Ex Parte Morris et al

Patent Trial and Appeal Board

Sep 26, 2016

13486523 (P.T.A.B. Sep. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/486,523 06/01/2012
27581 7590 09/28/2016
Medtronic, Inc. (CRDM)
710 MEDTRONIC PARKWAY NE
MS: LC340 Legal Patents
MINNEAPOLIS, MN 55432-9924
FIRST NAMED INVENTOR
Mary M. Morris
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.
P0011187.USC2 7244
EXAMINER
THOMAS, JR, BRADLEY G
ART UNIT PAPER NUMBER
3763
NOTIFICATION DATE DELIVERY MODE
09/28/2016 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):
medtronic_crdm_docketing@cardinal-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARY M. MORRIS, TIMOTHY G. LASKE,
KENNETH T. HERUTH, MICHAEL R. UJHEL YI,
JESUS W. CASAS, and DAVID S. OLSON
Appeal2015-001003
Application 13/486,523
Technology Center 3700
Before JOHN C. KERINS, EDWARD A. BROWN, and
ARTHUR M. PESLAK, Administrative Patent Judges.
KERINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Mary M. Morris et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the final rejection of claims 1-9. We have jurisdiction under 35
U.S.C. § 6(b) (2002).
We REVERSE.
THE INVENTION
Appellants' claimed invention is directed to a medical device
including a catheter body having an exit port and a pressure responsive
sleeve covering the exit port. Claim 1, reproduced below, is illustrative:
Appeal2015-001003
Application 13/486,523
1. A medical device comprising:
a catheter body including an interior surface defining a lumen
and an exterior surface of silicone rubber;
an exit port formed within the catheter body to allow material to
exit the lumen of the catheter body;
a pressure responsive sleeve of silicone rubber fitting located in
an interference fit around the exterior surface having and
covering the exit port, expandable from a closed position to an
open position; and
an anti-blocking agent between the sleeve and the catheter
body, proximate the exit port.
THE REJECTIONS
The Examiner has rejected:
(i) claims 1, 2, 4, 5, 7, and 9 under 35 U.S.C. § 103(a) as being
unpatentable over Fischell (US 2004/0049169 Al, published Mar. 11, 2004),
in view ofBurgermeister (US 7,351,214 B2, issued Apr. 1, 2008);
(ii) claims 3 and 8 under 35 U.S.C. § 103(a) as being unpatentable
over Fischell in view of Burgermeister and Dye (US 3,726,283, issued Apr.
10, 1973);and
(iii) claim 6 under 35 U.S.C. § 103(a) as being unpatentable over
Fischell in view of Burgermeister and Lopez (US 5,738,663, issued Apr. 14,
1998).
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Appeal2015-001003
Application 13/486,523
ANALYSIS
Claims 1, 2, 4, 5, 7, and 9--Fischell/Burgermeister
The Examiner takes the position that it would have been obvious to
modify the Fischell catheter in view of Burgermeister to provide graphite 1
between the catheter body and a surrounding pressure responsive sleeve
covering an exit port, for the purpose of providing a form of lubrication
between the layers. Final Act. 3. The Examiner additionally finds that
Figure 3 of Fischell evidences that the layers in the region of the check valve
are moveable layers. Ans. 2.
Appellants maintain that the use of lubrication in Burgermeister is for
a traditional purpose, namely to reduce friction between two surfaces that
slide against one another, not as an anti-blocking agent as recited in claim 1.
Reply Br. 3. Appellants further observe that the two relevant surfaces in
Fischell do not slide relative to each other, and therefore the reason a
lubricant is employed in Burgermeister does not exist in Fischell. Id.
Appellants additionally argue that neither Fischell nor Burgermeister
suggests that there is any problem with the Fischell valve design, and thus
the cited art lacks any suggestion that an anti-blocking agent would be useful
in the valve design. Id.
Appellants have the better position here. As can be seen by the above
arguments, which are supported by the evidence, the Examiner's articulated
reason to combine the teachings is lacking in rational underpinnings, and
thus the conclusion as to obviousness of the claimed subject matter is
1 Appellants disclose that graphite is suitable for use as the anti-blocking
agent recited in claim 1 (Spec. 9, 11. 15-19), and, indeed claims 2 and 7
recite that the anti-blocking agent comprises graphite.
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Appeal2015-001003
Application 13/486,523
erroneous. The rejection of claims 1, 2, 4, 5, 7, and 9 as being unpatentable
over Fischell and Burgermeister is not sustained.
Claims 3 and 8--Fischell/Burgermeister/Dye
The Examiner does not rely on Dye in any manner that remedies the
deficiencies in the rejection of claims 1 and 5, from which these claims
depend, respectively. The rejection is not sustained.
Claim 6--Fischell/Burgermeister/Lopez
The Examiner does not rely on Lopez in any manner that remedies the
deficiencies in the rejection of claim 5, from which claim 6 depends. The
rejection is not sustained.
DECISION
The rejections of claims 1-9 under 35 U.S.C. § 103(a) are reversed.
REVERSED
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