Ex Parte Henry et al

Patent Trial and Appeal Board

Dec 23, 2016

11423934 (P.T.A.B. Dec. 23, 2016)

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.
11/423,934 06/13/2006 William S. Henry 05-0071 (US 02) 6682
115127 7590 12/28/2016
Stryker - Vista IP Law Group
Nancy Rushton
21760 Stevens Creek Blvd.
Suite 100
Cupertino, CA 95014
EXAMINER
YABUT, DIANE D
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
12/28/2016 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):
nnr @ viplawgroup .com
sp @ viplawgroup. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAM S. HENRY, CHARLES DALY, RUSSELL FORD,
MICHAEL D. WILLIAMS, HANH DUONG, HUGHIE DEVANEY,
KAMAL RAMZIPOOR, CLIFFORD TEOH, RICHARD MURPHY,
ANDREW HUFFMASTER, and SCOTT MCGILL
Appeal 2014-003263
Application 11/423,9341
Technology Center 3700
Before MURRIEL E. CRAWFORD, MICHAEL C. ASTORINO, and
MATTHEW S. MEYERS, Administrative Patent Judges.
ASTORINO, Administrative Patent Judge.
DECISION ON APPEAL
The Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1—19. We have jurisdiction over the appeal under
35 U.S.C. § 6(b).
We REVERSE.
1 According to the Appellants, “[t]he real parties in interest in this appeal
are Stryker Corporation, a corporation organized under the laws of
Michigan, and Stryker NV Operation Ltd., an Irish corporation.” Appeal
Br. 2.
Appeal 2014-003263
Application 11/423,934
STATEMENT OF THE CASE
Claimed Subject Matter
Claims 1 and 9 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the subject matter on appeal.
1. A vaso-occlusive assembly, comprising:
an elongate sheath having a wall and defining an axial
lumen;
respective proximal and distal elongate core members
disposed within the lumen of the sheath, wherein the proximal
elongate core member is joined to the distal elongate core
member at a joint located within the sheath lumen, the distal
elongate core member including a severable junction;
a marker coil coaxially arranged around the distal elongate
core member and partially disposed within the lumen of the
sheath;
a coil member coaxially arranged around the distal
elongate core member and further coaxially arranged around at
least a portion of the marker coil, the coil member further being
secured at a distal end thereof to the distal elongate core member;
and
a vaso-occlusive coil coupled to the distal elongate core
member at a location distal to the severable junction.
Rejections
Claims 1—6, 8, 9, and 11—19 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Bashiri et al. (US 6,468,266 Bl, iss. Oct. 22, 2002,
hereinafter “Bashiri”) and Reynolds et al. (US 2004/0167441 Al, pub.
Aug. 26, 2004, hereinafter “Reynolds”).
Claims 7 and 10 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Bashiri, Reynolds, and Monstadt et al. (US 2004/0034378 Al, pub.
Feb. 19, 2004, hereinafter “Monstadt”).
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Appeal 2014-003263
Application 11/423,934
ANALYSIS
The Appellants argue that the Examiner’s rejection includes
modifications to Bashiri’s core wire that are based on impermissible
hindsight. Appeal Br. 9; see also Reply Br. 4. The Appellants’ argument is
persuasive.
The Examiner’s rejection of independent claims 1 and 9 is based on a
finding that a “transition region” can be located between a proximal and
distal portions of Bashiri’s core wire 103. See Non-Final Act. 3 (citing
Bashiri, Figs. 1, 8, and 9). The Examiner identifies the “transition region”
essentially as the portion of core wire 103 between element numbers 119
and 117 where the core finishes tapering. See id. at 4. The Examiner also
finds that Bashiri fails to disclose the recitation of claim 1 that “the proximal
elongate core member is joined to the distal elongate core member at a
joint.” See id. at 5. To remedy this deficiency the Examiner turns to
Reynolds’s teaching of a connector structure (e.g. a hypotube) 18, which
connects the ends of proximal guidewire section 14 and distal guidewire
section 16. Id. (citing Reynolds, para. 37). The Examiner concludes:
It would have been obvious to one of ordinary skill in the art. . .
to provide proximal and distal elongate core members joined at
a joint contained within a segment of hypotube, as taught by
Reynolds ..., in order to join two different core members formed
from different materials while allowing a gradual transition in
stiffness to decrease the probability that the core wire kinks, as
well as to control the amount of relative flexibility for pushability
and torqueability along the length of the core wire.
Non-Final Act. 5 (citing Reynolds, paras. 35—36) (emphasis added).
The paragraphs in Reynolds cited by the Examiner teach that proximal
and distal sections 14, 16 of guidewire 10 may be made of different
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Appeal 2014-003263
Application 11/423,934
materials, which have different moduli of elasticity and results in sections
14, 16 having different flexibility. Reynolds, para. 35; see also id. para. 22.
Reynolds also teaches that the differences in the flexibility of sections 14, 16
subjects guidewire 10 to an increased risk of kinks and fractures. See id.
para. 35. To decrease the probability that guidewire 10 may kink and
fracture Reynolds’s connection 20 is provided with an overlapping portion
12, which has a gradual transition to provide stiffness and distribute stress
along the entire length of connection 20. See id. para. 35, Figs. 1, 2.
Reynolds adds that as a result of the gradual transition in stiffness the distal
section can be shortened relative to the proximal section which may increase
the pushability and torqueability of guidewire 10. See id. para. 36.
The Appellants point out that the modification of Bashiri’s core wire
103 — a single unitary structure — breaks the core wire apart and makes
two structures. See Appeal Br. 6, 8—9. The Appellants also point out that
Bashiri includes elements, i.e., polymeric plug 113 and a shrink wrap
coating 119, which perform these functions for core wire 103 (i.e., provide
structural strength for the “transition region”). See id. at 8—9 (citing Bashiri,
col. 7,11. 19—64); see also Reply Br. 3. In response, the Examiner finds that
“[t]he disclosure in col. 7, lines 19-64 in Bashiri... is silent in regards to the
assembly’s structural strength in the transition region.” Ans. 9. However,
the Appellants persuasively explain that:
one of ordinary skill in the art would know that having a
polymeric plug and a shrink wrap coating assembly coaxially
disposed around the core wire at the alleged transition region of
Bashiri would strengthen the region, decreasing the probability
of the core wire kinking at the region, and also [sic would be]
useful to control the amount of relative flexibility for pushability
and torqueability at the alleged transition region.
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Appeal 2014-003263
Application 11/423,934
Reply Br. 3. Further, the Examiner fails to explain why Reynolds’s
teaching, which is particular to proximal and distal guidewire sections made
of different materials, would be applied to core wire 103, which even if
broken into two pieces would not be made of different materials.
Thus, we do not sustain the Examiner’s rejection of independent
claims 1 and 9, and dependent claims 2—6, 8, and 11—19, as unpatentable
over Bashiri and Reynolds. The remaining rejection based on Bashiri and
Reynolds in combination with Monstadt relies on the same reasoning as
discussed above. As such, we do not sustain the rejection of dependent
claims 7 and 10 as unpatentable over Bashiri, Reynolds, and Monstadt.
DECISION
We reverse the Examiner’s decision rejecting claims 1—19.
REVERSED
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