Ex Parte Scopton

Board of Patent Appeals and Interferences

Jan 29, 2010

09498104 (B.P.A.I. Jan. 29, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
____________________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
____________________ 6
7
Ex parte PAUL M. SCOPTON 8
____________________ 9
10
Appeal 2009-009559 11
Application 09/498,104 12
Technology Center 3700 13
____________________ 14
15
Decided: January 29, 2010 16
____________________ 17
18
19
Before: WILLIAM F. PATE, III, MURRIEL E. CRAWFORD, and 20
JENNIFER D. BAHR, Administrative Patent Judges. 21
22
CRAWFORD, Administrative Patent Judge. 23
24
25
DECISION ON APPEAL26
Appeal 2009-009559
Application 09/498,104

2
STATEMENT OF THE CASE 1
Appellant appeals under 35 U.S.C. § 134 (2002) from a final rejection 2
of claims 1 to 5 and 7 to 9. We have jurisdiction under 35 U.S.C. § 6(b) 3
(2002). 4
Appellant invented a fluid injectable single operator exchange catheter 5
and method of use (Spec. 1). 6
Claim 1 under appeal reads as follows: 7
1. A single operator exchange biliary 8
catheter for use in combination with a guidewire 9
and an endoscope, comprising: 10
an elongate shaft having a proximal end, a 11
distal end and an injection lumen extending 12
therethrough; 13
a guidewire lumen extending through a 14
distal portion of the shaft between a proximal 15
guidewire port and a distal guidewire port, the 16
guidewire lumen being in fluid communication 17
with the injection lumen of the shaft, the proximal 18
guidewire port disposed proximal of the distal end 19
of the shaft within the distal portion of the shaft, 20
the distal guidewire port disposed at the distal end 21
of the shaft; 22
a tubular member connected to the shaft, the 23
tubular member extending proximally from the 24
proximal guidewire port to a proximal end 25
disposed distal of the proximal end of the shaft, the 26
tubular member defining a guidewire lumen 27
extension in fluid communication with the 28
guidewire lumen and adapted to permit the 29
guidewire to be retracted from guidewire lumen 30
and re-inserted therein, the guidewire lumen 31
extension being external to but parallel with the 32
shaft; and 33
wherein the guidewire lumen extension is 34
axially aligned with the guidewire lumen. 35
Appeal 2009-009559
Application 09/498,104

3
The prior art relied upon by the Examiner in rejecting the claims on 1
appeal is: 2
Horzewski US 4,771,777 Sep. 20, 1988 3
Crittenden US 4,988,356 Jan. 29, 1991 4
Sirhan US 5,984,945 Nov. 16, 1999 5
The Examiner rejected claims 1 to 5 under 35 U.S.C. § 102(e) 6
as being anticipated by Sirhan. 7
The Examiner rejected claims 1 to 5 and 7 under 35 U.S.C. § 102(b) 8
as being anticipated by Crittenden. 9
The Examiner rejected claims 1 to 5 and 7 to 9 under 35 U.S.C. § 10
102(b) as being anticipated by Horzewski. 11
12
ISSUES 13
Has Appellant shown that the Examiner erred in finding that Sirhan 14
discloses a guidewire lumen extension that is external to but parallel with the 15
shaft? 16
Has Appellant shown that the Examiner erred in finding that 17
Crittenden discloses guidewire ports? 18
Has Appellant shown that the Examiner erred in finding that 19
Horzewski discloses a tubular member connected to the shaft? 20
21
FINDINGS OF FACT 22
Sirhan discloses a guidewire replacement method that includes the 23
use of an elongate shaft 26, a guidewire lumen 30, and a tubular member 11 24
(Figs. 5, 6 and 15). The tubular member 11 has a part that is external to the 25
Appeal 2009-009559
Application 09/498,104

4
shaft 26. This part of tubular member 11 diverges away from the shaft 26 1
and therefore is not parallel to the shaft 26. 2
Crittenden discloses a catheter and guidewire exchange system 3
including a shaft 10 having a place or port where the guidewire 14 enters the 4
shaft where the slit 28 of shaft 10 engages guide member 12. This is a 5
proximal guidewire port (Fig. 9). Crittenden’s catheter 10 also includes a 6
distal guidewire port 18 located where the guidewire exits the catheter (Fig. 7
1). 8
Horzewski discloses a perfusion type balloon dilatation catheter 9
including a shaft 31and a guidewire port 47 (Fig. 4). A tubular member 71 10
surrounds shaft 31. Tubular member 71 is not connected to shaft 31 (Figs. 1 11
and 4). 12
13
PRINCIPLES OF LAW 14
A claim is anticipated only if each and every element as set forth in 15
the claim is found, either expressly or inherently described, in a single prior 16
art reference. Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628, 631 17
(Fed. Cir.), cert. denied, 484 U.S. 827 (1987). 18
19
ANALYSIS 20
Anticipation by Sirhan 21
We agree with the Appellant that Sirhan does not disclose a guidewire 22
lumen extension that is external to but parallel with the shaft. The tubular 23
member 11 which defines the guidewire lumen extension diverges away 24
Appeal 2009-009559
Application 09/498,104

5
from the shaft 26 as clearly seen in Figures 1, 5, 6, and 15 of Sirhan. As 1
such, we will not sustain the Examiner’s rejection of claim 1 and claims 2 to 2
4 dependent on claim 1as anticipated by Sirhan. 3
4
Anticipation by Crittenden 5
We do not agree with the Appellant that the Examiner erred in finding 6
that Crittenden discloses a proximal guidewire port. In this regard we have 7
found that Crittenden discloses a proximal guidewire port, where the 8
guidewire enters the shaft 10. Contrary to the assertion of the Appellant, the 9
proximal guidewire port formed where the slit 28 of tubular member 10 10
engages the guide member 12 is a discrete opening. Therefore, we will 11
sustain the Examiner’s rejection of claim 1 as anticipated by Crittenden. We 12
will also sustain this rejection as it is directed to claims 2 to 5 and 7 because 13
Appellant does not present any separate arguments for these claims. 37 14
C.F.R. § 41.37(c)(1)(vii) (2007). 15
16
Anticipation by Horzewski 17
We agree with Appellant that Horzewski does not disclose that tubular 18
member 71 is disposed as claimed i.e. connected to the shaft 31. Rather, 19
tubular member 31 surrounds the shaft but is not connected thereto. 20
Therefore we will not sustain this rejection of claim 1 and claims 2 to 5 and 21
claims 7 to 9 dependent thereon. 22
23
Appeal 2009-009559
Application 09/498,104

6
CONCLUSION OF LAW 1
On the record before us, Appellant has shown that the Examiner erred 2
in rejecting claims 1 to 5 under 35 U.S.C. § 102(e) as anticipated by Sirhan 3
and in rejecting claims 1 to 5 and 7 to 9 under 35 U.S.C. § 102(b) as 4
anticipated by Horzewski but has not shown that the Examiner erred in 5
rejecting claims 1 to 5 and 7 under 35 U.S.C. § 102(b) as anticipated by 6
Crittenden. 7
8
DECISION 9
The Examiner's rejection of claims 1 to 5 under 35 U.S.C. § 102(e) as 10
anticipated by Sirhan and of claims 1 to 5 and 7 to 9 under 35 U.S.C. § 11
102(b) as anticipated by Horzewski are not sustained. The Examiner’s 12
rejection of claims 1 to 5 and 7 under 35 U.S.C. § 102(b) as anticipated by 13
Crittenden is sustained. 14
No time period for taking any subsequent action in connection with 15
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 16
§ 1.136(a)(1)(iv) (2007). 17
18
AFFIRMED-IN- PART 19
20
21
Appeal 2009-009559
Application 09/498,104

7
hh 1
2
3
4
CROMPTON, SEAGER & TUFTE, LLC 5
1221 NICOLLET AVENUE 6
SUITE 800 7
MINNEAPOLIS, MN 55403-2420 8
9