C. R. Bard, Inc.

Patent Trials and Appeals Board

Apr 21, 2020

15585051 - (D) (P.T.A.B. Apr. 21, 2020)

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.
15/585,051 05/02/2017 Jeremy B. Cox 101672.0074P24 2284
158673 7590 04/21/2020
BD/Rutan & Tucker, LLP
611 ANTON BLVD
SUITE 1400
COSTA MESA, CA 92626
EXAMINER
D ABREU, MICHAEL JOSEPH
ART UNIT PAPER NUMBER
3792
NOTIFICATION DATE DELIVERY MODE
04/21/2020 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):
ip.docket@bd.com
patents@rutan.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JEREMY B. COX, ANTHONY K. MISENER,
CATHERINE C. BREITER, BRET HAMATAKE, EDDIE K. BURNSIDE,
JASON R. STATS, and AMIR OROME
____________________

Appeal 2019-0052291
Application 15/585,051
Technology Center 3700
____________________

Before PHILLIP J. KAUFFMAN, TARA L. HUTCHINGS, and
ALYSSA A. FINAMORE, Administrative Patent Judges.

FINAMORE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–13. We have jurisdiction under
§ 6(b). We REVERSE.

1 The citations herein refer to the Specification filed May 2, 2017 (“Spec.”),
Final Office Action mailed March 15, 2018 (“Final Act.”), Appeal Brief
filed November 13, 2018 (“Appeal Br.”), Examiner’s Answer mailed May 2,
2019 (“Ans.”), and Reply Brief filed June 26, 2019 (“Reply Br.”).
2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies the real party in interest as C.R. Bard, Inc. Appeal Br. 3.
Appeal 2019-005229
Application 15/585,051

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SUBJECT MATTER ON APPEAL
The invention relates to “an integrated catheter placement system
configured for accurately placing a catheter within the vasculature of a
patient.” Spec. ¶ 2. Independent claim 1, the sole independent claim, is
representative of the claimed subject matter, and we reproduce it below,
italicizing the limitation at issue in this appeal.
1. A medical method, comprising:
positioning a medical device at least partially in a sterile
field, the medical device including a first connector
operably connected to a sensing component, the first
connector including a first contact;
placing a data-receiving component at least partially in a
non-sterile field, a second connector including a second
contact operably connected to the data-receiving
component; and
establishing a conductive pathway from the first contact to
the second contact between the sterile field and the
non-sterile field without compromising the sterile field.
Appeal Br., Claims App. (emphasis added, claim status identifier omitted).

Appeal 2019-005229
Application 15/585,051

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REJECTIONS
Claim(s)
Rejected 35 U.S.C. § Reference(s)/Basis 
1, 10–13 102(b) Goldin3
2–94 103(a) Goldin, Mackey5 or Pyles6

ANALYSIS
Appellant argues the Examiner has not demonstrated Goldin discloses
“establishing a conductive pathway from the first contact to the second
contact between the sterile field and the non-sterile field without comprising
the sterile field,” as recited in independent claim 1. Appeal Br. 8–14; Reply
Br. 5–7. In particular, Appellant contends Goldin’s conductive pathway is
not across the barrier between sterile and non-sterile fields. Appeal
Br. 9–14; Reply Br. 6–7. Appellant’s argument has merit.
Goldin discloses a multi-electrode catheter system suited for use with
intracardiac electrophysiology or electromechanical studies or therapeutic
procedures such as cardiac ablation. Goldin 1:6–12. Goldin’s Figures 1
and 2, reproduced below, depict the diagnostic and therapeutic system.

3 Goldin et al., US 6,546,270 B1, issued Apr. 8, 2003 (“Goldin”).
4 The heading of the rejection lists claims 2–19. Final Act. 6.
Claims 14–19, however, are withdrawn from consideration (id. at 1, 3), and
the Examiner does not discuss these claims in the body of the rejection. The
Examiner also does not address claims 10–13 in the body of the rejection,
and, instead, includes them in a different ground of rejection (id. at 4–5).
Accordingly, we understand the rejection includes only claims 2–9, which is
consistent with Appellant’s understanding of the claims subject to this
rejection (Appeal Br. 7).
5 Mackey, US 5,423,877, issued June 13, 1995.
6 Pyles, US 2005/0283216 A1, published Dec. 22, 2005.
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Figure 1 is a schematic illustration showing the elements of Goldin’s cardiac
diagnostic and therapeutic system, and Figure 2 is a schematic illustration
showing the system in use on a patient. Id. at 8:41–45. As shown in these
figures, Goldin’s system 18 includes catheter 20 for insertion into a patient’s
body, preferably the patient’s heart. Id. at 9:59–61. Catheter 20 is made up
of catheter body 20a having distal end 22 with contact electrode 24,
reference electrode 25, and location sensor 28. Id. at 9:61–64, 10:12–18,
Fig. 1. Catheter 20 also includes handle 30 with controls 32 to steer distal
end 22. Id. at 10:22–25, Fig. 1. Handle 30 connects to receptacle 33 of
cable 21 for connecting catheter 20 to circuits 40. Id. at 11:1–5, Figs. 1–2.
In finding Goldin anticipates independent claim 1, the Examiner relies
on Goldin’s handle 30 and receptacle 33 for disclosing the recited first and
second contacts, respectively. Final Act. 4. The Examiner also finds that
the area within the patient’s chest is a sterile field, and that the area outside
of the patient’s chest is a non-sterile field. Id.; see also id. at 5 (“[T]he
[E]xaminer is interpreting the patient’s chest to be the sterile barrier
separat[ing] both the sterile and non-sterile field[s].”). According to the
Examiner, Goldin’s handle 30 and receptacle 33 disclose the disputed
limitation because “the two components are connected, one of which as a
singular piece extends into the sterile field and the other is completely within
the non[-]sterile field.” Ans. 3.
Even if we agree with the Examiner that a first contact in a sterile
field connected to a second contact in a non-sterile field would disclose the
disputed limitation, the Examiner has not shown Goldin discloses such a
connection. Both handle 30 and receptacle 33, which the Examiner relies on
for disclosing the first and second contacts, are located outside of the
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Application 15/585,051

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patient’s chest, i.e., the non-sterile field. More specifically, handle 30 is
outside the patient’s chest because physician 51 grasps handle 30 and uses
controls 32 to steer distal end 22 within the patient’s chest.
Golding 10:22–25, Figs. 1–2. Receptacle 33 is located proximal of
handle 30 and, thus, likewise outside the patient’s chest. Id. at 11:1–5,
Fig. 1. As Goldin’s handle 30 and receptacle 33 are both located in the
identified non-sterile field, the Examiner has not shown that Goldin
discloses “establishing a conductive pathway from the first contact to the
second contact between the sterile field and the non-sterile field,” as recited
independent claim 1. We, therefore, do not sustain the rejection of
independent claim 1 and claims 10–13 depending therefrom under 35 U.S.C.
§ 102(b) as anticipated by Goldin.
Claims 2–9 depend from independent claim 1. Appeal Br., Claims
App. The Examiner does not rely on Mackey or Pyles in any manner that
would remedy the deficiency in the rejection of independent claim 1, and the
rejection of claims 2–9 suffers from the same deficiency as the rejection of
independent claim 1. Final Act. 6–9. Accordingly, for the same reasons as
independent claim 1, we do not sustain the rejection of claims 2–9 under
35 U.S.C. § 103(a) as unpatentable over Goldin and Mackey or Pyles.

CONCLUSION
We do not sustain the rejection of claims 1 and 10–13 under 35 U.S.C.
§ 102(b) as anticipated by Goldin. We similarly do not sustain the rejection
of claims 2–9 under 35 U.S.C. § 103(a) as unpatentable over Goldin and
Mackey or Pyles.

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Application 15/585,051

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DECISION SUMMARY
Claim(s)
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 10–13 102(b) Goldin 1, 10–13
2–9 103(a) Goldin, Mackey or Pyles 2–9
Overall
Outcome 1–13

REVERSED