Ex Parte Limjaroen et al

Patent Trial and Appeal Board

Aug 22, 2016

13086164 (P.T.A.B. Aug. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/086,164 04/13/2011 Paweena Limjaroen
28390 7590 08/24/2016
MEDTRONIC VASCULAR, INC
IP LEGAL DEPARTMENT
3576 UNOCAL PLACE
SANTA ROSA, CA 95403
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
P38187 US 3596
EXAMINER
CHEUNG, CHUN HO!
ARTUNIT PAPER NUMBER
3728
NOTIFICATION DATE DELIVERY MODE
08/24/2016 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):
rs.vasciplegal@medtronic.com
medtronic_cv_docketing@cardinal-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PA WEEN A LIMJAROEN, THEODORE MORRIS, and
AMANDA KIEFER
Appeal2014-008228
Application 13/086, 164 1
Technology Center 3700
Before NEAL E. ABRAMS, JEREMY M. PLENZLER, and
ERIC C. JESCHKE, Administrative Patent Judges.
PLENZLER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner's
Final Decision rejecting claims 10-13 under 35 U.S.C. § 103(a) as being
unpatentable over Rowe (US 7 ,234,597 B2, iss. June 26, 2007) and
Ferguson (US 4,496,045, iss. Jan. 29, 1985). We have jurisdiction under 35
U.S.C. § 6(b).
We REVERSE.
1 Appellants identify Medtronic Vascular, Inc. as the real party in interest.
App. Br. 2.
Appeal2014-008228
Application 13/086, 164
CLAIMED SUBJECT MATTER
Claim 10 is the sole independent claim on appeal, and is reproduced
below:
10. A packaging device for a catheter having an elongated
shaft, the packaging device comprising:
a coiled tube defining a lumen configured to receive the
elongated shaft of the catheter, wherein adjacent windings of the
coiled tube are welded together to maintain the tubing in the
coiled configuration, wherein the coiled tubing includes a
proximal segment that is not attached to an adjacent winding
such that a gap is disposed between the proximal segment and
the adjacent winding; and
a substantially planar mounting card coupled to the coiled
tube, wherein the mounting card includes an integral support flap
that extends from the mounting card adjacent a first side of the
proximal segment of the coiled tubing, folds over a second side
of the proximal segment of the coiled tubing opposite the first
side, and extends across the gap to the adjacent winding such that
a space is disposed between the mounting card and the support
flap at the gap such that contact zone is created by the integral
support flap between the proximal segment and the adjacent
winding.
OPINION
The Examiner finds that Rowe teaches each limitation of claim 10,
other than the "integral support flap" features of the "mounting card." Final
Act. 6. The Examiner cites Ferguson as teaching the "integral support flap"
features and reasons that it would have been obvious "to modify the backing
card of Rowe ... with integral support flap ... as taught by Ferguson to
protect the medical instrument with the extension flap while providing a
contact zone for end user to ease [] withdraw[ al of] the catheter from the coil
tube." Id. at 7.
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Appeal2014-008228
Application 13/086, 164
Appellants respond that the sole basis for the Examiner's rationale is
Appellants' own disclosure. App. Br. 7-9. Appellants note that "[n]either
Rowe nor Ferguson discloses a problem with difficulty in withdrawing the
catheter from a coiled tube such that a rationale for easing such a withdrawal
could be gleaned therefrom" and that "[i]nstead, the rationale relied on by
the Examiner is pulled directly from Appellant's Specification." Id. at 8
(citing Spec. i-f 34). Based on the record before us, we agree.
As Appellants note (id.), it is Appellants' own Specification that
explains that "mounting card 114 [includes] integral support flap 126 that
covers a portion of coiled tubing 102 and creates a generally triangular
contact zone 13 8 for the operator to grasp during insertion or removal of
catheter 26 from packaging 100" and "[b ]y applying pressure to contact zone
13 8, little or no pressure is applied to proximal portion 108 of tubing 102
and therefore proximal opening 110 does not lose its shape" so "the balloon
and/or stent of catheter 26 may safely pass through proximal opening 110 of
packaging 100 without damage thereto." Spec. i-f 34. The Examiner
acknowledges that Rowe does not teach a support flap. Final Act. 6.
Ferguson is directed to "folded multi-paneled paper board folders and
dispensers for ... sutures having needles attached thereto." Ferguson, 1: 14--
16. The purpose of Ferguson's folder is to facilitate removal of the needle
and suture (i.e., to provide greater ease in their removal). See id. at 2: 12-26.
The suture and needle in Ferguson do not need protection in the manner
discussed above regarding the balloon and stent of a catheter. Most
importantly, the Examiner fails to offer explanation sufficient to establish
that the rationale for the proposed combination is based on something other
than Appellants' own disclosure. Without support in the references or other
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Appeal2014-008228
Application 13/086, 164
explanation from the Examiner regarding the proposed combination of Rowe
and Ferguson, that combination is based solely on Appellants' disclosure
(i.e., impermissible hindsight).
Accordingly, the Examiner has failed to establish sufficiently that
claims 10-13 are unpatentable under 35 U.S.C. § 103(a).
DECISION
We REVERSE the Examiner's decision to reject claims 10-13 as
unpatentable under 35 U.S.C. § 103(a).
REVERSED
4