Ex Parte Rottenberg et al

Patent Trial and Appeal Board

Aug 3, 2017

13390140 (P.T.A.B. Aug. 3, 2017)

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.
13/390,140 02/13/2012 Dan Rottenberg 487145.118 4452
122473 7590 08/07/2017
Faegre Baker Daniels LLP (487145)
Patent Docketing - Intellectual Property
2200 Wells Fargo Center, 90 South Seventh Street
EXAMINER
ALEMAN, SARAH WEBB
Minneapolis, MN 55402-3901 ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
08/07/2017 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):
patentdocketing@faegrebd.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAN ROTTENBERG and RON SACHER
Appeal 2015-008117
Application 13/390,140
Technology Center 3700
Before ANTON W. FETTING, CYNTHIA L. MURPHY, and
AMEE A. SHAH, Administrative Patent Judges.
SHAH, Administrative Patent Judge.
DECISION ON APPEAL1
The Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s
final decision rejecting claims 1 and 5—11 under 35 U.S.C. § 103(a) as being
unpatentable over Fahey et al. (US 2006/0100687 Al, pub. May 11, 2006).
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Throughout this opinion, we refer to the Appellants’ Appeal Brief
(“Appeal Br.,” filed Apr. 30, 2015), Reply Brief (“Reply Br.,” filed Sept. 10,
2015), and Specification (“Spec.,” filed Feb. 13, 2012), and to the
Examiner’s Answer (“Ans.,” mailed July 10, 2015) and Final Office Action
(“Final Act.,” mailed Oct. 30, 2014).
2 According to the Appellants, the real party in interest is “THE
SPECTRANETICS CORPORATION.” Appeal Br. 2.
Appeal 2015-008117
Application 13/390,140
STATEMENT OF THE CASE
The Appellants’ “invention is directed to a hypotube support catheter
with a shapeable tip, such as for treating BTK [below the knee], coronary,
pediatric and other small blood vessels, from both antegrade and retrograde
approaches.” Spec. 3.
Claim 1 is the only independent claim on appeal, is representative of
the subject matter on appeal, and is reproduced below (with added
paragraphing and bracketing for reference):
1. A support catheter comprising:
[(a)] a hypotube comprising an inner lumen, a distal tip
and a longitudinal axis;
[(b)] wherein said hypotube is formed with a plurality of
intermittent cuts and uncut portions located at least four axial
stations along said hypotube,
[(c)] wherein at each axial station, a pair of cuts are
separated by a pair of uncut portions,
[(d)] wherein the pair of cuts and the pair of uncut
portions subtend a full 360° circle around a periphery of said
hypotube perpendicular to the longitudinal axis such that each
cut subtends 120° and each uncut portion subtends 60°, and
[(e)] at each adjacent axial station, spaced by an axial
increment from a previous axial station, the pair of cuts and the
pair of uncut portions are phase shifted with respect to the pair
of cuts and pair of uncut portions of the previous axial station,
[(f)] there being a positive angle phase shift of 45°
between adjacent axial stations over at least a portion of a
length of said hypotube.
Appeal Br. 10, Claims App.
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Appeal 2015-008117
Application 13/390,140
ANALYSIS
The Appellants argue claims 1 and 5—11 as a group. Appeal Br. 3.
We select claim 1 as representative of the group; claims 5—11 stand or fall
with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
After careful consideration and review of the arguments presented in
the Appellants’ Appeal and Reply Briefs, we disagree with the Appellants’
contention that the Examiner’s erred in the rejection of claim 1.
The Examiner finds that Fahey discloses the support catheter of
claim 1 comprising a hypotube having a plurality of cuts spaced by uncut
portions at four axial stations, as recited in limitations (a) and (b) of claim 1.
Final Act. 2. The Examiner further finds that “Fahey explains that there are
two uncut portions (20), and thus, two cuts (25), at each axial revolution
(para 65),” as recited in limitation (c). Id. The Examiner also finds that
Farley discloses the cuts extending perpendicular to the longitudinal axis, as
partially recited in limitation (d) {id.), and that the cuts at adjacent axial
stations are phase shifted, as recited in limitation (e) {id. at 3). The
Examiner acknowledges that Farley does not explicitly disclose the cuts and
uncuts extending the claimed degrees, as recited in limitation (d) {id. at 2),
and does not disclose the shift angle of 45 degrees, as recited in limitation (f)
{id. at 3). The Examiner determines that it would have been obvious to one
of ordinary skill in the art to modify the lengths of Fahey’s cuts to have the
cuts and uncuts extend the claimed degrees as a matter of design choice “in
order to provide a device with specific performance characteristics required
by a particular application” and because it is a “mere change in size of a
components [as] generally recognized as being within the level of ordinary
skill in the art.” Id. (citing In re Rose, 105 USPQ 111 (CCPA 1955)). The
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Application 13/390,140
Examiner further determines that it would have been obvious to one of
ordinary skill in the art to modify Fahey to have the phase shift to be 45
degrees because “discovering the optimum or workable ranges involves only
routine skill in the art.” Id. (citing In reAller, 105 USPQ 233); see also
Ans. 6.
Fahey discloses a catheter assembly comprising a hypotube “having a
plurality of cuts in the side wall thereof to define slots, and the slots are
elongate slots extending about the wall of the hypotube in a spiral or
circumferential path which is interrupted at intervals by solid struts.” Fahey
113. “The struts are areas where the spiral cut is discontinuous, that is,
there is a section of the tube that remains intact.” Id. | 64. In a spiral
embodiment, “two struts are provided on each spiral revolution, that is,
substantially diametrically opposed about the circumference of the
hypotube.” Id. 165. The “[sjtruts may be located between 90° and 270°
from each other.” Id. In a circumferential path embodiment, the slots 25
extend about a circumferential path that is interrupted by solid struts 20 “as
with the previous embodiment of spiral cuts.” Id. 1 66. “[TJhere is at least
one slot 25 in each circumferential plane extending partly around the
circumference of the hypotube 12 to define at least one strut in that plane.”
Id. The struts 25 are staggered around the circumference of the hypotube
“substantially in the same way as the spiral cuts” of the spiral cut
embodiment as shown in Figures 10 to 12 and “ensures flexibility in all
planes.” Id. 60, 65—67. “That is, each slot 25 in one plane is located
opposite a strut 20 in an adjacent plane.” Id. 1 66. The length of the slots
varies generally between 20% and 80% of the circumference, depending on
required hypotube performance characteristics. Id. 1 67.
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Appeal 2015-008117
Application 13/390,140
The Appellants ’ Argument A. — Limitation (c)
We find unpersuasive the Appellants’ argument that “[t]he Examiner
Has Not Demonstrated That Fahey Discloses a Pair of Cuts Separated by a
Pair of Uncut Portions.” Appeal Br. 4 (emphases omitted). Rather, we
agree with the Examiner that Fahey discloses that in its circumferential cut
embodiment, the hypotube can have “two cuts and two uncut portions per
revolution” perpendicular to the longitudinal axis of the hypotube. i.e., a pair
of cut portions separated by a pair of uncut portions at each axial station.
See Ans. 4; see also Final Act. 2 and Fahey, Figs. 14. As discussed above,
Fahey discloses that the hypotube can have two cuts around a revolution,
i.e., an axial station, separated by struts and that the path of the cuts and
struts, i.e., cut portions, in the circumferential embodiment is substantially
the same as in the spiral embodiment. See Fahey ]Hf 65, 66.
We further find unpersuasive the Appellants’ arguments that the
Examiner “ignores the important distinction between the shapes of the
different cuts” (Appeal Br. 6—8) and improperly “impute[s] the disclosure of
one embodiment. . . onto the disclosure of another embodiment” (Reply
Br. 3). As indicated above, Fahey discloses that the circumferential cut
embodiment incorporates features of the spiral cut embodiment. See Fahey
| 66. Fahey further discloses that the circumferential embodiment has
similar advantages to the spiral cut embodiment in “allowing] excellent
pushability and flexibility” and “reducing the compression and stretching of
the shafts during the procedure.” Id. 122; see also id. 14, 65, 66. The
Appellants do not provide adequate evidence or technical reasoning why one
of ordinary skill in the art would understand that Fahey discloses that “the
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Application 13/390,140
difference between the shapes of the cuts” (Appeal Br. 6) would “impart
different flexibility” (id. at 7) in a detrimental (or relevant) manner.
The Appellants ’ Argument B. — Limitation (d)
We are also unpersuaded by the Appellants’ arguments that “Fahey
Does Not Disclose a Pair of Cuts, Wherein Each Cut Subtends 120° and
Each Uncut Portion Subtends 60°,” as recited in limitation (d) of claim 1.
Appeal Br. 7 (emphases omitted).
The Examiner acknowledges that Fahey does not disclose the specific
degrees claimed. Final Act. 2. Rather, the Examiner finds that Fahey
discloses that the uncut portions can be spaced between 90 and 270 degrees,
the length of a cut may be between 20-80% of the circumference, and that
the length is adjusted based on catheter requirements, and determines that
Fahey renders obvious the claimed degrees for the reasons discussed above.
Id. at 2—3; see also Fahey, Tflf 65, 67. Thus, the Examiner has established a
prima facie case of obviousness as the Examiner has provided articulated
reasoning with rational underpinning to support a legal conclusion of
obviousness. See KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
The Appellants’ arguments against the Examiner’s findings that
Fahey’s disclosures regarding spiral cuts are “irrelevant” (Appeal Br. 7, 8;
see also Reply Br. 2) are not persuasive for the reasons we found Fahey’s
disclosures regarding the spiral cut embodiment relevant supra. The
Appellants do not provide adequate evidence or technical reasoning why the
Examiner’s articulated reasoning, i.e., design choice, to provide a device
with specific required performance characteristics, and to optimize
pushability (Final Act. 3, Ans. 5), is in error.
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Application 13/390,140
The Appellants’ Argument C. — Limitation (f)
We further find unpersuasive the Appellants’ arguments that “Fahey
Does Not Disclose Each Adjacent Set of Cuts and Uncut Portions Phase
Shifted 45°,” as recited in limitation (f) of claim 1. Appeal Br. 8; Reply
Br. 4. As discussed above, the Examiner acknowledges that Fahey does not
disclose the specific degrees of the phase shift as claimed. Final Act. 3.
Rather, the Examiner finds that Fahey discloses that the cuts are phase
shifted relative to one another at various degrees, and determines that Fahey
renders obvious the claimed degree as a matter of design choice “as this
optimizes the performance characteristics of a hypotube for a particular
application.” Ans. 6; see also Final Act. 3 (citing Alien). And Fahey teaches
that staggering (i.e., phase shifting) of the struts “ensures adequate flexibility
in all directions” (Fahey 125; see also Ans. 5). Thus, the Examiner has
established a prima facie case of obviousness as the Examiner has provided
articulated reasoning with rational underpinning to support a legal
conclusion of obviousness. See KSR, 550 U.S. at 418.
The Appellants’ argument that the Examiner relies on impermissible
hindsight (Appeal Br. 8, Reply Br. 4) is not persuasive. The Appellants do
not provide adequate evidence or technical reasoning why the Examiner’s
articulated reasoning, i.e., design choice and optimization (Final Act. 3;
Ans. 6), is in error. The Appellants’ “remind[er to] the Examiner that a
rejection based on information gleaned from [the Appellants’] own
disclosure suggests that the rejection is impermissibly based on hindsight”
(Reply Br. 4; see also Appeal Br. 3—4) does not explain why the Examiner’s
articulated reasoning is ineffective to support the conclusion of obviousness
and is gleaned only from the Appellants’ disclosure. See In re McLaughlin,
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Appeal 2015-008117
Application 13/390,140
433 F.2d 1392, 1395 (CCPA 1971). As indicated above, Fahey teaches that
staggering, or phase shifting, influences characteristics (e.g., flexibility) of a
catheter. The Appellants do not address this teaching by Fahey in their
arguments. See Reply Br. 4.
Based on the foregoing, we are not persuaded of error on the part of
the Examiner in the rejection of claim 1. Thus, we sustain the Examiner’s
rejection under 35 U.S.C. § 103(a) of independent claim 1 and of dependent
claims 5—11, which fall with claim 1.
DECISION
The Examiner’s rejection of claims 1 and 5—11 under 35 U.S.C.
§ 103(a) is AFFIRMED.
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
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