Ex Parte Olson et alDownload PDFPatent Trial and Appeal BoardMay 8, 201713719687 (P.T.A.B. May. 8, 2017) Copy Citation 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. 13/719,687 12/19/2012 Matthew J. Olson 1001.3061102 2159 11050 7590 05/10/2017 SEAGER, TUFTE & WICKHEM, LLP 100 South 5th Street Suite 600 Minneapolis, MN 55402 EXAMINER HOEKSTRA, JEFFREY GERBEN ART UNIT PAPER NUMBER 3736 NOTIFICATION DATE DELIVERY MODE 05/10/2017 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): BSC.USPTO@stwiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MATTHEW J. OLSON, CHAD J. KUGLER, ROSS A. OLSON, DAVID B. ROBINSON, and PETER A. JACOBS1 Appeal 2015-006835 Application 13/719,687 Technology Center 3700 Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and TIMOTHY G. MAJORS, Administrative Patent Judges. PER CURIAM. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) involving claims that have been rejected as anticipated and obvious. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 Appellants identify the Real Party in Interest as Bridgepoint Medical, Inc., “which is a wholly owned subsidiary of Boston Scientific Corporation.” (App. Br. 3.) Appeal 2015-006835 Application 13/719,687 STATEMENT OF THE CASE Appellants’ invention “relate[s] to devices and methods for crossing chronic total occlusions and establishing a pathway blood flow past the chronic total occlusions.” (Spec. 12.) Claims 1—20 are on appeal. Claim 1 is illustrative: 1. An elongate medical device for penetrating tissue, comprising: an elongate shaft having a proximal segment and a reduced diameter distal segment, the distal segment unitarily formed with the proximal segment; a coil positioned around the distal segment; a tip member fixedly securing a distal end of the coil to the distal segment; and a distal portion of the distal segment extending distal of the distal end of the coil and extending distal of a distalmost end of the tip member; wherein the distal portion of the distal segment defines a probe adapted and configured to pierce tissue. (App. Br. 15 (Claims App’x).) The claims stand rejected as follows: I. Claims 1—7, 10-16, 19, and 20 under 35 U.S.C. § 102(a) as anticipated by Takashi.2 II. Claims 8, 9, 17, and 18 under 35 U.S.C. § 103(a) over Takashi. 2 Takashi et al., JP 2007-89901 A, published Apr. 12, 2007 (“Takashi”). The Examiner referred to this reference as “Japan Lifeline.” 2 Appeal 2015-006835 Application 13/719,687 DISCUSSION REJECTIONS I AND II Appellants’ independent claim 1 recites, among other things, “an elongate shaft having a proximal segment and a reduced diameter distal segment,” and “a coil positioned around the distal segment.” Independent claim 12 recites, among other things, “an elongate shaft having a proximal segment and a reduced diameter distal segment,” and “a tubular component positioned around and fixedly secured to the distal segment.” (App. Br. 15— 16 (Claims App’x).) In regard to claims 1 and 12, the Examiner finds that Takashi discloses an elongate medical device (guide wire 3) for penetrating tissue (see Figs. 1—3), comprising: an elongate shaft having a proximal segment (large diameter part 2) and a reduced diameter distal segment (small diameter part 1), the distal segment unitarily formed with the proximal segment; a coil, i.e. tubular component, positioned around the distal segment (coil spring 6). (Final Act. 2.) Appellants argue that Takashi does not disclose all of the elements of claims 1 and 12. According to Appellants, “[t]he Examiner clearly errs in identifying Projection 5 of FIG. 9 of Takashi. . . where the spring 10 and distal end side end tip 4 of Takashi have been identified as corresponding to the ‘coil positioned around the distal segment.’” (App. Br. 9.) The Examiner responds that Appellant misinterprets or misreads the rejection of claim 1 for coil 10 and distal end side of tip 4 shown in Fig. 9 of [Takashi] are not identified as being the recited “coil” in claim 1 in the rejections of claims 1 and 12. Rather coil 6, shown in Fig. 1 3 Appeal 2015-006835 Application 13/719,687 (NOTE: Fig. 1 shows the overall structure of the device and Fig. 9 shows an embodiment of the tip portion of the device), has been identified and interpreted as the recited coil in the rejections of claims 1 and 12. (Ans. 4.) In order to anticipate, all of the claim elements and their limitations must be shown, expressly or inherently, in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). (“[Ujnless a [prior art] reference discloses within the four comers of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim, it cannot be said to prove prior invention of the thing claimed and, thus, cannot anticipate under 35 U.S.C. § 102.”) We agree with Appellants that Takashi does not disclose the medical device of claims 1 and 12. Claim 1 requires “an elongate shaft having a proximal segment and a reduced diameter distal segment,” and “a coil positioned around the distal segment” (emphases added). Takashi’s Fig. 1 shows a coil spring 6 at the distal end of guide wire 3 in which the distal end is a “small diameter part.” (Takashi, Fig. 1; Abstract; pp. 7—8.3) However, Fig. 1 does not show with sufficient clarity that coil spring is positioned around a reduced diameter distal segment. On the record before us, the Examiner has not sufficiently shown that Takashi teaches “a coil positioned around the distal segment” as required in claim 1 and “a tubular component positioned around and fixedly secured to the distal segment” as required in claim 12. We, thus, conclude that the 3 The Examiner provides an English translation of Takashi from lexisnexis.com. 4 Appeal 2015-006835 Application 13/719,687 Examiner has not established by a preponderance of the evidence that Takashi anticipates claims 1 and 12. In addition, if spring (10) of Figure 9 of Takashi is not the “coil” recited in the claim, as the Examiner appears to clarify (Ans. 4), the Examiner has not provided a persuasive showing that Takashi discloses “a tip member fixedly securing the distal end of the coil to the distal segment” as recited in claim 1. For the reasons discussed above, we reverse the rejection of claims 1 and 12. Claims 2—11 and 13—20 all depend (directly or indirectly) from claim 1 or claim 12, so we reverse the rejection as to those claims as well. CONCLUSION OF LAW We reverse the rejection of claims 1—7, 10-16, 19, and 20 under 35 U.S.C. § 102(a) as being anticipated by Takashi. We reverse the rejection of claims 8, 9, 17, and 18 under 35 U.S.C. § 103(a) over Takashi REVERSED 5 Copy with citationCopy as parenthetical citation