Ex Parte Bell et al

Board of Patent Appeals and Interferences

Jun 23, 2010

10894992 (B.P.A.I. Jun. 23, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte BARBARA BELL, GEORGE BOURNE, RAYMOND LAREAU,
and KRISTIAN DIMATTEO
____________________

Appeal 2009-007805
Application 10/894,992
Technology Center 3700
____________________

Decided: June 24, 2010
____________________

Before JENNIFER D. BAHR, STEVEN D.A. McCARTHY and
FRED A. SILVERBERG, Administrative Patent Judges.

SILVERBERG, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Barbara Bell et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the final rejection of claims 1, 5, 15, 17, 18, 23-28, 30-32, 45, 46
and 49-54. We have jurisdiction under 35 U.S.C. § 6(b) (2002).

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SUMMARY OF DECISION
We REVERSE.

THE INVENTION
Appellants’ claimed invention is directed to a catheter for medical
procedures that is insertable into a body lumen (Spec. 2: para. [0005]).
Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A catheter for medical procedures
comprising:

a shaft portion having a distal end insertable
into a body lumen, the shaft portion including a
wall defining a working lumen extending
therewithin; and

a first strengthening element coupled to the
wall increasing a burst pressure of the shaft
portion, wherein the first strengthening element
cooperates with a base material of the wall to
define a flexible region of the shaft portion
allowing the shaft to be atraumatically inserted
into the body lumen, the wall being formed of a
first layer of material having a durometer value
greater than that of a material comprising a second
layer of the wall wherein the first layer forms the
first strengthening element and wherein an inner
surface of the first layer defines an outer surface of
the working lumen.

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THE REJECTIONS
The following rejections by the Examiner are before us for review:
1. Claims 1, 5, 15, 17, 18, 28, 30-32, 45, 46 and 49-51 are rejected under
35 U.S.C. § 102(b) as being anticipated by Corvi (US 5,879,499,
issued Mar. 9, 1999).
2. Claim 23 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Corvi in view of Pinchuk (US 4,906,244, issued Mar. 6, 1990).
3. Claims 24-27 and 52-54 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Corvi in view of Boucher (US 6,719,773 B1,
issued Apr. 13, 2004).

ISSUE
The issue before us is whether the Examiner erred in finding that
Corvi describes a wall having a first layer of material and a second layer of
material, wherein the first layer of material has a durometer value greater
than the second layer of material, as called for in independent claims 1, 28
and 45 (Reply Br. 3, 5; App. Br. 5-6).

ANALYSIS
Rejection of claims 1, 5, 15, 17, 18, 28, 30-32, 45, 46 and 49-51 under 35
U.S.C. § 102(b) as being anticipated by Corvi
Appellants contend that Corvi does not describe a first layer of wall
material having a durometer value greater than a second layer of wall
material, as called for in independent claims 1, 28 and 45 (Reply Br. 4-5;
App. Br. 5-6).
The Examiner found that Corvi describes a catheter wall comprising a
first layer and a second layer, wherein the first layer comprises element 207
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made of stainless steel and coating 209 made of a polymer (Ans. 5), and the
second layer comprises element 225 made of the same polymer as coating
209 (Ans. 5).
The Examiner concluded that a person of ordinary skill would
recognize that stainless steel is much harder than a polymer (Ans. 6).
The Examiner found that (1) in Corvi, layer 209 has a thickness
between 0.010-0.020 and layer 225 has a thickness between 0.001-0.003
(Ans. 6); and (2) that “[i]f two layers/elements [are] made [of the] same
material, the durometer/hardness can be judged by the thickness of the two
layers.” (Ans. 6). The Examiner concluded that a person having ordinary
skill in the art would recognize that first layer 207, 209 has a
durometer/hardness value greater than second layer 225 (Ans. 6).
Appellants contend that the durometer of a material is a measure of a
hardness of the material and is not related to a thickness of the material
(App. Br. 5). Appellants still further contend that in Corvi, “the mere fact
that the elongate member 207 and coating 209 have a combined greater
thickness than that of the layer 225 is in no way indicative of a difference in
durometer between these layers and in no way meets the limitations of claim
1.” (App. Br. 5) (Emphasis added).
Corvi describes a cannula 201 comprising an elongate member 207
coated with a coating 209, a lumen 215 and a layer 225 (col. 49, ll. 23-33;
col. 50, ll. 45-60 and col. 51, ll. 26-54; and Figs. 67-70), wherein the
elongate member 207 may be made of stainless steel (col. 49, ll. 40-43) and
the layer 225 is made of the same material as coating 209 (col. 51, ll. 48-51,
see also col. 49, ll. 44-54, and Figs. 69-70). Corvi further describes that
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elongate member 207 and coating 209 are fused together to form an
integrated structure (col. 50, ll. 26-44).
Independent claims 1, 28 and 45 call for, inter alia, a first layer of
material of a wall having a durometer value greater than the second layer of
material of the wall.
Lacking a formal definition of the term “layer” in the Specification,
we look to the dictionary to find the ordinary meaning of the word “layer.”
The ordinary meaning of the word “layer” includes “one thickness, course or
fold laid or lying over or under another.”1 A person having ordinary skill in
the art would understand that since Corvi’s elongate member 207 and
coating 209 are fused together to form an integrated structure (col. 50, ll. 26-
29), they form a single layer. This is consistent with Corvi’s description of
element 225 as being “another layer.” (col. 51, ll. 26-32).
Lacking a formal definition of the term “durometer value” in the
Specification, we look to the dictionary to provide us with the ordinary
meaning of the phrase “durometer value.” The ordinary meaning of the
word “durometer” includes “an instrument consisting of a small drill or blunt
indenter point under pressure; used to measure hardness of metals and other
materials.”2 The ordinary meaning of “durometer hardness” includes “the
hardness of a material as measured by a durometer.”3 The ordinary meaning
of the word “value” includes “a numerical quantity that is assigned or is

1 MERRIAM-WEBSTER’S COLLEGIATE DICTIONARY (10th ed. 1996).
2 MCGRAW-HILL ENCYCLOPEDIA OF SCIENCE AND TECHNOLOGY,
http://www.accessscience.com/overflow.aspx?searchStr=durometer&stype=
4 (last visited Mar. 26, 2010).
3 MCGRAW-HILL ENCYCLOPEDIA OF SCIENCE AND TECHNOLOGY,
http://www.accessscience.com/overflow.aspx?searchStr=durometer+hardnes
s&stype=4 (last visited Mar. 26, 2010).
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determined by calculation or measurement.”4 The ordinary meaning of the
word “hardness” is “the quality or state of being hard.”5 The ordinary
meaning of the word “hard” is “not easily penetrated.”6 A person having
ordinary skill in the art would understand the phrase “durometer value” as
being the “durometer hardness,” that is, the hardness of a material measured
by the penetration of a small drill or blunt indenter point under pressure into
the material.
We find that the thickness of a material does not affect the ability of
the small drill or blunt indenter point to penetrate a material. Thus, contrary
to the Examiner’s finding, we find that two elements made of the same
material, no matter how thick one element is relative to the other element,
would have the same durometer value.
Corvi is silent as to whether the material forming elongated element
207 has a durometer value greater than the material forming coating 209 and
layer 225, as found by the Examiner (Ans. 6). As such, it becomes
incumbent upon the Examiner to provide a basis in fact and/or technical
reasoning that would support a finding that the material forming elongated
element 207 has a durometer value greater than the material forming coating
209 and layer 225. It is speculative, at best, as to whether the material
forming elongated element 207 has a durometer value greater than the
material forming coating 209 and layer 225.7 Further, since Corvi’s

4 MERRIAM-WEBSTER’S COLLEGIATE DICTIONARY (10th ed. 1996).
5 Id.
6 Id.
7 See In re Oelrich, 666 F.2d 578, 581 (CCPA 1981) (quoting Hansgirg v.
Kemmer, 102 F.2d 212, 214 (CCPA 1939)) (“Inherency, however, may not
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elongated element is embedded in the coating 209 (Figs. 67-69), the
durometer value being measured would be the durometer value of the
coating 209. Since Corvi’s coating 209 and layer 225 are made of the same
material, Corvi’s first layer 207, 209 and second layer 225 would have the
same durometer value.
Therefore, Corvi does not describe a first layer of material having a
durometer value greater than a second layer of material, as called for in
independent claims 1, 28 and 45.
Accordingly, Corvi does not anticipate independent claims 1, 28 and
45. For the same reasons, Corvi does not anticipate claims 5, 15, 17, 18, 30-
32, 46 and 49-51, which depend from independent claims 1, 28 and 45,
respectively.

Rejection of claims 23-27 and 52-54 under 35 U.S.C. § 103(a) as being
unpatentable over Corvi in view of either Pinchuk or Boucher, supra
The Examiner has not relied on Pinchuk or Boucher for any teaching
that would remedy the deficiency in Corvi (Ans. 4). We thus conclude that
the Examiner also erred in rejecting claim 23 over the combined teachings of
Corvi in view of Pinchuk and claims 24-27 and 52-54 over the combined
teachings of Corvi in view of Boucher.

CONCLUSION
The Examiner has erred in finding that Corvi describes a wall having
a first layer of material and a second layer of material, wherein the first layer

be established by probabilities or possibilities. The mere fact that a certain
thing may result from a given set of circumstances is not sufficient.”).
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of material has a durometer value greater than the second layer of material,
as called for in independent claims 1, 28 and 45.

DECISION
The decision of the Examiner to reject claims 1, 5, 15, 17, 18, 23-28,
30-32, 45, 46 and 49-54 is reversed.

REVERSED

mls

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