Ex Parte Maschke

Board of Patent Appeals and Interferences

Jan 19, 2011

11093451 (B.P.A.I. Jan. 19, 2011)

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.
11/093,451 03/30/2005 Michael Maschke 2004P01400US 1101
7590 01/19/2011
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
170 WOOD AVENUE SOUTH
ISELIN, NJ 08830
EXAMINER
ANDERSON, GREGORY A
ART UNIT PAPER NUMBER
3773
MAIL DATE DELIVERY MODE
01/19/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte MICHAEL MASCHKE
__________

Appeal 2009-015139
Application 11/093,451
Technology Center 3700
__________

Before TONI R. SCHEINER, DEMETRA J. MILLS, and
FRANCISCO C. PRATS, Administrative Patent Judges.

MILLS, Administrative Patent Judge.

DECISION ON APPEAL1

This is an appeal under 35 U.S.C. § 134. The Examiner has rejected
the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b).

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-015139
Application 11/093,451

2
STATEMENT OF THE CASE
The following claim is representative and read as follows:
10. A device for removing a total vascular occlusion, comprising:
a catheter sheath having a front end;
a hollow, flexible drive shaft disposed within the catheter sheath,
an OCT sensor disposed on the front end of the catheter sheath; and
expansion tongs having an opening therethrough disposed at the front
end of the catheter sheath;
wherein the flexible hollow drive shaft accommodates signal lines for
the OCT sensor alongside actuation lines for the expansion tongs; and
wherein the OCT sensor is movable through the opening of the
expansion tongs from an idle position disposed between the expansion tongs
to an observation position wherein the OCT sensor is disposed forward of
the expansion tongs.

Cited References

Peacock, III et al. US 5,549,551 Aug. 27, 1996
Ream US 5,827,313 Oct. 27, 1998
Vander Salm et al. US 5,906,579 May 25, 1999
Townsend et al. US 6,066,102 May 23, 2000

Grounds of Rejection
1. Claims 10, 12-13, 15 and 19 are rejected under 35 U.S.C.§ 103(a) for
obviousness over Townsend in view of Ream.
2. Claim 16 is rejected under 35 U.S.C. § 103(a) as being unpatentable over
Townsend et al. in view of Ream as applied to claim 10 above and further in
view of Vander Salm.
3. Claim 17 is rejected under 35 U.S.C. § 103(a) as being unpatentable over
Townsend et al. in view of Ream as applied to claim 10 above, and further in
view of Peacock, III.

Appeal 2009-015139
Application 11/093,451

3
FINDINGS OF FACT
The Examiner’s findings of fact are set forth in the Answer at pages 3-5.

Discussion
ISSUE
The Examiner concludes that “[i]t would have been obvious to one
having ordinary skill in the art at the time of the invention to modify the
device of Townsend et al. by substitute OCT sensor as disclosed by Ream
and configured the optical fiber as a glass line to enhance the monitoring
image.” (Ans. 3-4.)
Appellant argues that the combination of Townsend and Ream fails
to teach an “’OCT sensor [that] is movable through the opening of the
expansion tongs from an idle position disposed between the expansion tongs
to an observation position wherein the OCT sensor is disposed forward of
the expansion tongs,’” as claimed. (App. Br. 6.)
The issue is: Does the cited prior art teach or suggest an “OCT sensor
[that] is movable through the opening of the expansion tongs from an idle
position disposed between the expansion tongs to an observation position
wherein the OCT sensor is disposed forward of the expansion tongs,” (id.) as
claimed?

PRINCIPLES OF LAW
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness. Only if that
burden is met, does the burden of coming forward with evidence or
argument shift to the applicant.” In re Rijckaert, 9 F.3d 1531, 1532 (Fed.
Appeal 2009-015139
Application 11/093,451

4
Cir. 1993) (citations omitted). In order to determine whether a prima facie
case of obviousness has been established, we consider the factors set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966): (1) the scope and content
of the prior art; (2) the differences between the prior art and the claims at
issue; (3) the level of ordinary skill in the relevant art; and (4) objective
evidence of nonobviousness, if present.

ANALYSIS
The Examiner concludes that it would have been obvious to one
having ordinary skill in the art at the time of the invention to modify the
device of Townsend et al. by substituting the OCT sensor as disclosed by
Ream and configured the optical fiber as a glass line to enhance the
monitoring image. (Ans. 3-4.) We are not persuaded, however, that the
Examiner has adequately explained why an ordinary artisan would have
configured the resulting device in the manner recited in the rejected claims.
The Examiner has provided no specific indication where Townsend teaches
“an OCT sensor that is movable through the opening of the expansion tongs
from an idle position disposed between the expansion tongs to an
observation position wherein the OCT sensor is disposed forward of the
expansion tongs.” (Id. at 5.)
Regarding that feature, the Examiner argues that Townsend discloses
in Figures 16A-16D that devices other than an OCT sensor are forward of
the tongs. (Id.) While this may be true, we find no indication or evidence
from the Examiner explaining why an ordinary artisan, advised by
Townsend that devices other than an optical sensors should be positioned
beyond the expansion tongs, would have been prompted to add to
Appeal 2009-015139
Application 11/093,451

5
Townsend’s device “an OCT sensor that is movable through the opening of
the expansion tongs from an idle position disposed between the expansion
tongs to an observation position wherein the OCT sensor is disposed forward
of the expansion tongs,” (id.) as claimed.
This rejection is reversed.

2. Claim 16 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Townsend et al. in view of Ream as applied to claim 10
above and further in view of Vander Salm.
3. Claim 17 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Townsend et al. in view of Ream as applied to claim 10
above, and further in view of Peacock, III.
For the reasons given with respect to claim 10 above, these rejections
are also reversed.

CONCLUSION OF LAW
The rejections 1-3 are reversed.

REVERSED

cdc

SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
170 WOOD AVENUE SOUTH
ISELIN, NJ 08830