Ex Parte Vrba

Board of Patent Appeals and Interferences

Sep 10, 2012

11466907 (B.P.A.I. Sep. 10, 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.
11/466,907 08/24/2006 Anthony C. Vrba 1001.2226101 2762
11050 7590 09/11/2012
SEAGER, TUFTE & WICKHEM, LLC
1221 Nicollet Avenue
Suite 800
Minneapolis, MN 55403
EXAMINER
SANTOS, JOSEPH M
ART UNIT PAPER NUMBER
3737
MAIL DATE DELIVERY MODE
09/11/2012 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 ANTHONY C. VRBA
__________

Appeal 2011-010310
Application 11/466,907
Technology Center 4100
__________

Before DONALD E. ADAMS, LORA M. GREEN, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to an
apparatus for locating a puncture in a blood vessel. The Examiner rejected
the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We
reverse.

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Application 11/466,907

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Statement of the Case
Background
“Various surgical procedures are performed using percutaneous entry
into a blood vessel” (Spec. 1 ¶ 0002). According to the Specification, after
“the selected procedure is completed . . . it is necessary to close the vascular
puncture to provide hemostasis to allow healing” (Spec. 1-2 ¶ 0003). The
Specification teaches “an apparatus is provided for locating a puncture in a
blood vessel” (Spec. 4 ¶ 0008).
The Claims
Claims 1, 4, and 6-20 are on appeal. Claim 1 is representative and
reads as follows:
1. Apparatus for locating a puncture in a blood vessel,
comprising:
a probe sized for insertion through an incision and having
a proximal end and a distal portion including a closed distal tip,
the probe defining a probe lumen extending from the proximal
end and at least partially into the probe distal portion, the probe
distal portion having a first rigidity; and
a core having a second rigidity greater than the first
rigidity, the core being insertable into the probe lumen to
increase the rigidity of the probe distal portion;
wherein the core is adapted to be completely withdrawn
from the probe.

The issues

A. The Examiner rejected claims 1, 4, 6, 17, and 18 under 35 U.S.C.
§ 103(a) as obvious over Kontos
1
and Gay
2
(Ans. 3-5).

1
Kontos, S., US 6,048,357, issued Apr. 11, 2000.
2
Gay et al., US 5,047,018, issued Sep. 10, 1991.
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B. The Examiner rejected claims 7, 8, 11, 12, 14-16, and 19 under 35
U.S.C. § 103(a) as obvious over Kontos, Gay, and Kanner
3
(Ans. 5-7).
C. The Examiner rejected claims 9, 10, and 20 under 35 U.S.C. § 103(a)
as obvious over Kontos, Gay, and Vilkomerson
4
(Ans. 7-8).
D. The Examiner rejected claim 13 under 35 U.S.C. § 103(a) as obvious
over Kontos, Gay, Kanner, and Vilkomerson (Ans. 8).
A. 35 U.S.C. § 103(a) over Kontos and Gay
The Examiner finds that Kontos teaches a probe
defining a probe lumen extending from the proximal end and
at least partially into the probe distal portion (element 14 has
an inside lumen from its distal portion to its proximal
portion, Fig. 3). The probe distal portion having a first
rigidity (“flexible tube” (Abstract and element 14, Fig. 4)[)];
and a core having a second rigidity greater than the first
rigidity, the core being insertable into the probe lumen to
increase the rigidity of the probe distal portion (element 12,
Fig. 3) in which inner member 12 is advanced and retracted
with respect to the outer tubular body 14

(Ans. 3-4). The Examiner finds Kontos teaches that “the core (element 12)
is adapted to be completely withdrawn from the probe” (id.). The Examiner
finds that Gay teaches “a soft catheter and a stylet assembly in which the
stylet is insertable into the lumen of the catheter to provide rigidity to the
catheter and facilitate the introduction into an artery or vein” (id.). The

3
Kanner et al., US 2002/0029064 A1, published Mar. 7, 2002.
4
Vilkomerson et al., Quasi-omnidirectional transducers for
ultrasonic electronic-beacon guidance of invasive devices, 1733
SPIE 154-165 (1992).
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Examiner finds it obvious “to provide a stylet to further enhance the rigidity
of an insertable catheter” (Ans. 4).
Appellant contends that “nowhere does Kontos teach or suggest that
outer tubular body 14 is more flexible than inner tubular body 12” (App. Br.
8). Appellant contends that:
Kontos expressly discloses that the advancing and retracting
of the inner tubular body 12 relative to the outer tubular
body 14 cited by the Examiner describes the deployment and
retraction of anchor member 22 through opening 26, and
does not disclose or suggest that inner tubular body 12 is
adapted to be completely withdrawn from outer tubular body
14.

(Id. at 10.) Appellant contends that “inner tubular body 12 of cited Figure 3
does not appear to be capable of being completely withdrawn from outer
tubular body 14” (id. at 12). Appellant contends that “inner tubular body 12
appears to be bounded within outer tubular body 14 by handle 18 and
compression spring 34 at a proximal end, and weld 112 and spring 110 at a
distal end, as well as limited in its proximal movement by anchor member
22” (id. at 12).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner‟s conclusion that Kontos and Gay render obvious the
apparatus required by claim 1?
Findings of Fact
1. Kontos teaches a device with an “inner member, slidably
received within the flexible tube so that the inner member may be moved
proximally and distally with respect to the flexible tube” (Kontos, col. 2, ll.
41-43).
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2. Figure 3 of Kontos is reproduced below:

“FIG. 3 is a cross-sectional view . . . showing a second dual-lumen
embodiment” (Kontos, col. 3, ll. 1-2).
3. Kontos teaches “device 10, which may preferably be
approximately 20" in length, comprises an inner tubular body 12 with a
handle 18 formed at a proximal end thereof, slidably received within an
outer tubular body 14” (Kontos, col. 4, ll. 8-11).
4. Kontos teaches that the “handle 18 is designed to cooperatively
engage the proximal end 15 of outer tubular body 14 to prevent the
advancement of the inner tubular body 12 proximally beyond a
predetermined maximum distance” (Kontos, col. 4, ll. 32-36).
5. Kontos teaches that the “curve 24 of the retractable anchor 22
and the resilience of the material of which the anchor member 22 is made,
which material may preferably be nitinol, cooperate such that as the inner
tubular body 12 is advanced and retracted with respect to the outer tubular
body 14” (Kontos, col. 4, l. 67 to col. 5, l. 5).
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6. Gay teaches that the “stylet 14 is slidably receivable in the
lumen 20 of the catheter 12 to provide rigidity to the catheter 12 so that
introduction of the catheter 12 into a chamber of a heart or other organ is
facilitated” (Gay, col. 3, ll. 44-47).
7. The Specification teaches that the core “may be completely
withdrawn from the probe lumen 20 as illustrated in Fig. 3” (Spec. 8 ¶
0023).
8. Figure 3 of the Specification is reproduced below:

“Fig. 3 is a side elevation view, in cross-section, of the probe of Fig. 1,
with the core entirely withdrawn therefrom” (Spec. 5 ¶ 0014).
Principles of Law
“In proceedings before the Patent and Trademark Office, the
Examiner bears the burden of establishing a prima face case of obviousness
based upon the prior art.” In re Fritch, 972 F.2d 1260, 1265 (Fed. Cir. 1992).
To establish a prima facie case of obviousness, the examiner must find
“a reason that would have prompted a person of ordinary skill in the relevant
field to combine the elements in the way the claimed new invention does.”
KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).

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Analysis
Kontos teaches an apparatus which comprises a probe with a probe
lumen where the probe distal portion inherently has a first rigidity (FF 1-2).
Gay teaches the use of a core or stylet with a second rigidity that is
insertable into a catheter lumen to increase rigidity (FF 6).
We therefore agree with the Examiner that modifying Kontos to use a
more rigid inner core and a less rigid outer tube as taught by Gay would
have been obvious.
Kontos does not, however, suggest that the inner core (here tube 12) is
adapted to be completely withdrawn from the probe. Kontos teaches that the
inner core has a maximum movement proximally (FF 4). The Kontos device
does not appear to permit the complete withdrawal of tube 12. As Appellant
notes:
inner tubular body 12 appears to be bounded within outer
tubular body 14 by handle 18 and compression spring 34 at a
proximal end, and weld 112 and spring 110 at a distal end,
as well as limited in its proximal movement by anchor
member 22, which deploys through opening 26 as inner
tubular body 12 is moved proximally.

(App. Br. 12.)
The Examiner responds to this argument by finding that “the
limitation set forth in the claims of „completely withdrawing the core from
the probe lumen‟ is not a structural limitation; Therefore, no patentable
weight is given” (Ans. 9). In the rejection, the Examiner finds this limitation
“would have been an obvious matter of design choice” (id. at 5).
We disagree. The limitation that “the core is adapted to be completely
withdrawn from the probe” is reasonably interpreted as limiting the structure
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of the apparatus so that the core can be completely withdrawn from the
probe. The Specification teaches that the core “may be completely
withdrawn from the probe lumen 20 as illustrated in Fig. 3” (Spec. 8 ¶ 0023;
FF 7).
As shown in Figure 3 reproduced above (FF 8), the structure of the
device when the core is completely withdrawn differs from the structure of
the device when the core remains within the device (see, e.g., FF 2). Thus,
when given the broadest reasonable interpretation consistent with the
Specification, the limitation of complete withdrawal of the core imposes a
structural requirement on the apparatus.
We also do not find the Examiner‟s “design choice” reasoning
persuasive. The Examiner provides no evidence or reason why the ordinary
artisan, conversant with Kontos and Gay, would have modified the apparatus
of Kontos to permit the core to be completely withdrawn. See KSR, 550 U.S.
at 418 (There must be “a reason that would have prompted a person of
ordinary skill in the relevant field to combine the elements in the way the
claimed new invention does.”).
Conclusion of Law
The evidence of record does not support the Examiner‟s conclusion
that Kontos and Gay render obvious the apparatus required by claim 1.
B-D. 35 U.S.C. § 103(a)
Each of these rejections relies upon the underlying obviousness
rejection over Kontos and Gay. Having reversed the rejection of claim 1
over Kontos and Gay, we necessarily reverse the additional obviousness
rejections which do not cure the failure to teach that “the core is adapted to
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be completely withdrawn from the probe” as required by independent claims
1, 11, and 17.
SUMMARY
In summary, we reverse the rejection of claims 1, 4, 6, 17, and 18
under 35 U.S.C. § 103(a) as obvious over Kontos and Gay.
We reverse the rejection of claims 7, 8, 11, 12, 14-16, and 19 under 35
U.S.C. § 103(a) as obvious over Kontos, Gay, and Kanner.
We reverse the rejection of claims 9, 10, and 20 under 35 U.S.C.
§ 103(a) as obvious over Kontos, Gay, and Vilkomerson.
We reverse the rejection of claim 13 under 35 U.S.C. § 103(a) as
obvious over Kontos, Gay, Kanner, and Vilkomerson.

REVERSED

cdc