Ex Parte Schneider

Patent Trials and Appeals Board

Nov 25, 2014

12135685 - (D) (P.T.A.B. Nov. 25, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/135,685 06/09/2008 Clint Schneider 0B-057400US
(065513-0085)
4195
67337 7590 11/26/2014
SJM/AFD - DYKEMA
c/o Kite & Key, LLC
P.O. Box 315
Hamel, MN 55340-0315
EXAMINER
VAHDAT, KHADIJEH A
ART UNIT PAPER NUMBER
3739
MAIL DATE DELIVERY MODE
11/26/2014 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CLINT SCHNEIDER
____________

Appeal 2012-007099
Application 12/135,6851
Technology Center 3700
____________

Before ULRIKE W. JENKS, CHRISTOPHER G. PAULRAJ, and
ELIZABETH A. LaVIER, Administrative Patent Judges.

LaVIER, Administrative Patent Judge.

DECISION ON APPEAL

The Examiner finally rejected claims 1–6, 8–10, 12–19, and 21–23.
Appellant seeks reversal of the Examiner’s rejections, pursuant to 35 U.S.C.
§ 134(a). We have jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we AFFIRM.
BACKGROUND
The Specification generally relates to a catheter assembly with a front-
loaded catheter tip. (Spec. ¶ 1.) Claim 1 is representative:

1 According to Appellant, the real party in interest is St. Jude Medical, Atrial
Fibrillation Division, Inc. (Appeal Br. 1.)
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1. A catheter comprising:
an elongate catheter shaft assembly including an inner shaft
member having a distal end and a proximal end, and an outer
shaft member having a distal end, a proximal end, and a lumen
between the distal end and the proximal end thereof, the inner
shaft member being inserted into the lumen of the outer shaft
member along a longitudinal direction of the elongate catheter
shaft assembly,
wherein the inner shaft member includes at the distal end
thereof a catheter tip member having a lateral dimension that is
larger than a lateral dimension of the lumen of the outer shaft
member, the catheter tip member including a magnetic
material, and wherein the catheter tip member includes at least
one electrically active element.
(Appeal Br. 12 (Claims App.) (emphasis added).)
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claim 21 is rejected under 35 U.S.C. § 112, first paragraph, as failing
to comply with the written description requirement. (Ans. 4.)
2. Claims 1–6, 8–10, 12–19, and 21–23 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Tu2 in view of Hall.3 (Ans. 5.)
DISCUSSION
A. Rejection 1
A new or amended claim is subject to rejection for failing to meet the
written description requirement of 35 U.S.C. § 112, first paragraph, if the
claim recites subject matter that is not described in the specification and

2 U.S. Patent No. US 6,217,576 B1, issued Apr. 17, 2001.
3 U.S. Patent Application Pub. No. US 2001/0047129 A1, published Nov.
29, 2001.
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drawings as originally filed. TurboCare Div. of Demag Delaval
Turbomachinery Corp. v. Gen. Elec. Co., 264 F.3d 1111, 1118 (Fed. Cir.
2001). “[T]he test for sufficiency is whether the disclosure of the
application relied upon reasonably conveys to those skilled in the art that the
inventor had possession of the claimed subject matter as of the filing date.”
Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)
(en banc). Further, “under proper circumstances, drawings alone may
provide a ‘written description’ of an invention as required by § 112.” Vas-
Cath Inc. v. Mahurkar, 935 F.2d 1555, 1565 (Fed. Cir. 1991).
Claim 21 recites “[t]he catheter of claim 1, wherein said magnetic
material occupies less than one-half of the volume of the tip member.”
(Claims App.) The Examiner rejects this claim, which was added during
prosecution, as lacking an adequate written description in the Specification
as originally filed. (Ans. 4–5.) Appellant asserts sufficient support for claim
21 can be found in Amendments to the Specification,4 as well as in Figure
14 of the original Specification.5 (Appeal Br. 7; Reply Br. 2–4.)

4 The Examiner states that the Amendments to which Appellant refers were
not entered, though the Examiner acknowledges “that the wrong box was
inadvertently checked” in a November 14, 2011 Advisory Action, thus
mistakenly suggesting their entry. (Ans. 13.)
5 We note that Appellant’s arguments regarding Figure 14 first appear in the
Reply Brief. A new argument not timely presented in the Appeal Brief will
not be considered when filed in a Reply Brief, absent a showing of good
cause explaining why the argument could not have been presented in the
Appeal Brief. See Ex parte Borden, 93 USPQ2d 1473, 1477 (BPAI 2010)
(informative). Here, there appears to have been some confusion regarding
the status of the rejection of claim 21 (see Appeal Br. 7 n. 21) due to the
Examiner’s “inadvertently checked” box in the Advisory Action suggesting
that the Amendments to the Specification, which Appellant alleges provide
written description support for claim 21, had been entered (see n.4, supra).
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The Amendments to the Specification themselves cannot provide
written description support for claim 21 because the Amendments were not
part of the Specification as originally filed. See Vas-Cath, 935 F.2d at 1566
(“Application sufficiency under § 112, first paragraph, must be judged as of
the filing date.”).
However, we agree with Appellant that Figure 14, which was part of
the Specification as originally filed, reasonably supports claim 21. Figure 14
shows a partial cross-section of a catheter tip assembly comprising a catheter
tip member that includes a magnetic material or element. (Spec. ¶ 37, Fig.
14.) Appellant acknowledges that the Specification offers no “exact
dimensions” for Figure 14, but argues “the relative dimensions of Figure 14
are clear in which the untrained eye can readily see that the magnetic
material 160 occupies less than one half the volume of the tip member 120,”
thus supporting claim 21’s “less than one-half” recitation. (Reply Br. 3.)
The circumstances here thus bear some resemblance to those of In re Heinle,
where the CCPA found the added limitation “approximately one-fourth of
the circumference” of a claimed toilet paper core to be supported solely by
specification drawings, where the drawings lacked precise measurements but
corresponded generally to the claimed dimension, especially since the
limitation was itself approximate in nature. 342 F.2d 1001, 1007 (CCPA
1965). Claim 21’s “less than one-half” limitation is general in nature and
does not require a specific volume. As such, and based on the reasonable
assumption that the catheter tip is hemispherical, we find that the apparent

Under the circumstances, we deem this confusion to constitute good cause
for Appellant’s comparatively truncated discussion of the written description
rejection in the Appeal Brief, and accordingly will consider the arguments
first presented in the Reply Brief regarding Figure 14.
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relative sizes depicted in Figure 14 provide sufficient support for the claim
limitation.
For these reasons, we reverse the Examiner’s rejection of claim 21 as
failing to comply with the written description requirement.
B. Rejection 2
As a preliminary matter, we observe that with respect to the
obviousness rejection, Appellant argues claims 1–6, 8–10, 12–19, and 21–23
together, focusing on the limitations of claim 1. (Appeal Br. 8–11.)
Accordingly, the other claims rise or fall with claim 1. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2011).
We adopt the Examiner’s findings of fact in support of the
obviousness rejection of 1–6, 8–10, 12–19, and 21–23, which are set forth
on pages 5 through 10 of the Examiner’s Answer. We note the following for
emphasis.
Tu describes a steerable ablation catheter, (Tu Abstract), in which the
tip section can include at least one electrode (id. at col. 7, ll. 19–22). The
Examiner finds that Tu teaches all of the limitations of claim 1 except for the
catheter tip member including a magnetic material. (Ans. 7.) For this, the
Examiner turns to Hall, which “discloses a method for applying an
electromagnetic element to the surface of an internal body structure for
navigation purposes using an external magnetic field.” (Id. (citing Hall
Abstract).) The Examiner also finds that Hall further describes the use of
“magnets and magnetic material to navigate a catheter within the human
body” as being well-known in the art. (Id. (citing Hall ¶ 3).) Further, the
Examiner finds that Hall describes using the magnetic material at the tip
section of the catheter. (Id. (citing Hall ¶ 44).)
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As such, the Examiner reasons that it would have been obvious, at the
time of the invention, for one of ordinary skill in the art “to modify the
catheter tip of Tu in view of Hall and prior known techniques in the art in
order to provide a magnetic material at the tip section of the catheter for
navigation and orientation of the catheter within the heart chamber,” (Ans. 7
(citing Hall ¶ 44)), because “Tu teaches guiding and navigating the catheter
into an appropriate chamber of the heart by appropriate manipulation
through the artery,” (id. (citing Tu col. 2, l. 58–col. 3, l. 3)).
Appellant does not dispute the Examiner’s findings with respect to the
elements disclosed in Tu, but asserts that Hall fails to teach or suggest
incorporating magnetic material in a “tip member” because Hall describes an
“elongate arrangement” of magnetic elements that “enables the catheter to
be directed to a target location, but also to be held in place against the body
at the target location and in the preferred orientation.” (Id. at 9 (citing Hall
¶¶ 3, 9, and 39).) Thus, Appellant argues, one of skill in the art would not
have modified Hall by moving the magnetic element to the tip, as this would
“completely abandon[] the objectives” of Hall. (Id.)
The Examiner responds by explaining that “the Examiner is not taking
the ‘tip’ section of Hall and placing it on Tu’s device,” but rather the
teaching from Hall that “it has been well known in the art to use magnets
and magnetic material to navigate a catheter within the human body
especially for cardiac mapping, cardiac pacing or cardiac ablation
procedures. . . .” (Ans. 11 (citing Hall ¶ 3).) Thus the Examiner finds that
modifying Tu’s catheter tip in view of this general teaching of Hall would
have been obvious to one of ordinary skill in the art “to provide a magnetic
material at the tip section of the catheter for navigation and orientation of the
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catheter within the heart chamber,” (id. at 7 (citing Hall ¶ 44)), because “Tu
teaches guiding and navigating the catheter into an appropriate chamber of
the heart by appropriate manipulation through the artery,” (id. (citing Tu col.
2, l. 58–col. 3, l. 3).)
We conclude the Examiner has the better position. Appellant’s focus
on abandoning the purpose of the elongate arrangement of Hall’s magnetic
elements is unpersuasive because the Examiner does not rely on the
arrangement of the magnets in Hall, but rather on Hall’s general teaching of
using magnetic elements for navigation of catheters (see Ans. 11). Further,
Hall teaches its elongate magnetic element “is formed on the distal end” of
the catheter, (Hall ¶ 44), which the Examiner reasonably interprets as a “tip
member” within the scope of claim 1 (see Ans. 10–11).
Accordingly, we see no reversible error in the Examiner’s finding that
Hall teaches “the catheter tip member including a magnetic material” as
recited in claim 1, or in the Examiner’s finding that one of ordinary skill in
the art would have been motivated to combine Hall with Tu to arrive at the
claimed invention. We thus affirm the Examiner’s rejection of claim 1 as
obvious. Because we affirm the rejection of claim 1, claims 2–6, 8–10, 12–
19, and 21–23 fall with claim 1.

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Application 12/135,685

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CONCLUSION
The Examiner’s final rejection of claims 1–6, 8–10, 12–19, and 21–23
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)(1)(iv).

AFFIRMED

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