Ex Parte Brown

Patent Trial and Appeal Board

Feb 26, 2013

11174935 (P.T.A.B. Feb. 26, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/174,935 07/05/2005 David C. Brown 02.1003.09 2373
53189 7590 02/27/2013
Cooke Law Firm
2040 NORTH LOOP 336 WEST
SUITE 123
CONROE, TX 77304
EXAMINER
PATEL, SHEFALI DILIP
ART UNIT PAPER NUMBER
3767
MAIL DATE DELIVERY MODE
02/27/2013 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 DAVID C. BROWN
____________

Appeal 2011-003367
Application 11/174,935
Technology Center 3700
____________

Before DONALD E. ADAMS, LORA M. GREEN, and
JACQUELINE WRIGHT BONILLA, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims 2-4, 6, 7, and 20
(App. Br. 5; Ans. 2). We have jurisdiction under 35 U.S.C. § 6(b).
STATEMENT OF THE CASE
The claims are directed to an apparatus for increasing resistance to
fluid flow between a probe and an incision. Claim 20 is representative and
is reproduced in the Claims Appendix of Appellant’s Brief.

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Claims 6 and 20 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Herlitze.1
Claim 2 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Herlitze.
Claims 3 and 4 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Herlitze and Finch.2
Claim 7 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Herlitze and Smith.3
We reverse the rejection of claim 7 and affirm all other grounds of
rejection.

Anticipation:
ISSUE
Does the preponderance of evidence on this record support
Examiner’s finding that Herlitze teaches Appellant’s claimed invention?
FACTUAL FINDINGS (FF)
FF 1. Herlitze’s “invention relates to a stiffening core of plastic for the
gap-free filling of the lumen of a catheter tube, which core inhibits the
backflow of blood, facilitates the introduction of the catheter tube into a
blood vessel, and improves its projection on an x-ray screen” (Herlitze, col.
1, ll. 4-8; see generally Ans. 4; App. Br. 10 (Herlitze “discloses a catheter 5
which is placed within a blood vessel”); id. (Herlitze discloses a catheter 5

1 Herlitze, US 4,504,268, issued March 12, 1985.
2 Finch et al., US 6,685,694 B2, issued February 3, 2004.
3 Smith, US 5,403,323, issued April 4, 1995.
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… and a stiffening core 1 … which fills the bore of the catheter such that
there is no gap between them)).
FF 2. Herlitze’s Figure 2 is reproduced below:

“FIG. 2 is a longitudinal section of a catheter with a stiffening core”
(Herlitze, col. 2, ll. 43-44).
FF 3. Examiner finds that Herlitze teaches an apparatus comprising: (a) a
probe 1 and (b) a deformable layer 5, which surrounds probe 1 (Ans. 4).
FF 4. Examiner finds that the term “‘[d]eformable’ means ‘to become
misshapen or changed in shape’” (Ans. 7).
FF 5. Examiner finds that “any material, such as that of … [Herlitze’s]
catheter [5], is capable of being deformed, misshaped, or flexed” (id.; see
also id. at 8 (Herlitze’s “catheter [5] must be made of a somewhat
deformable or flexible material since a stiffening core [1] is passed through
the lumen of the catheter in order to add rigidity to the catheter and to aid in
guiding the catheter…. Hence, the catheter material being flexible is also
deformable”) (alteration original)).
ANALYSIS
Herlitze’s apparatus comprises: (a) a probe and (b) a deformable layer
(FF 2-3; Cf. Appellant’s Claim 20; App. Br. 9 (“catheter 5 is normally
understood as the probe and not a deformable layer”)). We find no error in
Examiner’s reasoning that Herlitz’s catheter 5 is deformable (FF 4-5). As
Examiner explains, Appellant’s claim 20 does not require a specific
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compression modulus, but requires only that the deformable layer is “formed
of a material having a selected compression modulus” (Ans. 8 (“Appellant
has not quantified at what point a material is considered deformable in their
claimed invention”); Cf. Appellant’s Claim 20).
Herlitze’s deformable layer comprises a hollow cylindrical sleeve
having an inside surface surrounding the probe and a length along the probe
(FF 2-3). Appellant fails to provide persuasive evidence or reasoning to
support a finding that the inside surface of Herlitze’s catheter/deformable
layer (e.g., sleeve) is not in continuous contact with the outer surface of the
probe (FF 1 (the probe provides a “gap-free filling” of the deformable layer);
Cf. Appellant’s Claim 20).
From the foregoing, the question distills down to whether Herlitze
expressly or inherently describes a deformable layer having a length and
thickness selected to increase resistance to fluid flow between the probe and
the incision at a selected distance along the length as required by Appellant’s
claim 20. See Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628,
631 (Fed. Cir. 1987).
Appellant contends that Herlitze “discloses a catheter 5 which is
placed within a blood vessel. There is no mention of restriction or limiting
fluid flow between the outside surface of the catheter and the incision in the
vein” (App. Br. 10). In addition, Appellant contends that “there is no
disclosure in Herlitze that the catheter tube 5 is deformable so as to
cooperate with the tissue around the incision to restrict or eliminate flow
between the incision and body tissue” and “[E]xaminer … failed to establish
the fact that the catheter of Herlitze would inherently deform in response to
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being inserted through an incision to minimize or restrict flow between the
incision and the probe” (App. Br. 9; Reply Br. 1). We are not persuaded.
Appellant’s claim 20 does not require the deformable layer to
“cooperate with the tissue around the incision to restrict or eliminate flow
between the incision and body tissue” (id.). To the contrary, Appellant’s
claim 20 requires the deformable layer to have a length and a thickness
selected to increase resistance to fluid flow between the probe and the
incision at a selected distance along the length (see Appellant’s Claim 20).
Notwithstanding Appellant’s contention to the contrary, Herlitze teaches a
probe that is surrounded, in a gap-free manner, by a deformable layer (FF 1-
3). There is no persuasive evidence or argument on this record to support a
finding that fluid flow between the probe and the incision is not necessarily
restricted by the deformable layer surrounding Herlitze’s probe.
CONCLUSION OF LAW
The preponderance of evidence on this record supports Examiner’s
finding that Herlitze teaches Appellant’s claimed invention. The rejection of
claim 20 under 35 U.S.C. § 102(b) as being anticipated by Herlitze is
affirmed. Claim 6 is not separately argued and falls with claim 20.

Obviousness:
The rejection over Herlitze:
ISSUE
Does the preponderance of evidence on this record support a
conclusion of obviousness?
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ANALYSIS
Examiner relies on Herlitze as discussed above, but recognizes that
“Herlitze is silent about whether the selected compression modulus is greater
than 0.42 percent per psi” as required by Appellant’s claim 2 (Ans. 5).
Nevertheless, Examiner concludes that
[I]t would have been obvious to a person having ordinary skill
in the art at the time the invention was made to provide a
deformable layer with a compression modulus greater than 0.42
percent psi, in the apparatus of Herlitze, 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
(compression modulus range) involves only routine skill in the
art.

(Ans. 5.) Stated differently, since flexible/deformable catheters were known
in the art, the selection of a particular compression modulus for a
flexible/deformable catheter would have been prima facie obvious to a
person of ordinary skill in this art at the time of Appellant’s claimed
invention (FF 5). In re Aller, 220 F.2d 454, 456 (CCPA 1955) (“it is not
inventive to discover the optimum or workable ranges by routine
experimentation.”).
For the foregoing reasons, we are not persuaded by Appellant’s
contention that “there is no rationale for modifying or selecting a material of
a certain compression modulus” because Herlitze does not recognize “the
desirability of selecting a material that will deform at all under the pressure
of the tissue surrounding the incision” (App. Br. 10). “In determining
whether the subject matter of a patent claim is obvious, neither the particular
motivation nor the avowed purpose of the patentee controls. What matters is
the objective reach of the claim. If the claim extends to what is obvious, it is
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invalid under § 103.” KSR Int’l v. Teleflex Inc., 550 U.S. 398, 419 (2007);
see also In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992) (“[T]he law
does not require that the references be combined for the reasons
contemplated by the inventor.”).
CONCLUSION OF LAW
The preponderance of evidence on this record supports a conclusion
of obviousness. The rejection of claim 2 under 35 U.S.C. § 103(a) as
unpatentable over Herlitze is affirmed.

The rejection over the combination of Herlitze and Finch:
ISSUE
Does the preponderance of evidence on this record support a
conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 6. Examiner relies on Herlitze as discussed above (Ans. 5).
FF 7. Examiner finds that “Herlitze is silent about whether the deformable
layer [5] is comprised of a polymer sponge or foam, such as silicone” (id.
(alteration original)).
FF 8. Finch suggests “a deformable layer (catheter body …) … comprised
of a polymer sponge or foam, such as silicone” (id.).
FF 9. Finch suggests that “the catheters will[,most commonly,] be
intravascular catheters where the distal end is implanted in or attached to a
blood vessel” (Finch, col. 2, ll. 42-44).
ANALYSIS
Based on the combination of Herlitze and Finch, Examiner concludes
that, at the time of Appellant’s claimed invention, it would have been prima
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facie obvious to a person of ordinary skill in this art to substitute Finch’s
deformable layer for the deformable layer suggested by Herlitze (Ans. 5-6).
Appellant contends that since Herlitze’s catheter is solid there is no
reason to replace it with Finch’s porous catheter (Reply Br. 2). We are not
persuaded. Herlitze suggests an apparatus comprising a catheter (e.g.,
deformable layer) and a stiffening core (e.g., probe) (FF 1-3). Appellant
provides no persuasive evidence or argument to support a conclusion that
Herlitze’s stiffening core could not have been used to assist the introduction
of a catheter, such as that suggested by either Herlitze or Finch, into a body
part, such as a blood vessel (see FF 1 and 9).
For the foregoing reasons we are not persuaded by Appellant’s
contention that Finch suggests “flushing an interior lumen of an implanted
catheter prior to closing the catheter between successive uses” (Finch, col. 1,
ll. 16-20; Cf. App. Br. 11). For the same reasons, we are not persuaded by
Appellant’s contention that the removal of Herlitze’s “core would destroy
the invention of Herlitze for its intended use” (App. Br. 11).
CONCLUSION OF LAW
The preponderance of evidence on this record supports a conclusion
of obviousness. The rejection of claim 3 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Herlitze and Finch is affirmed. Claim
4 is not separately argued and falls with claim 3.

The rejection over the combination of Herlitze and Smith:
ISSUE
Does the preponderance of evidence on this record support a
conclusion of obviousness?
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FACTUAL FINDINGS (FF)
FF 10. Examiner relies on Herlitze as discussed above (Ans. 6).
FF 11. Examiner finds “surface layer [10]”, which is on Herlitze’s
deformable layer, does not contain perforations (id. (alteration original); see
FF 2).
FF 12. In relation to Herlitze’s element 10, Herlitze suggests that
At one end of the stiffening core 1, a cap-type gripping
piece 7 is attached, the outside of which is provided with a
knurl 8. In the embodiment depicted, the gripping piece 7
loosely spans the end of a catheter adapter 9, in whose
connecting piece 10, the catheter tube 5 is inserted and fastened.
A collar 11 serves to prevent slipping of a nut 12 for coupling
the catheter adapter 9 to a connecting part.

(Herlitze, col. 3, ll. 7-14.)
FF 13. Smith’s Figure 4b is reproduced below:

“FIG. 4b [illustrates] a probe [(deformable layer) 40] having a concentric
cylinder 35 with perforations 36” (Smith, col. 5, ll. 4-5; Ans. 6).
ANALYSIS
Claim 7 depends ultimately from, and further limits, claim 20 to
further comprise a surface layer, on the deformable layer, that contains
perforations (Appellant’s Claim 7).
Based on the combination of Herlitze and Smith, Examiner concludes
that, at the time of Appellant’s claimed invention, it would have been prima
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facie obvious to a person of ordinary skill in this art to modify “the surface
layer [10], of the apparatus of Herlitze, with perforations, as taught by
Smith, as the perforations will provide a passageway for fluid to flow” (Ans.
6). According to Examiner:
[B]oth Herlitze and Smith teach tubular devices with layers that
can be inserted into a patient’s body. Hence, the surface layer,
of Herlitze, can be modified with perforations, of Smith, in
order to provide a passage for fluid flow, whether the fluid is
directed into a vein, an eye, or another site of the patient’s
body. The advantage of the perforations in the surface layer are
that they allow the passage of fluid into the patient’s body for
use during a treatment procedure.

(Ans. 13-14.) We are not persuaded. “[R]ejections 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.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006).
As Appellant explains, “[e]lement 10 of Herlitze is a connection piece
of adapter 9” (App. Br. 11; FF 12). In this regard, Herlitze suggests that
collar 11, which is attached to connecting piece 10, serves to prevent
slipping of a nut 12 for coupling the catheter adapter 9 to a connecting part
(FF 12). Examiner failed to establish an evidentiary basis on this record to
support a conclusion that Smith’s cylinder 35, which comprises perforations
36, would be capable of performing the function of Herlitze’s element 10 or
that perforations in Herlitze’s element 10 would be desirable for any purpose
(Cf. Ans. 6; see Reply Br. 2 (“Element 10 of Herlitze is a connecting piece,
there is simply no reason[] to put perforations in it especially in light of any
teaching of Smith”)).
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Obviousness requires more than a mere showing that the
prior art includes separate references covering each separate
limitation in a claim under examination. KSR Int'l Co. v.
Teleflex Inc., 550 U.S. 398, 418, 127 S.Ct. 1727, 167 L.Ed.2d
705 (2007). Rather, obviousness requires the additional
showing that a person of ordinary skill at the time of the
invention would have selected and combined those prior art
elements in the normal course of research and development to
yield the claimed invention. Id. at 421, 127 S.Ct. 1727.

Unigene Laboratories, Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir.
2011).
CONCLUSION OF LAW
The preponderance of evidence on this record fails to support a
conclusion of obviousness. The rejection of claim 7 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Herlitze and Smith is
reversed.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART

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