Ex parte Kupiecki

Board of Patent Appeals and Interferences

Jan 11, 2001

08539943 (B.P.A.I. Jan. 11, 2001)

The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.
Paper No. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte DAVID KUPIECKI
_____________
Appeal No. 2000-0180
Application No. 08/539,943
______________
ON BRIEF
_______________
Before CALVERT, FRANKFORT, and NASE, 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 and 3 through 14, which are all of the
claims remaining in this application. Claim 2 has been
canceled.
Appellant’s invention is directed to a balloon catheter
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having a lumen with a port proximal of the balloon through
which therapeutic or diagnostic agents may be delivered
(specification, page 1, claims 1, 3 and 4). In addition,
appellant’s invention involves a vaso-occlusive agent delivery
assembly (claims 5 through 8 and 14), a method for delivering
a vaso-occlusive agent to a desired occlusion site in the body
(claims 9 through 12), and a method for isolating a desired
site in the body for fluid communication with a port in a
catheter (claim 13). Independent claims 1, 5, 9 and 13 are
representative of the subject matter on appeal and a copy of
those claims may be found in the Appendix to appellant’s
brief.
The prior art references relied upon by the examiner in
rejecting the appealed claims are:
Samson 5,304,198 Apr. 19,
1994
Goy 5,413,581 May 9,
1995
Sugawara et al. (Sugawara), “Experimental Investigations
Concerning a New Liquid Embolization Method: Combined
Administration of Ethanol-estrogen and Polyvinyl Acetate,” 33
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Neurol. Med. Chir., 71-76 (Tokyo, February, 1993).
Claims 1, 3, 4 and 13 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Samson in view of Goy.
Appeal No. 2000-0180
Application No. 08/539,943
Regarding the examiner’s final rejection of claim 7 under1
35 U.S.C. § 112, second paragraph, in Paper No. 14 (mailed
March 18, 1998), it appears from appellant’s comments in the
brief (page 4) that this rejection is considered to be “not
under appeal” and that appellant has acquiesced in the
examiner’s position regarding the rejection and will at some
later point in time amend claim 7 to overcome the rejection.
Based on appellant’s comments, we consider that the appeal as
to this rejection has been withdrawn by appellant and that the
§ 112 rejection is not before us for review.
4
Claims 5 through 12 and 14 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Samson in view of Goy and
Sugawara.1
Rather than attempt to reiterate the examiner's full
commentary with regard to the above-noted rejections and the
conflicting viewpoints advanced by the examiner and appellant
regarding the rejections, we make reference to the examiner's
answer (Paper No. 21, mailed March 17, 1999) for the reasoning
in support of the rejections, and to appellant’s brief (Paper
No. 20, filed December 28, 1998) for the arguments
thereagainst.
OPINION
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Application No. 08/539,943
5
In reaching our decision in this appeal, we have given
careful consideration to appellant’s specification and claims,
to the applied prior art references, and to the respective
positions articulated by appellant and the examiner. As a
consequence of our review, we have made the determinations
which follow.
Prior to our treatment of the examiner’s rejections on
appeal, we note that on page 4 of the brief appellant has
indicated, under the heading “GROUPING OF CLAIMS,” that claims
1, 3, 4 and 13 stand or fall together, and that claims 5
through 12 and 14 likewise stand or fall together.
Accordingly, in our discussions below we will focus on
independent claims 1 and 5, deciding the issues on appeal on
the basis of those claims alone. As desired by appellant,
claims 3, 4 and 13 will stand or fall together with claim 1,
while claims 6 through 12 and 14 will stand or fall with claim
5.
Looking first at the examiner’s rejection of claim 1
under 35 U.S.C. § 103 as being unpatentable over Samson in
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view of Goy, we note that on page 4 of the answer the examiner
has urged that Samson discloses a medical catheter like that
depicted in appellant’s invention “except for the delivery
lumen with a delivery port proximal to the balloon.” To
account for this difference the examiner turns to Goy, noting
that Goy teaches a balloon dilation catheter used for delivery
of drugs and/or contrast medium to the vasculature system via
a second lumen (9) in the catheter which has a delivery port
or opening (10) located proximal to the balloon (22) so as to
allow access to and treatment of blood vessels that branch
from main blood vessels. From these teachings, the examiner
concludes that it would have been obvious to one of ordinary
skill in the art at the time of appellant’s invention to
provide a separate lumen for drug and contrast material
delivery in the catheter of Samson with a delivery port
proximal to the balloon as taught by Goy “since Goy teaches
that it is desired in the art of balloon angioplasty to
provide a delivery lumen and port proximal the balloon so one
can access the branched blood vessels for treatment thereof
and since Goy further teaches that balloon catheters can have
separate lumens for the guidewire and for infusion of drugs or
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other materials” (answer, page 4).
Based on our evaluation of the collective teachings of
Samson and Goy from the perspective of one of ordinary skill
in the art at the time of appellant’s invention, we are in
agreement with the examiner. Appellant’s position (brief,
pages 6-7) that Goy is limited in its teaching to providing an
additional open-ended lumen for introduction of contrast media
or drugs so as to overcome the disadvantage therein of a
catheter having a closed distal end, and thus would not have
provided any motivation, much less a suggestion, for modifying
the open-ended dilation catheter of Samson to include an
additional open-ended lumen as in Goy, is unpersuasive. In
this regard, we point to the teaching found in Goy at column
2, lines 49-52, that the catheter therein makes it possible to
carry out, independently of one another, measurements or
infusions via the additional lumen and control of the pressure
in the balloon via the first lumen. In our opinion, this
teaching in the Goy reference would have provided ample
motivation and suggestion to one of ordinary skill in the art
for providing the catheter of Samson with an additional lumen
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(9, 10) as in Goy so as to permit measurements and/or
independent infusions of drugs or other treatment materials
into the vasculature via the additional lumen while at the
same time allowing control of the pressure in the inflated
balloon via the
inflation/wire lumen of Samson during a balloon angioplasty
procedure like that mentioned in column 5, lines 18-22, of
Samson.
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Accordingly, we will sustain the examiner’s rejection of
independent claim 1 under 35 U.S.C. § 103(a) based on the
combined teachings of Samson and Goy. Given appellant’s
grouping of the claims noted above, it follows that claims 3,
4 and 13 will fall with claim 1.
As for the examiner’s rejection of claims 5 through 12
and 14 under 35 U.S.C. § 103(a) as being unpatentable over
Samson in view of Goy and Sugawara, we observe that appellant
has again argued that there is no motivation to modify the
catheter of Samson by adding an additional distally open-ended
lumen as disclosed in Goy. In addition, appellant has noted
that although Sugawara does mention the use of a dual lumen
catheter, it does not describe or show the structure of that
device. Thus, appellant concludes that the combination of
Samson and Goy in view of Sugawara does not render the
invention of claims 5 through 12 and 14 on appeal obvious.
For the reasons which we have set forth above in regard to the
examiner’s rejection of claim 1, we are of the view that the
combined teachings of the applied references would have
rendered obvious the subject matter of claim 5 on appeal. In
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this regard, we note that appellant has not disputed the
examiner’s combination of Sugawara with the teachings of
Samson and Goy, but has instead merely relied upon the same
argument presented above that Samson and Goy do not provide
any reason, suggestion or motivation for combining their
teachings; an argument that we have already found
unpersuasive. Accordingly, the examiner’s rejection of claim 5
under 35 U.S.C. § 103(a) will likewise be sustained. Given
appellant’s grouping of the claims (brief, page 4), it follows
that claims 6 through 12 and 14 will fall with claim 5.
In light of the foregoing, the decision of the examiner
to reject claims 1, 3, 4 and 13 under 35 U.S.C. § 103(a) as
being unpatentable over Samson in view of Goy is affirmed, as
is the examiner’s decision to reject claims 5 through 12 and
14 under 35 U.S.C. § 103(a) as being unpatentable over Samson
in view of Goy and Sugawara.
Under the provisions of 37 CFR § 1.196(b), we also enter
the following new ground of rejection against claims 5 through
8 and 14 on appeal.
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Claims 5 through 8 and 14 are rejected under 35 U.S.C.
§ 112, second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter
which appellant regards as the invention. In particular, we
observe that there is no proper antecedent basis in claim 5
for “said catheter” or “said medical catheter” as set forth in
line 2 of claim 5. We also remind appellant of the need to
amend claim 7 to overcome the lack of a proper antecedent
basis for “said guidewire lumen” in that claim.
In addition to affirming the examiner's rejection of one
or more claims, this decision contains a new ground of
rejection pursuant to 37 CFR § 1.196(b)(amended effective Dec.
1, 1997, by final rule notice, 62 Fed. Reg. 53,131, 53,197
(Oct. 10, 1997), 1203 Off. Gaz. Pat. & Trademark Office 63,
122 (Oct. 21, 1997)). 37 CFR § 1.196(b) provides that “[a]
new ground of rejection shall not be considered final for
purposes of judicial review.”
Regarding any affirmed rejection, 37 CFR § 1.197(b)
provides:
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(b) Appellant may file a single request for
rehearing within two months from the date of
the original decision . . . .
37 CFR § 1.196(b) also provides that the appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new
ground of rejection to avoid termination of proceedings (37
CFR § 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of
the claims so rejected or a showing of facts
relating to the claims so rejected, or both,
and have the matter reconsidered by the
examiner, in which event the application will
be remanded to the examiner . . . .
(2) Request that the application be
reheard under § 1.197(b) by the Board of
Patent Appeals and Interferences upon the
same record . . . .
Should the appellant elect to prosecute further before
the Primary Examiner pursuant to 37 CFR § 1.196(b)(1), in
order to preserve the right to seek review under 35 U.S.C. §§
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141 or 145 with respect to the affirmed rejections, the
effective date of the affirmance is deferred until conclusion
of the prosection before the examiner unless, as a mere
incident to the limited prosecution, the affirmed rejections
are overcome.
If the appellant elects prosection before the examiner
and this does not result in allowance of the application,
abandonment or a second appeal, this case should be returned
to the Board of Patent Appeals and Interferences for final
action on the affirmed rejections, including any timely
request for rehearing thereof.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR §
1.136(a).

AFFIRMED, 37 CFR § 1.196(b)
)
IAN A. CALVERT )
Appeal No. 2000-0180
Application No. 08/539,943
14
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JEFFREY V. NASE )
Administrative Patent Judge )
CEF:hh
E. THOMAS WHEELOCK
Morrison & Foerster
755 Page Mill Road
Palo Alto, CA 94304-1018