Ex Parte CarrisonDownload PDFPatent Trial and Appeal BoardJan 9, 201713777409 (P.T.A.B. Jan. 9, 2017) Copy Citation 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. 13/777,409 02/26/2013 Harold F. Carrison 06530-0632-01000 2275 109610 7590 Bookoff McAndrews, PLLC 2401 Pennsylvania Avenue, NW, Suite 450 Washington, DC 20037 EXAMINER SZPIRA, JULIE ANN ART UNIT PAPER NUMBER 3731 NOTIFICATION DATE DELIVERY MODE 01/11/2017 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): usptomail @bookoffmcandrews.com Kross @ bookoffmcandrews.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HAROLD F. CARRISON Appeal 2015-002733 Application 13/777,409 Technology Center 3700 Before STEFAN STAICOVICI, WILLIAM A. CAPP, and ARTHUR M. PESLAK, Administrative Patent Judges. PESLAK, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Harold F. Carrison (“Appellant”) appeals under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1—20.1 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. 1 Appellant submits the real party in interest is Boston Scientific Scimed, Inc. Appeal Br. 2. Appeal 2015-002733 Application 13/777,409 THE CLAIMED SUBJECT MATTER Claim 1, reproduced below, is illustrative of the claimed subject matter. 1. A tissue removal device, comprising: a drive shaft defining an axial lumen; a blunt, non-traumatic tip coupled to a distal end of the drive shaft, the tip having an aperture there through in fluid communication with the drive shaft lumen; and a tissue removal member carried on the drive shaft proximal to the tip. REJECTIONS 1) Claims 1—3, 5—11, 13—15, 17, 19, and 20 are rejected under 35 U.S.C. § 102(b) as anticipated by Shturman (US 5,312,427, issued May 17, 1994). 2) Claims 4, 12, 16, and 18 are rejected under 35 U.S.C. § 103(a) as unpatentable over Shturman and Hacker (US 7,077,845 B2, issued July 18, 2006). DISCUSSION Rejection 1 Independent claim 1 The Examiner finds that Shturman discloses all of the limitations of claim 1. Final Act. 2. Appellant contends that the recited “blunt non- traumatic tip” does not read on Shturman’s abrasive burr 40. Appeal Br. 14— 15. Appellant argues that Shturman “expressly teaches that abrasive burr 40 is used to remove tissue and thus is traumatic.” Id. at 15. Appellant also argues that abrasive burr 40 is covered with an abrasive coating and 2 Appeal 2015-002733 Application 13/777,409 therefore expressly traumatic. Id. Appellant next contends that abrasive burr 40 “cannot be both a non-traumatic tip and a tissue removal member.” Id. at 16. The Examiner responds that “[t]he tip disclosed by Shturman is non traumatic, as the device, itself is non traumatic.” Ans. 2; see also Final Act. 6—7 (“The tip disclosed by Shturman is non-traumatic, as it will not puncture or incise tissue due to the shape of the tip. . . [and it is] a flattened portion that would not cause trauma to tissue.”). For the following reasons, we sustain the rejection of claim 1. Shturman discloses a “rotational atherectomy device.” Shturman, col. 4,11. 23—24. Shturman discloses that abrasive burr 40 is “made from stainless steel and is coated with a suitable abrasive material.” Id., col. 14, 11. 60-61. More specifically, abrasive burr 40 includes a frusto-spherical body portion and a spherical abrasive portion. Id., col. 14,11. 55—57, Fig. 1. As such, the Examiner is correct in that Shturman’s frusto-spherical body portion of abrasive burr 40 constitutes the claimed “blunt, non-traumatic tip” and the spherical abrasive portion constitutes the claimed “tissue removal member . . . proximal to the tip.” See Final Act. 2. Therefore, we are not persuaded by Appellant’s contention that abrasive burr 40 is traumatic at its tip. Appellant notes that abrasive burr 40 is covered with an abrasive coating and “is used to remove tissue.” Appeal Br. 15. The abrasive coating is located proximal to the distal tip of abrasive burr 40 and, therefore, Shturman discloses the recited “tissue removal member.” Appellant has not apprised us of error in the rejection of claim 1 and therefore, we sustain the rejection of claim 1 as anticipated by Shturman. Appellant does not argue separately for the patentability of claims 2—6 3 Appeal 2015-002733 Application 13/777,409 and 8—11 which depend from claim 1. Appeal Br. 20. Therefore, we also sustain the rejection of claims 2—6 and 8—11.2 Dependent claim 7 Claim 7, which ultimately depends from claim 1, recites that the tissue removal device is coupled “with an irrigation source to thereby place the irrigation source in fluid communication with the drive shaft lumen and tip aperture.” Appeal Br. 23 (Claims App.). The Examiner finds that Shturman discloses this limitation. Final Act. 3 (citing Shturman, col. 9,11. 28—20). Appellant argues that the rejection is based on Shturman’s central lumen 46 as the drive shaft lumen recited in claim 1. Final Act. 17, 19. Appellant contends that Shturman discloses that fluid is infused into “second lumen 26, [and] not central lumen 46.” Id. at 17. For the following reasons, we do not sustain the rejection of claim 7. Shturman discloses “[a] side port 67 may be provided to permit infusion of lubricating fluid . . . into the cavity 65 and second lumen 26 of the catheter 20.” Shturman, col. 9,11. 35—37. Second lumen 26 surrounds sheath 54. Id. Fig. 1. Drive shaft lumen and aperture tip 46 are located within sheath 54. Therefore, fluid infused into second lumen 26 will not be in fluid communication with the drive shaft lumen and tip aperture. The Examiner has not directed us to any disclosure in Shturman to support a finding of “an irrigation source in fluid communication with the drive shaft 2 Appellant treats claims 8—12 as ultimately dependent from claim 1. Appeal Br. 20. However, while claim 8 references claim 5 which depends from claim 1, claim 8 may not be written in proper dependent form. See Appeal Br. 23 (Claims App.). It is suggested that the Examiner review the form of claim 8 if prosecution continues in this case. 4 Appeal 2015-002733 Application 13/777,409 lumen.” We, therefore, do not sustain the rejection of claim 7 as anticipated by Shturman because the Examiner’s finding is not supported by Shturman. Independent claim 13 The Examiner finds that Shturman discloses all the limitations of independent claim 13. Final Act. 3—A. The Examiner specifically finds that the recited tissue removal member reads on Shturman’s sheath 54 whereby the “external portion of the shaft can be used to remove tissue through friction.” Id. at 4. Appellant contends that sheath 54 “is specifically designed not to remove tissue by “presenting a smooth, low friction surface” that is fabricated from “TEFLON or similar slippery material.” Appeal Br. 16 (citing Shturman col. 15,11. 26—32). Shturman’s device is used to remove “an atherosclerotic lesion or atheroma 12 from an artery.” Shturman, col. 10,11. 7—8. The lateral surface of burr 40 is positioned “in direct contact with the atherosclerotic plaque 12.” Id. col. 10,11. 59-60. Sheath 54 is of a smaller diameter than burr 40. See id. Fig. 1. The Examiner does not explain how sheath 54 can even contact the atherosclerotic plaque 12 to be removed nor does the Examiner direct us to any disclosure in Shturman that supports a finding that sheath 54 is used to remove tissue. The Examiner’s finding that the recited tissue removal member reads on sheath 54 is not supported by Shturman. Therefore, we do not sustain the rejection of claim 13 as anticipated by Shturman. Claims 14 and 15 depend from claim 13. Appeal Br. 24 (Claims App.). We do not sustain the rejections of claim 14 and 15 for the same reasons as stated for claim 13. 5 Appeal 2015-002733 Application 13/777,409 Independent claim 17 The Examiner finds that Shturman discloses all the limitations of claim 17. Final Act. 4. The Examiner specifically finds the recited tissue removal member reads on Shturman’s guide wire 90. Id. Appellant contends that Shturman’s guide wire “is used to guide and position the device, not to remove tissue,” there is no disclosure that guide wire 90 is used to remove tissue, and Shturman discloses that guide wire 90 prevents “tissue removal by stating that guide wire 90 ‘can be provided with a slippery surface coating.’” Appeal Br. 19 (citing Shturman, col. 11,11. 35— 39, col. 12,11. 19-54, col. 14,11. 15^11). We are persuaded by Appellant’s argument. The Examiner does not direct us to any disclosure in Shturman to support a finding that guide wire 90 is used to remove tissue nor does the Examiner explain how guide wire 90 could be used to remove tissue. Therefore, we do not sustain the rejection of claim 17 as anticipated by Shturman. Claims 19 and 20 depend from claim 17. Appeal Br. 25 (Claims App.). We do not sustain the rejection of claims 19 and 20 for the same reasons as stated for claim 17. Rejection 2 Claims 4 and 12 are rejected as unpatentable over Shturman and Hacker. Final Act. 5—6. Claim 4 depends from claim 1. Appeal Br. 22 (Claims App.). Claim 12 depends from claim 8 which Appellant treats as ultimately dependent from claim 1. Appeal Br. 20. Appellant does not argue separately for the patentability of claims 4 and 12 but relies on the same arguments as for claim 1. Id. Therefore, we sustain the rejections of claims 4 and 12 for the same reasons stated above for claim 1. 6 Appeal 2015-002733 Application 13/777,409 Claims 16 and 18 are rejected as unpatentable over Shturman and Hacker. Final Act. 5—6. Claim 16 depends ultimately from claim 13 and claim 18 depends from claim 17. Appeal Br. 25 (Claims App.). The Examiner does not cite to Hacker to cure the factual deficiencies of Shturman stated above in the rejection of claims 13 and 17. Final Act. 5—6. Therefore, we do not sustain the rejection of claims 16 and 18 for the same reasons stated above for claims 13 and 17. DECISION The Examiner’s decision rejecting claims 1—6 and 8—12 is affirmed. The Examiner’s decision rejecting claims 7 and 13—20 is reversed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED-IN-PART 7 Copy with citationCopy as parenthetical citation