Dan Rottenberg et al.

Patent Trials and Appeals Board

Feb 18, 2021

2020002040 (P.T.A.B. Feb. 18, 2021)

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.
13/390,140 02/13/2012 Dan Rottenberg 2011P02937US05 4452
24737 7590 02/18/2021
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus Avenue
Suite 340
Valhalla, NY 10595
EXAMINER
ALEMAN, SARAH WEBB
ART UNIT PAPER NUMBER
3771
NOTIFICATION DATE DELIVERY MODE
02/18/2021 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):
katelyn.mulroy@philips.com
marianne.fox@philips.com
patti.demichele@Philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DAN ROTTENBERG and RON SACHER
____________

Appeal 2020-002040
Application 13/390,140
Technology Center 3700
____________

Before ANTON W. FETTING, CYNTHIA L. MURPHY, and
AMEE A. SHAH, Administrative Patent Judges.

SHAH, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Examiner’s final decision to reject claims 1 and 5–11, which are all of the
pending claims. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as “THE
SPECTRANETICS CORPORATION” which is a subsidiary of
“KONINKLIJKE PHILIPS N.V.” Appeal Br. 2. We also note previous
Board decisions mailed August 7, 2017 (affirming the Examiner’s rejection)
and November 15, 2017 (reversing on rehearing).
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Application 13/390,140

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CLAIMED SUBJECT MATTER
The Appellant’s “invention is directed to a hypotube support catheter
with a shapeable tip, such as for treating BTK [below the knee], coronary,
pediatric and other small blood vessels, from both antegrade and retrograde
approaches.” Spec. 3.
Claim 1 is the only independent claim on appeal, is representative of
the subject matter on appeal, and is reproduced below (with added
paragraphing and bracketing for reference):
1. A support catheter comprising:
[(a)] a hypotube comprising an inner lumen, a distal tip
and a longitudinal axis;
[(b)] wherein said hypotube is formed with a plurality of
intermittent cuts and uncut portions located at at least four
consecutive axial stations along said hypotube,
[(c)] wherein at each of the at least four consecutive axial
stations, a pair of cuts are separated by a pair of uncut portions,
[(d)] wherein the pair of cuts and the pair of uncut portions
subtend a full 360° circle around a periphery of said hypotube
perpendicular to the longitudinal axis such that each cut subtends
120° and each uncut portion subtends 60°,
[(e)] wherein each of the at least four consecutive adjacent
axial stations are spaced by an axial increment,
[(f)] wherein the pair of cuts and the pair of uncut portions
at three of the least four consecutive axial stations are
consecutively phase shifted 45° with respect to the pair of cuts
and pair of uncut portions of another of the least four consecutive
axial stations.
Appeal Br., Claims App.

Appeal 2020-002040
Application 13/390,140

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REFERENCES
The prior art references relied upon by the Examiner are:
Name Reference Date
Jacobsen et al. (“Jacobsen”) US 6,428,489 B1 Aug. 6, 2002
Fahey et al. (“Fahey”) US 2006/0100687 Al May 11, 2006

THE REJECTION
Claims 1 and 5–11 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Fahey and Jacobsen.

OPINION
We agree with the Appellant’s contention that the Examiner’s
rejection under 35 U.S.C. § 103 of independent claim 1 is in error because
the Examiner has not adequately shown how the combination of Fahey and
Jacobsen teaches or renders obvious limitation (f) of the claim reciting that
the pair of cuts and pair of uncut portions (“pairs”) at three of four
consecutive axial stations are consecutively phase shifted 45° relative to the
pairs of another of the four consecutive axial stations. See Appeal Br. 7–9;
Reply Br. 2–5.
The Examiner finds, in relevant part, that Fahey teaches a hypotube
comprising intermittent cuts about the circumference, with “[t]he cuts (25)
. . . spaced by uncut portions (struts 20) at at least four ‘axial stations’ along
the length of the hypotube.” Ans. 3 (citing Fahey, Figs. 7, 10–14, and 17).
The Examiner interprets Fahey’s arrangement of two spiral cuts interrupted
by solid struts on each spiral revolution as the claimed pairs at an axial
station. See id. at 2–3. The Examiner further finds that Fahey teaches the
staggering of the struts (uncut portions 20) around the circumference of the
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hypotube to “provide flexibility in all directions” and that “[t]wo
consecutive axial stations are phase shifted relative to one another generally
the same distance/angle as another two consecutive axial stations, so that
three consecutive axial stations have generally the same degree of phase
shift,” which Fahey shows as an acute angle, as the Examiner illustrates in
an annotated depiction of Figure 11 (reproduced below). Ans. 5, 10 (citing
Fahey ¶ 65).

The Examiner’s annotated Figure 11 of Fahey depicting phase shifts
of the consecutive axial stations.
The Examiner finds that “Fahey merely fails to specify that the phase
shift is 45 degrees,” for which the Examiner relies on Jacobsen. Ans. 6; see
also Ans. 10–11. The Examiner is clear that “Fahey is the primary reference
and is relied upon for disclosing the structure of four or more consecutive
axial stations of cut/uncut portions phase shifted relative to one another.” Id.
at 9–10. Referring to the annotated version of Fahey’s Figure 11, the
Examiner finds that it is “clear . . . that two consecutive axial stations may
be phase shifted relative to one another generally the same distance/angle as
another two consecutive axial stations, so that three consecutive axial
stations have generally the same degree of phase shift.” Id. at 10.
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The Examiner further finds “Jacobsen also discloses a phase shift
between adjacent pairs of cuts/uncut portions, or axial stations.” Id. at 6.
Directing attention to Jacobsen’s Figures 19 and 20, the Examiner finds that
Jacobsen teaches “a first pair of uncut portions (546A) are phase shifted
45 degrees relative to another pair of uncut portions (546C)” and “that a
suitable amount of phase shift between a ‘first cut set 560’ and an adjacent
‘second cut set 562’ is 45 degrees.” Id. (citing Jacobsen, col. 16, ll. 8–20).
The Examiner finds Jacobsen teaches that the phase shift angle is a result-
effective variable that “is selected to facilitate torque transmission while also
facilitating bending,” and that “minimizes preferred bending directions of
the hypotube that give rise to undesirable effects such as ‘whip’ or deviation
of expected rotation based on user rotational input at the proximal end of the
device.” Id. (citing Jacobsen, col. 13, ll. 29–61, col. 15, l. 65–col. 16, l. 7).
The Examiner determines
It would have been obvious to one having ordinary skill in the art
at the time the invention was made to configure the phase shift
angle between three of the at least four consecutive axial stations
of Fahey to be 45 degrees, for the purpose of achieving optimal
torque transmission and flexibility of the hypotube for a
particular application, as taught by Jacobsen, 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. In re Aller, 105 USPQ 233.
Id. at 6–7.
In other words, the Examiner relies on Fahey for teaching that the
three consecutive stations are phase-shifted at the same angle, on Jacobsen
for teaching that that angle is 45°, and determines it would have been
obvious to change Fahey’s phase-shift angle to be 45° (1) to achieve optimal
torque transmission and flexibility for a particular application and (2) as a
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matter of routine optimization because the numerical value of the angle is a
result-effective variable.
The Examiner’s finding that Fahey discloses three consecutive axial
stations consecutively phase shifted is supported. See Fahey, Figs. 10–13.
Although Fahey does not specifically disclose that the stations are phase
shifted at the same angle, a preponderance of the evidence supports the
Examiner’s finding that Fahey’s figures would reasonably disclose and
suggest to one of ordinary skill in the art that the shifts can occur at the same
angle. And we note that although the Appellant appears to disagree (see
Reply Br. 2), the Appellant provides no substantive reasoning or argument
why one of ordinary skill in the art would not understand Fahey’s figures to
show phase shifts occurring at the same angle.
However, we are persuaded of Examiner error by the Appellant’s
argument that the Examiner does not provide adequate reasoning why or
how one of ordinary skill in the art would modify Fahey’s phase shifting of
consecutive stations with Jacobsen’s teaching of phase shifting at a 45°
angle. See Reply Br. 3–6.
Jacobsen teaches a hypotube micromachined “to create a structure
which maximizes torque transmission while minimizing resistance to
bending.” Jacobsen, col. 13, ll. 29–33. The hypotube has slot-like cuts
formed therein with “two cuts . . . made from opposite sides of the tubing at
the same location along the longitudinal axis of the tubing” and segments on
uncut tubing (“beams”) between the cuts. Id. at col. 13, ll. 33–41. The
beams “carry forces across the cut area at that location along the longitudinal
axis . . . of the tubing.” Id. at col. 13, ll. 41–47. “When a pair of opposed
cuts 550 is made adjacent to the cuts previously described (544) the location
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of the cuts is made such that the axial beam(s) 546A formed by the second
set of cuts is displaced circumferentially from the adjacent axial beam(s)
546” by “rotation of the tube relative to the saw used to cut the tubing
through some angle before cutting.” Id. at col. 13, ll. 47–53. “The amount
of rotation is selected with each successive cut to give a pattern calculated
to facilitate torque transmission while also facilitating bending of the tube
after machining.” Id. at col. 13, ll. 54–57 (emphasis added). Matching the
strain in the axial and transverse beams to maximize torque transmission
“can be done in tubing of constant cross section by variation of several
parameters, namely the location (spacing 555 between), width 556, and
depth 558 of cuts ( e.g. 544, 550) made,” and by “using incrementally
changing parameters to optimize the design.” Id. at col. 14, ll. 4–27. The
object of “the distribution of the orientation of adjacent cut pairs giving rise
to the axial beams 546 left after the cuts” is to “provide a distribution of cut
orientations along the length of the tubing that minimizes ‘preferred’
bending directions of the micromachined tubing 514 giving rise to
undesirable effects collectively referred to as ‘whip.’” Id. at col. 15, l. 65–
col. 16, l. 5.
With reference to FIG. 22, one way of organizing the cut
distribution to minimize whip is to assume a first cut pair of
opposed cuts (180 degrees apart) and a second pair of opposed
cuts immediately adjacent will be offset by an angle of ninety
degrees. Collectively the four cuts will be referred to as a first
cut set 560. A second cut set 562 of adjacent opposed cuts
oriented ninety degrees apart is subsequently made, these being
oriented with respect to the first cut set (designated arbitrarily as
oriented at 0 degrees) so as to be rotated 45 degrees. The next
similar cut set 564 is oriented at 22.5 degrees, and the next at
67.5 degrees, and so on in accordance with the distribution
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graphically illustrated in the figure. The sequence repeats every
64 cut sets (128 opposed cuts, and 256 cuts in total).
Id. at col. 16, ll. 9–22.
Thus, Jacobsen teaches having a first axial station with a consecutive
second axial station phase shifted at 45° from the first station, a consecutive
third axial station phase shifted 22.5° from the second station, a consecutive
fourth axial station phase shifted 45° from the third station, and so on,
alternating between phase shift angles of 45° and 25°. See id. Fig. 22.
Jacobsen makes clear it is this pattern of cuts that facilitates torque
transmission and bending of the tube, i.e., alternating angles, as opposed to a
specific angle value of 45°. See id. at col. 13, ll. 54–57, Fig. 22. As such, it
is not apparent how modifying Fahey’s phase shifting angle to be 45° would
achieve optimal torque transmission and flexibility. Jacobsen also makes
clear that it is the parameters of the width of, depth of, and spacing between
cuts that are optimized for matching the strain in the axial and transverse
beams to maximize torque transmission, and that it is the pattern of phase-
shifting adjacent axial stations at alternating angles that reduces undesirable
“whip” effects. See id. at col. 14, ll. 4–27, col. 16, ll. 9–22. It is not
apparent that Jacob’s phase shift angle is a result-effective variable such that
it would be a matter of routine optimization to have that angle by any
numerical value.
Accordingly, based on the record before us, we do not sustain the
rejection under 35 U.S.C. § 103(a) of independent claim 1 and dependent
claims 5–11.

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CONCLUSION
The Examiner’s decision to reject claims 1 and 5–11 under 35 U.S.C.
§ 103 is reversed.
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 5–11 103 Fahey, Jacobsen 1, 5–11

REVERSED