to mean “very close” is
consistent with the use of the term in the Specification.
Since the Examiner‟s interpretation of “proximate” applies the
broadest reasonable interpretation that is consistent with the Specification,
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that interpretation is the correct one to apply during the examination process.
We agree with the Examiner that Fischell discloses a pressure responsive
sleeve “having a thickness in the closed position varying from a greater
thickness to a lesser thickness proximate the exit port” under this
interpretation because Fischell‟s check valve (or pressure responsive sleeve)
has to a lesser thickness at its proximal and distal ends, which are very close
to the exit port(s). Thus, we affirm the rejection of claim 1 as anticipated by
Fischell. Claims 2, 4-7, 11, and 12 have not been argued separately and
therefore fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii).
We also affirm the rejections of claims 8 and 9 as obvious in view of
Fischell and Moorehead, and of claim 10 as obvious in view of Fischell and
Hurt, since Appellants have waived any arguments based on Moorehead or
Hurt (Appeal Br. 7).
Conclusion
The broadest reasonable interpretation of a pressure responsive sleeve
“having a thickness in the closed position varying from a greater thickness to
a lesser thickness proximate the exit port,” as recited in claim 1,
encompasses the configuration of Fischell‟s device.
SUMMARY
We affirm the rejection of claims 1, 2, 4-7, 11, and 12 under 35
U.S.C. § 102(e). We also affirm the rejection of claims 8-10 under 35
U.S.C. § 103(a).
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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

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