Ex Parte Barker

Patent Trial and Appeal Board

May 19, 2016

13038929 (P.T.A.B. May. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/038,929 03/02/2011
50638 7590 05/19/2016
Boston Scientific Neuromodulation Corp.
c/o Lowe Graham Jones
701 Fifth Avenue
Suite 4800
Seattle, WA 98104
FIRST NAMED INVENTOR
John Michael Barker
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
BSNC-1-182.1 9801
EXAMINER
TON, MARTIN TRUYEN
ART UNIT PAPER NUMBER
3731
MAILDATE DELIVERY MODE
05/19/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN MICHAEL BARKER
Appeal2014-003591
Application 13/038,929
Technology Center 3700
Before LINDA E. HORNER, ERIC C. JESCHKE, and
GORDON D. KINDER, Administrative Patent Judges.
JESCHKE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
John Michael Barker (Appellant) seeks review, under 35 U.S.C.
§ 134(a), of the Examiner's decision to reject claims 1-7 and 9-21. We
have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
BACKGROUND
The disclosed subject matter "is directed to the area of implantable
electrical stimulation systems and methods of making and using the
systems." Spec. 1, 11. 9-10. Claim 1, the sole independent claim, is
reproduced below, with emphasis added:
Appeal2014-003591
Application 13/038,929
1. A lead introducer comprising:
a multi-piece insertion needle comprising
an outer insertion needle comprising a
proximal hub and defining an open channel
that extends along an entire length of the
outer insertion needle and the proximal hub,
and
an inner insertion needle comprising a
proximal hub and defining a lumen that
extends from the proximal hub along the
inner insertion needle, the inner insertion
needle configured and arranged for insertion
into the open channel of the outer insertion
needle; and
a splitable member comprising a proximal
hub and defining a lumen configured and arranged
for receiving at least a portion of the multi-piece
insertion needle, the splitable member comprising
at least two pull-apart tabs disposed on
the proximal hub of the splitable member,
and
at least one weakened region
extending along at least a portion of a length
of the splitable member from between the at
least two pull-apart tabs, the at least one
weakened region configured and arranged for
separating when the at least two pull-apart
tabs are pulled apart from one another in
directions approximately orthogonal to the
splitable member.
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Appeal2014-003591
Application 13/038,929
REJECTIONS ON APPEAL
1. Claims 1, 4--7, and 21 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Kraus (US 6,641,564 Bl, issued Nov. 4, 2003) and
Windheuser (US 6,869,416 B2, issued Mar. 22, 2005).
2. Claims 2 and 3 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Kraus, Windheuser, and Pohndorf (US 4,512,351, issued
Apr. 23, 1985).
3. Claims 9-16 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Kraus, Windheuser, and Gerber (US 2008/0103570 Al,
published May 1, 2008).
4. Claims 17-20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Kraus, Windheuser, Pohndorf, and Gerber.
DISCUSSION
Rejection I -The rejection of claims 1, 4-7,
and 21under35U.S.C.§103(a)
Independent claim 1 recites, inter alia, "an outer insertion needle
comprising a proximal hub and defining an open channel that extends along
an entire length of the outer insertion needle and the proximal hub." Appeal
Br. 14 (Claims App.) (emphasis added). In rejecting claim 1, the Examiner
found that Kraus disclosed various recited limitations but did not disclose
the limitation at issue, shown with emphasis above. Final Act. 4 (dated Apr.
30, 2013). The Examiner stated, however, that Windheuser "teaches an
insertion catheter having an open channel that may extend along []the length
of the outer insertion needle." Id. (citing Windheuser, Figs. 1, 1 C (element
42)); see also id. at 5 (stating that Windheuser teaches "a channel
extend[ing] through the entirety of the needle length").
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Appeal2014-003591
Application 13/038,929
For the reasons argued by Appellant (Appeal Br. 8-10; Reply Br.
4--5), we agree that Windheuser does not disclose the limitation at issue.
The record does not support the Examiner's contrary findings as set forth in
the Final Office Action. See Final Act. 4, 5.
In the Answer, the Examiner "clarif1ies]" the rejection as proposing to
"modify the outer needle of [Kraus] with the U-shaped channel of
[Windheuser]." Ans. 2. The Examiner states that it would have been
obvious "to modify the outer insertion needle of [Kraus] with the U-shaped
channel of []Windheuser to allow for unhindered movement of the inner
insertion needle into and out of the outer insertion needle." Id. at 2-3 (citing
Windheuser, col. 5, 11. 28--44). The Examiner also states:
Although [Windheuser] teaches a preferred embodiment of the
catheter wherein the channel only extends along a portion of the
length of the catheter, the Examiner asserts that it would be
obvious to try multiple positions and channel lengths for the U-
shaped channel with a reasonable expectation of success,
\'I/herein of the multiple positions and lengths, one having
ordinary skill in the art would find advantages to having the open
channel extend along the entire length of the outer insertion
needle, including the proximal hub. Specifically, since the Kraus
reference requires that the inner needle passes through the entire
length of the outer needle, it would therein be obvious to provide
the U-shaped channel along the entire length of the outer needle
to accommodate the inner needle.
Id. at 3.
Rejections based on obviousness must be supported by "some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness." In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006),
cited with approval in KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007). On the record here, the Examiner has not provided adequate
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Appeal2014-003591
Application 13/038,929
articulated reasoning to modify the combination of Kraus and Windheuser as
proposed (i.e., to extend the channel from Windheuser to span the "entire
length of the outer insertion needle and the proximal hub" of Kraus) to
support the legal conclusion of obviousness.
First, as to the Examiner's statement that the proposed modification
would "allow for unhindered movement of the inner insertion needle into
and out of the outer insertion needle" (Ans. 3), we agree with Appellant that
"[t]he dilator 120 (outer insertion needle) of Kraus already allows for
unhindered movement of the needle 300 (inner insertion needle) into and out
of the dilator 120 (outer insertion needle)." Reply Br. 7 (citing Kraus, col. 9,
11. 4--26). Further, the passage from Windheuser cited (Ans. 3 (citing
Windheuser, col. 5, 11. 28--44)) does not support the Examiner's position
because that passage relates to the "unhindered" movement of guidewire 3 6
out of channel 42 (Windheuser, col. 5, 11. 34--36), whereas the reasoning
relates to the "unhindered movement of the inner insertion needle into and
out of the outer insertion needle." Ans. 3.
Second, the Examiner has not adequately set forth the purported
"advantages to having the open channel extend along the entire length of the
outer insertion needle, including the proximal hub." Ans. 3. To the extent
the Examiner takes the position that "provid[ing] the U-shaped channel
along the entire length of the outer needle" provides the "advantage" of
being able to "accommodate the inner needle" (id.), we agree with Appellant
that "there is no motivation to one of skill in the art to modify the device of
Kraus to enable a feature that i[s] already present in the device of Kraus."
Reply Br. 12. Here, the identified "outer insertion needle" (dilator 120 of
Kraus) already accommodates the identified "inner insertion needle" (needle
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Appeal2014-003591
Application 13/038,929
300) prior to modification. See id. (citing Kraus, col. 4, 11. 28--40, col. 9,
11. 4--26).
For these reasons, we do not sustain the rejection of claim 1, or the
rejection of claims 4--7 and 21, which depend from claim 1.
Rejections 2--4-The rejection of claim 2, 3, and 9-20
under 35 U.S.C. § 103(a)
Claims 2, 3, and 9-20 all include limitations from claim 1. Appeal
Br. 14--18 (Claims App.). The Examiner's reliance on Pohndorf (Rejections
2 and 4) and Gerber (Rejections 3 and 4) does not remedy the deficiencies in
the combined teachings of Kraus and Windheuser, discussed above (see
supra Rejection 1 ). Thus, for the same reasons discussed above, we also do
not sustain the rejection of claims 2, 3, and 9-20.
DECISION
We REVERSE the decision to reject claims 1-7 and 9-21 under
35 U.S.C. § 103(a).
REVERSED
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