Ex Parte Guerra

Patent Trial and Appeal Board

Mar 24, 2017

13292942 (P.T.A.B. Mar. 24, 2017)

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.
13/292,942 11/09/2011 Rogelio Ivan Guerra 6128-031 6572
29335 7590
ROSENBAUM IP
1480 TECHNY ROAD
NORTHBROOK, IL 60062
EXAMINER
NGUYEN, VI X
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
03/28/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patents@rosenbaumip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROGELIO IVAN GUERRA
Appeal 2015-002869
Application 13/292,942
Technology Center 3700
Before JENNIFER D. BAHR, WILLIAM A. CAPP, and
FREDERICK C. LANEY, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Rogelio Ivan Guerra (Appellant)1 appeals under 35 U.S.C. § 134(a)
from the Examiner’s decision rejecting claims 1—8. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.
1 According to Appellant, the real party in interest is Bi02 Medical, Inc. Br.
2.
Appeal 2015-002869
Application 13/292,942
THE CLAIMED SUBJECT MATTER
Claim 7, reproduced below, is illustrative of the claimed subject
matter.
7. A detachment mechanism for a central access vena cava filter
assembly, comprising:
a. a catheter body comprised of a shape memory material
having a first expanded state and a second radially
contracted state;
b. an outer sheath concentrically disposed about the
catheter body wherein the catheter body and the outer
sheath are movable relative to one another; and
c. a vena cava filter member having a first end movably
coupled to the catheter body and a second end movable
relative to the catheter body, the first end
being diametrically expansible between a first state in
which the first end is immovably coupled to the catheter
body and a second state in which the first end is
released from being immovably coupled to the catheter
body.
REJECTIONS
I. Claims 7 and 8 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Bates (US 6,468,291 B2, iss. Oct. 22, 2002).
II. Claims 1—6 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Bates and Keegan (US 7,144,408 B2, iss. Dec.
5, 2006).
DISCUSSION
Rejection I—Anticipation
Claim 7 recites “a catheter body comprised of a shape memory
material.” Br. 22 (Claims App.). The Examiner finds that Bates’s
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Application 13/292,942
catheter 21 comprises a shape memory material. Ans. 2, 5 (citing
Bates 4:59-5:15). The passage cited by the Examiner does not support this
finding. As Appellant points out (Br. 6), this passage discloses that
“[cjatheter 21 and push tube 25 preferably comprise flexible materials such
as are commonly used in catheter construction, for example, polyethylene,
polyurethane or nylon.” Bates 4:59—62. This passage does not state that
catheter 21 comprises a shape memory material. This passage discloses a
resilient material, such as nickel-titanium, for struts 32 of filter element 30,
and a “flexible and resilient self-expanding nickel-titanium hoop” along
perimeter 38 of sac 31 of filter element 30, but does not disclose such a
material for the catheter. Id. 5:7—17.
In addition to the “catheter body,” claim 7 also recites “an outer
sheath concentrically disposed about the catheter body.” Br. 22 (Claims
App.). The Examiner finds that Bates discloses “a catheter body 21” and
“an outer sheath 20 concentrically disposed about the catheter body.”
Ans. 2. According to the Examiner, “as seen in fig. 1 [,] . . . Bates does
disclose an outer sheath 20 concentrically disposed about a catheter body 21
(see col. 4, line 51).” Id. at 4—5. Appellant contends, and we agree, that this
finding reflects “the Examiner’s incorrect and improper interpretation of
Bates.” Br. 5. As Appellant explains:
Specifically, Bates states the “[djelivery sheath 20 comprises
flexible catheter 21 having proximal end 22, distal end 23, and
interior lumen 24.” Col. 4 lines 51-52. By this plain language,
Bates discloses not a delivery sheath and a catheter, but a
delivery sheath which comprises a catheter (i.e., delivery sheath
20 is catheter 21).
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Application 13/292,942
Id. (brackets in original). Figure 1 of Bates illustrates push tube 25 disposed
within lumen 24 of catheter 21, but does not illustrate a separate outer sheath
disposed concentrically about catheter 21.
For the above reasons, the Examiner’s finding of anticipation of the
subject matter of claim 7 is predicated on unsupported findings.
Accordingly, we do not sustain the rejection of claim 7 or claim 8, which
depends from claim 7, under 35 U.S.C. § 102(b) as anticipated by Bates.
Rejection II—Obviousness
Claim 1, like claim 7, recites both “a catheter body” and “an outer
sheath concentrically disposed about the catheter body.” Br. 21 (Claims
App.). The same unsupported finding, discussed above with regard to claim
7, that Bates discloses “a catheter body 21” and “an outer sheath 20
concentrically disposed about the catheter body,” fatally taints the rejection
of claim 7 under 35 U.S.C. § 103(a). Ans. 3; see id. at 4—5 (stating that “as
seen in fig. 1 [,]. . . Bates does disclose an outer sheath 20 concentrically
disposed about a catheter body 21 (see col. 4, line 51)”). As Appellant
points out (Br. 13), the Examiner’s application of Keegan does not make up
for this deficiency. See Ans. 3 (citing Keegan for its teaching of collar 151
and its engagement with the filter member).
Claim 1 also recites a “collar member having a first state in which
the collar member is contracted about the first end of the filter member and a
second state in which the collar member is movably coupled and releasable
from the first end of the filter member.” Br. 21 (Claims App.). The
Examiner finds that Bates is “silent regarding” this feature, but finds that
Keegan teaches
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Application 13/292,942
a collar member 151... engaged with the first end of the filter
member, the collar member having a first state in which the collar
member is contracted about the first end of the filter member and
a second state in which the collar member is movably coupled
and releasable from the first end of the filter member, thereby
detaching the vena cava filter member from the catheter body.
Ans. 3 (citing Keegan, Fig. 103).
For the reasons set forth on pages 14—15 of the Brief, this finding
regarding Keegan is incorrect. Accordingly, the modification of Bates
proposed by the Examiner on page 3 of the Answer is predicated on an
unsupported finding, and, thus, lacks rational underpinnings.
For the above reasons, the Examiner fails to establish that the subject
matter of claim 1 would have been obvious. Accordingly, we do not sustain
the rejection of claim 1 or claims 2—6, which depend from claim 1, under 35
U.S.C. § 103(a) as unpatentable over Bates and Keegan.
DECISION
The Examiner’s decision rejecting claims 1—8 is REVERSED.
REVERSED
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