Ex Parte Pillai

Patent Trial and Appeal Board

Jun 21, 2016

11424131 (P.T.A.B. Jun. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111424, 131 06/14/2006
66854 7590
SHAY GLENN LLP
2755 CAMPUS DRIVE
SUITE 210
SAN MATEO, CA 94403
06/23/2016
FIRST NAMED INVENTOR
Lakshmikumar Pillai
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.
10949-700.300 7037
EXAMINER
HOLLM, JONATHAN A
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
06/23/2016 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):
info@shayglenn.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LAKSHMIKUMAR PILLAI
Appeal2014-003979
Application 11/424, 131 1
Technology Center 3700
Before ANTON W. PETTING, KENNETH G. SCHOPPER, and
TARA L. HUTCHINGS, Administrative Patent Judges.
SCHOPPER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the rejection of claims
1, 2, 5, 8, 10, and 22-28. We have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
BACKGROUND
According to Appellant, "[t]he present invention relates to methods of
transvascular retrograde access placement and to devices that facilitate in the
performance of these methods." Spec. i-f 2.
1 According to Appellant, the real party in interest is Vascular Access
Technologies, Inc. Appeal Br. 2.
Appeal2014-003979
Application 11/424, 131
CLAHvIS
Claims 1, 2, 5, 8, 10, and 22-28 are on appeal. Claim 1 is the only
independent claim and recites:
1. A method of performing transvascular retrograde access
placement in a central blood vessel of a patient, the central blood
vessel selected from a group consisting of a jugular vein or a
subclavian vein, said method comprising:
inserting a vascular catheter into a femoral vein or an
antecubital vein and positioning said vascular catheter within
said central blood vessel such that a portion of said vascular
catheter faces a desired exit site on a wall of said central blood
vessel, the vascular catheter comprising an angled-tip;
passing a needle from said vascular catheter through said
desired exit site on said wall of said central blood vessel and skin
of said patient; and
passing an end of a secondary vascular catheter through
said exit site and into said central blood vessel.
Appeal Br. 11.
REJECTIONS
1. The Examiner rejects claims 1, 24, and 27 under 35 U.S.C.
§ 103(a) as unpatentable over Macoviak2 in view ofEvans. 3
2. The Examiner rejects claim 2 under 35 U.S.C. § 103(a) as
unpatentable over Macoviak in view of Evans and Eggers. 4
3. The Examiner rejects claims 5, 8, 22, 23, and 25 U.S.C. § 103(a) as
unpatentable over Macoviak in view of Evans and Makower. 5
2 Macoviak et al., US 6,508,777 Bl, iss. Jan. 21, 2003.
3 Evans et al., US 2004/0181150 Al, pub. Sept. 16, 2004.
4 Eggers et al., US 6,047,700, iss. Apr. 11, 2000.
5 Makower et al., US 2004/0059280 Al, pub. Mar. 25, 2004.
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Appeal2014-003979
Application 11/424, 131
4. The Examiner rejects claims 10 and 28 under 35 U.S.C. § 103(a)
as unpatentable over Macoviak in view of Evans, Makower, and
Adams. 6
5. The Examiner rejects claim 26 under 35 U.S.C. § 103(a) as
unpatentable over Macoviak in view of Evans, Pavcnik, 7 and
Makower.
DISCUSSION
We are persuaded by Appellant's argument that the Examiner has not
established that one of ordinary skill in the art would have been motivated to
combine Macoviak and Evans as the Examiner proposes. See Appeal Br. 4--
8. An Examiner can satisfy the burden of showing that a particular
combination of prior art references would have been obvious by establishing
"some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness." KSR Int'! Co. v. Teleflex, Inc., 550 U.S.
398, 418 (2007). We find that the Examiner failed to meet that burden here.
The Examiner finds that it would have been obvious to employ Evans'
method to facilitate placement of cooperating catheters by reducing the
number of guidewires needed. Final Action 4. However, the Examiner does
not explain how this would facilitate Macoviak's particular method or why it
would have been desirable to a person of ordinary skill in the art to use
fewer guidewires.
Further, in the Answer, the Examiner states that "the references are
directed to similar problems and one of ordinary skill in the art would be
6 Adams et al., US 5,733,248, iss. Mar. 31, 1998.
7 Pavcnik et al., WO 2005/053547 A2, pub. June 16, 2005.
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Appeal2014-003979
Application 11/424, 131
readily motivated to combine the teachings of the references to predictably
enhance the surgical bypass method of Macoviak et al." Ans. 4. However,
the Examiner provides no explanation of what those predictable
enhancements would be, and such is not readily apparent in the cited
portions of the prior art. To the extent the Examiner is referring to the use of
fewer guidewires, the Examiner has again failed to explain how this would
provide an enhancement over Macoviak's method such that one of ordinary
skill in the art would have been motivated to make the combination
proposed.
Based on the foregoing, we find that the Examiner has failed to
provide an articulated reason with sufficient rational underpinning to support
the legal conclusion of obviousness. Accordingly, we do not sustain the
rejection of claim 1. We also do not sustain the rejection of any of
dependent claims 2, 5, 8, 10, and 22-28 because the Examiner has not
established that any of the art of record cures the deficiency with respect to
the rejection of claim 1.
CONCLUSION
For the reasons set forth above, we reverse the rejections of claims 1,
2, 5, 8, 10, and 22-28.
REVERSED
4