Ex Parte Hartley et alDownload PDFPatent Trials and Appeals BoardDec 18, 201411226611 - (D) (P.T.A.B. Dec. 18, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/226,611 09/14/2005 David Ernest Hartley 12730/607 PA-5577-RFB 5744 48003 7590 12/18/2014 BGL/Cook - Chicago PO BOX 10395 CHICAGO, IL 60610 EXAMINER COLELLO, ERIN L ART UNIT PAPER NUMBER 3734 MAIL DATE DELIVERY MODE 12/18/2014 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 DAVID ERNEST HARTLEY, DAVID A. DREWES, JR., FRED T. PARKER, and JAY A. DITTMAN ____________ Appeal 2012-007727 Application 11/226,611 Technology Center 3700 ____________ Before JEFFREY N. FREDMAN, ULRIKE W. JENKS, and CHRISTOPHER G. PAULRAJ, Administrative Patent Judges. JENKS, Administrative Patent Judge Decision on Request for rehearing Appellants have requested rehearing of the Decision entered September 25, 2014. We have carefully reviewed the original opinion in light of Appellants’ request. Appellants contend that we misapprehended the limitation of “outer tube” as recited in claim 1 to be overly broad and that Appellants “were referring to its length” rather than its composition (Req. Reh’g 4). This argument was fully addressed in our Decision. In the Decision we not only agreed with the Examiner’s finding that the outer tube “can be made of several components that can be fused to form the final structure” (Dec. 10); we also agreed with the Examiner’s position that the final structure can be applied throughout the full length of the catheter Appeal 2012-007727 Application 11/226,611 2 because “[t]here is nothing in MacDonald that would suggest that the materials used in elements 140 and 120 could not be applied throughout the full length of the catheter as suggested by the Examiner based on the combination of references.” (Dec. 11; see also Ans. 17). We recognize, but are not persuaded by, Appellants contention that it is “less likely than not that one of skill reading MacDonald would include a high density radiopaque material at the level claimed by Petitioners along the length of the catheter.” (Req. Reh’g 3, 4.) Specifically, the background section of MacDonald explains “that making the [radiopaque] stripes wide enough to be seen under fluoroscopy makes the [catheter] shaft stiffer and less flexible.” (MacDonald col. 2, ll.17–20; see also Req. Reh’g 4). “[A] given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine.” Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006). “‘Instead, the benefits, both lost and gained, should be weighed against one another.”’ Id. (quoting Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000)). Even though MacDonald recognizes that the radiopaque stripes can affect the catheter by making it more stiff and less flexible (MacDonald col. 2, ll.17–20), MacDonald also notes that when the radiopaque band is fused to a radiopaque metal braid the band “displays even better under fluoroscopy” (MacDonalds col. 8, ll. 17–19). Thus, MacDonald teaches that the addition of the radiopaque material into the polymer allows the band to be more flexible than a metal ring (FF 7) and applying this radiopaque material over a metal braid would make the material even more visible under fluoroscopy (MacDonald col. 8, ll. 17–19). Accordingly, we remain Appeal 2012-007727 Application 11/226,611 3 convinced that there is nothing in MacDonald that would dissuade the artisan from applying “the materials used in elements 140 and 120 [of MacDonald] . . .throughout the full length of the catheter as suggested by the Examiner.” (Dec. 11.) “[T]he desire to view the entire length of a catheter tube is found in Gilmartin as the reference discloses incorporating radiopaque filaments in the reinforcement layer (FF 1).” (Dec. 9.) MacDonald provides adding radiopaque material to the outer layer, even if only along a small portion of the catheter, as this “increases radiopacity in thin walled catheters” (MacDonald 4, ll. 27–28; see also FF 7, 8; Ans. 6.) As explained by the Examiner [MacDonald’s] teaching of having a piece of the catheter assembly comprised of two polymers and a 35-85 weight percent of a high density radiopaque material is being used to teach modifying the existing outer tube of Gilmartin and Samson so that the catheter tube can be visible using fluoroscopy and not that the physical piece of MacDonald would be substituted or added into the system of Gilmartin and Samson. (Ans. 18–19, 17; see also FF 1, 7, 8; Dec. 10.) We agree with the Examiner’s position that “[m]oving the radiopaque material from the filamentous braid to the outer polymer layer is such a substitution [of one type of radiopaque material for another] as it would have predictably allowed for visualization of relevant portions [or the entire length] of the catheter within the body during a medical procedure (FF l, 7, 8).” (Dec. 9.) We find no point of law or fact which we overlooked or misapprehended in arriving at our Decision. Therefore, Appellants’ request has been granted to the extent that the Decision has been reconsidered, but Appeal 2012-007727 Application 11/226,611 4 such request is denied with respect to making any modifications to the Decision affirming the Examiner’s rejections. DENIED cam Copy with citationCopy as parenthetical citation