Ex Parte Martin et alDownload PDFPatent Trial and Appeal BoardAug 30, 201813473483 (P.T.A.B. Aug. 30, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/473,483 05/16/2012 24280 7590 09/04/2018 CHOATE, HALL & STEWARTLLP TWO INTERNATIONAL PLACE BOSTON, MA 02110 FIRST NAMED INVENTOR Christopher Martin 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. 2009263-0017 1170 EXAMINER ZAM ORY, JUSTIN L ART UNIT PAPER NUMBER 3763 NOTIFICATION DATE DELIVERY MODE 09/04/2018 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): patentdocket@choate.com jnease@choate.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CHRISTOPHER MARTIN, DAMIEN RY AN, and GERARD BRETT Appeal2017-011084 1 Application 13/473,483 Technology Center 3700 Before MICHAEL L. HOELTER, LISA M. GUIJT, and SEAN P. O'HANLON, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is a decision on appeal, under 35 U.S.C. § 134(a), from the Examiner's Final Rejection of claims 1-23. App. Br. 1. We have jurisdiction under 35 U.S.C. § 6(b). For the reasons explained below, we do not find error in the Examiner's rejections. Accordingly, we AFFIRM. 1 Appellants identify Vivasure Medical Limited as the real party in interest. App. Br. 2. Appeal2017-011084 Application 13/473,483 THE CLAIMED SUBJECT MATTER The disclosed subject matter "relates generally to a sheath-dilator system for use in surgical procedures." Spec. ,r 2. Apparatus claim 1 is the sole independent claim, is illustrative of the claims on appeal, and is reproduced below. 1. A medical device comprising: a sheath having a proximal end and a distal end, the sheath having an opening at both the proximal end and the distal end; and a removable dilator for insertion of the sheath into a hollow vessel, the removable dilator having a distal end and a proximal end, the dilator having at least one blood detector disposed on a tapered portion of the distal end of the dilator, the dilator positionable within the sheath such that the tapered portion of the distal end of the dilator extends through the opening in the distal end of the sheath, the proximal end of the dilator extends through the opening in the proximal end of the sheath, and at least a portion of the at least one blood detector is adjacent to the distal end of the sheath. REFERENCES RELIED ON BY THE EXAMINER Tomsjo Kubota Kensey Shaw Racz Balbierz Grathwohl us 2,001,638 us 4,299,230 us 4,744,364 us 5,431,639 us 5,817,074 US 6,770,070 B 1 US 2009/0048559 Al THE REJECTIONS ON APPEAL May 14, 1935 Nov. 10, 1981 May 17, 1988 July 11, 1995 Oct. 6, 1998 Aug. 3, 2004 Feb. 19,2009 Claims 1, 4, 5, 11, 13, 15, and 16 are rejected under 35 U.S.C. § I03(a) as unpatentable over Shaw. 2 Appeal2017-011084 Application 13/473,483 Claim 2 is rejected under 35 U.S.C. § 103(a) as unpatentable over Shaw and Racz. Claim 3 is rejected under 35 U.S.C. § 103(a) as unpatentable over Shaw and Grathwohl. Claims 6-8, 12, and 23 are rejected under 35 U.S.C. § 103(a) as unpatentable over Shaw and Balbierz. Claims 9, 10, and 14 are rejected under 35 U.S.C. § 103(a) as unpatentable over Shaw and Tomsjo. Claims 17 and 18 are rejected under 35 U.S.C. § 103(a) as unpatentable over Shaw, Tomsjo, and Kensey. Claims 19-22 are rejected under 35 U.S.C. § 103(a) as unpatentable over Shaw and Kubota. ANALYSIS The rejection of claims 1, 4, 5, 11, 13, 15, and 16 as unpatentable over Shaw Appellants argue the rejection of claims 1, 4, 5, 11, 13, 15, and 16 together. App. Br. 5-13. We select claim 1 for review, with the remaining claims standing or falling with claim 1. See 37 C.F.R. § 4I.37(c)(l)(iv). Claim 1 includes the limitation, "the dilator having at least one blood detector disposed on a tapered portion of the distal end of the dilator" (emphasis added). For purposes of further understanding, Appellants state, "the blood detector can include a blood inlet port." App. Br. 6; see also Spec. ,r 9 ("The at least one blood detector may include a blood inlet opening."). In the Final Office Action, the Examiner identifies where Shaw teaches, in one embodiment, a "dilator having at least one blood detector 3 Appeal2017-011084 Application 13/473,483 (98) disposed on the distal end of the dilator" (referencing Shaw Fig. 3) and in another embodiment "wherein the blood detector is on a tapered portion of the distal end" (referencing Shaw 18:9-24). Final Act. 2-3; see also Ans. 8-9. The Examiner reasons that it would have been obvious "to modify the distal end of Shaw by placing the blood detector (98) on the tapered portion of the distal end ... for the purpose of utilizing the introducer as a needle so as to puncture the skin of a patient and allow the proper insertion depth to be determined." Final Act. 3. Appellants dispute such teaching, stating "[t]he devices in Shaw are equipped with blood inlet ports that are positioned on the side of a cylindrical portion of the device, or on the very end/tip of the device, but not located on the tapered portion of the dilator." App. Br. 6 ( emphasis added); see also Reply Br. 3. Perhaps to clarify or elaborate further, in the Answer, "[t]he Examiner maintains that it would be obvious to move the opening to any location between either of these disclosed embodiments without substantially changing the basic function of the device." Ans. 9. This is because, "[t]here is no indication set forth in Shaw wherein the port cannot be located on the tapered portion of the device." Ans. 9. Appellants acknowledge the Examiner's reference to "any location between either of these disclosed embodiments" (see Reply Br. 6), but still address arguments previously asserted regarding the port being located either as per one embodiment or the other. See Reply Br. 4--7. Addressing the teachings of Shaw in general, Appellants do not dispute that Shaw discloses a dilator having a taper. See, e.g., Shaw Figs. 1-3. However, Appellants contend, "combining the two embodiments would render them unsatisfactory for their intended purpose." App. Br. 6; 4 Appeal2017-011084 Application 13/473,483 see also Reply Br. 3--4. Appellants state, "[t]he position of the port is critical for both [ of Shaw's embodiments because] precise determination of the location of a vessel wall is the main purpose of the devices." App. Br. 7 (referencing Shaw 1 :29-35); see also Reply Br. 4. Precise determination is indeed critical for Shaw's operation, and Shaw addresses such criticality by ascertaining distance L6 which is a "known distance ... from the port to the distal end of the plug [ so as] to accurately position the plug adjacent the wall of the vessel." Shaw 12:10-15, Fig. 3. In other words, relocation of the port elsewhere as expressed by the Examiner simply involves ascertaining what the new distance is between the port and the plug so that Shaw's device can then be "advanced axially distally the known distance, L6." Shaw 12: 12-13. Appellants do not explain how this new distance L6 in unable to be measured should the blood inlet port be positioned as stated by the Examiner. Ans. 9. Hence, Appellants' assertion that the Examiner's combination "would render [ the embodiments] unsatisfactory for their intended purpose" is not persuasive. App. Br. 6; see also Reply Br. 3--4. Appellants also contend, regarding the Examiner's relocation of Shaw's port, that "[i]f the port were on the tapered portion ... blood could enter the port while the tip is still in the access channel ... making this iterative positioning all but impossible." App. Br. 8. However, Appellants do not explain how a port on Shaw's tapered portion (thereby allowing blood to enter while still in the access channel) would render Shaw's positioning impossible, yet such positioning is possible with Appellants' device, which operates in a similar manner and recites a port on the tapered portion. 5 Appeal2017-011084 Application 13/473,483 Appellants further contend, "Shaw does not appreciate that positioning the port on the tapered part could indeed be critical" and "Shaw does not appreciate the potential problems with the FIG. 3 Embodiment." App. Br. 9-11 ("Shaw does not contemplate this solution at all ... and does not appreciate the criticality of the port being on the tapered portion as described in the present disclosure."). However, such appreciation need not be expressly shown in the cited art for such art to be useful for obviousness purposes. Instead, we are instructed, "[t]he use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain." In re Heck, 699 F.2d 1331, 1333 (Fed. Cir. 1983). As if to emphasize this point, and from Appellants' perspective, we are also instructed, "neither the particular motivation nor the avowed purposed of the patentee controls" the determination whether a claimed invention would have been obvious. KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007). Consistent with the above, Appellants also assert, "[.~] prior art reference must be considered in its entirety." Reply Br. 5. In view of such assertion, we wonder if Appellants took into consideration Figure 2c of Shaw which depicts side port 10 located on a tapered surface (but which neither Appellants nor the Examiner address). Appellants further indicate where Shaw teaches "[t]he catheter may also be rotated while in the blood vessel, to assure that the side port is not pressed against and occluded by the wall." App. Br. 9-10 (referencing Shaw 10: 18-22). Appellants do not explain how such teachings of rotating the 6 Appeal2017-011084 Application 13/473,483 port to avoid occlusion would not also suggest axially moving the port in an effort to likewise avoid occlusion. In summation, we are not persuaded by Appellants' arguments. Nor are we persuaded the Examiner erred in stating "that it would [have been] obvious to move the opening to any location between either of these disclosed embodiments without substantially changing the basic function of the device." Ans. 9. Accordingly, we sustain the Examiner's rejection of claims 1, 4, 5, 11, 13, 15, and 16. The remaining rejections Appellants group the remaining rejections involving claims 2, 3, 6-10, 12, 14, and 17-23 together (see Ground 2). App. Br. 5, 14; see also Reply Br. 7. Appellants contend that these claims "incorporate the limitations of claim 1 by virtue of their dependencies and are therefore non-obvious for at least the same reasons as claim 1." App. Br. 14. Appellants also state, "[n]one of the additional references ... cure the defects of Shaw." App. Br. 14. Because we are not appraised of a defect in Shaw, we likewise sustain the Examiner's rejections of claims 2, 3, 6-10, 12, 14, and 17-23. DECISION The Examiner's rejections of claims 1-23 are affirmed. No time period for taking any subsequent action in connection with this appeal may be extended as set forth in 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 7 Copy with citationCopy as parenthetical citation