Karl West

Patent Trials and Appeals Board

Oct 2, 2019

14749677 - (D) (P.T.A.B. Oct. 2, 2019)

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.
14/749,677 06/25/2015 Karl West CCF-022790 US ORD 1016
26294 7590 10/02/2019
TAROLLI, SUNDHEIM, COVELL & TUMMINO L.L.P.
1300 EAST NINTH STREET, SUITE 1700
CLEVELAND, OH 44114
EXAMINER
TURCHEN, ROCHELLE DEANNA
ART UNIT PAPER NUMBER
3793
NOTIFICATION DATE DELIVERY MODE
10/02/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing@tarolli.com
rkline@tarolli.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KARL WEST
____________

Appeal 2018-008152
Application 14/749,677
Technology Center 3700
____________

Before MICHELLE R. OSINSKI, BRANDON J. WARNER, and
NATHAN A. ENGELS, Administrative Patent Judges.

WARNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Cleveland Clinic Foundation (“Appellant”)1 appeals under
35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1–19,
which are all the pending claims. Appeal Br. 3. We have jurisdiction over
the appeal under 35 U.S.C. § 6(b).
We REVERSE.

1 The Cleveland Clinic Foundation is the applicant, as provided in
37 C.F.R. § 1.46, and is identified as the real party in interest. Appeal Br. 3.
Appeal 2018-008152
Application 14/749,677

2
CLAIMED SUBJECT MATTER
Appellant’s disclosed invention “relates to an apparatus and method
for tracking a position of a medical device and, more particularly, to a
method and apparatus for tracking a position of a medical device relative to
a target site of a patient lumen.” Spec. ¶ 2. Claims 1 and 15 are
independent. Claim 1, reproduced below with emphasis added, is illustrative
of the subject matter on appeal.
1. A method of tracking a position of a medical device
relative to a target site of a patient lumen, the method
comprising:
providing a trackable guidewire, the guidewire having
longitudinally spaced proximal and distal guidewire ends
separated by a guidewire body, the guidewire including a
plurality of longitudinally spaced position sensors configured to
provide signals corresponding to a three-dimensional position
in space to an outside communication device, the guidewire
including at least one retention mechanism for maintaining a
medical device in a predetermined retention position
longitudinally along the guidewire body, and the guidewire
including at least one stop structure in a predetermined stop
position longitudinally along the guidewire body;
placing the medical device in the retention position;
maintaining the medical device in the retention position
via the retention mechanism;
placing the distal guidewire end into the patient lumen;
advancing the distal guidewire end and at least a portion
of the guidewire body through at least a portion of the patient
lumen;
determining a three-dimensional position of at least one
position sensor in a coordinate system of an associated tracking
system; and
determining a relative position of the at least one sensor
with respect to geometry of the patient lumen.
Appeal 2018-008152
Application 14/749,677

3
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Ahmed US 2006/0074318 A1 Apr. 6, 2006
Markowitz US 8,208,991 B2 June 26, 2012
Vanney US 2013/0296692 A1 Nov. 7, 2013

REJECTIONS
The following rejections are before us for review:
I. Claims 1, 4–6, and 15–18 stand rejected under 35 U.S.C. § 103
as being unpatentable over Vanney and Ahmed. Final Act. 5–7.
II. Claims 2, 3, 7–14, and 19 stand rejected under 35 U.S.C. § 103
as being unpatentable over Vanney, Ahmed, and Markowitz.
Id. at 7–9.

ANALYSIS
Independent claim 1 recites a method of tracking a position of a
medical device that involves “providing a trackable guidewire,” with “the
guidewire including at least one retention mechanism for maintaining a
medical device in a predetermined retention position longitudinally along the
guidewire body,” as well as “the guidewire including at least one stop
structure in a predetermined stop position longitudinally along the guidewire
body.” Appeal Br. 25, Claims App. (emphasis added). Similarly,
independent claim 15 recites an apparatus of a trackable guidewire itself,
which comprises or includes “at least one retention mechanism which
selectively maintains a separate medical device in a predetermined retention
position longitudinally along the guidewire body,” as well as “at least one
Appeal 2018-008152
Application 14/749,677

4
stop structure in a predetermined stop position longitudinally along the
guidewire body.” Id. at 30, Claims App. (emphasis added). In other words,
from the plain language of the claim recitations, the disputed elements of the
retention mechanism and the stop structure are components of the guidewire
itself as recited.
In rejecting the claims, for both Rejections I and II, the Examiner
relies on Ahmed for teaching these disputed elements. Final Act. 5–6, 7.
From a review of the disclosure of Ahmed, we agree with Appellant that
these identified elements (retainer 203 and stop tab 216) are “part of
connector 200,” rather than being “part of the guidewire itself as claimed.”
Appeal Br. 15 (underlining omitted); see also Ahmed, Figs. 12–16,
¶¶ 69, 75).
Although the Examiner asserts that “[t]he claim does not preclude
either the retention mechanism or the stop tab from being separate [from] the
guidewire” itself, such an interpretation is contrary to the plain language of
the claims, as discussed above. Ans. 10; see id. at 9–10. To the extent that
the Examiner is merely indicating that the claim does not require the
retention mechanism and the stop tab to be formed integrally as a one-piece
structure with the guidewire, the Examiner has not adequately explained
how Ahmed teaches a retention mechanism and a stop tab that are “separate
structure . . . of the guidewire.” Ans. 10 (emphasis added). Stated another
way, although Ahmed may disclose these disputed elements, it does not
disclose them as being part of the guidewire itself (rather, they are part of
Ahmed’s separate connector element).

Appeal 2018-008152
Application 14/749,677

5
In short, we agree with Appellant that the Examiner errs in applying
an unreasonably broad claim construction that disregards the requirement
that these disputed elements are part of the guidewire itself. See Appeal
Br. 15–18, 20. Because of this erroneous claim construction, the Examiner
has not established factual findings, or provided any explanatory analysis, as
to how Ahmed would disclose or suggest the disputed elements being part of
the guidewire itself, as required by the claims.
For Rejection II, the Examiner relies on Markowitz for teaching
additional claimed features, but not to cure the above-noted deficiency in the
Examiner’s findings based upon the improper claim construction.
Accordingly, based on the error in claim construction that pervades
the prior art rejections, we do not sustain them.

DECISION
We REVERSE the Examiner’s decision rejecting claims 1, 4–6, and
15–18 under 35 U.S.C. § 103 as being unpatentable over Vanney and
Ahmed.
We REVERSE the Examiner’s decision rejecting claims 2, 3, 7–14,
and 19 under 35 U.S.C. § 103 as being unpatentable over Vanney, Ahmed,
and Markowitz.

Appeal 2018-008152
Application 14/749,677

6
CONCLUSION
In summary:

Claims
Rejected Basis Affirmed Reversed
1, 4–6, and 15–18 35 U.S.C. § 103
Vanney and Ahmed
1, 4–6, and
15–18
2, 3, 7–14, and 19 35 U.S.C. § 103
Vanney, Ahmed, and
Markowitz
2, 3, 7–14, and
19
Overall Outcome 1–19

REVERSED