Covidien LP

Patent Trials and Appeals Board

Apr 10, 2020

14885710 - (D) (P.T.A.B. Apr. 10, 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.
14/885,710 10/16/2015 Edwin Wang HKN-03147US/1213-034US01 5771
137834 7590 04/10/2020
MDT_RTGNV/Shumaker & Sieffert P.A.
Attn: IP Legal Department
826 Coal Creek Circle
Louisville, CO 80027
EXAMINER
SCHMIDT, EMILY LOUISE
ART UNIT PAPER NUMBER
3783
NOTIFICATION DATE DELIVERY MODE
04/10/2020 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):
pairdocketing@ssiplaw.com
rs.patents.two@medtronic.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte EDWIN WANG, KOMONN LIM, and
BRYANT PHAM

Appeal 2019-004814
Application 14/885,710
Technology Center 3700
____________

Before MICHAEL L. HOELTER, LISA M. GUIJT, and
LEE L. STEPINA, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–4, 6, 7, 10, 12–16, 19, 20, 26, and 27,

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as
“Medtronic plc of Dublin, Ireland, which is the ultimate parent entity of the
assignee of record, Covidien LP.” Appeal Br. 3.
Appeal 2019-004814
Application 14/885,710

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which constitute all the claims pending in this application. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
CLAIMED SUBJECT MATTER
The disclosed subject matter “relates to a medical catheter.” Spec.
¶ 1. Apparatus claims 1 and 16 are independent. Claim 1 is illustrative of
the claims on appeal and, is reproduced below.
1. A catheter comprising:
a catheter body comprising:
an inner liner;
a generally tubular outer jacket; and
a structural support member positioned under the
outer jacket and around the inner liner, the structural support
member comprising a monolithic proximal polymer hypotube
and a distal braided or coil member that is more flexible than
the monolithic proximal polymer hypotube, wherein the
monolithic proximal polymer hypotube ends proximal to a
proximal end of the distal braided or coil member and the distal
braided or coil member is longitudinally adjacent to the
monolithic proximal polymer hypotube, and wherein the
monolithic proximal polymer hypotube extends along 20% to
50% of a total length of the catheter body.
EVIDENCE
Name Reference Date
Musbach et al.
(“Musbach”)
US 2007/0135763 A1 June 14, 2007
Van Liere US 2016/0271362 A1 Sept. 22, 2016
Lim et al. (“Lim”) US 2017/0072163 A1 Mar. 16, 2017
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Application 14/885,710

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REJECTIONS
Claims 1–4, 6, 7, 10, 12, 15, 26, and 27 are rejected under 35 U.S.C.
§ 103 as unpatentable over Lim and Van Liere.
Claims 13, 14, 16, 19, and 20 are rejected under 35 U.S.C. § 103 as
unpatentable over Lim, Van Liere, and Musbach.
ANALYSIS
The rejection of claims 1–4, 6, 7, 10, 12, 15, 26, and 27
as unpatentable over Lim and Van Liere
Independent claim 1 (and hence dependent claims 2–4, 6, 7, 10, 12,
15, 26 and 27) recites a catheter body comprising both a hypotube and a
braided or coil member. Claim 1 additionally recites the hypotube and the
braided or coil member being “longitudinally adjacent” each other. Claim 1
further recites that the hypotube “extends along 20% to 50% of a total length
of the catheter body.”
The Examiner primarily relies on Lim for teaching the limitations of
claim 1, but acknowledges, “Lim et al. do not explicitly teach the extent of
the hypotube.”2 Final Act. 2. The Examiner relies on Van Liere for
“specifically including values between 20%-50%.” Final Act. 3 (referencing
Van Liere ¶¶ 2, 47); see also Ans. 3. Thereafter, the Examiner finds that it
would have been obvious to have Lim’s “hypotube 113 extend 20%–50% of

2 Although the Examiner finds that Lim does not explicitly teach this recited
range, the Examiner finds that Lim teaches a need “to balance rigidity,
stiffness, and flexibility” of the catheter. Final Act. 2–3 (referencing Lim
¶ 2); see also Ans. 3. The Examiner also finds that Lim’s corresponding
hypotube 113 and braided or coil member 170 each have the ability to
extend along all or only a portion of the catheter. Final Act. 3 (referencing
Lim ¶¶ 22, 33, 51, 54); see also Ans. 3, 4.
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Application 14/885,710

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the length of the catheter” because “Lim et al. specifically teaches adjusting
and balancing the rigidity, stiffness, and flexibility and that the length of
member 113 can be altered and extend only partially along the length of
[the] catheter.” Final Act. 3; see also Ans. 3, 4. Additionally, the Examiner
finds that “as Van Liere teaches the stiffness can be varied by varying the
length of the reinforcing portion [by] various percentages along the length”
of the catheter, it would have been obvious to do so since “it has been held
that where the general conditions of a claim are disclosed in the prior art,
discovering the optimum or workable ranges involves only routine skill in
the art.” Final Act. 3 (referencing “In re Aller, 105 USPQ 233”).
Appellant replicates Paragraph 47 of Van Liere. See Appeal Br. 7.
Appellant contends that Van Liere “does not disclose or suggest” this “20%
to 50%” range because a skilled person would have understood Van Liere’s
explicit range disclosure to be applicable only to its disclosed reinforcing
members 210L, and not another’s reinforcing members (i.e., Lim’s 113).3
Appeal Br. 7–8; see also Reply Br. 2–4. Indeed, Van Liere’s disclosed
range is presented with respect to its reinforcing members 210L, but
Paragraph 2 of Van Liere (relied on by the Examiner above) discusses
adjusting “longitudinal and torsional stiffness” of the catheter and that this
can be accomplished by adjusting the extent of Van Liere’s stiffeners 210L.

3 “A person having ordinary skill in the art would not have understood the
lengths Van Liere describes with respect to the ‘luminally facing
crescent-shaped ribbon or crescent ribbons 210L’ to be applicable to any or
all reinforcement members, but rather would have understood the lengths
described in paragraph [0047] of Van Liere as applying specifically to
‘luminally facing crescent-shaped ribbon or crescent ribbons 210L,’ whether
straight or braided.” Appeal Br. 7–8; see also id. at 9.
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Paragraph 2 of Lim (also relied on by the Examiner above) additionally
discloses a desire to adjust catheter stiffness and Appellant does not explain
how Van Liere’s teaching of employing different length percentages so as to
vary a catheter stiffness as desired is not equally applicable to Lim’s
stiffeners 113. As indicated, both Lim and Van Liere teach that the length of
their respective stiffener affects the stiffness of the catheter. See Lim ¶¶ 2,
22, 23; Van Liere ¶¶ 2, 46–48. Thus, there is support for the understanding
that stiffener length is a result-effective variable which affects the overall
stiffness of the catheter. As such, we agree with the Examiner’s conclusion
that “it has been held that where the general conditions of a claim are
disclosed in the prior art, discovering the optimum or workable ranges
involves only routine skill in the art.” Final Act. 3. Appellant’s contentions
to the contrary (see Appeal Br. 7–9; Reply Br. 4) are not persuasive of
Examiner error.
Appellant additionally contends that “the Examiner failed to establish
that Lim in view of Van Liere discloses or suggests a catheter that includes”
the claim 1 limitation “wherein the distal braided or coil member is
longitudinally adjacent to the monolithic proximal polymer hypotube.”
Appeal Br. 9 (emphasis added); see also Reply Br. 4. This is because “Lim
shows and describes the coil 170 as overlying the second layer 113 in a
radially outward position.” Appeal Br. 9. In other words, “Lim never
describes or illustrates the coil 170 as longitudinally adjacent to the second
layer 113.” Appeal Br. 9–10.
The Examiner disagrees, stating, “Lim further teaches layers which
may or may not be coextensive depending on the various lengths and desired
characteristics ([0022], [0031], [0033], [0038]).” Ans. 4. “While illustrated
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embodiments of Lim may show the coil overlapping layer 113,” it is also
clear that “Lim explicitly teaches altering the lengths of these members to
achieve the desired stiffness characteristics.” Ans. 4. Hence, according to
the Examiner, “[i]n such a situation if the hypotube layer [113] is stopping
before the coil [170] begins, again because the length of both can be altered
and the coil can be found only at the distal tip, the coil would not overlie
layer 113 and because the layers are not overlapping they would be
longitudinally adjacent.” Ans. 5.
Appellant replies stating “Lim does not disclose any configuration in
which the second layer 113 ends proximal to a proximal end of the coil 170
and in which the coil 170 is longitudinally adjacent to the second layer 113”
as recited. Reply Br. 5. Because of such silence, according to Appellant, the
Examiner’s assertion “amounts to pure speculation” and that “the Examiner
is using Appellant’s claims as a roadmap.” Reply Br. 5.
There is no doubt that Lim teaches that the extent of hypotube 113
and coil 170 along Lim’s catheter may vary. See Lim ¶¶ 22, 23, 31, 33, 38,
51, 54. There is also no doubt that Lim discloses, in all its figures, that the
two overlap each other, and are never illustrated as being longitudinally
aligned with each other. In fact, in those figures where portions of the
catheter exist where either the hypotube or the coil do not over/under lie the
other, the Figures still do not have them “longitudinally adjacent” as recited.
See Lim Figs. 3, 4. Instead, for example, in Figures 3 and 4 of Lim, the
hypotube and the coil remain concentric to each other, with other material
inserted between them rather than the hypotube or the coil undergoing a
change in diameter (i.e., being ‘stepped’) so as to become “longitudinally
adjacent,” as expressed by the Examiner.
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Application 14/885,710

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We have been instructed that while an apparatus “may be capable of
being modified,” “there must be a suggestion or motivation in the reference
to do so.” In re Mills, 916 F.2d 680, 682 (Fed. Cir. 1990). See also In re
Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984) (“The mere fact that the prior
art could be so modified would not have made the modification obvious
unless the prior art suggested the desirability of the modification.”). Here,
the recited modification (i.e., the diameter of the hypotube and/or the coil
changing to be “longitudinally adjacent”) is not disclosed in Lim, but
regardless, the Examiner finds that Lim may be configured as such.
We have also been instructed that the Patent Office “has the initial
duty of supplying the factual basis for its rejection” and “may not, because it
may doubt that the invention is patentable, resort to speculation, unfounded
assumptions or hindsight reconstruction to supply deficiencies in its factual
basis.” In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). The Supreme
Court has also required that “there must be some articulated reason with
some rational underpinning to support the legal conclusion of obviousness.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Instead, it appears
the Examiner has, as per Appellant, relied on “speculation” and that “the
Examiner is using Appellant’s claims as a roadmap.” Reply Br. 5.
Accordingly, and based on the record presented, we are not persuaded
the Examiner has established that the combination of Lim and Van Liere
would have rendered obvious the limitation of the hypotube and the coil
being “longitudinally adjacent.” We reverse the Examiner’s rejection of
claims 1–4, 6, 7, 10, 12, 15, 26, and 27.
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Application 14/885,710

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The rejection of claims 13, 14, 16, 19, and 20
as unpatentable over Lim, Van Liere, and Musbach
For each rejection (see Final Act. 4, claims 13 and 14 depend from
claim 1, whereas claims 19 and 20 depend from claim 16), the Examiner
relies on Lim for disclosing the “longitudinally adjacent” limitation. See
Final Act. 4, 5. The additional reference to Musbach is not relied on by the
Examiner to cure the deficiency addressed above. Thus, for the same
reasons previously expressed, we do not sustain the Examiner’s rejection of
these claims. Accordingly, we reverse the Examiner’s rejections of claims
13, 14, 16, 19, and 20 as unpatentable over Lim, Van Liere, and Musbach.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–4, 6, 7,
10, 12, 15,
26, 27
103 Lim, Van Liere 1–4, 6, 7, 10,
12, 15, 26, 27
13, 14, 16,
19, 20
103 Lim, Van Liere,
Musbach
13, 14, 16, 19,
20
Overall
Outcome
1–4, 6, 7, 10,
12–16, 19, 20,
26, 27

REVERSED