Ex Parte Eghtesady

Patent Trial and Appeal Board

Mar 7, 2013

11429395 (P.T.A.B. Mar. 7, 2013)

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.
11/429,395 05/05/2006 Pirooz Eghtesady CHM08-GN024 1678
30074 7590 03/07/2013
TAFT, STETTINIUS & HOLLISTER LLP
SUITE 1800
425 WALNUT STREET
CINCINNATI, OH 45202-3957
EXAMINER
GRAY, PHILLIP A
ART UNIT PAPER NUMBER
3767
MAIL DATE DELIVERY MODE
03/07/2013 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte PIROOZ EGHTESADY
__________

Appeal 2011-009216
Application 11/429,395
Technology Center 3700
__________

Before LORA M. GREEN, JEFFREY N. FREDMAN, and
ULRIKE W. JENKS, Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s rejection of claims 1-19.1 We have jurisdiction under 35 U.S.C.
§ 6(b).

1 Claims 20-27 are also pending, but stand withdrawn from consideration
(App. Br. 3).
Appeal 2011-009216
Application 11/429,395

2
STATEMENT OF THE CASE
Claim 1 is the only independent claim on appeal, and reads as follows
(emphasis added):
1. A cannula comprising:
an elongated tubular body including
a distal segment, the distal segment including a distal segment
leading end face at a leading end of the distal segment and a distal
segment proximal end, the distal segment including a first opening
extending generally axially through the leading end face at the leading
end of the distal segment and a third opening extending through the
distal segment proximal end, and
a proximal segment fluidicly coupled to the distal segment near
the third opening, the proximal segment including a proximal segment
proximal end and a second opening at a proximal segment proximal
end, the proximal segment proximal end being for fluidicly coupling
to a section of tubing; and
a removable tubular sleeve extending through the third opening,
within the tubular body at least from the third opening to the first opening,
and through the first opening, the removable sleeve having a sleeve proximal
end face including a sleeve proximal opening extending through the sleeve
proximal end face and a sleeve leading end including a sleeve leading end
face including a sleeve leading end hole extending through the sleeve
leading end face, the removable tubular sleeve defining a sleeve interior
lumen extending from the sleeve proximal opening to the sleeve leading end
hole;
wherein the removable tubular sleeve is one of substantially straight
and slightly angled so as to facilitate guidance of the removable tubular
sleeve along a guidewire, the removable tubular sleeve being adapted to
receive the guidewire through the sleeve interior lumen; and
wherein the first and third opening are spaced from each other by at
most 6.35 centimeters.

The following ground of rejection is before us for review:
Claims 1-19 are rejected under 35 U.S.C. § 103(a) as being rendered
obvious by Sorenson (Ans. 4).
Appeal 2011-009216
Application 11/429,395

3

We reverse.

ANALYSIS
The issue in this appeal is whether the preponderance of the evidence
supports the Examiner’s finding that Sorenson teaches “a removable tubular
sleeve” as required by independent claim 1.
Specifically, the Examiner finds that Sorenson teaches a “tubular
sleeve (32)” (Ans. 4). The Examiner interprets “removable” as not requiring
“‘reassembly’” (id. at 8). Specifically, the Examiner finds
that one could remove this element from the rest of the device.
The claims do not require that the tube must be reassembled or
reattached rather that it is removable.

(Id.)
Appellant argues that “[n]othing in Sorenson states or suggests that
Sorenson’s interior cannula (32) may be removed” (App. Br. 10.) Appellant
notes that Sorenson teaches that “‘the assembly … includes an interior
cannula 32 which is mounted with the hub … at the location of the bore …’”
(id. (quoting Sorenson, col. 2, ll. 43-45)).
As to the Examiner’s finding that the sleeve 32 could be removed
from the device or the individual pieces of the device, Appellant asserts that
“if this argument were accepted, then any piece of any structure, whether
composed of multiple parts or completely integral, would be ‘removable’
because any structure, regardless of how it is made or what it is made of, can
be ‘removed’ from anything else either in ‘whole’ or in ‘pieces’” (Reply Br.
4).
Appeal 2011-009216
Application 11/429,395

4
We agree with Appellant. We recognize that during prosecution
before the Office, claims are to be given their broadest reasonable
interpretation consistent with the Specification as it would be interpreted by
one of ordinary skill in the art. In re American Academy Of Science Tech
Center, 367 F.3d 1359, 1364 (Fed. Cir. 2004). Claim language, however,
“should not [be] treated as meaningless.” Bicon, Inc. v. Straumann Co., 441
F.3d 945, 951 (Fed. Cir. 2006).
“Removable”2 may be defined as “that may be removed.” “Remove”3
may be defined as “to move from a place or position; take away or off.” In
addition, the Specification teaches a method of using the cannula, in which
the removable sleeve is removed from the leading end of the cannula body
during a procedure (Spec. 3-4, ¶11). Specifically, the Specification teaches
that “[w]hen the introducer 28 (if present in an exemplary embodiment) and
the removable sleeve 18 are removed from the cannula head 2, the vessel
can be drained through the larger cannula leading end hole 8 as well as the
additional holes 16” (id. at 8, ¶30).
Therefore, in view of the definition of “remove” and “removable,” as
well as the how the term is used in the Specification, we interpret the term
“removable” to require that the “removable sleeve” to be able to be removed
from the claimed cannula without compromising the integrity of the device.

2 removable. Dictionary.com. Dictionary.com Unabridged. Random House,
Inc. http://dictionary.reference.com/browse/removable (accessed: March 05,
2013).
3 remove. Dictionary.com. Dictionary.com Unabridged. Random House, Inc.
http://dictionary.reference.com/browse/remove (accessed: March 05, 2013).
Appeal 2011-009216
Application 11/429,395

5
That is, the removable sleeve 32 could be removed and reattached easily by
the practitioner such that the device is still usable.
As the Examiner has not established that one could remove the tubular
sleeve 32 from the double lumen cannula of Sorenson so as not to
compromise the integrity of the device, we reverse the rejection.

REVERSED

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