Ex Parte Conway et al

Patent Trial and Appeal Board

Feb 24, 2017

13047175 (P.T.A.B. Feb. 24, 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.
13/047,175 03/14/2011 Anthony J. Conway 101674.0067P 6339
34284 7590
Rutan & Tucker, LLP
611 ANTON BLVD
SUITE 1400
COSTA MESA, CA 92626
EXAMINER
MARCETICH, ADAM M
ART UNIT PAPER NUMBER
3761
NOTIFICATION DATE DELIVERY MODE
02/28/2017 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):
patents @ rutan. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANTHONY J. CONWAY, PATRICK H. MCLEOD,
SARAH L. GRINDE, and JEREMY M. WISTE
Appeal 2015-002704
Application 13/047,1751
Technology Center 3700
Before JOHN C. KERINS, STEFAN STAICOVICI, and
SEAN P. O’HANLON, Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Anthony J. Conway et al. (Appellants) appeal under 35 U.S.C.
§ 134(a) from the Examiner’s final decision rejecting under 35 U.S.C.
§ 103(a) claims 1—8, 11, 12, and 14—23 as being unpatentable over Rowan
(US 3,154,080, iss. Oct. 27, 1964) and House (US 2010/0030197 Al, pub.
Feb. 4, 2010).2 We have jurisdiction over this appeal under 35 U.S.C.
§ 6(b).
1 According to Appellants, Rochester Medical Corporation is the real party
in interest. Appeal Br. 3 (filed Sept. 25, 2014).
2 Claims 9, 10, and 13 are canceled. Id.
Appeal 2015-002704
Application 13/047,175
SUMMARY OF DECISION
We REVERSE.
INVENTION
Appellants’ invention relates to “an apparatus for gripping a catheter
and methods employing it.” Spec. 1,11. 4—5.
Claims 1,3, and 8 are independent. Claim 1 (with some paragraphing
added) is illustrative of the claimed invention and reads as follows:
1. A catheter grip, comprising:
a generally tubular body:
comprising a first end and a second end, defining a
through bore, and configured to slidably engage the shaft
of a urinary catheter and to be positioned at positions
including the drainage end of the catheter and the
insertable end of the catheter;
the generally tubular body flaring radially
outwardly to end diameters at the first end and at the
second end that are each larger than a middle diameter at
a middle of the generally tubular body, which aids in
positioning a user’s fingers at the middle of the catheter
grip; the middle being configured to contact the catheter
when the user applies force to the middle.
ANALYSIS
The Examiner finds that Rowan discloses most of the limitations of
independent claims 1,3, and 8 including, inter alia, a generally tubular body
6a having a first end, a second frusto-conical end 6c, and a bore configured
to slidably engage urinary catheter 1. See Final Act. 2—3 (citing Rowan, col.
2,11. 59-70, Figs. 4—6) (transmitted Mar. 17, 2014). However, the Examiner
finds that Rowan fails to disclose “a tubular body flaring at both first and
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Appeal 2015-002704
Application 13/047,175
second ends.” Id. at 4. Nonetheless, the Examiner finds that House
discloses a catheter assembly grip including a generally tubular body 410
including, inter alia, a first frusto-conical end 410a, a second frusto-conical
end 410b, and a bore 414, 417. Id. (citing House Tflf 3, 10, 23, 48, 49, 51,
Fig. 4). The Examiner concludes that “it would have been obvious to one of
ordinary skill in the art at the time the invention was made to modify Rowan
with the flared first end of House in order to make the catheter easier to
manipulate.” Id. at 5.
Appellants argue that the Examiner’s reasoning lacks rational
underpinnings as “there is no need for added maneuverability in Rowan
because the introducer tube 6a remains stationary during use.” Appeal Br.
13. According to Appellants, as “the Examiner has not identified any
problem in the device of Rowan that would be improved or addressed by
House,” “there is no reason for a person of skill in the art to go to the extra
expense and trouble of incorporating an additional ffusto[-]conical end.” Id.
at 14 (citing In re Omeprazole Patent Litigation, 536 F.3d 1361 (Fed. Cir.
2008)).
In response, the Examiner takes the position that
adding a second, rearward-facing flared end would also
counteract the frictional reaction force exerted on tube 6a by
catheter 1 during insertion. To clarity, a user pushes forward on
the proximal end of catheter 1 initially, to introduce catheter 1
into the urethra. Due to friction between tube 6a and catheter 1,
a small force will be exerted on tube 6a as shown in annotated
Fig. 4 below. Modifying Rowan with an additional flared end
will resist this force, and retain tube 6a between a user’s fingers.
Ans. 13 (transmitted Nov. 4, 2014); see also id. at 14 (the Examiner’s
annotated Figure 4 of Rowan). According to the Examiner, “a proximal
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Appeal 2015-002704
Application 13/047,175
frusto[-]conical section would . . . prevent tube 6a [of Rowan] from sliding
distally when a user pushes on catheter 1.” Id. at 17.
We do not agree with the Examiner’s position because Rowan
specifically discloses that “[t]he interior diameter of the tubular portion 6b is
slightly larger than the exterior diameter of the catheter 1.” Rowan, col. 2,
11. 65—67 (emphasis added). Therefore, we agree with Appellants that as
“the Rowan catheter is designed to slide . . . inside the Rowan introducer,
there is little friction.” Reply Br. 9 (filed Dec. 30, 2014). We further agree
with Appellants that “[bjecause the Rowan introducer [6a] is designed to
remain stationary while the catheter [1] is inserted [into a patient’s urethra],
there is no rearward inertia of any sort to counteract.” Id. at 10; see also
Rowan, col. 3,11. 15—22. As such, the Examiner’s position that Rowan’s
tube 6a is prone to move distally or proximally when catheter 1 is introduced
into a patient’s urethra is mere speculation and conjecture based on an
unfounded assumption that a friction force is necessarily present between the
interior surface of tubular portion 6b and the exterior surface of catheter 1.
Furthermore, the reason proffered by the Examiner to modify the
device of Rowan, i.e., “to make the catheter easier to manipulate,” appears to
already be performed appropriately by Rowan. As noted by Appellants,
Rowan specifically discloses that introducer 6a is fitted over a patient’s
penis and remains stationary as a user slides catheter 1 into the patient’s
urethra. Reply Br. 10; see also Rowan, col. 3,11. 15—22. Therefore,
Rowan’s introducer 6a and catheter 1 are already easy to manipulate, and the
Examiner has not adequately established how providing a second frusto-
conical end to introducer 6a would “make the catheter [1] easier to
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Application 13/047,175
manipulate” than it already is. The Examiner has not provided any findings
that the prior art recognized a problem with manipulating introducer 6a and
catheter 1. Without an adequate articulated reasoning based on rational
underpinnings for modifying Rowan’s introducer 6a, to provide a second
frusto-conical end, according to House, the Examiner’s rejection appears to
be the result of hindsight analysis. See In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006).
In conclusion, for the foregoing reasons, we do not sustain the
rejection under 35 U.S.C. § 103(a) of claims 1—8, 11, 12, and 14—23 as
unpatentable over Rowan and House.
SUMMARY
The Examiner’s decision to reject claims 1—8, 11, 12, and 14—23 is
reversed.
REVERSED
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