Ex Parte Segner et al

Patent Trial and Appeal Board

Aug 10, 2016

13117259 (P.T.A.B. Aug. 10, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/117,259 05/27/2011
77218 7590 08/12/2016
Medtronic Vascular - APV Division
c/o IP Legal Department
3576 Unocal Place
Santa Rosa, CA 95403
FIRST NAMED INVENTOR
Garland L. Segner
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-02049(1)(1847-202CON) 7261
EXAMINER
DOUGHERTY, SEAN PATRICK
ART UNIT PAPER NUMBER
3736
NOTIFICATION DATE DELIVERY MODE
08/12/2016 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. docketingapv@medtronic.com
medtronic _apv _docketing@ cardinal-ip. com
PTOL-90A (Rev. 04/07)
U-NITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GARLAND L. SEGNER, KENT D. ANDERSON,
DOUGLAS B. P. MOLLAND, THOMAS L. CLUBB, and
MICHAEL J. URICK
Appeal2014-008428
Application 13/117,259 1
Technology Center 3700
Before LINDA E. HORNER, ERIC C. JESCHKE, and
JASON W. MELVIN, Administrative Patent Judges.
MELVIN, Administrative Patent Judge.
DECISION ON APPEAL
This appeal arises under 35 U.S.C. § 134(a), from a final rejection of
claims 1--4, 6-10, 12, 14-20, and 25-27. We have jurisdiction under 35
U.S.C. § 6(b).
We reverse.
1 Appellants identify Covidien LP as the real party in interest. Br. 1.
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Application 13/117,259
BACKGROUND
The claims are directed to a guide wire with stranded tip. Spec. 1.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A guide wire comprising:
an elongate, flexible core having a proximal region, a
proximal end, a distal region, and a distal end;
a single coil comprising 3 to 24 wire strands, each of the 3 to
24 wire strands being formed in a single helix and
wrapped helically parallel to one another to thereby form
the single coil, the single coil having a longitudinal
central axis and an interior, and at least a portion of the
distal region of the core being disposed within the
interior of the single coil; and
a crimp band configured to connect the single coil to the
core, wherein an angle between the wire strands and the
longitudinal central axis is from 10 to 45 degrees.
Br. 13 (Claims App.).
REJECTIONS
Appellants seek our review of the following rejections: 2
1. Claims 1--4, 6, 7, 9, 12, 14-17, 19, 20 and 25-27 stand rejected
under 35 U.S.C. § 102(b) as anticipated by Klint '676 (US
6,805,676 B2, iss. Oct. 19, 2004). Final Act. 3-5.
2. Claim 8 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Klint '676 and Jafari (US 2003/0013993 Al, pub. Jan. 16,
2003). Final Act. 6-7.
2 The Examiner withdrew the rejection made under§ 112. Adv. Act. 2. The
rejections apply the pre-AIA versions of the applicable code. Final Act. 2.
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Application 13/117,259
3. Claim 18 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Klint '676. Final Act. 7.
4. Claim 10 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Klint '676 and Klint '051 (US 2002/0074051 Al, pub. June
20, 2002). Final Act. 7-8.
DISCUSSION
Claims 1-4, 6-10, 12, and 14-20
The Examiner finds that Klint '67 6 discloses the claimed "crimp band
configured to connect the single coil to the core" as tapered section, 10, of
tubular member, 1. Final Act. 4. Appellants challenge this finding, arguing
that Klint '67 6 does not teach crimping to create the tapered section but
instead teaches "using wires of different dimensions or grinding the outside
of the tubular member to create a reduced diameter to create the tapered
section." Br. 6. Thus, Appellants argue, "[t]here is no discussion of using a
crimp band as recited in claim 1." Id.
We agree with Appellants. The Specification does not provide an
unconventional definition for the crimp band and instead uses that term
according to its conventional meaning as a ring compressed to hold the
strands to the central core. See Spec. Fig. 3B, 12 ("a tubular band (not
shown) can be used to crimp the strands to the central core"; "Crimp band
29 is shown [in Fig. 3B] and is optional, and can be made of stainless steel,
platinum, platinum/iridium, titanium, or other materials that are malleable
and strong."). That conventional usage of crimp band contrasts with the
structure taught by Klint '676-a tapered section of a wound spiral made by
"grinding the outside of the tubular member" or by "using wires of different
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Application 13/117,259
diameter." Klint '676 5:25-37; see Br. 6. Nor does Klint '676 even suggest
that the tapered section be made by crimping. Moreover, claim 1 recites the
band as a structure separate from the single coil of wire strands, whereas
Klint '67 6 teaches that the tapered section is a portion of the tubular
member. See Klint '6765:1--4, 5:25-26, 5:29-31. For both of the foregoing
reasons, we do not agree with the Examiner that "[t]he dips and grooves
located in element 10 may fairly and reasonably be considered to be at least
a 'crimp' structure and the overall length and round shape of element 10
may fairly and reasonably be considered to be at least a 'band' structure."
See Ans. 7-8.
Thus, we do not sustain the rejection of independent claim 1, or the
rejections of claims 2--4, 6-10, 12, or 14-20, all of which depend from claim
1.3
Claims 25-27
Independent claim 25 does not recite a "crimp band" but instead
recites "the proximal end of the single coil being disposed distal of the distal
end of the core." Br. 16-17 (Claims App.). Because the Examiner views
the tubular member of Klint '67 6 as comprising three distinct sections, the
Examiner finds that Klint '67 6 teaches the "disposed distal" limitation.
Final Act. 4 (finding that element 9 of Klint '676 is the single coil and
element 2 is the core). The coil 1 of Klint '67 6 includes a first segment 5, a
3 The Examiner did not rely on Jafari in the rejection of claim 8 or
Klint '051 in the rejection of claim 10 to cure the above-noted deficiency in
Klint '676. Final Act. 7-8 (relying on Jafari to show "a tip of a guidewire
may be formed of a polymer material" and relying on Klint '051 to show
"attaching a group of wire strands to a core member by the way of soldering
or welding").
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Application 13/117,259
tapered segment 10, and a second segment 9. Klint '676, 5:24-30. As the
core taught by Klint '67 6 extends only through the first two sections, 5 and
10, of the coil and does not extend into the distal section 9 (which Klint '676
refers to as "second segment 9"), the Examiner concludes that the second
segment 9 corresponds to the claimed "single coil." See Ans. 9-10.
Appellants dispute the Examiner's finding, arguing that the "tubular
member" in Klint '67 6 cannot be divided into distinct parts such that one
ignores portions that overlap with the core and considers only the distal
portion, which does not overlap with the core. Br. 9. As Appellants state,
"element 9 is not a single coil, but rather it is the distal most part of the
tubular member 1 (i.e., a coil)." Id.
We agree with Appellants. As with the rejection of claim 1, the
Examiner improperly divides the tubular member taught by Klint '67 6 into
distinct structures, when Klint '67 6 teaches the tubular member as a single
structure with sections that have distinct properties. In light of claim
language that requires no overlap between the single coil and the core, the
Examiner's finding of anticipation is not supported by a preponderance of
the evidence.
Thus, we do not sustain the rejection of claim 25, or of claims 26 or
27, which depend from claim 25.
DECISION
For the above reasons, the Examiner's rejections of claims 1--4, 6-10,
12, 14-20, and 25-27 are reversed.
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Application 13/117,259
REVERSED
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