Ex Parte Knudson

Patent Trial and Appeal Board

Mar 5, 2018

14054519 (P.T.A.B. Mar. 5, 2018)

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.
14/054,519 10/15/2013 John C. Knudson 0B-046508US/82410-0529 2804
55962 7590
Wiley Rein LLP
Patent Administration
1776 K Street, NW
Washington, DC 20006
EXAMINER
MEDWAY, SCOTT J
ART UNIT PAPER NUMBER
3763
NOTIFICATION DATE DELIVERY MODE
03/07/2018 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):
ptodocket @ wileyrein. com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN C. KNUDSON
(APPLICANT: St. Jude Medical, Atrial Fibrillation Division, Inc.)
Appeal 2016-004384
Application 14/054,5191
Technology Center 3700
Before DONALD E. ADAMS, ERIC B. GRIMES, and
FRANCISCO C. PRATS, Administrative Patent Judges.
ADAMS, Administrative Patent Judge.
1 Appellant identifies the real party in interest as “St. Jude Medical, Atrial
Fibrillation Division, Inc.” (App. Br. 2).
Appeal 2016-004384
Application 14/054,519
DECISION ON APPEAL
This Appeal2 under 35 U.S.C. § 134(a) involves claims 2—4, 8, 9, and
11 (App. Br. 4).3 Examiner entered rejections under 35 U.S.C. § 102(b).
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
STATEMENT OF THE CASE
Appellant’s disclosure “relates to control handles for steerable
catheters and sheaths and method of manufacturing and using such handles”
(Spec. 12). Appellant’s independent claims 2 and 8 are representative and
reproduced below:
2. An apparatus for manipulating a medical device including an
actuation wire, the apparatus comprising:
a handle having a longitudinal axis;
an actuator having a major axis and a minor axis, wherein
the actuator is coupled to the handle at a pivot with the major
axis oriented transverse to the longitudinal axis;
and
2 Appellant states that this Appeal is related to Appeal 2011-005633,
Opinion mailed August 8, 2012, Application 11/024,181, now US Patent
8,583,260 B2, issued Nov. 12, 2013.
3 Pending claims 5—7 stand allowable (Final Action, mailed April 27, 2015
(Final Act.) 1—2). We recognize Examiner’s statement of the status of the
claims (see Final Act. 2). We also recognize Examiner’s indication that
“[f]or purposes of appeal, the proposed amendment(s) [set forth in
Appellant’s June 29, 2015] . . . will be entered” (Examiner’s Advisory
Action mailed July 8, 2015 (Advisory Action) 1). As Appellant explains,
“[u]pon entry of [Appellant’s June 29, 2015] amendment. . . [c]laims 2-4, 8,
9, and 11 stand rejected. Appellant thanks the Examiner for allowing claims
5-7. Claim 10 is canceled without prejudice or disclaimer” (Appellant’s
Amendment received June 29, 2015 (Appellant’s Amendment) 5).
2
Appeal 2016-004384
Application 14/054,519
a single pulley mechanically coupled to the actuator at a
point offset from the pivot and configured to receive the
actuation wire,
wherein, when the actuator is pivoted relative to the
handle in a first actuation direction, the pulley is engaged to
move relative to the handle and deflect the medical device in a
first deflection direction, and
wherein, when the actuator is pivoted relative to the
handle in a second actuation direction opposite the first
actuation direction, the pulley is engaged to move relative to the
handle and deflect the medical device in a second deflection
direction opposite the first deflection direction.
8. An apparatus for manipulating a medical device including an
actuation wire, the apparatus comprising:
a handle;
an elongate actuator coupled to the handle and
configured to rotate relative to the handle about an axis of
rotation; and
a single pulley mechanically coupled to the actuator at a
point offset from the axis of rotation of the elongate actuator,
wherein, when the actuator is rotated relative to the
handle, the pulley moves relative to the handle.
(App. Br. 12—13 (emphasis added).)
The claims stand rejected as follows:
Claims 2-4, 8, 9, and 11 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Takayama.4
4 Takayama, US 4,559,928, issued Dec. 24, 1985.
3
Appeal 2016-004384
Application 14/054,519
Claims 8 and 9s stand rejected under 35 U.S.C. § 102(e) as anticipated
by Selkee.5 6
The rejection over Takayama:
ISSUE
Does the preponderance of evidence on this record support
Examiner’s finding that Takayama teaches, inter alia, a single pulley
mechanically coupled to an actuator?
FACTUAL FINDINGS (FF)
FF 1. Takayama “relates to an endoscope apparatus and, more particularly,
to an endoscope apparatus having a bending mechanism driven by a motor
to bend an insertion section of the endoscope apparatus” (Takayama 1:9-12;
see generally Ans. 2).
FF 2. Takayama’s figure 3 is reproduced below:
F 1 G. 3
iZ
...
S88
84
Takayama’s “FIG. 3 is a partial perspective view schematically showing the
main part of an endoscope apparatus according to a[n] . . . embodiment of
5 We did not include canceled claim 10 in our deliberations (see Appellant’s
Amendment 5; cf Final Act 1—2; Advisory Action 1; Ans. 4).
6 Selkee, US 2008/0255540 Al, published Oct. 16, 2008.
4
Appeal 2016-004384
Application 14/054,519
[Takayama’s]. . . invention” (Takayama 2:49—52 (emphasis omitted); see
generally Ans. 2).
FF 3. Examiner finds, with reference to Takayama’s figure 3, that
Takayama “discloses an apparatus for manipulating a medical device
including an actuation wire 38,” wherein
the apparatus compris[es]:
a handle 12 . . . having a longitudinal axis;
an actuator 64 . . . having a major axis and a minor axis,
wherein the actuator is coupled to the handle at a pivot with the
major axis oriented transverse to the longitudinal axis . . . ; and
a single pulley 32 . . . mechanically coupled to the
actuator at a point offset from the pivot and configured to
receive the actuation wire 38,
wherein, when the actuator is pivoted relative to the
handle in a first and oppositely-oriented second actuation
directions ... the pulley is engaged to move relative to the
handle and deflect the medical device in a first deflection
direction and a second actuation direction opposite the first
direction, respectively.
(Ans. 2; see Takayama 3:20-61; Takayama 5:26—6:66.)
FF 4. Examiner finds that Takayama’s “pulley 32 . . . [is] mechanically
coupled to the actuator (via axle 34, worm gear 30 and motor 28, the latter of
which is coupled to the actuator with wires) at a point offset from the axis of
rotation of the elongate actuator” (Ans. 3; see Takayama 5:34—38 (“[a]
deflection control lever 64 is disposed on the lever support plate 60 to be
pivotal about the proximal end portion of the lever support plate 60,” which
“is mounted on the rotating shaft 34 of the wire drum 32” (emphasis
omitted); see Ans. 2; Takayama 5:32—34 (“a spur gear 36 which meshes with
a worm gear 30 is mounted on a rotating shaft 34 of [] wire drum 32”
(emphasis omitted))).
5
Appeal 2016-004384
Application 14/054,519
FF 5. Examiner finds that “when the actuator is rotated relative to the
handle, the pulley moves relative to the handle” (Ans. 3; see also Takayama
6:20-38 (Takayama discloses that the deflection control lever 64 regulates
the speed of motor 28, wherein “[u]pon rotation of the motor 28, the spur
gear 36 and the wire drum 32 are rotated” (emphasis omitted))).
ANALYSIS
Examiner finds that Takayama teaches Appellant’s claimed invention
(Ans. 2—3). In this regard, Examiner finds that “Takayama discloses a wired
mechanical coupling present between the actuator and the motor, and the
motor is mechanically coupled to the pulley” (Ans. 5). Stated differently,
Examiner finds that Takayama’s actuator, which is mechanically moveable,
is electrically coupled to a motor and the motor is mechanically coupled to a
pulley. In this regard, Examiner finds that Appellant’s claimed invention
“does not require a direct mechanical coupling between the pulley and the
actuator; therefore, an indirect mechanical coupling anticipates [Appellant’s]
claimed [invention]” {id. at 6; see id. (Appellant’s “claim does not require a
specific driving mechanism between the pulley and the actuator, but rather,
that the pulley and the actuator are ‘mechanically coupled’”))
Appellant contends that Takayama does not expressly or inherently
disclose a pulley that is mechanically coupled to an actuator (App. Br. 8—9).
In this regard, Appellant contends that “[a] person of ordinary skill in the art
would readily appreciate that the meaning of the phrase ‘mechanical
coupling’ is that power applied to one component (e.g., the actuator) is
mechanically transferred to the other component (e.g., the pulley)” (App.
Br. 8 ; see Reply Br. 4—5). Thus, Appellant contends that a person of
ordinary skill in this art would understand that Takayama’s support plate is
6
Appeal 2016-004384
Application 14/054,519
stationary and, therefore, “there can be no transfer of motion from support
plate 60 to gears 30 and 36, and thus no transfer of motion from gears 30 and
36 to [Takayama’s] pulley” (App. Br. 9; see FF 1—5). To the contrary,
Appellant contends, “Takayama makes clear that gears 30 and 36 are motor
driven, not mechanically driven” and, thus, “the movement of Takayama’s
actuator is not mechanically transferred to gears 30, 36; rather, moving
Takayama’s actuator energizes motor 28, which in turn causes movement of
gears 30, 36” (App. Br. 9; FF 1—5).
On this record, we find that Appellant has the better position.
Although, as Examiner explains, Takayama’s actuator may be, at best,
indirectly mechanically coupled to a pulley (i.e., through the use of an
intermediary electrical coupling), Appellant’s claimed invention specifically
requires “a single pulley mechanically coupled to the actuator” (see App. Br.
12; cf. FF 1—5). Examiner failed to establish that Takayama teaches a
device, wherein a single pulley is mechanically coupled to an actuator.
CONCLUSION OF LAW
The preponderance of evidence on this record fails to support
Examiner’s finding that Takayama teaches, inter alia, a single pulley
mechanically coupled to an actuator. The rejection of claim 2-4, 8, 9, and
11 under 35 U.S.C. § 102(b) as being anticipated by Takayama is reversed.
The rejection over Selkee:
ISSUE
Does the preponderance of evidence on this record support
Examiner’s finding that Selkee teaches a device comprising a single pulley?
7
Appeal 2016-004384
Application 14/054,519
FACTUAL FINDINGS (FF)
FF 6. Selkee “relates to improved bidirectional steerable catheters, and
more particularly to a catheter having a bidirectional control handle” (Selkee
12; see Ans. 4).
FF 7. Selkee’s figure 9 is reproduced below:
FIC.9
84 ,-?!?
Selkee’s “FIG. 9 is a top exploded view of a control handle of [Selkee’s]
catheter” (Selkee 125 (emphasis omitted); see Ans. 4).
FF 8. Selkee’s figure 12a is reproduced below:
FfG.tga
?k ?4
Selkee’s figure 12a illustrates “components of [Selkee’s] steering assembly .
. . without deflection in the tip section of the catheter” (Selkee 128; see Ans.
4).
8
Appeal 2016-004384
Application 14/054,519
FF 9. Selkee’s figure 126 is reproduced below:
//'
...........V *............
Selkee’s figure 126 illustrates “components of [Selkee’s] steering assembly .
. . with deflection of the tip section to the right” (Selkee 128; see Ans. 4).
FF 10. Selkee discloses:
It can be seen from FIGS. 12a-12c that rotation of the
lever structure 70 causes deflection in the catheter tip section
14. That is, when the lever structure is rotated in the clockwise
rotation (namely, in the +a direction) (FIG. 126), the pulley 72a
is translated proximally. Because the puller wire 32a trained on
the pulley 12a is stopped against proximal movement at its
proximal end by the stop 16a, the proximal translation of the
pulley 12a causes it to rotate counterclockwise thereby drawing
proximally the wire segment 108a, which results in deflection
of the tip section 14 to the right. Facilitating this deflection is
the release of the segment 1126 as the pulley 726 is
coincidentally translated distally by the lever structure 70. The
resulting slack in the segment 1126 is taken up by the spring
746 as the pulley 726 rotates clockwise.
Correspondingly, when the lever structure is rotated in
the counterclockwise rotation (namely, in the -a direction)
(FIG. 12c), the pulley 726 is translated proximally. Because the
puller wire 326 trained on the pulley 726 is stopped against
proximal movement at its proximal end by the stop 766, the
proximal translation of the pulley 726 causes it to rotate
clockwise thereby drawing proximally the wire segment 1126,
which results in deflection of the tip section 14 to the left.
Facilitating this deflection is the release of the segment 112a as
the pulley 12a is coincidentally translated distally by the lever
9
Appeal 2016-004384
Application 14/054,519
structure 70. The resulting slack in the segment 112a is taken
up by the spring 74a as the pulley 12a rotates counterclockwise.
(Selkee Tflf 79-80 (emphasis omitted).)
FF 11. Examiner finds that Selkee discloses an
apparatus comprising:
a handle (defined by housing 60. . .);
an elongate actuator 70 . . . coupled to the handle and
configured to rotate relative to the handle about an axis of
rotation; and
a [] pulley 72 a or 72b . . . mechanically coupled to the
actuator at a point offset from the axis of rotation of the
elongate actuator,
wherein, when the actuator is rotated relative to the
handle, the pulley moves relative to the handle.
(Ans. 4, citing Selkee, FIGS. 9, 10, 12a—12c, and Tflf 79-80.)
ANALYSIS
Examiner finds that Selkee teaches Appellant’s claimed invention
(Ans. 4). In this regard, Examiner finds that although Appellant’s claims
“recite[] a ‘single pulley’,” Appellant’s use of the transitional term
“comprising” opens Appellant’s claimed invention to read on a device that
comprises more than one pulley (Ans. 6). We are not persuaded.
Although Examiner is correct in finding that the transitional term
“comprising” permits Appellant’s claimed device to include any number of
structural features, Appellant’s claims expressly limit the number of pulleys
in the claimed device to a single pulley. As Appellant explains, Appellant’s
“[c]laim 8[, from which Appellant’s claim 9 depends,] does not read ‘a
pulley,’ but rather ‘a single pulley’” and, thus, Appellant’s claim 8 “does not
mean ‘one or more,’ regardless of the use of the term ‘comprising’ to
10
Appeal 2016-004384
Application 14/054,519
transition from the preamble to the body of claim 8” (App. Br. 10; see Reply
Br. 5). We agree.
CONCLUSION OF LAW
The preponderance of evidence on this record fails to support
Examiner’s finding that Selkee teaches a device comprising a single pulley.
The rejection of claims 8 and 9 under 35 U.S.C. § 102(e) as being
anticipated by Selkee is reversed.
REVERSED
11