Ex Parte Sell

Patent Trial and Appeal Board

Oct 5, 2012

11131476 (P.T.A.B. Oct. 5, 2012)

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.
11/131,476 05/17/2005 Jonathan C. Sell 5236-000568/US/NP 4670
28997 7590 10/09/2012
HARNESS, DICKEY, & PIERCE, P.L.C
7700 Bonhomme, Suite 400
ST. LOUIS, MO 63105
EXAMINER
ZHANG, JENNA
ART UNIT PAPER NUMBER
3763
MAIL DATE DELIVERY MODE
10/09/2012 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 JONATHAN C. SELL
__________

Appeal 2012-001926
Application 11/131,476
Technology Center 3700
__________

Before JEFFREY N. FREDMAN, STEPHEN WALSH, and SHERIDAN K.
SNEDDEN, Administrative Patent Judges.

SNEDDEN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a balloon
catheter. The Examiner has rejected the claims as obvious and anticipated.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part.

Appeal 2012-001926
Application 11/131,476

2
STATEMENT OF THE CASE
According to Appellant, the invention relates to a balloon catheter
having a “magnetically responsive element spaced distally relative to the
balloon/expandable element.” (App. Br. 12, emphasis in original.)
Claims 1-24 and 35-37 are on appeal. Claims 1, 4 and 35 are
independent and representative. The dependent claims have not been argued
separately and therefore stand or fall together with the independent claim
from which they depend. 37 C.F.R. § 41.37(c)(1)(vii). Claims 1, 4, and 35
read as follows (emphasis added):
1. A magnetically guidable angioplasty catheter comprising
an elongate flexible member having a proximal end and a
distal end, and
an expandable element adjacent the distal end for
selectively expanding the lumen of a blood vessel in which it is
disposed, and
a magnetically responsive element on the distal tip of the
elongate flexible member, sized and spaced distally relative to
the expandable element to be able to orient the distal end of the
elongate flexible member and the expandable element in a
desired direction in an operating region inside a subject's body,
upon the application of a magnetic field from an external source
magnet.

4. A balloon catheter comprising an elongate tube having a
proximal end and a distal end, and a lumen therebetween, and a
balloon at the distal end of the tube, in fluid communication
with the lumen, and a magnetically responsive element at the
distal end of the device sized and shaped to orient the distal end
of the device in an operating region in a subject upon the
application of a magnetic field from an external source magnet.

35. A catheter for use in opening a vessel occlusion comprising
Appeal 2012-001926
Application 11/131,476

3
an elongate flexible tubular member having a proximal
and distal end;
a lumen extending between said proximal and said distal
end;
a core member that is smaller than the tubular member
and having a proximal end connected to the distal end of the
flexible tubular member and extending distally beyond the
distal end of the tubular member;
an inflatable balloon having a first end secured to the
distal end of the flexible tubular member and a second end
connected to the core member, the balloon surrounding the core
member and being in fluid communication with the interior
passage of the tubular member;
at least one magnetically responsive element attached to
a distal tip of said core member and spaced distally relative to
the inflatable balloon, to orient the distal end of the core
member in a desired direction inside a subject's body upon
application of a magnetic field from an external source magnet
outside the subject's body.

The claims stand rejected as follows:
I. Claims 1, 3-24, 35, and 36 are rejected under 35 U.S.C. § 102(b) as
being anticipated by Ehr et al. (US 5,706,827).
II. Claim 2 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Ehr et al.
III. Claims 14, 15, and 37 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ehr et al. in view of Pinchuck et al (US 4,946,466).
IV. Claim 21 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Ehr et al. in view of Hess (US 5,197,978).

The Examiner withdrew, on appeal, rejections of claims 1 and 2 over
McCarthy (US 3,043,309).
App
App

§ 10
Does
Ehr t
tip o
expa

eal 2012-0
lication 11
The Exa
2(b) as ant
the evide
eaches a c
f the elong
ndable ele
FF1. Fig
The Spe
A
elongate
end 26,
the dista
the lum
provided
magnetic
orient th
subject
external
…
A
radiopaq
magnetic
01926
/131,476
miner has
icipated ov
nce of reco
atheter wi
ate flexibl
ment there
ure 1 of th
cification
s shown
flexible tu
and a lum
l end 26
en 28. A
at the
ally resp
e distal en
upon the
source ma

s shown in
ue elem
ally respo
rejected cl
er Ehr. T
rd suppor
th a magne
e member
by anticip
Find
e Specific
describes t
in FIG.
be 22 hav
en 28 ther
of the tub
magnet
distal en
onsive ele
d of the c
applicatio
gnet.
FIG. 1,
ent 34
nsive elem
4
I.
Issue
aims 1, 3-
he issue w
t the Exam
tically res
, sized and
ating claim
ings of Fac
ation is re
he above f
1, balloon
ing a prox
ebetween.
e 22, in fl
ically res
d of the
ment 30
atheter in
n of a m
in this firs
can be
ent 32 an
24, 35 and
ith respec
iner’s con
ponsive el
spaced di
1?.
t
produced
igure as fo
catheter
imal end
There is
uid comm
ponsive e
balloon
is sized
an operat
agnetic
t embodim
provided
d the ballo
36 under
t to this rej
clusion fi
ement on
stally rela
below.
llows:
20 comp
24 and a d
a balloon
unication
lement 3
catheter.
and shape
ing region
field from
ent a flex
between
on 30.
35 U.S.C.
ection is:
nding that
the distal
tive to the
rises
istal
30 at
with
2 is
The
d to
in a
an
ible,
the

App
App

(Spe

eal 2012-0
lication 11
cification,
FF2. Fig
Figure 1
A
present i
by the r
having a
dilatatio
shaft 12
commun
16 and
portion
includin
10 and
material
of guide
guidewir

... shaft
tubular p
be conne
other m
the dista
by adhe
in the ar

... Core
through
01926
/131,476
¶¶ [0033]
ure 1 of E
is describ
magnetic
nvention
eference n
proximal
n catheter
. Shaft 1
ication w
18 may be
of its len
g magneti
guidewire
16 and/or
wire 20 in
e 20.
12 include
ortion 24
cted to th
eans well
l end of d
sive or any
t.
wire 26
balloon 1
and [0035
hr is repro
ed in the f
lumen
is shown i
umeral 10
end and
including
2 defines
ith balloon
operably
gth. FIG
cally resp
20 are pl
18 and th
teract to m
s a proxim
. ... The d
e proxima
known to
istal tube 2
other me
extends di
4. The dis
5
].)
duced bel
ollowing p
catheter i
n FIG. 1
. Cathete
a distal en
a balloon
an infla
14. Mag
connecte
. 1 also
onsive ma
aced toge
e magneti
agnetical
al tubula
istal end o
l end of tu
those skil
4 may be
ans as we
stally thro
tal end of
ow.
assage of
n accorda
and gener
r 10 inclu
d. Cathete
14 at th
tion lume
netically
d to cathe
shows a
terial. …
ther, magn
cally respo
ly coupled
r portion
f proxima
be 24 by a
led in the
connected
ll known t
ugh dista
the balloo
Ehr:
nce with
ally referr
des a sha
r 10 may
e distal en
n 13 in
active ma
ter 10 alo
guidewir
When cat
etically a
nsive ma
catheter
22 and a d
l tube 22
dhesive o
art. Likew
to balloo
o those sk
l tube 24
n core wir
the
ed to
ft 12
be a
d of
fluid
terial
ng a
e 20
heter
ctive
terial
10 to
istal
may
r any
ise,
n 14
illed
and
e 26

App
App

(Ehr
below
“teac
tip o
magn
dista
not l
cathe
porti
eal 2012-0
lication 11
may be
distal en

, col. 2, l. 2
FF3. Ex
:
With ref
hes a mag
f the elong
etically re
lly relative
FF4. Th
imited to b
ter; instea
on.” (Ans
01926
/131,476
connected
d of the ba
8 to col. 3
aminer’s a
erence to t
netically r
ate flexibl
sponsive
to an exp
e Examine
eing inter
d ‘distal ti
. 11-12.)
to a coil
lloon.
, l. 17; em
nnotated v
he figure a
esponsive
e member
element (2
andable el
r also find
preted as b
p’ is interp
6
28 which
phasis add
ersion of
bove, the
element (2
(24, 24', 2
6, 26', 26"
ement (14
s that “...
eing on th
reted as th
can exte
ed.)
Ehr’s Figu
Examiner
6, 26', 26
4", 24'''), w
, 26"') is s
, 14', 14",
the phrase
e very dis
e more di
nd beyond
re 1 is rep
finds that
", 26"') on
herein th
ized and s
14"').” (A
‘on the di
tal edge of
stal end of
the
roduced
Ehr
the distal
e
paced
ns. 11.)
stal tip’ is
the
the distal

Appeal 2012-001926
Application 11/131,476

7
Principles of Law
“[U]nless a prior art reference discloses within the four corners of the
document not only all of the limitations claimed but also all of the
limitations arranged or combined in the same way as recited in the claim, it
cannot be said to prove prior invention of the thing claimed and, thus, cannot
anticipate under 35 U.S.C. § 102. ” Net MoneyIN, Inc. v. Verisign, Inc.,
545 F.3d 1359, 1371 (Fed. Cir. 2008).
A claim element cannot be interpreted so broadly so as to read the
limitation out of the claim. See Texas Instr. Inc. v. United States Int'l Trade
Comm'n, 988 F.2d 1165, 1171 (Fed. Cir. 1993). Further, claim terms are not
interpreted in a vacuum, devoid of the context of the claim as a whole. See
Hockerson-Halberstadt, Inc. v. Converse Inc., 183 F.3d 1369, 1374 (Fed.
Cir. 1999) (“[p]roper claim construction … demands interpretation of the
entire claim in context, not a single element in isolation.”); See also Phillips
v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc) (“[T]he
context in which a term is used in the asserted claim can be highly
instructive.”).

Analysis
Claims 1 and 35
Appellant contends that “nowhere in [the] cited portion of Ehr is
there a disclosure of a magnetically responsive element positioned to be
spaced distally relative to the expandable element,” but rather, Ehr “teaches
magnetic material 16, 18 ‘placed concentrically within proximal tube 22’ or
‘connected to core wire 26’ at a location proximal to the balloon 14.” (App.
Appeal 2012-001926
Application 11/131,476

8
Br. 12.) Appellant also argues that the Examiner’s interpretation requires
the balloon 14 of Ehr to be both the elongate flexible member and the
balloon elements as recited in the claims. Specifically, Appellant explains as
follows:
In the Examiner's Fig. 1, the distal segment of the balloon (14,
14', 14", 14"') is labeled as “the distal tip of elongate flexible
member (10,10',10",10"').” This interpretation is inconsistent
with the above statement by the Examiner that Ehr “teaches a
magnetically responsive element (26, 26', 26", 26''') on the
distal tip of the elongate flexible member (24, 24', 24", 24"').”
(emphasis added by Applicant) It also is in conflict with the
disclosure of Ehr. For example, the distal end of the distal tube
24 is connected with the proximal end of the balloon 14 (FIG.
1; col. 5, lines 7-9). The balloon (14, 14', 14", 14"') of Ehr
cannot teach both the “elongate flexible member” and the
“expandable element” of claim 1.

(Reply Br. 10-11.)
We agree with Appellant. As explained by Appellant, the
magnetically active material 16 and 18 of Ehr are not described or illustrated
as being distal to the balloon. (FF2.) It is the coil element that extends
beyond the distal end of the balloon. (FF2.) The claims not only require the
placement of the magnetically responsive element on the distal tip of the
core member, the claims also specify that this location is distal to the
balloon/expandable element. We find that the Examiner’s claim
construction reads the term “tip” out of the claim and further ignores the
phrase “spaced distally relative to the expandable element.” We therefore
will not sustain the Examiner’s rejection of claims 1 and 35.
Claim 4
Appeal 2012-001926
Application 11/131,476

9
Regarding claim 4, this claim does not require the placement of a
magnetically responsive element on the distal tip of the elongate flexible
member, sized and spaced distally relative to the balloon/expandable
element. Rather, claim 4 merely requires the magnetically responsive
element to be placed on the “distal end” of the device. We have carefully
considered Appellant’s arguments and find that the arguments only relate to
the placement of a magnetically responsive element on the “distal tip”.
These same arguments, however, are not relevant to the rejection of claim 4
because the terms “distal end” and “distal tip” are distinct. Therefore, with
regard to claim 4 and dependent claims thereto, we find that Appellant has
not traversed the merits of this rejection. We therefore summarily affirm the
rejection with regard to these claims. See MANUAL OF PATENT
EXAMINING PROCEDURE § 1205.02 (“If a ground of rejection stated by
the examiner is not addressed in the appellant’s brief, that ground of
rejection will be summarily sustained by the Board.”).

Conclusion of Law
We conclude that the preponderance of the evidence of record does
not support the Examiner’s finding that Ehr discloses a device meeting all of
the limitations of claims 1 and 35. We thus reverse the rejection of claims 1
and 35 under 35 U.S.C. § 102(b) over Ehr. As claims 2-3 and 36-38 are
dependent on claims 1 and 35, respectively, and thus incorporate all of the
limitations of claims 1 and 35, we reverse the rejection as to those claims as
well. The decision of the Examiner to reject claims 4-24 under 35 U.S.C. §
102(b) is affirmed.
Appeal 2012-001926
Application 11/131,476

10

II-IV
The Examiner has rejected dependent claims 2, 14-15, 21 and 37 in a
series of rejections under 35 U.S.C. § 103(a) that rely on Ehr and the
Examiner’s rationale set forth in the anticipation rejection discussed above.
Regarding claims 2 and 37, we have reversed the anticipation
rejection over Ehr of independent claims 1 and 35 and find that the
obviousness rejections over Ehr do not remedy the deficiencies of the
anticipation rejection. We therefore reverse the obviousness rejections as
they pertain to claims 2 and 37 for the reasons given above.
Regarding claims 14-15 and 21, these claims depend from claim 4.
We have affirmed the anticipation rejection of independent claim 4 finding
that Appellant’s argument fails to challenge the Examiner’s findings with
regard to anticipation by Ehr. Appellant relies only on that argument as a
reason to reverse the obviousness rejection of these claims. We therefore
also affirm the Examiner’s obviousness rejections that rely on Ehr.

SUMMARY
We reverse the rejection of claims 1, 3, 35 and 36 under 35 U.S.C. §
102(b) as being anticipated by Ehr. We affirm the rejection of claims 4-24
under 35 U.S.C. § 102(b) as being anticipated by Ehr.
We reverse the rejection of claim 2 under 35 U.S.C. § 103(a) as being
unpatentable over Ehr et al.
We affirm the rejection of claims 14 and 15 under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Ehr and Pinchuck. We
Appeal 2012-001926
Application 11/131,476

11
reverse the rejection of claim 37 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Ehr and Pinchuck.
We affirm the rejection of claim 21 under 35 U.S.C. § 103(a) as being
unpatentable over Ehr in view of Hess.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART

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