Ex Parte Morriss et alDownload PDFPatent Trial and Appeal BoardMar 18, 201312011100 (P.T.A.B. Mar. 18, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte JOHN MORRISS, MEI PADER, and JOSHUA MAKOWER ____________________ Appeal 2011-001235 Application 12/011,100 Technology Center 3700 ____________________ Before: CHARLES N. GREENHUT, BARRY L. GROSSMAN and TIMOTHY J. O’HEARN, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-001235 Application 12/011,100 2 STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1- 3, 5, 6 and 8-13. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. The claims are directed to methods for a irrigating a paranasal sinus,. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method for irrigating a paranasal sinus, the method comprising: advancing a distal portion of a sinus irrigation catheter through an ostium of a paranasal sinus into the sinus; and passing fluid through multiple ports disposed at different locations along a length of the catheter distal portion into the sinus, wherein passing the fluid comprises passing fluid through three side ports distributed in a helical pattern along a length of the irrigation catheter and one distal port on the irrigation catheter, and wherein passing the fluid comprises forming a vortex of fluid in the sinus. REJECTIONS Claims 1, 2, 5, 6, and 8-13 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Makower (US 2005/0240147 A1, pub. Oct. 27, 2005), Schweikert (US 6,719,749 B1, iss. Apr. 13, 2004) and Evans (US 2003/0083608 A1, pub. May 1, 2003). Ans. 4. Claim 3 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Makower, Schweikert, Evans, and Frazee (US 5,908,407, iss. Jun. 1, 1999). Ans. 7. Appeal 2011-001235 Application 12/011,100 3 OPINION Appellants argue claims 1, 5, 6 and 8-12 as a group based on claim 1. App. Br. 6-8. Appellants raise substantially the same issues concerning claim 13 as are raised concerning claim 1. App. Br. 8-9. However, as discussed below, the language of the contested limitation in claim 13 differs somewhat from that of claim 1. Claim 3 is argued solely based upon dependency. App. Br. 9. The Examiner found, and Appellants do not dispute, that Makower discloses the basic method of claims 1 and 13, but Makower does not disclose a helical aperture 576 or “port” pattern, or discuss whether a vortex is formed by the irrigating fluid. Ans. 4-5, citing Makower, fig. 3I and p. 12 para. [0154]. The Examiner further found, and Appellants do not dispute, that Schweikert teaches that a helical hole 33, or “port” pattern, is desirable to “provide optimal flow properties and avoid suctioning of the catheter against an area to be catheterized.” Ans. 4-5, citing Schweikert, col. 7, ll. 48- 51. The Examiner further concludes that, in view of Evans (p. 6 para. [0063]), it would have been obvious to one having ordinary skill in practicing the method taught by Makower and Schweikert to create a vortex. Appellants contend that there is no teaching in Schweikert to create a vortex and adding such an arrangement would contradict the intended principle of Schweikert. App. Br. 7. Appellants further contend that even if one were to create a vortex, the vortex creation method employed by Evans, vibratory movement of the catheter 10, contradicts the teachings of Schweikert to avoid vibration and would not result in the claimed subject matter which requires the passing of the fluid to form the vortex. App. Br. 7-8. Appeal 2011-001235 Application 12/011,100 4 Appellants’ first contention that there is no teaching in Schweikert to create a vortex and adding such an arrangement would contradict the intended principle of Schweikert is incorrect. We understand “vortex” to have its ordinary meaning: A spiral motion of fluid within a limited area.1 While, in discussing the helical hole pattern, Schweikert mentions only “optimal flow” (col. 7, ll. 49-50; App. Br. 7), the specific flow pattern we understand Schweikert to regard as optimal is discussed in Schweikert’s background of invention: The 3600 circumferential flow provides a more stable tube within the vessel, which is less likely to be suctioned against the vessel wall due to a pressure differential, as occasionally occurs in the use of some side-by-side multi-lumen catheters. Schweikert, col. 2, ll. 28-32. This is further evidenced by Schweikert’s citation to US Patent Number 5,624,413 which, at column 7, lines 3-8, provides: [P]roviding apertures helically around the full circumference of the distal end regions 60 and 62 prevents sucking of the first and second catheters 22. 24 against the 5 blood vessel and minimizes vibratory movement of the distal end regions 60 and 62 by equalizing the disturbances of intake and outtake flow through the apertures 64. 64'. See Schweikert, col. 1, l. 66 – col. 2, l. 2. Thus, while Schweikert describes “360o circumferential flow” instead of expressly using the word “vortex,” contrary to Appellants’ assertion, a vortex appears to be the exact type of flow Schweikert would consider “optimal.” See, e.g., In re Neugebauer, 330 F.2d 353, 356 (CCPA 1964)(In the construction of words, not the mere words, but the thing and the meaning, are to be inquired after.) 1 See vortex. (2007). In THE AMERICAN HERITAGE MEDICAL DICTIONARY. Retrieved from http://www.credoreference.com/entry/hmmedicaldict/vortex Appeal 2011-001235 Application 12/011,100 5 Evans, other than expressly using the word “vortex,” adds very little to the Examiner’s rejection. Indeed we think the Examiner’s rejection could be sustained on Makower and Schweikert alone. See In re Boyer, 363 F.2d 455, 458 n.2 (CCPA 1966), citing In re Bush, 296 F.2d 491 (CCPA 1961)(as legal support for sustaining a conclusion of obviousness based on fewer than all cited references). In any case, we do not find the citation of Evans in any way weakens the Examiner’s rejection. Evans further expresses the desirability of vortex flow, apparently to assist in stirring up and directing particulate matter 106 from the breakup of a blockage to a suction flow 108 or filter 120. See p. 2, para. [0012], p. 6, para. [0063], fig. 18. Similar agitation would clearly be desirable to assist in the process of breaking up blockages during a sinus irrigation process. Ans. 5. The fact that Evans may rely on a specific structure, vibrating catheter 10, different from Appellants, and, according to Appellants, one that would have been undesirable to Schweikert, to create a vortex is not detrimental to the Examiner’s position since combining the teachings of references does not mandate a combination of their specific structures. In re Nievelt, 482 F.2d 965, 968 (CCPA 1973). A vortex, as suggested by Evans, is the result of passing a fluid through helical holes into a paranasal sinus cavity at the appropriate speed, as evidenced by Schweikert as discussed above, and by Appellants’ Specification. See Spec. p. 12, para. [0075]. Furthermore, regarding claim 1, in contrast to claim 13, there is no causal relationship recited between passing the fluid and creating the vortex. So long as the vortex is created as part of the passing step, regardless of whether it relies upon other structure, that action meets the limitation in question. Appeal 2011-001235 Application 12/011,100 6 DECISION For the reasons above, the Examiner’s rejections are affirmed. 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). AFFIRMED mls Copy with citationCopy as parenthetical citation