Ex Parte Segner et al

Board of Patent Appeals and Interferences

Nov 30, 2010

10632145 (B.P.A.I. Nov. 30, 2010)

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.
10/632,145 07/31/2003 Garland L. Segner EV31008US 1829
9561 7590 12/01/2010
POPOVICH, WILES & O'CONNELL, PA
8519 EAGLE POINT BLVD
Suite 180
LAKE ELMO, MN 55042
EXAMINER
HOEKSTRA, JEFFREY GERBEN
ART UNIT PAPER NUMBER
3736
MAIL DATE DELIVERY MODE
12/01/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte GARLAND L. SEGNER, KENT D. ANDERSON,
DOUGLAS B. P. MOLLAND, THOMAS L. CLUBB,
and MICHAEL J. URICK
__________

Appeal 2009-012320
Application 10/632,145
Technology Center 3700
__________

Before DONALD E. ADAMS, ERIC GRIMES, and LORA M. GREEN,
Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL1
This is an appeal under 35 U.S.C. § 134 involving claims to a guide
wire. The Examiner has rejected the claims as anticipated and obvious. We
have jurisdiction under 35 U.S.C. § 6(b). We reverse.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-012320
Application 10/632,145

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STATEMENT OF THE CASE
Claims 1, 2, 7-9, 12-14, 17-19, 24, 25, 30, 33-35, 38-40, and 48 are on
appeal. Claim 24 is representative and reads as follows:
24. A guide wire comprising:
an elongate, flexible core having a proximal region, a proximal end, a
distal region, and a distal end, and the distal region having a tapered portion;
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 tapered distal region
of the core being disposed within the interior of the single coil; and
a polymer tie layer disposed on at least a portion of the wire strands,
wherein the polymer tie layer provides the only form of attachment
between the wire strands and the core, and
wherein the angle between the wire strands and the longitudinal
central axis is from 10 to 45 degrees.

The claims stand rejected as follows:
• Claims 24, 30, 33-35, 38-40, and 48 under 35 U.S.C. § 102(b) in
view of Avellanet;2 and
• Claims 1, 2, 7-9, 12-14, 17-19, and 25 under 35 U.S.C. § 103(a) in
view of Avellanet and Palermo.3
I.
Issue
The Examiner has rejected claims 24, 30, 33-35, 38-40, and 48 as
being anticipated by Avellanet. The Examiner finds that Avellanet discloses
a guide wire comprising all of the limitations of claim 24 (Answer 3-4),

2 Avellanet et al., US 6,019,736, issued Feb. 1, 2000.
3 Palermo et al., US 5,749,837, issued May 12, 1998.
Appeal 2009-012320
Application 10/632,145

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including an “angle between the wire strands and the longitudinal axis …
from 10 and 45 degrees (as best seen in Figure 11)” (id. at 4).
Appellants contend that “Avellanet does not teach or suggest the
claimed range for the angle of from 10 to 45 degrees” (Appeal Br. 6).
The issue with respect to this rejection is: Does the evidence of
record support the Examiner’s finding that Avellanet discloses a guide wire
in which “the angle between the wire strands and the longitudinal central
axis is from 10 to 45 degrees?”
Findings of Fact
1. Avellanet discloses “an improved catheter guidewire of the type
comprising a coil which protects the distal end” (Avellanet, col. 4, ll. 13-14).
2. Figure 11 of Avellanet is shown below:

Figure 11 shows “a side view of a guidewire having multifilament,
drawn round core and distal portions, and a plastic-coated metal coil, shown
in cross-section” (id. at col. 4, ll. 48-50).
3. Figure 8 of the Specification is shown below:

Figure 8 shows “a side view of a section of stranded wires” (Spec.
5: 3) “where the angle θ (theta) is 45 degrees” (id. at 15: 7).
Appeal 2009-012320
Application 10/632,145

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4. The Specification discloses that “[f]or the stranded wires used in
this invention[,] angles of 10 to 45 degrees are generally preferred, and
angles of 15 to 30 degrees are particularly preferred. These angles provide
good tip strength without danger of tip elongation and fracture during use.”
(Id. at 15: 10-13.)
Principles of Law
[T]he PTO applies to the verbiage of the proposed claims
the broadest reasonable meaning of the words in their ordinary
usage as they would be understood by one of ordinary skill in
the art, taking into account whatever enlightenment by way of
definitions or otherwise that may be afforded by the written
description contained in the applicant’s specification.

In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
Analysis
Claim 24 is directed to a guide wire comprising, among other things,
3-24 wire strands wrapped helically parallel to one another to form a single
coil with a longitudinal central axis, where the angle between the wire
strands and the central axis is 10 to 45 degrees.
Appellants argue that “Figure 11 of Avellanet shows an angle between
the coil 116 and the core 100 that falls outside of this range. No angle
falling within the claimed range is disclosed in Avellanet.” (Appeal Br. 6.)
Appellants’ argument is persuasive. The Examiner reasons that
one may assume that [Avellanet’s] angle between the
longitudinal central axis and the wire strands is on the order of
70-90 degrees; however …, one may reasonably interpret that
any point along the longitudinal central axis be used as a basis
for forming the angle between the axis and the wire strands.
Appeal 2009-012320
Application 10/632,145

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(Answer 7). The Examiner provides the following illustration:

(Answer 8.) The diagram shows Avellanet’s Figure 11 with the Examiner’s
interpretation of how it can be said to show that “the angle formed between
point A on the axis and point B through the wire strands may be 10 degrees
and likewise, the angle formed between point A on the axis and point C
through the wire strands may be 45 degrees” (id. at 7).
The Examiner’s reading of the claim is broader than would be
considered reasonable when the claim is read in light of the Specification,
which shows that the angle recited in the claim is the angle formed between
the longitudinal central axis and the axis of the helically wrapped wire
strands (FF 3). The Examiner’s interpretation – that the recited angle can be
measured between any point in a wire strand and any arbitrary point on the
central axis – is broader than is consistent with the Specification. Since, as
acknowledged by the Examiner (Answer 7), Avellanet does not describe the
angle recited in claim 24 when the angle is measured as shown in the
Specification’s Figure 8, the rejection of claim 24 as anticipated by
Avellanet is reversed.
Independent claim 48 also requires that “the angle between the wire
strands and the longitudinal central axis is from 10 to 45 degrees.” Thus, the
Appeal 2009-012320
Application 10/632,145

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rejection of independent claim 48 and dependent claims 30, 33-35, and 38-
40 as anticipated by Avellanet is also reversed.
Conclusion of Law
The evidence of record does not support the Examiner’s finding that
Avellanet discloses a guide wire in which “the angle between the wire
strands and the longitudinal central axis is from 10 to 45 degrees.”
II.
Issue
The Examiner has rejected claims 1, 2, 7-9, 12-14, 17-19, and 25
under 35 U.S.C. § 103(a) in view of Avellanet and Palermo. Independent
claim 1, like claims 24 and 48, requires that “the angle between the wire
strands and the longitudinal central axis is from 10 to 45 degrees.” The
Examiner relies on Avellanet, as discussed above, and cites Palermo only for
its disclosure of the lubricious polymer required by claim 1. Since the
rejection based on § 103 relies on the same claim interpretation as the
rejection for anticipation, it is also reversed for the reasons discussed above.
SUMMARY
We reverse the rejection of claims 24, 30, 33-35, 38-40, and 48 under
35 U.S.C. § 102(b) and the rejection of claims 1, 2, 7-9, 12-14, 17-19, and
25 under 35 U.S.C. § 103(a).

REVERSED

Appeal 2009-012320
Application 10/632,145

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POPOVICH, WILES & O'CONNELL, PA
8519 EAGLE POINT BLVD
Suite 180
LAKE ELMO, MN 55042