Ex Parte Nuss

Board of Patent Appeals and Interferences

Jul 22, 2008

09760136 (B.P.A.I. Jul. 22, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte STEPHEN NUSS
____________

Appeal 2008-2705
Application 09/760,136
Technology Center 3700
____________

Decided: July 22, 2008
____________

Before DONALD E. ADAMS, DEMETRA J. MILLS, and
ERIC GRIMES, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL

This appeal under 35 U.S.C. § 134 involves claims 12, 16-20 and 24-
27, the only claims pending in this application. We have jurisdiction under
35 U.S.C. § 6(b).
Appeal 2008-2705
Application 09/760,136

INTRODUCTION
The claims are directed to an intravascular guidewire. Claim 20 is
illustrative:
20. An intravascular guidewire adapted for insertion into the vascular
system of a patient during the course of a catheterization procedure
comprising a titanium molybdenum alloy wire having approximately
between about 75 % and about 83 %[ ]titanium, between about 8 % and
about 14 %[ ]molybdenum, between about 4 % and about 8 % zirconium
and between about 2 % and about 6 % tin by weight, the wire having a
diameter in a range of from 0.005 inch and 0.040 inch over a predetermined
length dimension thereof, said wire having a proximal end portion and a
distal end portion where the distal end portion is tapered to a lesser diameter
than the diameter of the proximal end portion and terminates in a rounded
distal tip.

The Examiner relies on the following prior art references to show
unpatentability:
Chapman US 4,776,330 Oct. 11, 1988
Cornish US 6,132,389 Oct. 17, 2000

The rejection as presented by the Examiner is as follows:
Claims 12, 16-20 and 24-27 stand rejected under 35 U.S.C § 103(a) as
unpatentable over the combination of Chapman and Cornish.
We reverse.

2
Appeal 2008-2705
Application 09/760,136

DISCUSSION
The Examiner presents two obviousness rejections for our review
based on (1) Chapman in view of Cornish; and (2) Cornish in view of
Chapman (Ans. 3 and 5). We consider both rejections collectively as based
on the combination of Chapman and Cornish
The Examiner finds that Cornish fails to teach a guidewire
comprising “a titanium molybdenum alloy wire having approximately 78%
titanium, 11.5% molybdenum, 6 % zirconium and 4.5% tin by weight” (Ans.
5). The Examiner relies on Chapman to make up for this deficiency in
Cornish (id.).
According to the Examiner, Chapman teaches “a guidewire . . . having
approximately 78% titanium, 11.5% molybdenum, 6% zirconium and 4.5%
tin by weight” (id.). We disagree.
As Appellant explains, “[n]owhere within the four corners of the ‘330
[(Chapman)] patent is there any indication that the guidewire . . . is
fabricated from appellant’s claimed alloy” (Reply Br. 5). While Appellant
agrees that Chapman teaches “that the components of the novel kit of the
[Chapman’s] invention are made of the same alloy as is used in Appellant’s
guidewire, nowhere in this patent is there any indication that the ‘kit’
includes a guidewire as one of its members” (Reply Br. 5-6). We agree.
We are not persuaded by the Examiner’s assertion that since
Chapman’s “guidewire is left in place in the patient’s bone to form part of
the implant. The Examiner has concluded that because the guidewire . . .
forms a part of the implant, that it must be a part of the kit and therefore be
formed of the resilient, physiologically inert titanium-based alloy” (Ans. 6).
This assertion is not supported by the evidence of record. As Appellant
3
Appeal 2008-2705
Application 09/760,136

explains, while Chapman’s kit includes a number of components a guidewire
is not disclosed by Chapman to be a component of the kit (Reply Br. 6; see
also Chapman, col. 2, ll. 30-45). Thus, the evidence of record fails to
support the Examiner’s assertion.
Accordingly, we reverse the rejection of claims 12, 16-20, and 24-27
under 35 U.S.C § 103(a) as unpatentable over the combination of Chapman
and Cornish.

CONCLUSION
In summary, we reverse the rejection of record.

AFFIRMED

clj

NIKOLAI & MERSEREAU, P.A.
900 SECOND AVENUE SOUTH
SUITE 820
MINNEAPOLIS, MN 55402

4