Ex Parte Brightbill

Patent Trial and Appeal Board

Feb 15, 2013

10243381 (P.T.A.B. Feb. 15, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JERRY BRIGHTBILL
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Appeal 2010-007058
Application 10/243,381
Technology Center 3700
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Before STEFAN STAICOVICI, MICHELLE R. OSINSKI, and
BRADFORD E. KILE, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Jerry Brightbill (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision finally rejecting claims 1, 11, 31, and 32 under 35
U.S.C. § 103(a) as unpatentable over Ju (US 5,725,513, iss. Mar. 10, 1998)
and Pourrezaei (US 5,685,961, iss. Nov. 11, 1997) and over Pourrezaei and
Ju1. Claims 3-10, 12-27, 29, and 30 have been withdrawn and claims 2 and
28 have been canceled. We have jurisdiction over this appeal under 35
U.S.C. § 6.

THE INVENTION
Appellant’s invention relates to a “reinforced catheter [10] having a
non-filamentous, seamless metal tube [25] interposed between a polymeric
hollow core [20] and a polymeric outer jacket [30].” Spec. 2, para. [0006];
Spec. 3, para. [0015]; and fig. 1.
Claim 1 is illustrative of the claimed invention and reads as follows:
1. A reinforced catheter having proximal and distal ends,
the catheter comprising:
an elongate, flexible, polymeric, hollow tubular core
extending between the proximal and distal ends of the catheter;
the core having an outer surface with a tubular, seamless,
metallized layer formed directly and adherent thereon of
between 0.0005 and 0.002 inches thickness to define a
reinforcement layer to enhance the ability of the catheter to
transmit controllably to the distal end rotation applied to the
proximal end; the reinforcement layer extending from the
catheter proximal end to the catheter distal end and

1 The rejection of claims 1 and 32 under 35 U.S.C. § 112, second
paragraph, for being indefinite, has been withdrawn by the Examiner. Ans.
3.
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a flexible, polymeric jacket surrounding and fully
covering the reinforcement layer and extending from the
catheter proximal end to the catheter distal end.

SUMMARY OF DECISION
We REVERSE.

ANALYSIS
The obviousness rejection based upon Ju and Pourrezaei
The Examiner found that Ju discloses a reinforced catheter 12 having
a proximal end and a distal end and including a polymeric core 28, a tubular
reinforcement layer 30 or 38, and a flexible polymer jacket 32. Ans. 3 and
6; see also Ju, col. 4, l. 66 through col. 5, l. 4 and fig. 6. The Examiner
further found that, “Ju does not explicitly disclose the tubular metal
reinforcement layer electroplated or electroless plated or sputter coated or
vapor deposited.” Ans. 5. Thus, the Examiner turned to the teachings of
Pourrezaei to describe “a metal reinforcement layer [that is]
electroplated/sputter coated/electroless plated onto a polymeric core of a
catheter.” Id. (citing to Pourrezaei, col. 3, l. 46 through col. 4, l. 32; col. 12,
l. 48 through col. 13, l. 17; and col. 16, ll. 32-55). The Examiner concluded
that “it would [have been] obvious to one of ordinary skill in the art at the
time of the invention to modify the device of Ju with the teachings of
Pourrezaei in order to reinforce the catheter by filling in the cracks and to
help fight infection/rejection.” Id.
Appellant argues that, “[t]here is no evidence to support the posited
combination of Pourrezaei and Ju.” Br. 6. According to Appellant, “[t]here
is no demonstrated reason for selecting what is necessarily an externally
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exposed film of Pourrezaei and incorporating it into an internal, concealed
feature of another catheter where the film would be unable to perform its
intended function of resisting infection.” Id. In other words, Appellant
contends that the Examiner has not provided a rational underpinning for the
reasoning underlying the rejection of claims 1, 11, 31, and 32.
In response, the Examiner notes that:
[T]he Pourrezaei reference is not being used to teach the metal
reinforcement layer but rather teaching "electroplated or
electroless plated or sputter coated or vapor deposited" this
metal layer (metal reinforcement layer taught in Ju). Examiner
is using Pourrezaei to teach a method of applying the layer and
Ju to teach the metal reinforcement layer in the first place.

Ans. 14.
Without an articulated rationale based on rational underpinning for
modifying the reference as proposed, the Examiner's rejection appears to be
the result of hindsight analysis. See In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006) (cited with approval in KSR Int'l Co. v. Teleflex, Inc., 550 U.S.
398, 418 (2007)) ("rejections on obviousness grounds cannot be sustained by
mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness").
With respect to the Examiner’s first stated reasoning to combine the
teachings of Ju and Pourrezaei, i.e., “reinforce the catheter by filling in the
cracks,” we note that the Examiner has not provided any findings that Ju
recognized a problem with cracking of its tubular reinforcement layer 30 or
38. Thus, because Ju does not have a cracking problem of its tubular
reinforcement layer 30 or 38, we find the Examiner’s rejection insufficient
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to explain what in the prior art would have prompted a person having
ordinary skill in the art to electroplate/sputter coat/electroless plate Ju’s
internal tubular reinforcement layer 30 or 38 “in order to reinforce the
catheter by filling in the cracks,” as the Examiner proposes.
Regarding the Examiner’s second stated reasoning to combine the
teachings of Ju and Pourrezaei, i.e., “reinforce the catheter . . . to help fight
infection/rejection,” we note that Pourrezaei specifically discloses that
electroplating/sputter coating/electroless plating a metallic tubular
reinforcement layer on the exterior of a catheter inhibits or kills microbes “in
a region immediately adjacent to the catheter surface.” Pourrezaei, col. 5, ll.
35-36; col. 6, ll. 8-14; and fig. 1. As such, we agree with Appellant that in
order for the catheter of Ju as modified by Pourrezaei to be able to “fight
infection/rejection,” as the Examiner proposes, the electroplated/sputter
coated/electroless plated tubular reinforcement layer 30 or 38 would have to
be positioned on the exterior of the catheter and not between a polymeric
core and a polymeric jacket. See Br. 6. Hence, we find the Examiner’s
rejection insufficient to explain what in the prior art would have prompted a
person having ordinary skill in the art to electroplate/sputter coat/electroless
plate Ju’s internal tubular reinforcement layer 30 or 38.
In conclusion, the Examiner does not provide any support for the
allegation that electroplating, sputter coating or electroless plating, as taught
by Pourrezaei, of Ju’s internal tubular reinforcement layer 30 or 38, would
“reinforce the catheter by filling in the cracks and … help fight
infection/rejection.” Thus, absent hindsight, we fail to see why one having
ordinary skill in the art would have been led by the teachings of Pourrezaei
to modify the catheter of Ju in the manner claimed. As such, we cannot
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sustain the rejection of claims 1, 11, 31, and 32 under § 103(a) as
unpatentable over Ju and Pourrezaei.

The obviousness rejection based upon Pourrezaei and Ju
The Examiner found that Pourrezaei discloses all the limitations of
independent claims 1, 31, and 32 with the exception of a “flexible polymeric
jacket surrounding the reinforcement layer.” Ans. 9. The Examiner further
found that “[t]he Ju reference teaches a polymeric flexible jacket around a
metal layer.” Id. The Examiner concluded that, “it would be obvious to one
of ordinary skill in the art at the time of the invention to modify the device
of Pourrezaei with the teachings of Ju in order to provide a desired thickness
and ‘feel.’” Id. (citing to Ju, col. 5, ll. 3-29).
Appellant argues that if “a polymeric jacket were added to Pourrezaei
to cover the film, Pourrezaei would lose its anti-bacterial function and would
be inoperative for its intended purpose.” Br. 6.
It is well settled that where the proposed modification would render
the prior art invention being modified unsatisfactory for its intended
purpose, the proposed modification would not have been obvious. See Tec
Air, Inc. v. Denso Mfg. Mich., Inc., 192 F.3d 1353, 1360 (Fed. Cir. 1999); In
re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984). "A reference may be said to
teach away when a person of ordinary skill, upon [examining] the reference,
would be discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was taken by the
applicant." In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). In this case,
Pourrezaei specifically discloses that having a metallic layer on the outer
surface of a catheter when placed in contact with the interdermal layer
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(dermis 22, adventitia 24) inhibits or kills microbes “in a region immediately
adjacent to the catheter surface.” Pourrezaei, col. 5, ll. 35-36; col. 6, ll. 8-
14; and fig. 1. Thus, the catheter of Pourrezaei functions by having the
external metallic layer come into contact with body tissue. As such, the
function of the metallic reinforcement layer of Pourrezaei would have
discouraged a person of ordinary skill in the art from providing the external
polymeric jacket of Ju. Accordingly, the modification proposed by the
Examiner of providing the external polymeric jacket of Ju to the metallic
reinforcement layer of Pourrezaei’s catheter would not have been obvious to
the person of ordinary skill in the art.
Thus, for the foregoing reasons, we cannot sustain the rejection of
independent claims 1, 31, and 32, and dependent claim 11, under 35 U.S.C.
§ 103(a) as unpatentable over Pourrezaei and Ju.

SUMMARY
The Examiner’s decision to reject claims 1, 11, 31, and 32 is reversed.

REVERSED

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