Ex parte Avitall

Board of Patent Appeals and Interferences

Apr 13, 2000

08482674 (B.P.A.I. Apr. 13, 2000)

Independent claim 38 was amended subsequent to the final rejection. 1
See Paper No. 9.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is
not binding precedent of the Board.
Paper No. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte BOAZ AVITALL
_____________
Appeal No. 1998-1045
Application 08/482,674
______________
ON BRIEF
_______________
Before ABRAMS, STAAB, and GONZALES, Administrative Patent
Judges.
GONZALES, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner's final
rejection of claims 38 through 46, which are all of the claims
in the application.1
Appeal No. 1998-1045
Application 08/482,674
2
We REVERSE.
The subject matter on appeal is directed to a catheter
tip control system. Claim 38, the only independent claim, is
illustrative of the subject matter on appeal and is reproduced
in the “Appendix” attached to the brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Narula 4,882,777 Nov. 21,
1989
Jackowski 4,920,980 May 1,
1990
Takahashi 5,014,685 May
14, 1991
Gould et al. (Gould) 5,055,109 Oct. 8,
1991
Claims 38, 39 and 44 through 46 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Gould in view of
Jackowski.
Claim 40 stands rejected under 35 U.S.C. § 103(a) as
being unpatentable over Gould in view of Jackowski, as applied
above to claim 38, and further in view of Narula.
Claims 41 through 43 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over Gould in view of Jackowski,
Appeal No. 1998-1045
Application 08/482,674
3
as applied above to claim 38, and further in view of
Takahashi.
The full text of the examiner's rejections and the
response to the arguments presented by appellant appear in the
final rejection (Paper No. 8, mailed July 30, 1996) and the
answer (Paper No. 14, mailed April 7, 1997), while the
complete statement of appellant’s arguments can be found in
the main and reply briefs (Paper Nos. 13 and 15, filed January
13, 1997 and June 11, 1997, respectively).
OPINION
In reaching our decision in this appeal, we have given
careful consideration to appellant’s specification and claims,
to the applied prior art references, and to the respective
positions articulated by appellant and the examiner. As a
consequence of our review, we conclude that the rejections
cannot be sustained.
In rejecting claims under 35 U.S.C. § 103, the examiner
bears the initial burden of presenting a prima facie case of
obviousness. See In re Rijckaert, 9 F.3d 1531, 1532, 28
USPQ2d 1955, 1956 (Fed. Cir. 1993). A prima facie case of
Appeal No. 1998-1045
Application 08/482,674
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obviousness is established by presenting evidence that the
reference teachings would appear to be sufficient for one of
ordinary skill in the relevant art having the references
before him to make the proposed combination or other
modification. See In re Lintner, 458 F.2d 1013, 1016, 173
USPQ 560, 562 (CCPA 1972). Furthermore, the conclusion that
the claimed subject matter is prima facie obvious must be
supported by evidence, as shown by some objective teaching in
the prior art or by knowledge generally available to one of
ordinary skill in the art that would have led that individual
to combine the relevant teachings of the references to arrive
at the claimed invention. See In re Fine, 837 F.2d 1071,
1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). Rejections based
on
§ 103 must rest on a factual basis with these facts being
interpreted without hindsight reconstruction of the invention
from the prior art. The examiner may not, because of doubt
that the invention is patentable, resort to speculation,
unfounded assumption or hindsight reconstruction to supply
deficiencies in the factual basis for the rejection. See In
Appeal No. 1998-1045
Application 08/482,674
Technically, there is no antecedent basis for the language “the2
distal tip” and “said distal tip” in claims 38, 39, 40 and 44. For purposes
of our review, we consider the quoted language to read --the distal tip area--
and --said distal tip area--, respectively, as actually recited in claim 38,
lines 5 and 6. Correction of these informalities is in order upon return of
the application to the jurisdiction of the examiner.
5
re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967),
cert. denied, 389 U.S. 1057 (1968). Our reviewing court has
repeatedly cautioned against employing hindsight by using the
appellant's disclosure as a blueprint to reconstruct the
claimed invention from the isolated teachings of the prior
art. See, e.g., Grain Processing Corp. v. American
Maize-Products Co., 840 F.2d 902, 907, 5 USPQ2d 1788, 1792
(Fed. Cir. 1988).
Claim 38 recites a catheter tip control system comprising
a catheter having a highly flexible, tubular distal catheter
section extending from a main catheter tube and having a
central axis, a catheter wall and describing a distal catheter
lumen and having a flexible distal tip area to be precisely
maneuvered independent of the main catheter; a lateral
deflection control element for angularly displacing “said
distal tip" (claim 38, line 9) about the central axis2
threaded within the distal catheter lumen and having a distal
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Application 08/482,674
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end anchored to the catheter wall at or near the distal tip
area in such a manner that the application of rotational
torque to the lateral deflection control element produces a
corresponding displacement of the distal tip area in a plane
substantially parallel to the direction of the applied
rotational torque when the distal tip area is deflected from a
linear disposition; and means for applying rotational torque
to the lateral deflection control element.
With reference to Figure 1, Gould discloses a torque
transmitting assembly for guidewires, steerable fixed wire
catheters and the like including an outer tubular member 16, a
balloon 17 secured to the distal end thereof, an inner tubular
member 18, a core member 21 extending through an inner lumen
22 of the inner tubular member, through the interior of
balloon 17 and out the distal end thereof with a flexible coil
tip 23 disposed about and secured to the portion of the core
member 21 which extends out the distal end of the balloon.
See col. 2, line 67 through col. 3, line 4. The proximal end
30 of core member 21 is fixed to a pinion gear 25 which is
driven by a ring gear 24 formed within a rotatable housing 14.
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Application 08/482,674
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See Figures 2 and 5. Rotation of the housing 14 and the ring
gear 24 causes the rotation of the pinion gear 25 and the core
member 21. The torque applied to the core member 21 is
transmitted to the distal tip of the guidewire or catheter.
See col. 5, lines 24-33.
Jackowski discloses a steerable suction/ablation catheter
10 including a tubular body 12 defining a lumen 14, a wire
member 16 loosely positioned in lumen 14, and a tubular
electrode 18 positioned adjacent the distal end 20 of the
catheter. The distal tip 24 of wire member 16 is hooked into
electrical contact with electrode 18 and soldered in place.
See col. 3, lines 33-41. Jackowski further discloses that end
portion 26 of wire member 16 is typically tapered and
flattened which helps to direct the tip portion 28 of catheter
10 into a predetermined direction of bending which is
generally perpendicular to the plane of flattened end 26.
Jackowski also teaches that “[a]ntirotation lock means may be
provided to prevent rotation of wire member 16 to avoid
spiraling or twisting thereof” (col. 3, lines 55-57). During
use, the catheter is inserted into a vein of the patient with
Appeal No. 1998-1045
Application 08/482,674
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distal end 28 being in a straight configuration. However,
when it is necessary for further advancement, wire member 16
is pulled relative to the rest of the catheter, to impose a
curved configuration upon distal end 28, as shown in phantom
lines in Fig. 2, with the degree of such curvature dependent
upon the distance that wire member 16 is pulled rearwardly
(id. at lines 58-66).
The examiner describes Gould as disclosing all of the
limitations of claim 38, except that the deflection control
element 21 of Gould is not anchored to the catheter wall
(final rejection, page 2). Jackowski is cited as teaching a
catheter having a deflection control element 16 anchored to
the catheter wall (id.). It is the examiner’s position that
[i]t would have been obvious, in view of Jackowski,
to anchor the deflection control element of Gould .
. . to the wall to better control the bending of the
distal tip. (Id.)
Appellant, on the other hand, argues (main brief, pages
10-13) that motivation is lacking for combining the teachings
of Gould and Jackowski along the lines of claim 38.
As both the examiner and appellant recognize, obviousness
cannot be established by combining the teachings of the prior
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Application 08/482,674
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art to produce the claimed invention, absent some teaching,
suggestion or incentive supporting the combination. The
extent to which such suggestion must be explicit in, or may be
fairly inferred from, the references, is decided on the facts
of each case, in light of the prior art and its relationship
to the appellant’s invention. As in all determinations under
35 U.S.C. § 103, the decision maker must bring judgment to
bear. It is impermissible, however, simply to engage in a
hindsight reconstruction of the claimed invention, using
appellant’s structure as a template and selecting elements
from references to fill the gaps. The references themselves
must provide some teaching whereby the appellant’s combination
would have been obvious. In re Gorman, 933 F.2d 982, 986, 18
USPQ2d 1885, 1888 (Fed. Cir. 1991) (citations omitted). That
is, something in the prior art as a whole must suggest the
desirability, and thus the obviousness, of making the
combination. See In re Beattie, 974 F.2d 1309, 1312, 24
USPQ2d 1040, 1042 (Fed. Cir. 1992); Lindemann Maschinenfabrik
GmbH v. American Hoist and Derrick Co., 730 F.2d 1452, 1462,
221 USPQ 481, 488 (Fed. Cir. 1984).
Appeal No. 1998-1045
Application 08/482,674
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After reviewing the combined teachings of the applied
prior art, we reach the conclusion that the subject matter of
claim 38 would not have been suggested to one of ordinary
skill in the art at the time the invention was made.
Specifically, we agree with the appellant that there is no
suggestion, motivation, or teaching in the prior art whereby
the person of ordinary skill would have been instructed to
attach the core member 21 of Gould to the catheter wall at or
near the distal tip area as opposed to the flexible coil or
coiled tip 23 explicitly taught by Gould absent the use of
impermissible hindsight. We note that claim 38 is concerned
with the anchoring of a torque transmitting member to the wall
of a catheter. However, Jackowski’s wire member 16 is clearly
not intended to be twisted or to serve as a torque
transmitting member. Further, while Jackowski does teach that
bending control can be achieved by a wire member 16 hooked
into electrical contact with an electrode 18 which is mounted
in the catheter wall, the reference provides no teaching or
suggestion that we can discern that improved bending control
of the catheter can be achieved by attaching the wire member
Appeal No. 1998-1045
Application 08/482,674
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to the catheter wall. It is well settled that an examiner
cannot establish obviousness by locating references which
describe various aspects of an applicant's invention without
also providing evidence of the motivating force which would
impel one skilled in the art to do what applicant has done.
See Ex parte Levengood, 28 USPQ2d 1300, 1302, (BPAI 1993).
Here, we find no persuasive evidence of such a motivating
force.
Since the examiner has not established a prima facie case
of obviousness with regard to the subject matter of
independent claim 38, the rejection of claim 38 and of claims
39 and 44 through 46, which depend from claim 38, under 35
U.S.C. § 103(a) over Gould in view of Jackowski will not be
sustained.
We have also reviewed the patent to Narula, applied along
with Gould and Jackowski against dependent claim 40, and the
patent to Takahashi, applied along with Gould and Jackowski
against dependent claims 41 through 43, but find nothing in
those references which would have made it obvious at the time
the invention was made to a person having ordinary skill in
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Application 08/482,674
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the art to have arrived at the claimed invention. Therefore,
we will also not sustain the standing 35 U.S.C. § 103
rejections of claims 40 through 43.
Appeal No. 1998-1045
Application 08/482,674
13
CONCLUSION
To summarize, the rejections of claims 38 through 46
under 35 U.S.C. § 103 are reversed.
REVERSED
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB )
Administrative Patent Judge ) APPEALS
AND
)
) INTERFERENCES
)
JOHN F. GONZALES )
Administrative Patent Judge )
Appeal No. 1998-1045
Application 08/482,674
14
CHARLES G. MERSERAU
HAUGEN & NIKOLAI
820 INTERNATIONAL CENTRE
900 SECOND AVENUE SOUTH
MINNEAPOLIS, MN 55402-3325
JFG/dal
Appeal No. 1998-1045
Application 08/482,674
1
APPENDIX
38. A catheter tip control system comprising:
(a) a catheter having a highly flexible, tubular distal
catheter section extending from a main catheter tube and
having a central axis, catheter wall and describing a distal
catheter lumen and having a flexible distal tip area to be
precisely maneuvered independent of said main catheter, said
control system further comprising:
(1) a lateral deflection control element for
angularly displacing said distal tip about said central
axis threaded within the distal catheter lumen and having
a distal end anchored to the catheter wall at or near the
distal tip of the distal catheter section in a manner
such that the application of rotational torque to the
lateral deflection control element produces a
corresponding displacement of the distal tip in a plane
substantially parallel to the direction of the applied
rotational torque when said distal tip is deflected from a
linear disposition; and
(2) means for applying rotational torque to the
lateral deflection control element.