Ex Parte Esksuri et al

Board of Patent Appeals and Interferences

Aug 12, 2008

10159079 (B.P.A.I. Aug. 12, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte ALAN D. ESKSURI, JAMES G. HANSEN,
BRIAN J. LOWE, and JOHN M.K. DANIEL
__________

Appeal 2008-2015
Application 10/159,079
Technology Center 3700
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Decided: August 12, 2008
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Before DONALD E. ADAMS, ERIC GRIMES, and MELANIE L.
MCCOLLUM, Administrative Patent Judges.

McCOLLUM, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a
guidewire. The Examiner has rejected the claims as obvious. We have
jurisdiction under 35 U.S.C. § 6(b). We reverse.
Appeal 2008-2015
Application 10/159,079

STATEMENT OF THE CASE
Claims 1-4, 6-9, 12, 16-20, 22-25, 28, 32, and 33 are on appeal.
Claims 5, 11, 13-15, 21, 27, and 29-31 are also pending but have been
withdrawn from consideration by the Examiner. We will focus on claim 1,
the broadest claim on appeal, which reads as follows:
1. A guidewire for use in a medical procedure, comprising:
an elongated core wire having a proximal section and a distal section;
a distal stop disposed about the distal section of said elongated core
wire, the distal stop comprising an enlarged outer diameter portion of the
elongated core wire; and
a proximal stop fixed to and about a portion of said elongated core
wire proximal the distal stop, the proximal stop comprising a polymeric
member configured to deform when an intravascular device is advanced
thereon.
Claims 1-4, 6-8, 12, 16-20, 22-24, 28, 32, and 33 stand rejected under
35 U.S.C. § 103(a) as obvious over Boylan (US 6,602,272 B2, Aug. 5, 2003)
in view of Kletschka (US 6,443,926 B1, Sep. 3, 2002).
Claims 9 and 25 stand rejected under 35 U.S.C. § 103(a) as obvious
over Boylan in view of Kletschka and Hinohara (US 5,465,733, Nov. 14,
1995).
The Examiner relies on Boylan for disclosing “a guidewire 18 with a
distal stop in the form of a sphere 56 fixed thereto, . . . wherein guidewire 18
is disposed in a restraining sheath or ‘intravascular device’ 46” (Ans. 3).
The Examiner relies on Kletschka for teaching “an elastomeric O-ring 130
disposed on a proximal end of a guidewire 44 so that a user can
longitudinally slide guidewire 44 relative to a catheter wall 148” (id.). The
Examiner concludes that it would have been obvious “to have provided a
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Application 10/159,079

proximal stop in the form of an elastomeric O-ring, as taught by Kletschka,
on the Boylan et al. guidewire, to prevent fluid from leaking and to allow a
user to slide guidewire 18 relative to the wall of intravascular device 46”
(id.). The Examiner argues that Kletschka’s O-ring “seal 130 is fixed or
‘attached’ to a proximal portion of core wire 44 otherwise it would not work
for its intended purpose of preventing fluid leakage” (id. at 5).
Appellants argue that the “combination of Boylan et al. and Kletschka
does not teach or disclose ‘a proximal stop fixed to and about a portion of
said elongated core wire’” (Amended App. Br. 6). In particular, Appellants
argue that, “[f]rom the Figures and corresponding description in Kletschka,
there is nothing that teaches or would suggest that the seal (130) in
Figures 14-22 is ‘fixed to and about’ the guidewire” (id. at 6-7).
“Furthermore, nowhere else in the Specification does Kletschka teach or
suggest the seal being fixed to or attached to the guidewire. In fact,
according to Figures 21 and 22, it appears that seal (130) is attached to the
catheter (148) and not to the guidewire (44).” (Id. at 7.)
ISSUE
The issue is whether the Examiner has set forth a prima facie case that
Kletschka’s O-ring seal constitutes a proximal stop fixed to and about a
wire.
FINDINGS OF FACT
1. Kletschka describes an angioplasty device comprising a
catheter containing a guidewire 44, the catheter being connected at its distal
end to a trap/barrier 38 for “prevent[ing] physiologically significant particles
from leaving the treatment site” (Kletschka, col. 6, ll. 23-48).
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Application 10/159,079

2. In Figures 14, Kletschka depicts a trap catheter having a
seal 130, “such as an elastomeric O-ring . . . , that prevents fluid from
leaking through the guidewire port 34 and that allows the guidewire 44 to
move relative to the catheter wall 148” (id. at col. 14, ll. 1-25).
3. Kletschka states that an O-ring is “particularly desirable
because the user can slide the guidewire 44 longitudinally relative to the
catheter” (id. at col. 14, ll. 25-28).
4. Kletschka Figures 21 and 22 are reproduced below:

These Figures depict views of a trap catheter, “in which the trap 38 is
actuated by a translation between the guidewire 44 and the catheter
wall 148” (id. at col. 15, ll. 22-25).
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Application 10/159,079

5. In Figures 21 and 22, “a first end 180 of the struts 49 is
connected to the guidewire 44 and a second end 182 of the struts 49 is
attached to the catheter wall 148. Translating the guidewire 44 (i.e., moving
the guidewire in an axial direction) relative to the catheter wall 148 biases
the first end 180 away from the end 182.” (Id. at col. 15, ll. 25-30.)
6. Figures 21 and 22 also show that, when the guidewire is moved
axially, seal 130 appears to stay in place relative to catheter wall 148,
specifically next to suction port 30, and therefore appears to move relative to
the guidewire (id. at Fig. 21-22).
ANALYSIS
As argued by Appellants, Figures 21 and 22 appear to show that,
when the guidewire is moved axially, the guidewire moves relative to the
seal (Findings of Fact 4-6), indicating that seal 130 is not fixed to the
guidewire. In response, the Examiner argues that seal 130 is fixed to the
wire or “it would not work for its intended purpose of preventing fluid
leakage” (Ans. 5). We disagree. Instead, we agree with Appellants that the
Examiner has not set forth a prima facie case that Kletschka’s O-ring seal
constitutes a proximal stop fixed to and about a wire as is required by
claim 1. Therefore, we reverse the obviousness rejection of claim 1 and of
claims 2-4, 6-8, 12, 16-20, 22-24, 28, 32, and 33, which depend from
claim 1.
Claims 9 and 25 ultimately depend from claim 1. We have already
concluded that the Examiner has not set forth a prima facie case that Boylan
and Kletschka render claim 1 obvious. The Examiner relies on Hinohara for
limitations recited in dependent claims, and has not pointed to any disclosure
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in this references that would make up for the deficiencies discussed above
(Ans. 4). Thus, we conclude that the Examiner has not set forth a prima
facie case that claims 9 and 25 would have been obvious. We therefore
reverse the obviousness rejections of these claims.
CONCLUSION
The Examiner has not shown that the claims would have been obvious
to a person of ordinary skill in the art based on the applied references. We
therefore reverse the obviousness rejections of claims 1-4, 6-9, 12, 16-20,
22-25, 28, 32, and 33.

REVERSED

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