11067729 (B.P.A.I. Oct. 25, 2011)

Ex Parte Mizus

Board of Patent Appeals and InterferencesOct 25, 2011

11067729 (B.P.A.I. Oct. 25, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte IRVING MIZUS ____________________ Appeal 2009-014077 Application 11/067,729 Technology Center 3700 ____________________ Before WILLIAM F. PATE III, STEFAN STAICOVICI, and FRED A. SILVERBERG, Administrative Patent Judges. SILVERBERG, Administrative Patent Judge. DECISION ON APPEAL Appeal 2009-014077 Application 11/067,729 2 STATEMENT OF THE CASE Irving Mizus (Appellant) seeks our review under 35 U.S.C. § 134 of the final rejection of claims 1-13, 16 and 17. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. THE INVENTION Appellant’s claimed invention is directed to a system and a method for providing reliable access and placement of a catheter into a bodily cavity, an organ, or blood vessel by means of a needle/catheter combination having a beveled introducer needle that is able to slide over the catheter (Spec. 3:13- 25). Claim 1, reproduced below, is representative of the subject matter on appeal. 1. An assembly for percutaneous placement of a catheter comprising: an elongated hollow catheter having a distal end and a reduced cross- section portion at a proximal end thereof and, an introducer needle slidably mounted over said catheter, said introducer needle having an elongated slit with a circumference in the range of greater than 0 degrees to slightly less than 180 degrees adapted to slide over said reduced cross- section portion of said catheter to separate said introducer needle from said catheter. THE REJECTIONS The following rejections by the Examiner are before us for review: 1. Claims 1-11, 16 and 17 are rejected under 35 U.S.C. § 102(b) as being anticipated by Curelaru (US 4,581,019, issued Apr. 8, 1986). Appeal 2009-014077 Application 11/067,729 3 2. Claims 12 and 13 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Curelaru. ISSUE The issue before us is whether the Examiner erred in finding that Curelaru describes an introducer needle slidably mounted over the reduced cross-section portion of the catheter, as called for in the assembly of independent claim 1, and as called for in the step of “placing” in independent claim 10 (App. Br. 18, 22). ANALYSIS Anticipation Rejection Appellant contends that Curelaru does not describe the claimed assembly of claim 1and the step of “placing” of claim 10 (App. Br. 18) because (1) “[t]he knife edges [9 of Curelaru] must extend outward to engage the cannula [3] which is over the catheter [2], and (2) “[i]f the knife edges [9 of Curelaru] were reduced in cross section relative [to] the catheter [2] they could never separate the lines of weakness which are located radially outward of the catheter [2]” (App. Br. 22). The Examiner found that Curelaru describes “an elongated hollow catheter (2) having a distal end (left side of Fig 12) and a reduced cross section portion (9) at a proximal end thereof; and an introducer (3) . . . adapted to slide over the reduced cross section portion to separate the catheter from the needle” (Ans. 3) (Bold added), and (2) the “[k]nife 9 is directly connected to the catheter and one of ordinary skill in the art would consider it a part of the catheter” (Ans. 6) (Bold added). Appeal 2009-014077 Application 11/067,729 4 Curelaru describes in Figure 12 that introducer-cannula 3 is slidably mounted over1 catheter-cannula 2, and knives 9 are arranged on a ring 15 located radially outward from the introducer-cannula 3, wherein the knives 9 project radially inward toward the introducer-cannula 3 (see also col. 5, ll. 9- 15). Since the Examiner considers Curelaru’s knife 9 to be a reduced portion of the catheter-cannula 2 (Ans. 3, 6) and since Curelaru’s knife 9 is located radially outward from the introducer-cannula 3, we find that Curelaru’s introducer-cannula 3 is not slidably mounted over and is not capable of being slidably mounted over the reduced cross-section portion (knife 9) of the catheter-cannula 2. We reverse the rejection of independent claims 1 and 10, and dependent claims 2-9, 11, 16 and 17. Obviousness Rejection The Examiner’s rationale regarding the obviousness of the subject matter of dependent claims 12 and 13 does not remedy the deficiency in Curelaru as to independent claim 10, from which claims 12 and 13 indirectly depend (Ans. 4). Thus, for the same reasons set forth supra regarding independent claim 10, we reverse the rejection of dependent claims 12 and 13. 1 The ordinary meaning of the word “over” includes “used as a position word to indicate motion or situation in a position higher than or above another.” MERRIAM-WEBSTER’S COLLEGIATE DICTIONARY (10th ed. 1996). Appeal 2009-014077 Application 11/067,729 5 CONCLUSION The Examiner has erred in finding that Curelaru describes an introducer needle slidably mounted over the reduced cross-section portion of the catheter, as called for in the assembly of independent claim 1, and as called for in the step of “placing” in independent claim 10. DECISION The decision of the Examiner to reject claims 1-13, 16 and 17 is reversed. REVERSED Klh