Ex parte HOLDEN et al.

Board of Patent Appeals and Interferences

Dec 10, 1998

08403995 - (D) (B.P.A.I. Dec. 10, 1998)

Application for patent filed March 14, 1995.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written for
publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte RICHARD W. HOLDEN, II
and
ANTHONY W. WILLIAMS
__________
Appeal No. 98-2385
Application 08/403,9951
___________
ON BRIEF
___________
Before FRANKFORT, STAAB, and CRAWFORD, Administrative Patent Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1 through
3 and 6 through 17. Claims 4 and 5, the only other claims pending in the application, have
been indicated by the examiner to contain allowable subject matter, but currently stand
Appeal No. 98-2385
Application 08/403,995
2
objected to until they are rewritten in independent form.
Appellants’ invention is directed to a reinforced catheter and to a method of making
such catheter. Independent claims 1 and 17 are representative of the subject matter on
appeal and a copy of those claims is attached to this decision.
The prior art references of record relied upon by the examiner in rejecting the
appealed claims are:
Truckai 5,176,660 Jan. 5, 1993
Brown et al. (Brown) 5,334,169 Aug. 2, 1994
(filed May 11, 1992)
Claims 1 through 3, 6, 7 and 10 through 17 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Truckai.
Claims 1 through 3, 6 through 9, 13 and 17 stand rejected under 35 U.S.C.
§ 102(e) as being anticipated by Brown.
Rather than reiterate the examiner's full statement of the above-noted rejections and
the conflicting viewpoints advanced by the examiner and appellants regarding those
rejections, we make reference to the examiner's answer (Paper No. 13, mailed October 8,
1997) for the examiner's reasoning in support of the rejections, and to appellants’ brief
(Paper No. 12, filed September 19, 1997) for appellants’ arguments thereagainst.
OPINION
Appeal No. 98-2385
Application 08/403,995
3
In reaching our decision in this appeal, we have given careful consideration to
appellants’ specification and claims, to the applied prior art references, and to the
respective positions articulated by appellants and the examiner. As a consequence of our
review, we have made the determinations which follow.
Like the examiner (answer, page 3), it is our understanding that claims 1 through 3
and 6 through 17 are to stand or fall together because appellants’ brief does not include a
statement that this grouping of claims does not stand or fall together. In fact, page 2 of the
brief clearly characterizes claims 1 through 3 and 6 through 17 as constituting a “first
group.” Thus, in accordance with 37 CFR § 1.192(c)(7), we select claim 1 as being
representative of the “first group.”
Looking to the examiner’s rejection of claims 1 through 3, 6, 7 and 10 through 17
under 35 U.S.C. § 102(b) as being anticipated by Truckai, we have carefully reviewed the
patent to Truckai, but must agree with appellants’ arguments on page 3 of the brief that
there is no teaching in this reference of first and second sets of reinforcing filaments,
wherein each of the sets is comprised of “equal and parallel spaced filament groups” and
“each of said filament groups includes two or more parallel individual filaments,” as set
forth in independent claim 1 on appeal. Likewise, we must agree, with regard to method
claim 17 on appeal, that Truckai does not disclose or teach providing “multiple reinforcing
filament groups” over the base coat of a catheter wherein there is provided “two or more
Appeal No. 98-2385
Application 08/403,995
4
parallel individual filaments in each reinforcing group.” Thus, we will not sustain the
examiner’s rejection of independent claims 1 or 17, or of any of the claims which depend
therefrom, under 35 U.S.C. § 102(b) as being anticipated by Truckai.
We reach a contrary conclusion with regard to the examiner’s rejection of claims 1
through 3, 6 through 9, 13 and 17 under 35 U.S.C. § 102(e) as being anticipated by Brown.
As the examiner has correctly noted, when we look to the showing in Figure 6 of the Brown
patent, we perceive a method of making a catheter and a product (i.e., Fig. 6f) that is
identical to that set forth in the claims on appeal. More specifically, with respect to
representative claim 1 on appeal, we note that Brown teaches a catheter comprising a
main catheter body (21 in Fig. 6f), a first set of reinforcing filaments (applied at 28)
extending in a clockwise manner, and a second set of reinforcing filaments (applied at 22)
extending in a counterclockwise manner. As can be readily seen in Figure 6 of Brown,
each of the first and second sets of reinforcing filaments is comprised of equal and parallel
spaced filament groups, one dispensed from the upper end of each of the wrappers (22,
28) and one dispensed from the lower end of each of the wrappers, and wherein each of
said filament groups includes two or more (three as seen in Fig. 6) parallel individual
filaments. Thus, we sustain the examiner’s rejection of claim 1 under 35 U.S.C. § 102(e)
as being anticipated by Brown, and note that (as per appellants’ grouping of the claims)
claims 2, 3, 6 through 9, 13 and 17 fall with claim 1.
Appeal No. 98-2385
Application 08/403,995
5
As a further point with regard to the Brown patent, we note that the arrangement of
Figure 6, when considered with each filament of (23) and (29) constructed as in Figure 23
of the patent, would disclose and teach a catheter and a method of making the same which
is substantially identical to that disclosed and claimed by appellants. Contrary to
appellants’ assertions on page 4 of their brief, the fact that the outside filaments in Figure
23 of Brown are wound or twisted around a central core filament does not mean that the
outer filaments necessarily must be considered to be something other than “parallel
individual filaments,” as set forth in claims 1 and 17 on appeal. Webster’s New World
Dictionary, Second College Edition, Prentice Hall Press, 1986, defines “parallel” as “1.
Extending in the same direction and at the same distance apart at every point, so as never
to meet,” and this is exactly what any given pair of the outside filaments seen in Figure 23
of Brown appears to do as they wind around the central filament therein. Thus, appellants’
argument that the twisted filaments as taught in Figure 23 of Brown are “specifically
excluded from the invention claimed by appellants,” is incorrect.
It follows from the foregoing that the examiner's rejection of claims 1 through 3, 6, 7
and 10 through 17 under 35 U.S.C. § 102(b) as being anticipated by Truckai is reversed,
while the examiner’s rejection of claims 1 through 3, 6 through 9, 13 and 17 under 35
U.S.C. § 102(e) as being anticipated by Brown is affirmed.
The decision of the examiner, accordingly, is affirmed-in-part.
Appeal No. 98-2385
Application 08/403,995
6
Appeal No. 98-2385
Application 08/403,995
7
No time period for taking any subsequent action in connection with this appeal may
be extended under 37 CFR § 1.136(a).
AFFIRMED-IN-PART
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
CEF/caw
Appeal No. 98-2385
Application 08/403,995
8
David A. Hey
Mallinckrodt Medical, Inc.
675 McDonnell Boulevard
St. Louis, MO 63134
Appeal No. 98-2385
Application 08/403,995
9
APPENDIX
1. A catheter comprising
a main catheter body;
a first set of reinforcing filaments embedded in walls of said main catheter body and
extending in a clockwise manner; and
a second set of reinforcing filaments embedded in walls of said main catheter body
and extending in a counterclockwise manner;
wherein said first set of reinforcing filaments is comprised of equal and parallel
spaced filament groups and each of said filament groups includes two or more parallel
individual filaments; and
wherein said second set of reinforcing filaments is comprised of equal and parallel
spaced filament groups and each of said filament groups includes two or more parallel
individual filaments.
17. A method of making a catheter comprising:
extruding a base coat of a main body of said catheter;
providing multiple reinforcing filament groups over said base coat; and
extruding a top coat of said main body of said catheter over said reinforcing
filament groups;
the improvement comprising:
the use of two or more parallel individual filaments in each reinforcing filament
group.