Ex Parte Chornenky et al

Board of Patent Appeals and Interferences

Apr 21, 2003

08701764 (B.P.A.I. Apr. 21, 2003)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.

Paper No. 30

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte VICTOR I. CHORNENKY
and
MICHAEL R. FORMAN
__________

Appeal No. 2002-2152
Application No. 08/701,764
___________

ON BRIEF
___________

Before ABRAMS, BARRY, and DELMENDO, Administrative Patent
Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on an appeal under 35 U.S.C. § 134
(2002) from the examiner’s final rejection of claims 1 through
7, 9 through 21, 38 through 45, and 62 through 66, which are all
the claims pending in the above-identified application.1

1 In reply to the final Office action mailed Jan. 17, 2001
(paper 21), the appellants submitted an amendment pursuant to 37
CFR § 1.116 (2001) on Mar. 19, 2001 (paper 23), proposing a
change to claim 11. The examiner indicated that this amendment
Appeal No. 2002-2152
Application No. 08/701,764

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The subject matter on appeal relates to a catheter for
emitting x-ray radiation in a vascular system. Further details
of this appealed subject matter are recited in representative
claims 1 and 11, which are the only independent claims on
appeal, reproduced below:
1. A catheter for emitting x-ray radiation in a
vascular system, the catheter comprising:
a flexible catheter shaft having a distal end;
an x-ray unit coupled to the distal end, wherein
the x-ray unit comprises an anode, a cathode, an
insulator having an external surface, and a conductive
coating on the external surface of the insulator,
wherein the anode and cathode are coupled to the
insulator to define a vacuum chamber and the
conductive coating is electrically connected to the
cathode.

11. An x-ray catheter comprising:
a flexible catheter shaft for being advanced
through lumens of the vascular system, the catheter
shaft having a distal end;
an x-ray unit coupled to the distal end, the x-
ray unit comprising an anode, a cathode, an insulator
having an external surface, and a conductive coating
on the insulator, wherein the anode and cathode are
coupled to the insulator to define a vacuum chamber.

The examiner relies on the following prior art references
as evidence of unpatentability:
Forde et al. 1,881,448 Oct. 11, 1932
(Forde)

Parker et al. 5,090,043 Feb. 18, 1992
(Parker)

has been entered for purposes of this appeal. (Advisory action
mailed Mar. 22, 2001, paper 23.)
Appeal No. 2002-2152
Application No. 08/701,764

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Kittrell et al. 5,290,275 Mar. 1, 1994
(Kittrell)

Tang et al. 5,729,583 Mar. 17, 1998
(Tang) (filed Sep. 29, 1995)

Claims 1 through 5, 10 through 16, 18 through 21, 38, 43,
and 64 through 66 on appeal stand rejected under 35 U.S.C. § 103
as unpatentable over Parker in combination with Forde and Tang.
(Examiner’s answer mailed Oct. 24, 2001, paper 28, page 4.) In
addition, claims 6, 7, 9, 17, 39 through 42, 44, 45, 62, and 63
on appeal stand rejected under 35 U.S.C. § 103 as unpatentable
over Parker in combination with Forde, Tang and Kittrell. (Id.
at pages 4-5.)
We reverse these rejections for essentially those reasons
set forth in the appeal brief filed Jul 2, 2001 (paper 27).
Rejection Based on Parker, Forde, and Tang
To properly reject claims under 35 U.S.C. § 103 as prima
facie obvious in view of a combination of prior art references,
an examiner must consider, inter alia, two factors: (1) whether
the prior art would have suggested to one of ordinary skill in
the art to make the claimed composition or carry out the claimed
process; and (2) whether the prior art would also have revealed
that, in so making or carrying out, the person of ordinary skill
would have had a reasonable expectation of success. In re
Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438, 1442 (Fed. Cir. 1991)
Appeal No. 2002-2152
Application No. 08/701,764

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(citing In re Dow Chemical Co., 837 F.2d 469, 473, 5 USPQ2d
1529, 1531 (Fed. Cir. 1988)). Both the suggestion and
reasonable expectation of success must be founded in the prior
art, not in applicants’ disclosure. Id.
Here, it is our judgment that the examiner has not
identified the requisite motivation, suggestion, or teaching in
the prior art references to combine the references. Moreover,
even if the references could be combined in the manner as
suggested by the examiner, the combination would not result in
the claimed invention.
Parker, the principal prior art reference, describes an
apparatus for treating tumors by low energy, highly absorbable,
polychromatic x-rays, which are produced by small x-ray micro-
tubes placed within, or adjacent to, a patient’s body in close
proximity to, or within, a tumor. (Column 1, lines 7-13.)
According to Parker, the x-ray tube may comprise an evacuated
glass tube 22, a heated filament cathode 24, and an anode 26.
(Column 7, line 68 to column 8, line 6; Figure 8a.) Parker
further discloses a liquid-cooled micro-tube assembly 84
including a filament cathode 86 supported by a filament support
structure 88 within an evacuated glass tube 90, which may be the
x-ray tube described in Figure 8a. (Column 10, lines 6-18;
Figure 10.)
Appeal No. 2002-2152
Application No. 08/701,764

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The examiner admits that Parker does not describe a
conductive coating as recited in the appealed claims. (Answer,
page 4.) Nevertheless, the examiner attempts to make up for
this difference by relying on the teachings of Forde and Tang.
Specifically, the examiner held (id.):
Forde et al teach providing a conductive shroud around
a distal cathode (see figure 8, element 21, lines 11-
98 on page 3 thereof). Tang et al teach providing an
electrode as a coating on the surface of an insulator
(see figure 3a and column 4, lines 12-34, wherein the
anode is formed as a coating). It would have been
obvious to form the conductor as a coating on the
insulator, since this is a known structure which
supports and fixes the conductor and to provide a
distal cathode with a conductive shroud in the form of
a coating, since this confines the electric field and
to couple the outer conductor of a coaxial cable to
the cathode, since this is a standard configuration
and prevents interference with the signal to the
anode, thus producing a device such as claimed.

This position lacks merit. The examiner has not identified
any acceptable reasoning or objective evidence to support the
notion that one of ordinary skill in the art would have been led
to combine the teachings of Parker, Forde, and Tang. In re
Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir.
1999)(“T]he best defense against the subtle but powerful
attraction of a hindsight-based obviousness analysis is rigorous
application of the requirement for a showing of the teaching or
motivation to combine prior art references.”); In re Rouffet,
149 F.3d 1350, 1359, 47 USPQ2d 1453, 1459 (Fed. Cir. 1998)(“T]he
Appeal No. 2002-2152
Application No. 08/701,764

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Board must explain the reasons one of ordinary skill in the art
would have been motivated to select the references and to
combine them to render the claimed invention obvious.”); In re
Fine, 837 F.2d 1071, 1075, 5 USPQ2d 1596, 1600 (Fed. Cir.
1988)(“‘teachings of references can be combined only if there is
some suggestion or incentive to do so.’”)(quoting ACS Hosp.
Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ
929, 933 (Fed. Cir. 1984)); In re Warner, 397 F.2d 1011, 1016,
154 USPQ 173, 177 (CCPA 1967)(“W]here the invention sought to be
patented resides in a combination of old elements, the proper
inquiry is whether bringing them together was obvious and not,
whether one of ordinary skill, having the invention before him,
would find it obvious through hindsight to construct the
invention from elements of the prior art.”).
While the examiner would have us believe that “[i]t would
have been obvious to form the conductor as a coating on the
insulator, since this is a known structure which supports and
fixes the conductor and to provide a distal cathode with a
conductive shroud in the form of a coating...” (answer, page 4),
this position is not based on any objective evidence. In re
Lee, 277 F.3d 1338, 1343, 61 USPQ2d 1430, 1433 (Fed. Cir. 2002).
Even assuming that there is some motivation in the prior
art to combine the references, the combination would not result
Appeal No. 2002-2152
Application No. 08/701,764

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in the claimed invention. In particular, Forde describes an x-
ray device for diagnosing and treating lesions of a pathological
nature occurring with various body cavities or orifices of the
human body. (Page 1, lines 44-54.) Although Forde discloses a
“thin-walled molybdenum cup 21” (element 21, Figure 8), there is
no teaching in this reference of a “conductive coating on the
external surface of the insulator, wherein...the conductive
coating is electrically connected to the cathode,” as required
by the appealed claims.
Tang’s teachings are equally ineffective to support the
examiner’s position. Tang describes an x-ray head including an
evacuated chamber in which an anode and a cathode are disposed
and electrical connections from the anode to the cathode extend
through the wall of the evacuated chamber. (Column 2, lines
2-7.) Tang teaches: “The anode 12 may be a metal foil separate
from the wall 10 or may be a metal film deposited on a part of
the inside surface of the wall 10 by vacuum evaporation or
another known technique.” (Column 4, lines 24-27.) Like Forde,
however, Tang lacks any teaching with respect to a “conductive
coating on the external surface of the insulator, wherein...the
conductive coating is electrically connected to the cathode,” as
required by the appealed claims.
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For these reasons, we hold that the examiner has not made
out a prima facie of obviousness within the meaning of 35 U.S.C.
§ 103. In re Piasecki, 745 F.2d 1468, 1471-72, 223 USPQ 785,
787-88 (Fed. Cir. 1984).
Rejection Based on Parker, Forde, Tang, and Kittrell
The examiner’s basic position is (answer, page 5):
It would have been obvious to the artisan of ordinary
skill to include a catheter centering means and a
guidewire channel since these are not critical, are
well known features for catheters and provide no
unexpected result and to provide the claimed dosage
and coaxial cable, since these are not critical, thus
producing a device and as claimed.

Again, the examiner’s conclusion is not based on any
objective evidence. Moreover, the examiner’s position does not
address the fundamental deficiency in the combination of Parker,
Forde, and Tang with respect to the conductive coating recited
in the appealed claims.
Accordingly, we cannot uphold this rejection.
Summary
In summary, we reverse the examiner’s rejections under 35
U.S.C. § 103 of: (i)claims 1 through 5, 10 through 16, 18
through 21, 38, 43, and 64 through 66 as unpatentable over
Parker in combination with Forde and Tang; and (ii) claims 6, 7,
9, 17, 39 through 42, 44, 45, 62, and 63 as unpatentable over
Parker in combination with Forde, Tang, and Kittrell.
Appeal No. 2002-2152
Application No. 08/701,764

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The decision of the examiner to reject the appealed claims
is reversed.
REVERSED

NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LANCE LEONARD BARRY )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
)
ROMULO H. DELMENDO )
Administrative Patent Judge )

rhd/vsh

Appeal No. 2002-2152
Application No. 08/701,764

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