Ex Parte Field et alDownload PDFPatent Trial and Appeal BoardDec 19, 201613686235 (P.T.A.B. Dec. 19, 2016) Copy Citation 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. 0119/0109 5001 EXAMINER MENDOZA, MICHAEL G ART UNIT PAPER NUMBER 3731 MAIL DATE DELIVERY MODE 13/686,235 11/27/2012 135866 7590 12/19/2016 LAW OFFICE OF LOUIS WOO 717 NORTH FAYETTE STREET ALEXANDRIA, VA 22314 Stephen James Field 12/19/2016 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 JAMES STEPHEN FIELD, TINA GREATHOUSE, J. MICHAEL KENNELLY and THOMAS CUTHBERT MILLS1 Appeal 2015-001346 Application 13/686,235 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 catheter, 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—15 are on appeal. Claims 1 and 7 are illustrative and read follows (emphasis added): 1 Appellants identify the Real Party in Interest as Smiths Group PLC. (Appeal Br. 3.) Appeal 2015-001345 Application 13/685,865 1. A catheter for use in supplying a local anesthetic to a region of the body having a shaft consisting of a plastic material including gas bubbles in said plastic material through the major part of the thickness of the shaft in at least a part of the shaft, wherein said gas bubbles are selected to increase the visibility of the device under ultrasound imaging substantially solely by reflection of ultrasound energy at the interface with the gas in the bubbles, such that the patient end of the catheter can be placed in the region under ultrasound imaging. 7. A catheter for use in supplying a local anesthetic to a region of a body having a shaft defined by a wall consisting of a plastic material that has gas bubbles incorporated in at least one portion of the wall along at least one part of the shaft, wherein the shaft is visible under ultrasound imaging due to the bubbles in the wall of the shaft. Claim 11, the only other independent claim, is similar to claim 7 in reciting “a shaft consisting of a plastic material having solely gas bubbles in said plastic material.” (Appeal Br. 24, 25 (emphasis added).) The claims stand rejected as follows: Claims 1—10 under 35 U.S.C. § 112, second paragraph, as indefinite (Final Rej.2 3); Claims 1, 2, 4, 7—9, 11, 12, and 14 under 35 U.S.C. § 102(b) as anticipated by Bosley3 (Final Rej. 3); Claims 5 and 15 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. 5); and 2 Office Action mailed Sept. 3, 2013. 3 Bosley, US 5,289,831, March 1, 1994. 2 Appeal 2015-001345 Application 13/685,865 Claims 3, 6, 10, and 13 under 35 U.S.C. § 103(a) as obvious based on Bosley and Chang4 (Final Rej. 5). I The Examiner has rejected claims 1—10 as indefinite because “[cjlaim 1 recites the limitation ‘the interface’ in line 5. There is insufficient antecedent basis for this limitation in the claim.” (Final Rej. 3.) Appellants argue that “since each gas bubble must interface with its surrounding plastic material, . . . there is nothing indefinite about using the article ‘the’ to describe the interface between the gas bubble and its surrounding non-gas environment.” (Appeal Br. 16.) Appellants also quote MPEP § 2173.05(e) as stating that “[ijnherent components of elements recited have antecedent basis in the recitation of the components themselves. For example, the limitation ‘the outer surface of said sphere’ would not require an antecedent recitation that the sphere has an outer surface.” (Id. at 17.) Appellants argue that the disputed limitation here is also an inherent component. (Id.) We agree with Appellants that “the interface” in claim 1 does not make the claim indefinite. A gas bubble by definition has a single interface with its surrounding matrix; the interface defines where the gas bubble stops and the matrix begins. Thus, “the interface” of a gas bubble with the surrounding matrix is not indefinite and the rejection under 35 U.S.C. § 112, second paragraph, is reversed. 4 Chang, US 2006/0106338 Al, May 18, 2006. 3 Appeal 2015-001345 Application 13/685,865 II The Examiner has rejected claims 1, 2, 4, 7—9, 11, 12, and 14 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. 4.) The Examiner also finds that the gas bubbles “are selected to increase the visibility of the device under ultrasound imaging substantially solely by the reflection of ultrasound energy at the interface within [sic] the gas in the bubbles.” (Id.) Appellants argue that “Bosley makes it clear, in no uncertain terms, that sound reflective particles, that is, a solid material, particularly glass particles or glass microspheres embedded in the matrix material of his device, are the thing that causes his device to be echogenic.” (Appeal Br. 11.) Appellants also argue that Bosley’s suggestion of including gases in the matrix of its device would be understood to mean that they are included in addition to the solid sound reflective particles. (Id. at 12.) We agree with Appellants that Bosley’s disclosure does not show that the increase in visibility of its device under ultrasound observation results substantially solely by reflection of ultrasound energy at the matrix/gas bubble interface. 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 4 Appeal 2015-001345 Application 13/685,865 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, microencapsulants, 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 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. Although Bosley suggests hollow particles, it does not disclose that increased ultrasound visibility would result substantially solely from reflection of ultrasound energy at the gas bubble interface. Rather, it states that the “sound reflective particles 127 provide adequate [ultrasound] reflection.” (Id. at 8:16—17.) Thus, Bosley does not disclose the limitation of claim 1 requiring that the “gas bubbles are selected to increase the visibility of the device under ultrasound imaging substantially solely by reflection of ultrasound energy at the interface with the gas in the bubbles.” Bosley therefore does not anticipate claim 1. Independent claims 7 and 11 do not include the same limitation as claim 1, but they do require that the shaft of the claimed catheter “consists] 5 Appeal 2015-001345 Application 13/685,865 of a plastic material that has gas bubbles incorporated in ... at least one part of the shaft” (claim 7) or “consists] of a plastic material having solely gas bubbles in said plastic material... in at least part of the shaft” (claim 11). Thus, because the phrase “consists of’ closes the shaft to the inclusion of other materials, claims 7 and 11 also exclude the presence of the sound reflective particles required by Bosley. We therefore reverse the rejection of claims 1, 2, 4, 7—9, 11, 12, and 14 as anticipated by Bosley. Ill The Examiner has rejected dependent claims 5 and 15 as anticipated by, or alternatively as obvious based on, Bosley. The Examiner has also rejected dependent claims 3, 6, 10, and 13 as obvious based on Bosley and Chang. Both of these rejections, however, are based on the Examiner’s finding that Bosley discloses a device 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 limitations would have been obvious based on either of the cited references. We therefore reverse the remaining rejections. SUMMARY We reverse all of the rejections on appeal. REVERSED 6 Copy with citationCopy as parenthetical citation