Ex Parte Brown et alDownload PDFPatent Trial and Appeal BoardSep 25, 201310444048 (P.T.A.B. Sep. 25, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte BRIAN BROWN, JASON HILL and JOHN R. MOBERG ____________ Appeal 2012-005713 Application 10/444,048 Technology Center 3700 ____________ Before JENNIFER D. BAHR, JOHN C. KERINS and KEN B. BARRETT, Administrative Patent Judges. KERINS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-005713 Application 10/444,048 2 STATEMENT OF THE CASE Brian Brown et al. (Appellants) seek our review under 35 U.S.C. § 134(a) of the Examiner’s final rejection of claims 1-12 and 18-20. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. THE INVENTION Appellants’ invention is directed to a catheter assembly including a tether. Independent claim 1, reproduced below, is representative of the claimed subject matter: 1. A catheter assembly comprising: a manifold, the manifold being positioned at a proximal end of the catheter assembly; a tether member, the tether member having a proximal end region and a distal end region, at least a portion of the proximal end region being fixedly engaged directly to a portion of the manifold; a proximal tubular member, the proximal tubular member having a first end region and a second end region, at least a portion of the first end region being engaged to the manifold, the proximal tubular member being disposed about at least a portion of the tether member, at least a portion of the tether member distal of the manifold being fixedly engaged to at least a portion of the proximal tubular member. Appeal 2012-005713 Application 10/444,048 3 THE REJECTIONS Appellants appeal from the rejection of claims 1-3, 8-12 and 18-20 under 35 U.S.C. § 102(b) as being anticipated by Blaeser (US 5,490,837, issued Feb. 13, 1996); and from the rejection of claims 4-7 under 35 U.S.C. § 103(a) as being unpatentable over Blaeser. ANALYSIS Claims 1-3, 8-12 and 18-20--Anticipation--Blaeser A brief overview of the procedural history of the application underlying this appeal will aid in framing the issue currently on appeal. A prior appeal in this application (Appeal No. 2009-006511) resulted in a decision (hereafter “Prior Decision”) affirming the Examiner’s rejections of then-pending claims 1-12 and 18-22.1 In the Prior Decision, we construed a claim term calling for a portion of a proximal end region of a tether to be “fixedly engaged to” a portion of a manifold, under a broadest reasonable construction, as not requiring a direct connection or attachment between the tether and the manifold. Prior Decision 7-8. As such, we agreed with the Examiner that the Blaeser patent discloses a stiffening wire (corresponding to the claimed tether) fixedly attached to a shaft (corresponding to the claimed proximal tube member), discloses that the shaft is fixedly attached to a manifold, and that this indirect connection of the tether to the manifold met the claim limitation requiring the tether to be “fixedly engaged to” the manifold. Id. at 6-8. 1 The Prior Decision is of record in the application file, and a copy was included in the Related Proceedings Appendix of the Appeal Brief. Appeal 2012-005713 Application 10/444,048 4 Appellants filed, on November 24, 2009, a Request for Continued Examination, together with an Amendment which modified the expression “fixedly engaged to” to read “fixedly engaged directly to”. Amendment dated Nov. 24, 2009, p. 2. The issue joined by Appellants and the Examiner in the instant appeal is whether the same teaching previously relied on in the Blaeser patent discloses a tether “fixedly engaged directly to” a manifold, under the broadest reasonable interpretation of that claim language. In the statement of the grounds of rejection of claims 1-3, 8-12 and 18-20 as being anticipated by Blaeser, the Examiner does not include any explanation as to how the Blaeser patent can be construed as having a tether “fixedly engaged directly to” a manifold, and only identifies the elements in Blaeser meeting the claim elements calling for a tether, a manifold and a proximal tube, and states that these elements are present “as recited in the claims.” Ans. 5. Upon being challenged by Appellants that Blaeser does not disclose stiffening wire/tether 42/42d being directly fixedly engaged to manifold 36, the Examiner presents several rationales as to how this is so, including a proposed broadest reasonable interpretation of this claim language. More specifically, the Examiner maintains that “the term ‘fixedly engaged directly’ in claim 1 is broadly and reasonably interpreted as an indication of ‘tether 14 extending proximally into lumen of manifold 12,’” and that the catheter construction in Figure 16 of Blaeser meets this construction. Ans. 8. In arriving at this interpretation, the Examiner relies principally on the fact that Figure 1 in the instant application does not provide illustrative support for the limitation requiring “direct” engagement, Appeal 2012-005713 Application 10/444,048 5 and maintains that the Specification also does not contain any disclosure of an actual, direct connection. Ans. 7-8.2 We find the Examiner’s interpretation of the claim term “fixedly engaged directly” as being sufficiently broad to include “extending proximally into [a] lumen” to be unreasonable. The claim term plainly requires engagement directly between the claimed tether and the claimed manifold, not merely that one extends into the other. While an analysis of a broadest reasonable interpretation of a claim properly takes into account what a person of ordinary skill in the art would understand in view of the Specification, it is not appropriate to contort the meaning of claim terms based on a belief that there is no support for the terms in that Specification. Indeed, the Examiner’s proposed interpretation has the effect of reading each of the terms “fixedly”, “engaged” and “directly” completely out of the claim. If a claim term of such clearly understood meaning is contended to not be supported by an applicant’s specification as originally filed (including claims and drawings), consideration may be given to rejecting the claim under the first paragraph of 35 U.S.C. §112 as failing to provide an adequate written description of the claimed invention. No such rejection is before us. Further, given that Appellants have presented non-frivolous arguments to the effect that the claim term “fixedly engaged directly to” does find support in 2 The Examiner additionally states, erroneously, that in the Prior Decision, the Board found that “the drawings and specification of the present application . . . do not support for the limitation ‘tether is fixedly engaged directly to manifold 12.’” Ans. 12. The Prior Decision held only that the claim expression “fixedly engaged to” was sufficiently broad as to encompass an indirect engagement. Appeal 2012-005713 Application 10/444,048 6 the application as filed, we decline to enter a new ground of rejection on this basis. We do not sustain the Examiner’s rejection of claims 1-3, 8-12 and 18-20 as being anticipated by Blaeser, in that the Examiner’s findings relative to the Blaeser patent as anticipating the claims is premised on an unreasonably broad construction of the claim term “fixedly engaged directly to”. We also do not sustain the Examiner’s rejection of claims 4-7 as being unpatentable over Blaeser, in that it, too, is premised on the unreasonably broad construction. DECISION The decision of the Examiner to reject claims 1-3, 8-12 and 18-20 under 35 U.S.C. § 102(b) as being anticipated by Blaeser, and claims 4-7 under 35 U.S.C. § 103(a) as being unpatentable over Blaeser is reversed. REVERSED mls Copy with citationCopy as parenthetical citation