Ex Parte Pierpont et al

Board of Patent Appeals and Interferences

Jul 5, 2012

11616372 (B.P.A.I. Jul. 5, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte BRIEN E. PIERPONT and JAMES A. COYLE
__________

Appeal 2011-005886
Application 11/616,372
Technology Center 3700
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Before DEMETRA J. MILLS, JEFFREY N. FREDMAN, and
STEPHEN WALSH, Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the rejection of
claims directed to a method for performing angioplasty. The Patent
Examiner rejected the claims for obviousness. We have jurisdiction under
35 U.S.C. § 6(b). We reverse.
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STATEMENT OF THE CASE
Claims 14-23 are on appeal. Claim is representative and reads as
follows:
14. A method for performing angioplasty, comprising:
inserting a guide wire through a treatment catheter to form a treatment
catheter assembly;
inserting the treatment catheter assembly through an opening in a tubular
wall of an anchoring catheter to form a unit;
inserting a guiding catheter into a patient such that the distal end of the
guiding catheter is inserted into the origin of the patient’s artery;
inserting the unit through the guiding catheter;
extending the anchoring catheter partially out of the guiding catheter and
into the blood vessel;
securing the anchoring catheter to the blood vessel;
sliding the treatment catheter through the opening in the tubular wall of the
anchoring catheter and along the guide wire until a treatment element
disposed on the treatment catheter is adjacent a plaque area of the
blood vessel;
actuating the treatment element to treat the plaque area of the blood vessel.

The Examiner rejected claims 14-23 under 35 U.S.C. § 103(a) as
unpatentable over Pierpont (US 5,484,412) and Crittenden (US 4,988,356).

OBVIOUSNESS
The Issue
The rejection states that Pierpont described a method of angioplasty
that included Appellants’ steps except for inserting and sliding a treatment
catheter through an opening in a tubular wall of an anchoring catheter.
(Ans. 4.) The rejection also states that (i) Crittenden taught “introducing an
elongated element (guidewire) through a side slit opening in a catheter,” and
(ii) Crittenden’s catheter “further includes a guide member that slides along
the length of the catheter in order to facilitate opening and re-sealing of the
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slit.” (Id.) According to the rejection, “[s]ide slit openings are well known
in the art and are used in order to enable the medical technician to introduce
and remove additional devices into and out of indwelling catheters without
having to deliver the device from the proximal end opening thereby
increasing the control that the practitioner has over the elongate device.”
(Id. at 5.) Further, “[t]he advantages [of catheter side slit openings] are well
known in the art and result in improved ease of use and safety to the
patient.” (Id.) The Examiner concluded that “[o]ne skilled in the art would
have used these known motivations to incorporate the slit and guide member
of Crittenden into the invention of Pierpont.” (Id.)
Appellants contend that the combined teachings of Pierpont and
Crittenden “would not result in the invention as claimed in independent
claim 14” (App. Br. 3), because neither reference disclosed a treatment
catheter inserted through an opening in an anchoring catheter (id. at 4.)
Appellants further contend that “the Examiner's basis for maintaining the
obviousness rejection is incorrect because the Examiner is relying on
generalities and characterizes the Applicant's claims in an oversimplified
manner.” (Id.) Finally, Appellants contend that “upon review of the prior
art references there is neither an explicit or inherent reason for combining
the references.” (Id. at 7.)
The Examiner responds that, given Crittenden’s teaching, “one of skill
in the art would know to apply this teaching i.e. to extend any elongate
member, whether it be a guidewire, a lead, a catheter, etc. through the
sidewall of another elongate member, to the specific structure of Pierpont.”
(Ans. 6.)
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Appellants reply that Appellants “realized that using a similar
technique as Crittenden could provide improved results in the Pierpont
device, not as taught by Crittenden, but instead could provide a different
improved function and operation not previously contemplated by Crittenden
or any other inventor as is evident by the fact that the claim limitation is not
met by a single reference.” (Reply Br. 3.)

Findings of Fact
1. Pierpont described a method of performing angioplasty that differed
from Appellants’ method by not inserting and sliding a treatment
catheter through an opening in a tubular wall of an anchoring catheter.
(Pierpont, cols. 3-4.)
2. Crittenden described a catheter constructed to receive a guidewire
through a side slit opening in a catheter, and using a guiding device
slidably carried by the catheter. (Crittenden, col. 2.)
3. Crittenden stated that “[i]n the illustrative embodiment of the
invention illustrated in FIG. 1, the procedure would be a dilation
procedure to enlarge a stenosed lumen of the blood vessel.” (Id. at
col. 6, ll. 49-52.)
4. Crittenden described the catheter in its Figure 1 as “a balloon dilation
catheter used in angioplasty procedures.” (Id. at col. 4, ll. 38-42.)

Principles of Law
“The presence or absence of a motivation to combine references . . . is
a pure question of fact.” In re Gartside, 203 F.3d 1305, 1316 (Fed. Cir.
2000). “The perspective from which these findings are made . . . is that of a
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person of ordinary skill in the field of the invention,” Glaverbel Societe
Anonyme v. Northlake Mktg. & Supply, Inc., 45 F. 3d 1550, 1555 (Fed. Cir.
1995), who is presumed to have knowledge of all “pertinent prior art,” In re
Carlson, 983 F.2d 1032, 1038 (Fed. Cir 1992).
Motivation for altering the prior art may be may be found in the
knowledge of those skilled in the art at the time, or where the nature of the
problem supplied a motivation. Princeton Biochemicals, Inc. v. Beckman
Coulter, Inc., 411 F.3d 1332, 1338-1339 (Fed. Cir. 2005).

Analysis
We begin with Appellants’ third objection: that there would have
been no reason to combine Pierpont and Crittenden. That objection is
unpersuasive because Pierpont and Crittenden both concerned angioplasty
by catheter. (FF 1, 3, and 4.) Because Pierpont and Crittenden addressed
the same problem, methods of using catheters for angioplasty, albeit in
different ways, it was proper for the rejection to combine their teachings.
We next consider Appellants’ argument that even if the Pierpont and
Crittenden teachings were combined, they would not have yielded the
claimed method. The evidence is that neither reference taught inserting one
catheter into another as the claimed method does. If the available evidence
is limited to the literal disclosures, Appellants are correct. However, the
rejection made the additional findings that (i) “[s]ide slit openings are well
known in the art and are used in order to enable the medical technician to
introduce and remove additional devices into and out of indwelling catheters
without having to deliver the device from the proximal end opening thereby
increasing the control that the practitioner has over the elongate device;” and
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(ii) “[t]he advantages [of catheter side slit openings] are well known in the
art and result in improved ease of use and safety to the patient.” (Ans. at 5.)
Appellants object to these additional findings as improper
generalizations, unsupported by evidence. (Reply Br. 2.) The rejection
provided no evidence to support its finding that inserting “additional
devices” other than a guidewire through side-slit openings in catheters was
known. To the extent that the finding of “advantages” applied to anything
other than Crittenden’s guidewire, the rejection again offered no evidence.
The lack of supporting evidence is a critical weakness in the rejection. “The
Patent Office has the initial duty of supplying the factual basis for its
rejection. It may not . . . resort to speculation, unfounded assumptions or
hindsight reconstruction to supply deficiencies” in the cited references. In re
Warner, 379 F.2d 1011, 1017 (CCPA 1967).
The “Response to Argument” section of the Answer makes an
additional finding: “one of skill in the art would know to apply
[Crittenden’s guidewire] teaching i.e. to extend any elongate member,
whether it be a guidewire, a lead, a catheter, etc. through the sidewall of
another elongate member, to the specific structure of Pierpont.” (Id. at 6.)
General knowledge in the art and the nature of the problem being addressed
are permissible sources of motivation to alter a known method. However,
there must be evidence that the motivating concept was known before
Appellants disclosed it. See, e.g., Princeton Biochemicals, 411 F.3d 1338-
1339. Difficulties with the belated finding or theory in the “Response to
Argument” are that the rejection did not cite evidence to support its finding
that a person of ordinary skill in the art would have known to apply
Crittenden’s guidewire teaching to any elongate member whether guidewire,
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lead, or catheter, and, in the absence of pertinent evidence, did not explain
why or how such a substitution would have reasonably occurred to a person
of ordinary skill in the art. “Rejections on obviousness grounds cannot be
sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
Because the rejection’s findings lack supporting evidence, and the rejection
did not articulate an obviousness rationale showing that the lack of evidence
could be excused, the rejection is reversed.

SUMMARY
We reverse the rejection of 14-23 under 35 U.S.C. § 103(a) as
unpatentable over Pierpont and Crittenden.

REVERSED

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