Ex Parte Fleischhacker

Board of Patent Appeals and Interferences

Jul 24, 2012

12367375 (B.P.A.I. Jul. 24, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MARK G. FLEISCHHACKER
____________

Appeal 2011-008024
Application 12/367,375
Technology Center 3700
____________

Before DONALD E. ADAMS, LORA M. GREEN, and
FRANCISCO C. PRATS, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL

This appeal under 35 U.S.C. § 134 involves claims 41-44 and 46-58
(App. Br. 2; Ans. 2). We have jurisdiction under 35 U.S.C. § 6(b).
STATEMENT OF THE CASE
The claims are directed to a guide wire. Claim 41 is representative
and is reproduced in the Claims Appendix of Appellant‟s Brief.
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Claims 41, 42, and 47 stand rejected under 35 U.S.C. § 102(e) as
being anticipated by Mam.
1

Claim 56 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Mam.
Claims 43, 44, and 46 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Mam and Richardson.
2

Claims 48, 49, 51, 52, 57, and 58 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Mam and Murata.
3

Claim 50 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Mam, Murata, and Osborne.
4

Claims 53 and 55 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Mam and Urick.
5

Claim 54 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Mam, Urick, and Darby.
6

We affirm.

Anticipation:
ISSUE
Does the preponderance of evidence on this record support
Examiner‟s finding that Mam teaches Appellant‟s claimed invention?

1
Mam et al., US 6,602,207 B1, issued August 5, 2003.
2
Richardson et al., US 6,673,025 B1, issued January 6, 2004.
3
Murata, US 6,019,737, issued February 1, 2000.
4
Osborne, US 5,251,640, issued October 12, 1993.
5
Urick, US 6,203,485 B1, issued March 20, 2001.
6
Darby et al., US 6,165,303, issued December 26, 2000.
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FACTUAL FINDINGS (FF)
FF 1. We adopt the Examiner‟s findings concerning the scope and content
of the prior art (Ans. 4) and repeat the following emphasis.
FF 2. Mam teaches, inter alia, a guidewire “consisting essentially of a core
wire . . . and a non-metallic coil wire,” wherein “the core wire ha[s] a
tapered segment between the medial segment and the distal segment . . . and
“consist[s] essentially of a non-metallic, non-braided, non-woven, polymeric
material” that is “monofilament and substantially solid in cross-section
throughout its entire length” (id.; see also Mam, col. 3, l. 8-9 (the “core wire
may be formed of any biocompatible plastic or metal”); id. at ll. 17-18
(“[s]urrounding core wire . . . may be a coil . . . formed of any biocompatible
metal or plastic”)).
FF 3. Examiner relies on Wang7 as an evidentiary reference to teach “a
plastic guidewire and [provide] an extensive list of biocompatible plastics
capable of being used in the guidewire” (Ans. 9).
ANALYSIS
We are not persuaded by Appellant‟s contention that Mam is a non-
enabling reference because it fails to identify a “specific „biocompatible
plastic‟ that could be used as the core wire material” or “coil material” (App.
Br. 8-9; Reply Br. 2-8). Instead, we agree with Examiner‟s reasoning that
Mam “does not need to go into detail about what types of biocompatible
plastics are available for use in a guidewire” as “[t]hose skilled in the art
know the types of plastics commonly used in catheters and guidewires”
(Ans. 9; see FF 3).

7
Wang et al., US 5,951,494, issued September 14, 1999.
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Appellant provides no persuasive evidence or argument to suggest
that a guidewire prepared from biocompatible plastic as taught by Mam
would not be useful in MR diagnostic or therapeutic procedures (see App.
Br. 6-8 and Claim 41; Cf. Ans. 8-9).
CONCLUSION OF LAW
The preponderance of evidence on this record supports Examiner‟s
finding that Mam teaches Appellant‟s claimed invention. The rejection of
claim 41 under 35 U.S.C. § 102(e) as being anticipated by Mam is affirmed.
Claims 42 and 47 are not separately argued and fall together with claim 41.
37 C.F.R. § 41.37(c)(1)(vii).

Obviousness:
The rejection over Mam:
ISSUE
Does the preponderance of evidence on this record support a
conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 4. Mam suggests a guidewire, wherein “[t]he coil . . . may surround the
entire length of the core” (Mam, col. 2, ll. 26-28; Ans. 5).
ANALYSIS
For the foregoing reasons, we are not persuaded by Appellant‟s
contention that Mam fails to suggest a “non-metallic, monofilament tapered
segment” (App. Br. 11; see FF 2). We are also not persuaded by Appellant‟s
contention that Mam fails to suggest a coil that surrounds the entire length of
the core (App. Br. 11; Cf. FF 4). Lastly, for the reasons set forth above, we
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are not persuaded by Appellant‟s contentions regarding Mam‟s suggestion of
a biocompatible plastic core and coil (Reply Br. 4-8).

CONCLUSION OF LAW
The preponderance of evidence on this record supports a conclusion
of obviousness. The rejection of claim 56 under 35 U.S.C. § 103(a) as
unpatentable over Mam is affirmed.

The rejection over the combination of Mam and Richardson:
ISSUE
Does the preponderance of evidence on this record support a
conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 5. Mam is relied upon as set forth above (FF 1-4; Ans. 5).
FF 6. Mam fails to suggest covering substantially the entire core with a
second polymeric material (Ans. 5).
FF 7. Richardson suggests a guidewire having a core, wherein
substantially the entire core is covered with a “lubricious” polymeric
material (Richardson, col. 9, ll. 18-31; Ans. 5-6).
ANALYSIS
Based on the combination of Mam and Richardson, Examiner
concludes that, at the time of Appellant‟s claimed invention, it would have
been prima facie obvious to a person of ordinary skill in this art to “modify
the core disclosed by Mam . . . to include a polymeric material substantially
covering the entire core as taught by Richardson . . . in order to increase the
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lubricity of the guidewire to aid during insertion into a body lumen” (Ans.
6).
In view of the teachings of Mam discussed above, as well as
Richardson (see FF 7), we are not persuaded by Appellant‟s contention that
Mam “is legally deficient” and “there is no explanation as to why one skilled
in the art would choose Richardson et al. for its disclosure relating to a
second polymeric material other than as provided by this invention” (App.
Br. 11).
CONCLUSION OF LAW
The preponderance of evidence on this record supports a conclusion
of obviousness. The rejection of claim 43 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Mam and Richardson is affirmed.
Claims 44 and 46 are not separately argued and fall together with claim 43.
37 C.F.R. § 41.37(c)(1)(vii).

The rejection over the combination of Mam and Murata:
ISSUE
Does the preponderance of evidence on this record support a
conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 8. Mam is relied upon as set forth above (FF 1-6; Ans. 6).
FF 9. Mam fails to suggest a “core wire being formed of a camber-
resistant, polymeric material or polyetherether ketone (PEEK), nor does
Mam . . . specifically disclose the coil wire being formed of polyethersulfone
or polyetherimide” (id.).
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FF 10. Murata suggests “PEEK, polyethersulfone and polyetherimide as
suitable biocompatible plastics for use in a guidewire” (id.).
ANALYSIS
Based on the combination of Mam and Murata, Examiner concludes
that, at the time of Appellant‟s claimed invention, it would have been prima
facie obvious to a person of ordinary skill in this art to “form the core wire
disclosed by Mam . . . of PEEK and the coil wire disclosed by Mam . . . of
polyethersulfone or polyetherimide. Such a modification would lead to the
predictable results of forming a core wire and coil wire of a biocompatible
plastic” (Ans. 6). Accordingly, we are not persuaded by Appellant‟s
contention that Mam “provides no disclosure of any specific polymeric
material or polymeric material characteristics that would lead the artisan to
Murata and thus to choose PEEK” (App. Br. 11).
CONCLUSION OF LAW
The preponderance of evidence on this record supports a conclusion
of obviousness. The rejection of claim 48 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Mam and Murata is affirmed. Claims
49, 51, 52, 57, and 58 are not separately argued and fall together with claim
48. 37 C.F.R. § 41.37(c)(1)(vii).

The rejection over the combination of Mam, Murata, and Osborne:
ISSUE
Does the preponderance of evidence on this record support a
conclusion of obviousness?
FACTUAL FINDINGS (FF)
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FF 11. The combination of Mam and Murata are relied upon as set forth
above (FF 1-6 and 8-10; Ans. 7).
FF 12. The combination of Mam and Murata fails to suggest a “core
including randomly distributed glass fiber segments therein” (Ans. 7).
FF 13. Osborne suggests “a guidewire having a core wire including
randomly distributed glass fiber segments therein” (id.; see also Osborne,
col. 5, ll. 23-31 (“glass fibers could be used in the core of the shaft to give it
good longitudinal stability”)). Accordingly, we are not persuaded by
Appellant‟s contention that “there is simply no connection . . . between Mam
. . ., Murata and Osborne . . . that would cause one skilled in the art to
combine the references to use glass fibers” (App. Br. 12).
ANALYSIS
Based on the combination of Mam, Murata, and Osborne, Examiner
concludes that, at the time of Appellant‟s claimed invention, it would have
been prima facie obvious to a person of ordinary skill in this art to “modify
the core wire disclosed by Mam . . . in view of Murata to include glass fibers
as suggested by Osborne in order to add strength to the core wire” (Ans. 7).
CONCLUSION OF LAW
The preponderance of evidence on this record supports a conclusion
of obviousness. The rejection of claim 50 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Mam, Murata, and Osborne is
affirmed.

The rejection over the combination of Mam and Urick, with or without
Darby:
ISSUE
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Does the preponderance of evidence on this record support a
conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 14. Mam is relied upon as set forth above (FF 1-6; Ans. 7-8).
FF 15. Mam fails to suggest a “core wire including helically wound carbon
fibers held together by a resin” (Ans. 7).
FF 16. Urick suggests “a guidewire having a core wire including a portion
formed by helically wound carbon fibers held together by a biocompatible
resin” (id.).
FF 17. The combination of Mam and Urick fails to suggest the use of a
vinylester resin (Ans. 8).
FF 18. Darby suggests the “use of a vinylester resin for use in holding
carbon fibers” (id.).
ANALYSIS
Based on the combination of Mam and Urick, Examiner concludes
that, at the time of Appellant‟s claimed invention, since both Mam and Urick
suggest core wires for use in a guidewire, it would have been prima facie
obvious to a person of ordinary skill in this art to “substitute one material for
the other to achieve the predictable results of creating a biocompatible
guidewire for use in a body lumen” (Ans. 7). In addition, based on the
combination of Mam, Urick, and Darby, Examiner concludes that, at the
time of Appellant‟s claimed invention it would have been prima facie
obvious to a person of ordinary skill in this art to substitute Darby‟s resin for
that of Urick to “achieve the predictable results of sufficiently bonding the
carbon fibers together” (Ans. 8). Accordingly, as the Examiner has provided
a reasoned rationale for combining the cited references, we are not
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persuaded by Appellant‟s contention that “no causal connection is suggested
to provide any basis to combine Mam. . . with Urick and/or Dar[b]y” (App.
Br. 12).
CONCLUSION OF LAW
The preponderance of evidence on this record supports a conclusion
of obviousness. The rejection of claim 53 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Mam and Urick is affirmed. Claim 55
is not separately argued and falls together with claim 53. 37 C.F.R. §
41.37(c)(1)(vii).
The rejection of claim 54 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Mam, Urick, and Darby is affirmed.

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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