Ex Parte Roche et al

Patent Trial and Appeal Board

Jun 27, 2016

13040729 (P.T.A.B. Jun. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/040,729 03/04/2011 Ellen Roche
28390 7590 06/29/2016
MEDTRONIC VASCULAR, INC
IP LEGAL DEPARTMENT
3576 UNOCAL PLACE
SANTA ROSA, CA 95403
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.
P37842 3524
EXAMINER
TON, MARTIN TRUYEN
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
06/29/2016 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):
rs.vasciplegal@medtronic.com
medtronic_cv_docketing@cardinal-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ELLEN ROCHE and KEVIN 0' SULLIVAN
Appeal2014-004088
Application 13/040,729 1
Technology Center 3700
Before MURRIEL E. CRAWFORD, MICHAEL C. ASTORINO, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
ASTORINO, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1---6 and 8-14. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
We REVERSE.
1 According to the Appellants, the real party in interest is Medtronic
Vascular, Inc. Br. 1.
Appeal2014-004088
Application 13/040,729
Claimed Subject Matter
Claims 1 and 8 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the subject matter on appeal.
1. A perfusion dilatation catheter system comprising:
a resilient tubular frame having a plurality of longitudinal
struts defined by a plurality of slots, the frame being heat set in a
radially expanded configuration and being adapted to be
constrained in a radially compressed configuration; and
an inflatable dilatation balloon helically wrapped around
the frame struts,
wherein each longitudinal strut extends from a first
location proximal of the helically wrapped balloon to a second
location distal of the helically wrapped balloon, and
wherein adjacent windings of the helically wrapped
balloon are in contact with each other when the balloon is in an
inflated configuration and a lumen is defined by an interior
surface of the balloon when the frame is in the radially expanded
configuration.
Rejections
Claims 1, 2, 5, and 6 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Tilson (US 2009/0299327 Al, pub. Dec. 3, 2009) and
Sachdeva (US 6,780,175 Bl, iss. Aug. 24, 2004).
Claims 3, 4, and 8-14 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Tilson, Sachdeva, and Freyman (US 7 ,244,242 B2, iss.
July 17, 2007).
ANALYSIS
The Examiner finds that Tilson's tensioners 164a, 164b correspond to
"a plurality of longitudinal struts defined by a plurality of slots, ... wherein
each longitudinal strut extends from a first location proximal of the helically
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Application 13/040,729
wrapped balloon to a second location distal of the helically wrapped
balloon" as recited in independent claim 1. Final Act. 3. The Examiner
relies on this finding for a similar limitation of independent claim 8. See
Final Act. 7.
The Appellants contend that each tensioner 164a, 164b "does not
extend from a first location proximal of the balloon to a second location
distal of the balloon" because "proximal tensioners 164b of Tilson extend
from proximal of the balloon to a proximal end of the balloon 20, and distal
tensioner 164b [sic 164a] extends from a distal end of the balloon 20 to a
location distal of balloon 20." Br. 6-7; see Tilson, paras. 326, 327. The
Appellants' contention is persuasive.
The Examiner's position is that tensioners 164a, 164b each extend
from a location proximal of the balloon, e.g., lower end of balloon in Figure
40, to a location distal of the balloon, e.g., upper end of balloon in Figure 40.
The Examiner's position appears to be based on a presumption that
tensioners 164a, 164b are continuous structures that start at a proximal
location with respect to balloon 20 and end at a location distal with respect
to balloon 20. See Ans. 3. However, this presumption is not adequately
supported by Tilson's disclosure.
The variation of Tilson's device in Figure 40, viewing the top of the
figure and moving downwards, includes distal tensioner 164a, balloon 20,
which includes a plurality of windings (e.g., 182a, 182b) that are joined at
welding joint 184, and tensioners 164b. See Tilson, paras. 138, 343.
Figure 40 does not depict structures that are positioned behind balloon 20.
As such, Figure 40 as depicted does not provide adequate support to find
that tensioners 164a, 164b are continuous structures that start at a proximal
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Application 13/040,729
location with respect to balloon 20 and ends at a location distal with respect
to balloon 20.
Additionally, Tilson's disclosure suggests that tensioners 164a, 164b
are not continuous structures. See, e.g., Tilson, Figs. 36a, 36b. Although
Figures 36 and 40 illustrate different variations of the device, both figures
use the same reference numbers 164a, 164b. And, in Figure 36 reference
numbers 164a and 164b are depicted and disclosed as connected through
balloon 20, in particular, distal segment 172a and proximal segment 172b of
balloon 20 and segment joint 174. See Tilson, paras. 326, 327, 330; see also
Br. 7. In Figure 40, balloon 20 includes a plurality of windings (e.g., 182a,
182b) that are joined at welding joints 184 (Tilson, para. 343), which
suggests that tensioners 164a and 164b in Figure 40 are also connected
through balloon 20 and as such, are not continuous structures that start at a
proximal location with respect to balloon 20 and end at a location distal with
respect to balloon 20.
Therefore, the Examiner's finding that tensioners 164a, 164b
correspond to "a plurality of longitudinal struts defined by a plurality of
slots, ... wherein each longitudinal strut extends from a first location
proximal of the helically wrapped balloon to a second location distal of the
helically wrapped balloon" as recited in independent claim 1, is inadequately
supported. The Examiner's reliance on Sachdeva's teachings to modify
Tilson's teachings does not cure the deficiency in the Examiner's
inadequately supported finding.
Thus, the Examiner's rejection of claims 1, 2, 5, and 6 as unpatentable
over Tilson and Sachdeva is not sustained. Additionally, the remaining
rejection based on Tilson and Sachdeva in combination with Freyman relies
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Application 13/040,729
on the same inadequately supported finding discussed above. As such, we
do not sustain the Examiner's rejection of claims 3 and 4, which depend
from claim 1, as unpatentable over Tilson, Sachdeva, and Freyman. And,
for similar reasons as discussed above we do not sustain the Examiner's
rejection of independent claim 8 and dependent claims 9--14 as unpatentable
over Tilson, Sachdeva, and Freyman.
DECISION
We REVERSE the Examiner's decision rejecting claims 1---6 and
8-14.
REVERSED
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