Ex Parte Lee et alDownload PDFPatent Trial and Appeal BoardJun 8, 201510814972 (P.T.A.B. Jun. 8, 2015) Copy Citation 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. 10/814,972 03/30/2004 Chris Lee 1362002-2005.2 8626 85729 7590 06/08/2015 Boston Scientific Neuromodulation (SVI & JHU) c/o Lowe Graham Jones 701 Fifth Avenue Suite 4800 Seattle, WA 98104 EXAMINER LUONG, PETER ART UNIT PAPER NUMBER 3777 MAIL DATE DELIVERY MODE 06/08/2015 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 CHRIS LEE, CHRISTINE McNAMARA, and INGMAR VIOHL __________ Appeal 2012-011048 Application 10/814,972 Technology Center 3700 __________ Before ERIC B. GRIMES, ULRIKE W. JENKS, and ROBERT A. POLLOCK, Administrative Patent Judges. PER CURIAM. DECISION ON APPEAL This is a decision on appeal1 under 35 U.S.C. § 134 from the Examiner’s rejection of claims 1–17, 20, 22, 24, 25, 27, 28, 31, 32, 34–36, 38, 45, 46, and 49–52. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 Appellants identify the Real Parties in Interest as MRI Interventions, Inc. (previously known as Surgi-Vision, Inc.), Boston Scientific Neuromodulation Corporation, and Boston Scientific Corporation (App. Br. 3). Appeal 2012-011048 Application 10/814,972 2 STATEMENT OF THE CASE Claim 1 is representative of the claims on appeal and reads as follows (emphasis added): 1. A magnetic resonance imaging (MRI) guidewire, comprising: a guidewire having a distal end sized and shaped for insertion into a subject and a proximal end sized and shaped for insertion into a connector coupled to an MRI scanner, the guidewire comprising an inner conductor extending at least a major length of the guidewire and an outer conductor coaxially disposed about the inner conductor such that the outer conductor has a larger diameter than a diameter of the inner conductor, the outer conductor extending at least the major length of the guidewire; wherein the proximal end of the guidewire comprises; an outer conductor contact coupled electrically to the outer conductor, the outer conductor contact having a diameter; and an extended section of the inner conductor that extends proximally beyond the outer conductor contact, the extended section of the inner conductor including: electrically conductive material disposed at least partially around a portion of the extended section of the inner conductor; an inner conductor contact radially disposed over the electrically conductive material such that the inner conductor contact has a diameter equal to the diameter of the outer conductor contact; an insulated area interposed axially between the outer conductor contact and the inner conductor contact, the insulated area having an electrically insulating material disposed at least partially around at least a portion of the extended section of the inner conductor; wherein the distal end of the guidewire defines an antenna configured to detect MRI signals, and wherein the inner and outer conductors are configured to conduct the detected MRI signals to the proximal end of the guidewire. Claim 25, the only other independent claim, also requires that the proximal end of the coaxial cable includes an “inner conductor contact [that] has a diameter equal to the diameter of the outer conductor contact.” Appeal 2012-011048 Application 10/814,972 3 The Examiner rejected the claims as follows: I. Claims 1–17, 20, 22, 24, 25, 27, 28, 31, 32, 34–36, 38, 45, 46, and 49–52 under 35 U.S.C. § 112, first paragraph, as lacking adequate written descriptive support in the Specification (Ans. 5); II. Claims 1–4, 9–12, 16, 17, 20, 25, 38, and 49–52 under 35 U.S.C. § 103(a) in view of McKinnon2 (Ans. 6–83); III. Claims 5–8 under 35 U.S.C. § 103(a) in view of McKinnon and Glowinski4 (Ans. 8); IV. Claims 13–15, 22, 24, 27, 28, 31, 34–36, 45, and 46 and under 35 U.S.C. § 103(a) in view of McKinnon and Lardo5 (Ans. 8–10); and V. Claim 32 under 35 U.S.C. § 103(a) in view of McKinnon, Lardo, and Wiener6 (Ans. 11). I. The Examiner has rejected all of the claims on appeal under 35 U.S.C. § 112, first paragraph, as lacking adequate written descriptive support in the Specification (Ans. 5). The Examiner finds that the Specification fails to disclose that “the inner conductor contact [h]as a diameter equal to the diameter of the outer conductor contact,” as recited in independent claims 1 and 25 (Ans. 5). The 2 McKinnon, US 5,792,055, issued Aug. 11, 1998. 3 The Examiner indicated that claims 26 and 33 were also rejected as obvious in view of McKinnon (Ans. 6), although these claims have been canceled (App. Br. 5). 4 Glowinski et al., US 5,868,674, issued Feb. 9, 1999. 5 Lardo et al., US 6,675,033 B1, issued Jan. 6, 2004. 6 Wiener et al., US 7,273,483 B2, issued Sept. 25, 2007. Appeal 2012-011048 Application 10/814,972 4 Examiner finds that the Specification “only discloses the inner conductor being ‘approximately the same diameter’ as the outer conductor” (id. (citing the Spec. 10:5–8)). The Examiner also finds that the Specification fails to disclose that “the diameter of the outer conductor is equal in length to the diameter of each of the inner conductor contact and outer conductor contact,” as recited in claims 49 and 50 (id.). The Examiner finds that the Specification “only discloses ‘relatively the same diameter’” (id. (citing the Spec. 11:8–10)). Appellants argue that the Specification “states that ‘the inner conductor (103) may be built up . . . to approximately the same diameter (166) as the outer conductor (157)’ (emphasis added)” (App. Br. 12) and that the Specification “provides direct support for ‘a pair of contacts that are exposed to the connector in a sequential axial configuration, both of which are relatively the same diameter as the outer conductor’ (emphasis added)” (id.). Appellants argue that “[o]ne of skill in the art would consider the recitations of the contacts and the outer conductor having equal diameters to be encompassed by, and contemplated by, the Applicants to be within, the terms ‘approximately the same diameter’ and ‘relatively the same diameter’” (id.). We conclude that Appellants have the better position. “In order to satisfy the written description requirement, the disclosure as originally filed does not have to provide in haec verba support for the claimed subject matter at issue.” Purdue Pharma L.P. v. Faulding, Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000). “[T]he test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art Appeal 2012-011048 Application 10/814,972 5 that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). In this case, the Specification discloses that “the inner conductor (103) may be built up with electrically conductive material, preferably nonmagnetic (such as brass tubing) to approximately the same diameter (166) as the outer conductor (157)” (Spec. 10:5–8 (emphasis added)). The Specification discloses that this “configuration converts the two concentric coaxially oriented conductors to a pair of contacts that are exposed to the connector in a sequential axial configuration, both of which are relatively the same diameter as the outer conductor” (Spec. 11:8–10 (emphasis added)). We agree with Appellants that one of skill in the art would have understood the Specification’s disclosure to indicate that Appellants were in possession of guidewires in which the outer conductor, the outer conductor contact, and the inner conductor contact have the same diameter. Therefore, we reverse the rejection of claims 1–17, 20, 22, 24, 25, 27, 28, 31, 32, 34–36, 38, 45, 46, and 49–52 based on lack of adequate written description. II. Issue The Examiner has rejected claims 1–4, 9–12, 16, 17, 20, 25, 38, and 49–52 as obvious in view of McKinnon (Ans. 6–8). The Examiner has also rejected claims 5–8 as obvious in view of McKinnon and Glowinski (Ans. 8); claims 13–15, 22, 24, 27, 28, 31, 34–36, 45, and 46 as obvious in view of McKinnon and Lardo (Ans. 8–10); and claim 32 as obvious in view of Appeal 2012-011048 Application 10/814,972 6 McKinnon, Lardo, and Wiener (Ans. 11). The same issue is dispositive for all of these rejections, and we consider them together. We focus our initial analysis on independent claim 1. The issue presented is: Has the Examiner established by a preponderance of the evidence that McKinnon would have made obvious an MRI guidewire having a proximal end that comprises an “inner conductor contact [that] has a diameter equal to the diameter of the outer conductor contact,” as required by claim 1 (emphasis added)? Findings of Fact FF1. The Examiner finds that “McKinnon discloses the inner conductor extending beyond the outer conductor” (Ans. 6). FF2. The Examiner finds that McKinnon does not teach “an inner conductor contact radially disposed over the electrically conductive material such that the inner conductor contact has a diameter equal to the diameter of the outer conductor contact” (id.). FF3. The Examiner finds that “McKinnon discloses that the inner and outer contacts are substantially equal diameters . . . [and] discloses the same structural elements performing the same intended functions” (id. at 6–7). FF4. The Examiner finds that “a change in size is well within the skill level of one of ordinary skill the art” (id. at 7). FF5. The Examiner finds that Appellants have “failed to disclose that equal diameters provide for an advantage or solve[ ] a stated problem” (id.). FF6. The Examiner concludes that it would have been obvious to one of ordinary skill in the art “to have modified the size of the inner and outer conductors as a modification of size is well within the skill level of one of Appeal 2012-011048 Application 10/814,972 7 ordinary skill in the art and the size of the conductors does not affect the end result of a cable used to transmit MRI signals” (id.). FF7. McKinnon discloses a “medical appliance for use in magnetic resonance imaging procedures. A guidewire for vascular procedures is formed by a coaxial cable acting as antenna in a magnetic resonance imaging system” (McKinnon, Abstract). FF8. Figure 2 of McKinnon is shown below: Figure 2 shows “a guidewire including an open wire length antenna formed by a coaxial cable comprising a central conductor 13 enclosed in an insulator 14 surrounded by a shield 15 encased in an insulator 16” (id. at col. 4, ll. 54– 58). “The shield 15 and the outer insulator 16 of the coaxial cable have been removed from a portion [of] distal end 17” (id. at col. 4, ll. 61–63). FF9. McKinnon discloses that the “proximal end (not shown) of the coaxial cable is for connection to the standard antenna input of control station 12” (id. at col. 4, ll. 63–65). Analysis Appellants argue that McKinnon does not disclose or suggest a guidewire or coaxial cable “where the diameter of the inner conductor contact is equal to the diameter of the outer conductor contact” (App. Br. 20). Appellants argue that “interpreting the surfaces of the conductors to be the contacts is antithetical with the teachings of McKinnon because Appeal 2012-011048 Application 10/814,972 8 McKinnon explicitly discloses that the proximal end of the coaxial cable is adapted to connection to a standard antenna input” (id. at 22–23), and that McKinnon discloses that the contacts of the coaxial cable are part of a standard antenna input. Therefore, the contacts of McKinnon are disposed on a standard coaxial connector. It is well known in the art of coaxial cables that the outer contact of a standard coaxial connector is disposed about the inner contact. Thus, the inner contact and the outer contact cannot have “substantially” the same diameter. (Id. at 23.) The Examiner responds that McKinnon’s figures show an outer conductor 15 with a larger diameter than inner conductor 13; “the Examiner interprets the surfaces of the conductor to be the conductor contacts. Therefore, the inner surface of the outer conductor is substantially equal to the outer surface of the inner conductor.” (Ans. 12.) The Examiner also reasons that “it is obvious to one of ordinary skill in the art to change the size of the diameter as McKinnon discloses approximate the same diameter, and the change would have predictable results.” (Id.) We agree with Appellants that the Examiner has not adequately explained how McKinnon would have made obvious the guidewire of claim 1. The claimed guidewire comprises an outer conductor coaxially disposed about an inner conductor and having “a proximal end sized and shaped for insertion into a connector coupled to an MRI scanner,” where the proximal end has an “inner conductor contact [that] has a diameter equal to the diameter of the outer conductor contact.” The Examiner points to McKinnon’s Figure 2 as disclosing a guidewire with inner and outer contacts having substantially equal diameters (FFs 1–3). McKinnon’s Figure 2, Appeal 2012-011048 Application 10/814,972 9 however, shows the distal end of the guidewire (FF 8), not the proximal end for coupling to an MRI scanner. McKinnon discloses that the proximal end of its guidewire is for connection to the standard antenna input of control station 12 (FF 9). The Examiner has not pointed to any disclosure McKinnon to suggest that the proximal end of its guidewire comprises an inner conductor contact with a diameter equal to that of the outer conductor contact. Thus, we reverse the rejection of independent claim 1 and dependent claims 2–4, 9–12, 16, 17, 20, 49, and 51 as being obvious in view of McKinnon. Independent claim 25 also requires that the proximal end of the coaxial cable comprises an “inner conductor contact [that] has a diameter equal to the diameter of the outer conductor contact.” Thus, we also reverse the rejection of claim 25 and dependent claims 38, 50, and 52 as being obvious in view of McKinnon. We also reverse the rejections under 35 U.S.C. § 103(a) of claims 5–8 in view of McKinnon and Glowinski; claims 13–15, 22, 24, 27, 28, 31, 34– 36, 45, and 46 in view of McKinnon and Lardo; and claim 32 in view of McKinnon, Lardo, and Wiener. For these rejections, the Examiner relies on McKinnon, as discussed above, and cites Glowinski, Lardo, and Wiener to supply dependent claim limitations. Thus, we also reverse these rejections. Conclusion of Law The preponderance of the evidence does not support the Examiner’s conclusion that McKinnon would have made obvious an MRI guidewire Appeal 2012-011048 Application 10/814,972 10 comprising a proximal end that comprises an “inner conductor contact [that] has a diameter equal to the diameter of the outer conductor contact.” SUMMARY We reverse the rejection of claims 1–17, 20, 22, 24, 25, 27, 28, 31, 32, 34–36, 38, 45, 46, and 49–52 under 35 U.S.C. § 112, first paragraph. We also reverse the rejection of claims 1–17, 20, 22, 24, 25, 27, 28, 31, 32, 34–36, 38, 45, 46, and 49–52 under 35 U.S.C. § 103(a). REVERSED cdc Copy with citationCopy as parenthetical citation