Ex Parte Goshgarian

Board of Patent Appeals and Interferences

Apr 24, 2012

10427351 (B.P.A.I. Apr. 24, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JUSTIN G. GOSHGARIAN
____________

Appeal 2011-000644
Application 10/427,351
Technology Center 3700
____________

Before TONI R. SCHEINER, DONALD E. ADAMS, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims 1-4, 7, and 9 (App.
Br. 2; Reply Br. 2).
1
We have jurisdiction under 35 U.S.C. § 6(b).

1
Pending claims 5, 6, 8, and 10-20 stand withdrawn from consideration
(App. Br. 2; Reply Br. 2).
Appeal 2011-000644
Application 10/427,351

2
STATEMENT OF THE CASE
The claims are directed to an assembly for inserting a bifurcated
dilation balloon into a bifurcated channel. Claim 1 is representative and is
reproduced in the “CLAIMS APPENDIX” of Appellant’s Brief (App. Br.
13).
Claims 1-4, 7, and 9 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Wilson
2
and any one of Prass,
3

McGarvey
4
or Kunert.
5

We reverse.
ISSUE
Does the preponderance of evidence on this record reasonably suggest
modifying Wilson’s catheter assembly to include guidewires with breakable
bonds so that the guidewires function as a tandem pair during introduction
into the vasculature?
FACTUAL FINDINGS (FF)
FF 1. The art recognized that the delivery of guidewires to a “bifurcation is
highly unreliable and often unsuccessful because of the wrapping of the
second wire with the first at various points between its entry into the body
and its arrival at the bifurcation” (Wilson 1: ¶ [0007]).
FF 2. Wilson’s catheter assembly is configured to provide two guidewire
lumens that “run substantially parallel to each other throughout their
lengths,” so that the guidewires “remain substantially next to each other as
the catheter is manipulated” (Wilson 2: ¶ [0010]).

2
Wilson, US 2002/0055732 A1, published May 9, 2002.
3
Prass et al., US 5,161,533, issued November 10, 1992.
4
McGarvey, US 2002/0085828 A1, published July 4, 2002.
5
Kunert, US 4,876,132, issued October 24, 1989.
Appeal 2011-000644
Application 10/427,351

3
FF 3. For clarity, Wilson’s FIG. 3 is reproduced below:

“FIG. 3 is a longitudinal cross-sectional view of [Wilson’s] . . . catheter . . .
depicting two guide wire lumens” (Wilson 2: ¶ [0017]). Wilson’s “catheter
has two lumens disposed substantially parallel to each other therein. A
tracking wire lumen 14 is configured for receiving a tracking guide wire 16”
and “[a]n integrated guide wire lumen 18 is configured for receiving
integrated guide wire 20” (Wilson 2: ¶ [0026] - Wilson 3: ¶ [0027]).
FF 4. Examiner relies on Prass, McGarvey, or Kunert to suggest the use of
breakable bonds to hold wires in a spaced apart parallel arrangement (Ans.
4).
ANALYSIS
Based on the combination of Wilson and any one of Prass, McGarvey,
or Kunert, 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 have held the guidewires of Wilson in spaced parallel
relationship with breakable bonds . . . to keep the wires together until it is
desired to separate them” (Ans. 4). In this regard, Examiner concludes that
“[t]he inclusion of bonds on the guidewires of Wilson allows them to
function as a tandem pair during introduction into the vasculature” (id. at 7).
We are not persuaded.
Appeal 2011-000644
Application 10/427,351

4
As Appellant explains, Wilson’s catheter assembly requires the
guidewires to be placed in two separate lumens (App. Br. 9; see also FF 2-
3). We recognize Examiner’s finding that breakable bonds can be used to
hold wires in a spaced apart parallel arrangement (FF 4). Examiner,
however, failed to explain how one would modify Wilson’s catheter
assembly to include guidewires with breakable bonds when Wilson’s
guidewires are placed in two separate lumens (FF 2-3; Cf. Ans. 7).
CONCLUSION OF LAW
The preponderance of evidence on this record fails to reasonably
suggest modifying Wilson’s catheter assembly to include guidewires with
breakable bonds so that the guidewires function as a tandem pair during
introduction into the vasculature. The rejection of claims 1-4, 7, and 9 under
35 U.S.C. § 103(a) as unpatentable over the combination of Wilson and any
one of Prass, McGarvey or Kunert is reversed.

REVERSED

cdc