Ex Parte Nguyen et al

Patent Trial and Appeal Board

Feb 15, 2018

13430428 (P.T.A.B. Feb. 15, 2018)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
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Alexandria, Virginia 22313-1450
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/430,428 03/26/2012 Duy Nguyen 0B-049103US 2437
55962 7590
Wiley Rein LLP
Patent Administration
1776 K Street, NW
Washington, DC 20006
EXAMINER
DOUGHERTY, SEAN PATRICK
ART UNIT PAPER NUMBER
3736
NOTIFICATION DATE DELIVERY MODE
02/20/2018 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DUY NGUYEN, SHELDON NELSON, ELIZABETH NEE, and
GUY P. VANNEY
Appeal 2017-003063
Application 13/430,4281
Technology Center 3700
Before RICHARD M. LEBOVITZ, JOHN E. SCHNEIDER, and
RYAN H. FLAX, Administrative Patent Judges.
LEBOVITZ, Administrative Patent Judge.
DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims directed to a
deflectable catheter. The Examiner rejected the claims as unpatentable
under 35 U.S.C. § 103. We have jurisdiction under 35 U.S.C. § 6(b). The
§103 rejection is affirmed-in-part.
STATEMENT OF THE CASE
Claims 2—7, 12—14, and 16—23 stand rejected under pre-AIA
35 U.S.C. § 103 as obvious in view of Webster et al. (US Pat. No. 6,500,167
Bl, issued Dec. 31, 2002) (“Webster”), Baxter et al. (US Pat. Appl. Pub.
1 The Appeal Brief (“Appeal Br.”), page 2, lists St. Jude Medical, Atrial
Fibrillation Division, Inc., as the real-party-in-interest.
Appeal 2017-003063
Application 13/430,428
2005/0234436 Al, published Oct. 20, 2005) (“Baxter”), and Kovalcheck
(US Pat. No. 5,472,017, issued Dec. 5, 1995) (“Kovalcheck”). Examiner’s
Answer (“Ans.”) 3.
Claims 2, 18, and 21 are independent. Appellants argue the
independent claims as a group. We, therefore, have selected claim 2 as
representative of ah independent claims, and those dependent claims which
are not argued separately. See 37 C.F.R
§ 41.37(c)(l)(iv). Claim 2 reads as follows:
2. A deflectable catheter comprising
a continuous catheter shaft comprising a flexible distal
end section and a proximal end wherein the flexible distal end
section comprises a tip or tip electrode, wherein the flexible
distal end section is biased to assume a loop structure;
a first control wire and a second control wire, both
control wires contained within the deflectable catheter and
connected to the catheter shaft;
a variable radius control wire contained within the
deflectable catheter and connected at or near the tip or tip
electrode of the distal end section;
a single compression coil housing both the first and
second control wires;
a first actuator at the proximal end that engages the first
control wire to produce a desired deflection in the distal end
section; and
a second actuator at the proximal end that engages the
variable radius control wire to modify the loop structure.
DISCUSSION
Claims 2, 18, 21
Claim 2 is directed to a deflectable catheter. A deflectable catheter, as
explained in the Specification, is a catheter that is “capable of forming one
of many variable radius, spiral forms from a flexible distal end section.”
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Application 13/430,428
Spec. 1 6. The catheter shaft comprises a “flexible distal end section.” The
catheter comprises (1) first and second control wires which are “contained
within the deflectable catheter and connected to the catheter shaft”’ and (2) a
variable radius control wire also within the deflectable catheter. The claim
requires “a single compression coil housing both the first and second control
wires.” Claims 18 and 21 have the same requirement.
The Examiner cited Webster for teaching a deflectable catheter
comprising a flexible distal end, first and second control wires, and a
variable radius control wire as recited in the claims. Final Office Action
(“Final Act.”) 4. The Examiner acknowledged that Webster does not
describe a single compression coil housing both the first and second control
wires as claimed. Id. at 6. However, the Examiner found that Kovalcheck
describes a deflectable catheter having multiple pull-wires (teaching the
recited “control wires”) housed within a single compression coil as required
by the claims. Id. The Examiner determined it would have been obvious to
one of ordinary skill in the art to have modified Webster’s deflectable
catheter with Kovalcheck’s teaching to “have reduced stress associated with
each wire for a certain deflection angle . . . regardless of the pulling
sequence.” Id.
Appellants contend that Webster employs diametrically opposed pairs
of compression coils to permit the puller wires to be unaffected by each
other when moved in different directions. Appeal Br. 11. Appellants cited
specific disclosure from Webster to support this argument. Id. Appellants
contend that “[modifying Webster to incorporate the compression coil/pull
wire arrangement as disclosed by Kovalcheck and suggested by the
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Application 13/430,428
Examiner would clearly negate the purpose and benefits of the Webster
catheter.” Id. at 12. Appellants further argue:
The arrangement of the puller wires in separate lumens and
compression coils “allows a physician to deflect the tip section
13 in a first direction to bring the distal tip near a desired site on
the heart wall and then deflects the distal portion of the tip
section from side to side, i.e., transverse to the first deflection,
to reach around an obstruction such as a papillary muscle or
chorda.” [Webster] at 7:42-47. In other words, it is the specific
arrangement of lumens and puller wires in Webster that
allows the device in Webster to function as desired. The
Examiner’s suggested modification of Webster in view of
Kovalcheck would render the Webster device useless—it would
negate the purpose and benefits of the Webster catheter.
Reply Br. 4.
This argument does not persuade us that the Examiner erred in
rejecting the claims as obvious over the combined prior art.
The Examiner found that Kovalcheck’s configuration utilizing a
single compression coil housing multiple control wires was used to articulate
different sections of the catheter and “that the sequence of pulling the wires
to achieve a shape may be altered to achieve specific bending and direction
of the distal end of the catheter.” Ans. 8. The Examiner cited the following
disclosure from Kovalcheck to support this determination:
In the particular embodiment illustrated, the pull wires
110 connect to the controllably bendable section 26 and are
actuated in such a manner as to articulate the extreme distal
region 138 of the catheter first and subsequently articulate two
other regions 140,142 proximal to the distal region. The shape
of the controllably bendable section 26 while undergoing
articulation will thus reflect the particular sequence the pull
wires 110 are actuated. However, the sequence of pulling, and
corresponding shape of the controllably bendable section 26,
need not be limited to the embodiment shown. The provision
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Application 13/430,428
of multiple pull wires 110 reduces the stress associated with
each wire for a certain deflection angle and may be
accomplished regardless of the pulling sequence. For instance,
the wire 110a attached farthest distally may be actuated last and
thus the distal region 138 will remain generally aligned with the
middle region if only the second two wires 1106 and 110c are
pulled. Any number of combinations with respect to the order
the wires 110 are pulled are possible.
Kovalcheck, col. 13,11. 43—61.
As indicated by the Examiner, Fig. 11 of Kovalcheck shows wires
110a, 110b, and 110c housed in insertion tube 24 that also comprises wire
coil 126, which serves as a compression coil. Kovalcheck, Fig. 11; col. 10,
11. 23—26, 39-42; Final Act. 6. The disclosure reproduced above from
Kovalcheck teaches that the wires 110a, 110b, and 110c, although housed in
a single compression coil, can be used to articulate different portions of the
deflectable catheter, the same function described by Webster for its
separately housed wires. Although the Examiner cited this disclosure in the
Final Action 6 and Answer 6—8, Appellants did not adequately address it nor
explain how Kovalcheck, in view of this express disclosure, would defeat
the purpose of Webster. For this reason, we affirm the Examiner’s rejection
of claim 2. Claims 18 and 21 were argued with claim 2 and fall with it.
Dependent claims 2—7, 12—14, 17, and 19-23 were not argued separately and
fall with the independent claims.
Claims 16 and 20
Dependent claims 16 and 20 each require that the deflectable catheter
“comprises a second compression coil housed within the first compression
coil.” To meet this limitation, the Examiner cited the teaching in Webster of
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Application 13/430,428
braided mesh 15 surrounding a wire coil. Final Act. 5. Appellants argue a
compression coil is distinguishable from braided mesh:
A braided mesh surrounding a compression coil is not the same
as a compression coil surrounding a compression coil. The
Examiner is arbitrarily reading a limitation into braided mesh
15 that is neither disclosed nor suggested by Webster. To be
sure, Webster refers to “compression coil 33” and separately
“braided mesh 15.”
Moreover, it is clear that the braided mesh 15 and
compression coil 33 are not the same thing because Webster not
only refers to them by different names but intends for them to
function differently-the braided mesh 15 is designed to increase
the torsional stiffness of the catheter body (Webster at 4:62-65;
see also 5:5-10) whereas the compression coil of Webster
provides flexibility and bending but is to resist compression {id.
at 6: 1-2).
Appeal Br. 12.
Appellants’ argument is persuasive. The rejected claims expressly
require a “compression coil,” which is defined by Webster as being for
“resisting compression.” Webster, col. 2,11. 49-51. The braided mesh, on
the other hand, has a different function, which is to impart torque stiffness.
Id. at col. 4,11. 62—65. The Examiner states that the “compression” function
is “absent from the claim,” but ignored the fact that the coil is recited to be a
“compression coil.” Ans. 9. Thus, although a definition may not be
provided in the Specification, the broadest and most reasonable
interpretation is that it resists compression, as its name implies, consistent
with the teaching in Webster.
As discussed by Appellants, Webster uses the term “braided mesh”
differently than “compression coil.” The Examiner did not provide a
compelling reason to read “compression coil” to include “braided mesh,”
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Application 13/430,428
when the terms are defined differently by Webster as referring to structures
that have different functions. Consequently, because the Examiner did not
provide a reason to have used two compression coils, we reverse the
obviousness rejection of claims 16 and 20.
SUMMARY
The obviousness of claims 2—7, 12—14, 17—19, and 21—23 is affirmed.
The obviousness rejection of claims 16 and 20 is reversed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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