Ex Parte Osborne et al

Board of Patent Appeals and Interferences

Jun 5, 2012

10946416 (B.P.A.I. Jun. 5, 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.
10/946,416 09/21/2004 Thomas A. Osborne 8627-499 8084
757 7590 06/05/2012
BRINKS HOFER GILSON & LIONE
P.O. BOX 10395
CHICAGO, IL 60610
EXAMINER
BACHMAN, LINDSEY MICHELE
ART UNIT PAPER NUMBER
3734
MAIL DATE DELIVERY MODE
06/05/2012 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 THOMAS A. OSBORNE and AARON BARR
____________

Appeal 2011-004144
Application 10/946,416
Technology Center 3700
____________

Before DONALD E. ADAMS, LORA M. GREEN, and
FRANCISCO C. PRATS, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims 1-3, 6-16, 18-26,
30, and 36-39 (App. Br. 2; Reply Br. 2; Ans. 2). We have jurisdiction under
35 U.S.C. § 6(b).
STATEMENT OF THE CASE
The claims are directed to a wire guide for introducing medical
devices into a patient. Claim 1 is representative and is reproduced in the
“CLAIMS APPENDIX” of Appellants‟ Brief.

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Claims 1-3, 6-16, 18-26, 30, and 36-39 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Palermo
1
and Shireman.
2

We affirm.
ISSUE
Does the preponderance of evidence on this record support a
conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 1. For clarity, Palmero‟s FIG. 2 is reproduced below:

“FIG. 2 is a partial cutaway, side view of [Palmero‟s] composite guidewire”
(Palmero, col. 4, ll. 55-56).
FF 2. Palermo suggests a guidewire comprising “a braided member (142)
extending beyond the first end of the core member [146] and received over
the core member” (Ans. 4; id. at 8 (“Palermo discloses a proximal braided
end that extends beyond a core member by a distance”)).
FF 3. Palmero suggests “that the overall length of the guidewire [is] . . .
between 50 and 300 centimeters” (id. at 8).
FF 4. Palermo fails to suggest “that the braided member extends beyond
the core member by a distance of between about 30 and 50 centimeters” (id.
at 4).

1
Palermo et al., US 5,769,796, issued June 23, 1998.
2
Shireman et al., US 2004/0167443 A1, published August 26, 2004.

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FF 5. For clarity, Shireman‟s Fig. 1 is reproduced below:

“FIG. 1 is a partial cross sectional fragmentary view of [Shireman‟s] . . .
guidewire” (Shireman 1: ¶[0005]).
FF 6. Shireman suggests “a guidewire which contains a proximal end (14)
that can be between 20 and 200 centimeters depending on the length and
flexibility characteristics desired” (Ans. 5; see also id. at 8 (“[T]he proximal
end of [Shireman‟s] . . . guidewire can be between about 30 and 50
centimeters in length in order to adjust the guidewire‟s desired length and
flexibility characteristics”); id. at 9 (“Shireman teaches that the proximal end
can be modified between a wide range – 20 to 300 centimeters . . . in order
to adjust the flexibility of the proximal end”); id. (“Shireman is relied upon
to teach that it is known to modify the length of the proximal end in order to
adjust the flexibility of the guidewire”)).
FF 7. Shireman suggests that
The entire guidewire 10 can be made of the same
material, or in some embodiments, can include portions or
sections, for example, proximal/distal guidewire sections 14/16,
that are made of different materials. In some embodiments, the
material used to construct different portions of the guidewire 10
can be chosen to impart varying flexibility and stiffness
characteristics to different portions of the wire. . . . In general,
the material used to construct proximal portion 14 may be
selected to be relatively stiff for pushability and torqueability.

(Shireman 3: ¶[ [0034].)
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FF 8. Palermo provides “general teachings regarding the length of the
guidewire, including the total guidewire length . . . and that there may be
several tapered portions on section . . . of the guidewire” (Ans. 10).
FF 9. Shireman suggests “that it . . . [was] known to modify the lengths of
the different [guidewire] portions in order to gain the desired length and
flexibility characteristics in the guidewire” (id.).
FF 10. “Palermo discloses the use of radiopaque materials on various parts
of the guidewire” (id. at 11; Palermo, col. 4, ll. 40-46 (“Ideally there will be
one or more radiopaque markers placed upon the guidewire, e.g., at its distal
tip and potentially along the length of the intermediate section. These
markers may be used both to enhance the guidewire‟s radiopacity”)).
FF 11. Palermo‟s device “contains a sleeve that surrounds the core member
and the braided member to form the distal most end of the braided section”
(Ans. 4; see also Palermo, col. 11, ll. 28-30 (“all or part of the guidewire
core may be covered or coated with one or more layers of a polymeric
material”)).

ANALYSIS
Claim 1:
We are not persuaded by Appellants‟ contention that “Palermo does
not teach that the braided member extends beyond the core member by a
distance of between about 30 and 50 centimeters” (App. Br. 6; Reply Br. 4).
Examiner relied upon Shireman to suggest this element of Appellants‟ claim
(FF 6).
We are not persuaded by Appellants‟ contention that “examiner does
not address the claimed relationship which relates the braided member to the
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core member, specifically that a braided member extends beyond the core
member by a distance of between about 30 and 50 centimeters” (App. Br. 6;
Cf. FF 3 and 6). We find no error in Examiner‟s conclusion that, at the time
of Appellants‟ claimed invention, it would have been prima facie obvious to
a person of ordinary skill in this art “to modify the device taught by Palermo
. . . by making the proximal end a particular length, as taught by Shireman . .
. , in order to modify the length and flexibility characteristics of the
guidewire” (Ans. 5; id. at 8).
With reference to Shireman‟s paragraph [0034] Appellants contend
that “Shireman teaches that „[i]n general, the material used to construct the
proximal portion 14 may be selected to be relatively stiff for pushability and
torqueability” (App. Br. 7 (alteration original); Reply Br. 5). According to
Appellants “Shireman does not teach a braided member and, therefore,
cannot teach the relationship of a braided member to the core member” (id.;
see also Reply Br. 6). We are not persuaded. Shireman suggests that the
guidewire can be made of the same or different materials and that one may,
in general, construct the proximal portion out of a relatively stiff material for
pushability and torqueability (FF 7). Therefore, notwithstanding Appellants‟
contentions to the contrary, Shireman does not require the proximal portion
to be constructed of a relatively stiff material, nor does Shireman teach away
from using Palermo‟s braided member (see App. Br. 7). As Examiner
makes clear, “Shireman is relied upon to teach that it is known to modify the
length of the proximal end in order to adjust the flexibility of the guidewire”
(FF 6). Accordingly, we are not persuaded by Appellants‟ contention that
“any combination of Shireman with Palermo would sacrifice the pushability
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and torqueability desired by the Shireman reference” (App. Br. 7; Reply Br.
7).
Claim 12:
We are not persuaded by Appellants‟ contention that Palermo fails to
“specifically teach a center section that is defined to be between 20 to about
300 cm” in length (App. Br. 9; Reply Br. 8; Cf. FF 8 and 9). Accordingly,
we find no error in Examiner‟s reasoning that, at the time of Appellants‟
claimed invention, it would have been prima facie obvious to a person of
ordinary skill in this art “to modify the lengths to achieve the desired length
and flexibility characteristics” (Ans. 10, citing In re Aller, 220 F.2d 454
(CCPA 1955). See also KSR Int’l v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(A fact-finder “need not seek out precise teachings directed to the specific
subject matter of the challenged claim [in an analysis of obviousness], for a
court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.”). Accordingly, we are not
persuaded by Appellants‟ contention that “none [of] the references teach the
procedure described, neither does the examiner teach how or why one of
ordinary skill in the art would have modified the references in the manner
claimed” (App. Br. 9; Reply Br. 8).

Claim 13:
For the foregoing reasons we are not persuaded by Appellants‟
contention that Examiner failed to establish that the combination of prior art
suggested “a distance from the second tapered section to the second end of
the core member is between about 3 and 5 cm” as required by Appellants‟
claim 13 (App. Br. 9; Reply Br. 9).
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Claim 14:
For the foregoing reasons we are not persuaded by Appellants‟
contention that Examiner failed to establish that the combination of prior art
suggested “a distance including the first tapered section and extending to an
end of the braided member [that] is between about 40 and 80 cm” as
required by Appellants‟ claim 14 (id.).

Claim 16:
For the foregoing reasons we are not persuaded by Appellants‟
contention that Examiner failed to establish that the combination of prior art
suggested “a distance from the first tapered section to the first end of the
core member [that] is between about 5 and 15 cm” as required by
Appellants‟ claim 16 (App. Br. 10; Reply Br. 10).

Claim 26:
We are not persuaded by Appellants‟ contention that “examiner has
provided no factual evidence that one of ordinary skill in the art at the time
of the invention would have made the wire strands of the proximal portion in
Palermo from a radiopaque material” (App. Br. 10-11). While Palermo fails
to suggest “making the strands of the braided portion out of a radiopaque
material,” we find no error in Examiner‟s conclusion that, at the time of
Appellants‟ claimed invention, it would have been prima facie obvious to a
person of ordinary skill in this art to make the wire strands of the proximal
portion of Palermo‟s device from a radiopaque material “in light of
Palermo‟s statement that it is desirable to include radiopaque markers on the
guidewire in order to enhance the guidewire‟s radiopacity” (Ans. 11; FF 10).
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For the foregoing reasons we are not persuaded by Appellants‟ contention
that “[a] broad statement that some portion of the wireguide may use a
radiopaque material, is not the same as providing motivation to modify the
reference specifically as claimed to use strands of radiopaque material”
(Reply Br. 10). KSR Int’l v. Teleflex Inc., 550 U.S. at 418.

Claim 37:
We are not persuaded by Appellants‟ contention that Examiner failed
to establish that the combination of prior art suggests a “flexible end section
. . . without a joint at the end of the flexible end section” (App. Br. 11).
Instead, we agree with Examiner‟s conclusion that “the free end of
[Palermo‟s] element 142 in Figure 2 is exactly that: a free end that is not
joined to another object” (Ans. 11). Appellants‟ fail to identify a portion of
Palermo‟s disclosure that supports a conclusion that Palermo‟s element 142,
illustrated in Palermo‟s figure 2 is a solder joint (Reply Br. 11; see also App.
Br. 11). Notwithstanding Appellants‟ contention to the contrary, Palermo
suggests that element 142 is a braided member (FF 2).

Claim 38:
We are not persuaded by Appellants‟ contention that the requirement
in claim 38 that “the flexible end section consists of the braided member
extending from the core member and being surrounded by at least one sleeve
. . . exclude[s] additional coatings or other layers around the braided
member” (App. Br. 11; Reply Br. 11). “[A]t least one” does not exclude
more than one (id). Nevertheless, notwithstanding Appellants‟ intimation to
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the contrary, Palermo does not require a coating at the proximal end of the
device (Ans. 12; FF 11).

Claim 39:
We are not persuaded by Appellants‟ contention that the requirement
in claim 39 that “the flexible end section consists of the braided member
extending from the core member and being surrounded by at least one
coating . . . exclude[s] solder joints or coils being incorporated into the
flexible end section” (App. Br. 11-12; Reply Br. 12). As Examiner explains,
“there is not a joint at the free end of [Palermo‟s] . . . braided section” (Ans.
12). While Appellants contend that “it appears that a joint is shown at the
end of member 142 in Figure 2 of Palermo,” Appellants‟ fail to identify a
portion of Palermo‟s disclosure that supports this contention or interpretation
of Palermo‟s Figure 2 (App. Br. 11; see also id. at 12 (“[A]s discussed above
Palermo teaches the joint at the end of member 142 as shown in Figure 2”)).

CONCLUSION OF LAW
The preponderance of evidence on this record supports a conclusion
of obviousness. The rejection of claims 1, 12, 13, 14, 16, 26, 37, 38, and 39
under 35 U.S.C. § 103(a) as unpatentable over the combination of Palermo
and Shireman is affirmed. Claims 2, 3, 6-11, 15, 18-25, 30, and 36 are not
separately and fall together with claim 1. 37 C.F.R. § 41.37(c)(1)(vii).

Appeal 2011-004144
Application 10/946,416

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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

cdc