Ex Parte Field

Patent Trial and Appeal Board

Dec 19, 2016

13685865 (P.T.A.B. Dec. 19, 2016)

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.
0119/0110 1094
EXAMINER
MENDOZA, MICHAEL G
ART UNIT PAPER NUMBER
3731
MAIL DATE DELIVERY MODE
13/685,865 11/27/2012
135866 7590 12/20/2016
LAW OFFICE OF LOUIS WOO
717 NORTH FAYETTE STREET
ALEXANDRIA, VA 22314
Stephen James Field
12/20/2016 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 STEPHEN JAMES FIELD1
Appeal 2015-001345
Application 13/685,865
Technology Center 3700
Before DONALD E. ADAMS, ERIC B. GRIMES, and
RICHARD M. LEBOVITZ, Administrative Patent Judges.
GRIMES, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35U.S.C. § 134 involving claims to a medical
device, which have been rejected as anticipated or obvious. We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.
STATEMENT OF THE CASE
Claims 1—30 are on appeal. Claims 1 and 12 are illustrative and read
as follows (emphasis added):
1 Appellant identifies the Real Party in Interest as Smiths Group PLC.
(Appeal Br. 3.)
Appeal 2015-001345
Application 13/685,865
1. A medical surgical device with a shaft made of plastics material, the
shaft having a bore defined by a circular smooth inner surface, the bore
extending along the length of the shaft, the shaft including a wall having a
thickness defined between the inner surface and a concentric outer surface,
gas bubbles being incorporated into and distributed in at least one region of
the wall of the shaft between the inner and outer surfaces and having a size
selected to increase the visibility of the shaft under ultrasound observation,
the increase in the visibility of the shaft under ultrasound observation
resulting only from the incorporation of the gas bubbles into the wall of the
shaft.
12. A catheter including a circular shaft having a wall made of a plastics
material defined between an inner surface and an outer surface, the circular
inner surface defining a bore extending along the length of the shaft, the
shaft consisting of the plastics material and gas bubbles of a selected size
incorporated throughout the thickness of the wall at least one region of the
shaft, wherein the visibility of the shaft under ultrasound observation is
increased due to the gas bubbles having been incorporated throughout the
wall of the shaft.
Claims 20 and 26, the only other independent claims, are similar to
claim 1 in reciting that “the visibility of the shaft under ultrasound
observation is increased only due to the gas bubbles having been
incorporated into the wall of the shaft.” (Appeal Br. 24, 25 (emphasis
added).)
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Appeal 2015-001345
Application 13/685,865
The claims stand rejected as follows:
Claims 1^1, 6, 8-16, 18-23, and 26-292 under 35 U.S.C. § 102(b) as
anticipated by Bosley3 (Final Rej.4 3);
Claims 5,6, 11, 15, 16, and 19 under 35 U.S.C. § 102(b) as
anticipated by, or alternatively under 35 U.S.C. § 103(a) as obvious based
on, Bosley (Final Rej. 4);
Claims 7, 17, and 24 under 35 U.S.C. § 103(a) as obvious based on
Bosley and Sheridan5 (Final Rej. 5); and
Claims 25 and 30 under 35 U.S.C. § 103(a) as obvious based on
Bosley and Kobayashi6 (Final Rej. 6).
I
The Examiner has rejected claims 1—4, 6, 8—16, 18—23, and 26—29 as
anticipated by Bosley. The Examiner finds that Bosley discloses all of the
limitations of the claimed device, including a shaft containing “gas bubbles
(Bosley discloses hollow microspheres, because the microspheres 127 are
hollow they fit within the definition of a ‘bubble’. Bosley further states that
gas alone can be used as an alternative to the microspheres in col. 8, lines
23-32).” (Final Rej. 3.) The Examiner also finds that the gas bubbles
2 The Examiner does not include claims 20—23 and 26—29 in any of the
rejections but Appellant “assume[s] that claims 20—23 and 26—29 have also
been rejected as being anticipated by Bosley.” (Appeal Br. 9, fii. 5.) We do
as well.
3 Bosley, US 5,289,831, issued March 1, 1994.
4 Office Action mailed Sept. 19, 2013.
5 Sheridan et al., US 3,605,750, issued Sept. 20, 1971.
6 Kobayashi et al., US 5,646,194, issued July 8, 1997.
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Appeal 2015-001345
Application 13/685,865
“increase the visibility of the shaft under ultrasound observation, the
increase in the visibility of the shaft under ultrasound observation resulting
only from the incorporation of the gas bubbles into the wall of the shaft (col.
7, lines 46-52).” {Id. at 3—4.)
Appellant argues that “the interpretation by the examiner that a hollow
microsphere is the same as a gas bubble is misplaced insofar as a hollow
microsphere must have a wall that is made of a hard material, which in turn
makes the glass microsphere a thing that is made of a hard material.”
(Appeal Br. 13—14.)
We agree with Appellant that Bosley’s disclosure does not support the
Examiner’s finding that the increase in visibility of its device under
ultrasound observation results only from the presence of gas bubbles.
Bosley discloses a medical device that is visible under ultrasound
imaging and has a plastic shaft “with discrete sound reflective particles 127
embedded in the matrix material.” (Bosley 7:39—52.) “Particles 127 are
preferably made of a hard material” and “glass microspheres are very
suitable.” {Id. at 7:61—65.) “[A] partially spherical surface may be provided
on the outside and/or the inside of particles 127, as for example a particle
with a hollow spherical space therein.” {Id. at 8:5—8.)
Bosley states that “[additionally, liquids, gases, gels, micro-
encapsulants, and/or coacervates suspended in the matrix may alternatively
be used either alone or in combination, so long as they form a composite
with ultrasonically reflective particles in the matrix.” {Id. at 8:23—27.)
Thus, Bosley discloses that including solid or hollow particles in the
wall of its device increases its visibility under ultrasound observation, and
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Appeal 2015-001345
Application 13/685,865
that gases can be included in the matrix “so long as they form a composite
with ultrasonically reflective particles in the matrix.” (Id. at 8:26—27.)
Bosley does not disclose that gas bubbles, by themselves, will increase the
visibility of its device under ultrasound observation. As Appellant argues
(Appeal Br. 13—14), hollow particles are not gas bubbles; they are particles
with gas inside them. Thus, Bosley does not disclose the limitation of claim
1 requiring that “the increase in the visibility of the shaft under ultrasound
observation result[s] only from the incorporation of the gas bubbles into the
wall of the shaft.” Bosley therefore does not anticipate claim 1.
Independent claims 20 and 26 include the same limitation and are not
anticipated by Bosley for the same reason. Independent claim 12 does not
require that the increase in visibility results “only” from the presence of gas
bubbles in the wall of the claimed catheter. However, as Appellant has
pointed out (Appeal Br. 10), claim 12 requires that the shaft of the claimed
catheter “consists] of the plastics material and gas bubbles.” Thus, because
the phrase “consists of’ closes the shaft to the inclusion of other materials,
claim 12 also excludes the presence of the sound reflective particles required
by Bosley.
We therefore reverse the rejection of claims 1—4, 6, 8—16, 18—23, and
26—29 as anticipated by Bosley.
II
The Examiner has rejected dependent claims 5,6, 11, 15, 16, and 19
as anticipated by, or alternatively as obvious based on, Bosley. The
Examiner has also rejected dependent claims 7, 17, 24, 25, and 30 as
obvious based on Bosley and either Sheridan or Kobayashi.
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Appeal 2015-001345
Application 13/685,865
Each of these rejections, however, is based on the Examiner’s finding
that Bosley discloses a device or method meeting all of the limitations of the
independent claims. For the reasons discussed above, the evidence does not
support that finding. The Examiner has not pointed to evidence or provided
sound reasoning to support a conclusion that the disputed limitation would
have been obvious based on any of the cited references. We therefore
reverse the remaining rejections.
SUMMARY
We reverse all of the rejections on appeal.
REVERSED
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