Ex Parte Carrison

Patent Trial and Appeal Board

Jan 9, 2017

13777409 (P.T.A.B. Jan. 9, 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.
13/777,409 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):
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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
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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
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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.
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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.
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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.
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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
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