Ex Parte Sansoucy

Patent Trial and Appeal Board

Mar 30, 2018

12894269 (P.T.A.B. Mar. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/894,269 09/30/2010
143331 7590 04/03/2018
Medtronic, Inc./RCS Shumaker
60 Middletown A venue
c/o Legal - Mailstop MS 54
North Haven, CT 06473
FIRST NAMED INVENTOR
Michael R. Sansoucy
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.
HKN-01326US1/1214-079US01 5690
EXAMINER
LEE, WENG WAH
ART UNIT PAPER NUMBER
3763
NOTIFICATION DATE DELIVERY MODE
04/03/2018 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):
SurgicalUS@covidien.com
medtronic_mitg-rcs_docketing@cardinal-ip.com
pairdocketing@ssiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL R. SANSOUCY
Appeal2016-004277
Application 12/894,269
Technology Center 3700
Before STEVEN D.A. McCARTHY, ANNETTE R. REIMERS and
NATHAN A. ENGELS, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Michael R. Sansoucy (Appellant) appeals under 35 U.S.C. § 134(a)
from the Examiner's decision to reject under 35 U.S.C. § 103(a): (1) claims
1--4, 6-13, and 15-20 as unpatentable over Mahurkar (US 5,221,256, issued
June 22, 1993), and Periakaruppan (US 2004/0006318 Al, published Jan. 8,
2004); and (2) claims 5 and 14 as unpatentable over Mahurkar,
Periakaruppan, and Difiore (US 2006/0004316 Al, published Jan. 5, 2006).
We have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
Appeal 2016-004277
Application 12/894,269
CLAIMED SUBJECT MATTER
The claimed subject matter relates to a catheter assembly. Spec. i-f 2,
Figs. 1, 4. Claims 1 and 13 are independent.
Claim 1 is illustrative of the claimed subject matter and recites:
1. A medical catheter assembly, comprising:
an elongate catheter member defining a longitudinal axis
and having a proximal end, a distal end, and an outer wall, the
elongate catheter member defining first and second internal
lumens extending therethrough, the outer wall defining a first
opening in fluid communication with the first internal lumen to
facilitate establishment of a first flow stream, and a second
opening in fluid communication with the second internal lumen
to facilitate establishment of a second flow stream, the first and
second openings each including proximal and distal tapered
portions connected by an intermediate portion extending
longitudinally between the proximal and distal tapered portions
and having a constant dimension transverse to the longitudinal
axis, whereby separation of the first flow stream from the second
flow stream is maximized to reduce the likelihood of
recirculation between the first and second internal lumens.
ANALYSIS
Obviousness over Mahurkar and Periakaruppan
Claims 1-4, 6-13, and 15-20
Independent claim 1 is directed to a catheter assembly having an
elongate catheter member with an outer wall including first and second
openings wherein "the first and second openings each including proximal
and distal tapered portions connected by an intermediate portion extending
longitudinally between the proximal and distal tapered portions and having a
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Application 12/894,269
constant dimension transverse to the longitudinal axis." Appeal Br. 10,
Claims App. 1
The Examiner finds that Mahurkar discloses the catheter assembly of
claim 1 except for the above cited limitation. See Final Act. 3. 2 The
Examiner finds that Periakaruppan "teaches a catheter for use in the vascular
system," wherein"[ o ]ne embodiment of a side hole (120) has tapered
portions (126) connected by an intermediate portion (124) extending
longitudinally between the tapered portions." Final Act. 3--4 (citing
Periakaruppan i-f 1, Fig. 12). The Examiner further finds that "[t]he side
holes [of Periakaruppan] are shaped to be different from circular holes in
order to prevent the holes from collapsing when being used in the vascular
system." Id. at 4 (citing Periakaruppan i-fi-18, 9). The Examiner concludes
that a skilled artisan would have "modif[ied] the circular holes of the
catheter assembly of Mahurkar with the holes as taught by Periakaruppan,
since doing so would effectively [have] prevent[ ed] the holes from
collapsing in the vascular system and impeding fluid flow." Id. (citing
Periakaruppan i-f 8).
Appellant contends that the Examiner "has not shown that a person of
ordinary skill in the art would have understood 'holes ... collapsing in the
vascular system' to have been a problem with Mahurkar's apertures 22, 24,
25." Appeal Br. 6 (footnote omitted); accord Reply Br. 2. 3 According to
Appellant, "Mahurkar provided solutions to prevent the lumens 13, 14, 15
from collapsing which, given that Mahurkar's apertures 22, 24, 25 are
1 Appeal Brief (hereinafter "Appeal Br.") (filed Oct. 6, 2015).
2 Final Office Action (hereinafter "Final Act.") (dated Apr. 9, 2015).
3 Reply Brief (hereinafter "Reply Br.") (filed Mar. 9, 2016).
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Appeal 2016-004277
Application 12/894,269
defined by those lmnens 13, 14, 15 that are prevented from collapsing,
would have been understood to have prevented also Mahurkar' s apertures
22, 24, 25 from collapsing." Appeal Br. 6; accord Reply Br. 4. Appellant
concludes that the Examiner's "assertion that modifying Mahurkar's
openings 22, 24 (or 25) to have the same shape as Periakaruppan's side
holes 120 would have 'effectively prevent[ed] the holes from collapsing in
the vascular system' appears speculative and not based on any evidence of
record." Appeal Br. 8 (footnote omitted).
Mahurkar discloses that "[ t Jo prevent acute bends in the catheter from
closing off one or both lumens, the catheter of FIGS. 10--13 has a spiral 70
of relatively stiff material embedded in the cylindrical wall of the catheter
along a substantial portion of the length of the catheter." Mahurkar 8:29--33;
see also Appeal Br. 6; Reply Br. 4. Mahurkar also discloses that
[ t ]he spiral 70 will always tend to retain its cylindrical shape, and
thus also tends to hold the outer wall of the catheter in a
cylindrical shape, thereby resisting kinking or buckling of the
catheter side walls. Consequently, the catheter can be bent, even
at acute angles, without closing the lumens.
Mahurkar 8:41--46 (emphasis added); see also Appeal Br. 6; Reply Br. 4.
In this case, the Examiner's findings that "[e]ven ifthe spiral 70 of
Mahurkar tends to maintain the outer wall of the catheter in a cylindrical
shape ... , it would not effectively prevent the apertures from collapsing or
winking" and "one of ordinary skill in the art would have understood the
existing problem recited by Periakaruppan to apply to the apertures of
Mahurkar as well" (see Ans. 3 4) are unsupported in view of the evidence
provided in Mahurkar. We agree with Appellant that the Examiner "has not
4 Examiner's Answer (hereinafter "Ans.") (dated Feb. 1, 2016).
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Appeal 2016-004277
Application 12/894,269
shown that a person of ordinary skill in the art would have understood
Mahurkar's spiral 70 to have been ineffective in 'prevent[ing] the apertures
from collapsing or winking."' Reply Br. 5. Consequently, we agree with
Appellant that the Examiner "has failed to establish a reason, with rational
underpinning, for the proposed modification of Mahurkar' s catheter
assembly in view of Periakaruppan." Appeal Br. 6.
Independent claim 13 is directed to a catheter assembly having an
elongate catheter member with an outer wall including first and second
openings, wherein the first and second openings are defined by first and
second continuous walls, respectively, each wall having first and second
transversely spaced axial wall portions, the first axial wall portions and the
second axial wall portions defining an equivalent distance therebetween
measured along a circumference of the elongate catheter member to
maximize separation of the first and second openings. See Appeal Br. 13,
Claims App. The Examiner relies on the same unsupported findings in
Mahurkar and Periakaruppan for claim 13 as those discussed above for claim
1. See Final Act. 3, 7-8. Thus, the Examiner's findings with respect to
Mahurkar and Periakaruppan are deficient for claim 13 as well.
Accordingly, for the foregoing reasons, we do not sustain the
Examiner's rejection of claims 1--4, 6-13, and 15-20 as unpatentable over
Mahurkar and Periakaruppan.
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Appeal 2016-004277
Application 12/894,269
Obviousness over Mahurkar, Periakaruppan, and Difiore
Claims 5 and 14
The Examiner's rejection of claims 5 and 14 as unpatentable over
Mahurkar, Periakaruppan, and Difiore is based on the same unsupported
findings and conclusions discussed above with respect to independent claims
1 and 13. See Final Act. 10. The Examiner does not rely on Difiore to
remedy the deficiencies of Mahurkar and Periakaruppan. Accordingly, for
reasons similar to those discussed above for claims 1 and 13, we do not
sustain the Examiner's rejection of claims 5 and 14 as unpatentable over
Mahurkar, Periakaruppan, and Difiore.
DECISION
We REVERSE the decision of the Examiner to reject claims 1--4, 6-
13, and 15-20 as unpatentable over Mahurkar and Periakaruppan.
We REVERSE the decision of the Examiner to reject claims 5 and 14
as unpatentable over Mahurkar, Periakaruppan, and Difiore.
REVERSED
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