Ex Parte Carrillo et al

Patent Trial and Appeal Board

Apr 28, 2017

13791211 (P.T.A.B. Apr. 28, 2017)

United States Patent and Trademark Office
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.
13/791,211 03/08/2013 Oscar R. CARRILLO JR. 10121/19202 4678
104919 7590 05/02/2017
Fay Kaplun & Marcin, LLP — BSC
150 Broadway, suite 702
New York, NY 10038
EXAMINER
MILES, JONATHAN WADE
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
05/02/2017 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):
okaplun@fkmiplaw.com
fkmiplaw @ yahoo. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte OSCAR R. CARRILLO, JR., SAMUEL RAYBIN,
PAUL SMITH, and TRACY ANDREOTTI
Appeal 2016-000338
Application 13/791,211
Technology Center 3700
Before LINDA E. HORNER, ANNETTE R. REIMERS, and
THOMAS F. SMEGAL, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Oscar R. Carrillo, Jr. et al. (Appellants) appeal under 35 U.S.C.
§ 134(a) from the Examiner’s decision to reject claims 1—13 under 35 U.S.C.
§ 102(b) as anticipated by Watson (US 5,788,715, iss. Aug. 4, 1998).
Claims 14—20 have been canceled. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
Appeal 2016-000338
Application 13/791,211
CLAIMED SUBJECT MATTER
The claimed subject matter relates to devices “for use with elongated
medical devices, such as endoscopes and the like.” Spec. 12, Figs. 2-4.
Claims 1 and 8 are independent.
Claim 1 is illustrative of the claimed subject matter and recites:
1. A medical device comprising:
an elongate member sized and shaped for insertion into a
primary lumen of an elongated medical device,
the elongate member comprising a dividing wall structure,
the dividing wall structure sized so that, when inserted into the
primary lumen, the dividing wall structure divides the primary
lumen of the elongated medical device into a plurality of
secondary lumens.
ANALYSIS
Appellants do not offer arguments in favor of independent claim 81 or
dependent claims 2—7 and 9-13 separate from those presented for
independent claim 1. See Appeal Br. 3—5. We select claim 1 as the
representative claim, and claims 2—13 stand or fall with claim 1. 37 C.F.R.
§ 41.37(c)(l)(iv).
Independent claim 1 is directed to a medical device including an
elongate member having a dividing wall structure that “divides the primary
lumen of [an] elongated medical device into a plurality of secondary
lumens.” Appeal Br. 7, Claims App. The Examiner finds that the
“elongated medical device” is “dispenser 440” of Watson and “the primary
lumen [is] the entire inner space as defined by the elongated medical device
440.” Ans. 5; see also Final Act. 3. The Examiner further finds that
1 See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011).
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Application 13/791,211
“elongate member 476” of Watson “has a dividing wall structure as shown
in Fig[ure] 15B which separates the primary lumen [of dispenser 440] into
the space outside the elongate member 476 and each of the smaller lumens
482a-c and 478B, thus dividing the primary lumen into a plurality of
secondary lumens.” Ans. 5—6; see also Final Act. 3.
Appellants contend that “the elongate member 476 [of Watson] does
not in any way separate the primary lumen of the dispenser 440.” Reply Br.
3; see also Appeal Br. 4—5. According to Appellants, “it is not the lumen of
the medical device [dispenser 440] that is divided, but only the lumen of the
catheter 476. The catheter 476 simply takes up a portion of the primary
lumen [of dispenser 440].” Appeal Br. 5.
At the outset, we agree with the Examiner that the elongated medical
device “is not positively claim[ed] .... Therefore, the device of Watson
only merely needs to be capable of being inserted into the primary lumen of
an elongated medical device.” Final Act. 6; see also Adv. Act. 2 (mailed
May 14, 2015); Ans. 6—7. However, claim 1 positively recites that the
“dividing wall structure” of the elongated member “divides the primary
lumen of the elongated medical device into a plurality of secondary lumens.”
Appeal Br. 7, Claims App. As such, we disagree with the Examiner that
catheter 476 of Watson only needs to be “capable of dividing the primary
lumen [of an elongated medical device] into a plurality of second lumens.”
Adv. Act. 2. Rather, the dividing wall structure must be sized relative to the
size of the primary lumen of the elongated medical device, so that when
inserted into this primary lumen, the dividing wall structure divides the
primary lumen into a plurality of secondary lumens. See Appeal Br. 7,
Claims App.
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Appeal 2016-000338
Application 13/791,211
Watson discloses that “[a] dispenser 440 . . . comprises telescoping
cylinders 442, 444, 446 having ligating bands 50 disposed thereon. In FIG.
13, the dispenser 440 is shown assembled onto the tubular housing 32 [of
ligating instrument 30]” (Watson 15:59—62, Figs. 13—17; see also id. at
6:57-58, Fig. 1) and “FIGS. 15A, 15B, and 15C illustrate cross sections of
various channel 76 configurations that may be provided in the tubular
housing 32, or in a multilumen catheter 476 inserted therethrough” (Watson
16:51—54 (emphasis added)). In other words, Watson discloses that
dispenser 440 is “assembled onto” tubular housing 32 of ligating instrument
30 and catheter 476 may be inserted through tubular housing 32 of ligating
instrument 30. Watson is silent as to how catheter 476 relates to dispenser
440 let alone that the dividing walls of multi-lumen catheter 476 divide the
primary lumen of dispenser 440 into a plurality of secondary lumens.
Moreover, the Examiner fails to provide sufficient evidence or technical
reasoning to support the finding that catheter 476 of Watson “divides the
lumen of the dispenser [440] into a plurality of secondary lumens, some of
the secondary lumens being within the catheter 476 and at least one
secondary lumen being the primary lumen portion outside of the catheter
476.” See Adv. Act. 2. As such, the Examiner fails to establish by a
preponderance of the evidence that the dividing walls of multi-lumen
catheter 476 of Watson divide the primary lumen of dispenser 440 into a
plurality of secondary lumens.
However, in the Answer, the Examiner takes an alternate position. In
particular, the Examiner finds that housing 32 of Watson may be
“considered the elongated medical device and the lumen defined by the
housing 32 is the primary lumen . . . [and] when the elongate member 476 is
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Appeal 2016-000338
Application 13/791,211
inserted therethrough, the primary lumen of the elongated medical device 32
is divided into a plurality of secondary lumens.” Ans. 6.
In response, Appellants contend that “it is the lumen of the elongated
member itself that is divided into a plurality of lumens.” Reply Br. 4.
Appellants do not dispute the Examiner’s finding that housing 32 of
Watson constitutes “the elongated medical device and the lumen defined by
the housing 32 [constitutes] the primary lumen.” See Ans. 6; see also Reply
Br. 4. Moreover, Appellants acknowledge that “multilumen catheter 476 [of
Watson] is completely contained within the tubular housing 32.” Appeal Br.
4 (emphasis added); see also Reply Br. 3. In this case, we agree with the
Examiner that “when [the dividing wall structure of the multi-lumen]
elongate member 476 [of Watson] is [inserted into the primary lumen of
elongated medical device 32], the primary lumen of the elongated medical
device 32 is divided into a plurality of secondary lumens.” See Ans. 6; see
also Watson 16:51—54, Figs. 15A— 15C.2 Appellants do not provide
persuasive evidence or argument to the contrary.
Accordingly, we sustain the Examiner’s rejection of independent
claim 1 as anticipated by Watson. We further sustain the rejection of claims
2—13, which fall with claim 1.
2 The Specification describes that “the elongate member 30 is a multi-lumen
tubular insert.” Spec. 1 32 (emphasis added), Figs. 3, 4; see also Appeal Br.
3.
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Appeal 2016-000338
Application 13/791,211
DECISION
We AFFIRM the decision of the Examiner to reject claims 1—13 as
anticipated by Watson.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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