Ex Parte CarleoDownload PDFPatent Trial and Appeal BoardMay 30, 201813387447 (P.T.A.B. May. 30, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/387,447 03/22/2012 Steven Carleo 34284 7590 06/01/2018 RUTAN & TUCKER, LLP 611 ANTON BL VD SUITE 1400 COST A MESA, CA 92626 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. 101674.0049P 5553 EXAMINER WENG,KAIH ART UNIT PAPER NUMBER 3761 NOTIFICATION DATE DELIVERY MODE 06/01/2018 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): patents@rutan.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte STEVEN CARLEO Appeal2017-004388 Application 13/387,447 Technology Center 3700 Before JOHN C. KERINS, LEE L. STEPINA, and AR THUR M. PESLAK, Administrative Patent Judges. STEPINA, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant 1 appeals under 35 U.S.C. § 134 from the Examiner's final decision rejecting claims 1-3, 8, 9, 11, 12, 38, 39, and 41--48. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 According to Appellant, the real party in interest is C.R. Bard, Inc. Br. 4. Appeal2017-004388 Application 13/387,447 CLAIMED SUBJECT MATTER The claims are directed to a catheter having improved drainage and/ or a retractable sleeve and method of using the same. Claim 1, reproduced below, is illustrative2 of the claims on appeal: 1. A catheter comprising: an elongate member having a diameter extending between a proximal end and a distal end of the elongate member, the distal end having a pre-drainage opening; a plurality of drainage openings in a distal section of the elongate member proximal of the pre-drainage opening, the drainage openings comprising one of; two circumferentially spaced elongate openings; at least three staggered openings; and an array of staggered openings; and a sleeve member having an internal diameter between a proximal end of the sleeve member and a distal end of the sleeve member that substantially matches the diameter of the elongate member and being arranged on the elongate member, such that, following insertion of at least the distal end of the elongate member and the distal end of the sleeve member through a urethra and into a bladder of a patient, the sleeve member is slidable between a first position in which the sleeve member covers the plurality of drainage openings inside the bladder and a second position which allows fluid to flow from the bladder through the openings and into a lumen of the elongate member, wherein, the second position of the sleeve member is proximal the first position of the sleeve member. Br. 22 (Claims App.). REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: 2 Independent claims 38 and 39 incorporate by reference all the elements of claim 1. See Br. 23-24 (Claims App.). 2 Appeal2017-004388 Application 13/387,447 Seddon Magnusson House Mc Ghee US 2004/0243104 Al US 2006/0200079 Al US 2007 /0225649 Al US 2009/0085949 Al REJECTIONS Dec. 2, 2004 Sept. 7, 2006 Sept. 27, 2007 Apr. 2, 2009 3 (I) Claims 1-3, 8, 11-12, 38, 39, and 42--48 are rejected under 35 U.S.C. § 103(a) as unpatentable over House and Magnusson. (II) Claim 9 is rejected under 35 U.S.C. § 103(a) as unpatentable over House, Magnusson, and McGhee. (III) Claim 41 is rejected under 35 U.S.C. § 103(a) as unpatentable over House, Magnusson, and Seddon. OPINION Rejection(!) The Examiner finds that House discloses most of the features recited in claim 1, including an elongated member (catheter 10), a sleeve member (sheath 40), and a pre-drainage opening (urine inlet 16). Final Act. 3. The Examiner relies on Magnusson to teach a plurality of drainage openings as well as a sleeve member with a diameter that substantially matches the diameter of the inner elongated member. Id. Appellant contends that House fails to disclose a pre-drainage opening because a "pre-drainage" opening is different from a second type of opening, namely, a "drainage" opening. See Br. 10-11. Appellant contends that 3 The Final Office Action indicates that the publication number for McGhee is US 2009/0085949. Final Act. 5. However, the publication associated with this publication number does not list McGhee as an inventor. It appears that the listing of references for Rejection (II), based, in part, on McGhee, includes a typographical error. 3 Appeal2017-004388 Application 13/387,447 claim 1 recites both types of openings, and "the 'pre-drainage opening' is so- named because it [is] used only in a preliminary manner, before the main draining occurs. It is not suitable for complete draining of the bladder, nor does the Instant Specification suggest that it is." Id. at 11. Appellant contends that, when reviewing the Specification for the meaning of "pre- drainage hole," the discussion of the "council hole" and "council opening" is pertinent inasmuch as these terms refer to the same thing as the term pre- drainage opening. See id. In response, the Examiner states, "the pre-drainage opening is mentioned once in the entire specification as being arranged on the distal end of the elongated member." Ans. 7 (citing paragraph 3 5 of the Specification). The Examiner determines, "[t]he specification does not set an explicit definition of the pre-drainage opening draining fluid prior to the main draining." Id. at 7. The Examiner concludes, "[a] person skilled in the art could interpret the pre-drainage openings as an opening that exists prior to drainage[,] which House definitely fulfills since it is a pre-drainage opening without any further recitation of the function of such opening." Id. at 7-8. We do not agree with the Examiner's interpretation of the term "pre- drainage" in claim 1. As pointed out by the Examiner, the detailed description in the Specification uses the specific term "pre-drainage opening" ("pre-draining opening") only in paragraph 35. However, original dependent claims 10 and 3 5 each recite a "pre-drainage opening," and respective original claims 1 and 25 each recite "at least one drainage opening." Further, claim 1 on appeal recites both a "pre-drainage opening" as well as a plurality of "drainage openings." "'In the absence of any 4 Appeal2017-004388 Application 13/387,447 evidence to the contrary, we must presume that the use of ... different terms in the claims connotes different meanings.'" Becton, Dickinson and Co. v. Tyco Healthcare Group, LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010) (quoting CAE Screenplates, Inc. v. Heinrich Fiedler GmbH & Co., 224 F.3d 1308, 1317 (Fed. Cir. 2000)). We find no evidence that the terms "pre-drainage opening" and "drainage opening" have the same meaning. Thus, in light of Appellant's Specification, including the original claims, the broadest reasonable interpretation of a "pre-drainage opening" is not the same as the broadest reasonable interpretation of a "drainage opening." Additionally, we do not agree with the Examiner's interpretation of the "pre" in the term pre-drainage opening to mean an opening "that exists prior to drainage." Rather, such an interpretation would not distinguish the "pre-drainage opening" from the "drainage openings" because Appellant's Specification gives no indication that "drainage openings" are formed after drainage begins, and, rather, implies that these openings exist prior to drainage. See Spec. i-f 62 (explaining that openings 20 allow entry of urine into member 12 "when the member 12 is inserted into a bladder"). We agree with Appellant's interpretation that the "pre-drainage opening" performs a function before main draining occurs and that the Examiner's interpretation of claim 1 is unreasonably broad. Under the broadest reasonable interpretation of claim 1, the finding that House discloses a pre-drainage opening is not supported by a preponderance of the evidence. Accordingly, we reverse the rejection of claim 1 and claims 2, 3, 8, 11, 12, 38, 39, and 42- 48, which depend from claim 1 or incorporate by reference all the elements of claim 1, as unpatentable over House and Magnusson. 5 Appeal2017-004388 Application 13/387,447 Rejections (11)-(111) The Examiner's use of McGhee and Seddon does not remedy the deficiency in Rejection (I) discussed above. See Final Act. 5---6. Accordingly, we reverse Rejections (II) and (III) for the same reason we reverse Rejection (I). DECISION The Examiner's decision to reject claims 1-3, 8, 9, 11, 12, 38, 39, and 41--48 is REVERSED. REVERSED 6 Copy with citationCopy as parenthetical citation