Ex Parte Stecker et al

Patent Trial and Appeal Board

Dec 15, 2012

10968490 (P.T.A.B. Dec. 15, 2012)

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.
10/968,490 10/19/2004 Eric C. Stecker STECKER-08944 1874
72960 7590 12/15/2012
Casimir Jones, S.C.
2275 DEMING WAY, SUITE 310
MIDDLETON, WI 53562
EXAMINER
THOMAS, JR, BRADLEY G
ART UNIT PAPER NUMBER
3767
MAIL DATE DELIVERY MODE
12/15/2012 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 ERIC C. STECKER, PHILIP P. STECKER,
and BARBARA L. STECKER
__________

Appeal 2011-000142
Application 10/968,490
Technology Center 3700
__________

Before LORA M. GREEN, STEPHEN WALSH, and
JACQUELINE WRIGHT BONILLA, Administrative Patent Judges.

BONILLA, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims directed to a
system for performing a function at an internal site inside the body of a
subject. The Examiner has rejected the claims as obvious. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.

Appeal 2011-000142
Application 10/968,490

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STATEMENT OF THE CASE
The Specification describes devices “for performing suction (e.g. of
liquid and/or gas), irrigation, gas injection, and manipulation at an internal
site in a subject” (Spec 2, ll. 30-32). A device may comprise “an elongate
member with a plurality of openings defining an enlargeable section,
wherein the enlargeable section comprises a plurality of walls, and wherein
the enlargeable section is movable between a non-enlarged position, and an
enlarged position” (id. at 3, ll. 7-11; see also Fig. 2).
Claims 36, 38, 39, and 40 are on appeal. Independent claim 36 is
representative and reads as follows:
36. A system configured for performing at least one function at an
internal site in a subject, comprising:
a) an elongate member, wherein said elongate member
comprises a plastic tube that is at least 5 cm in length, has a proximal
end and a distal end, and has a primary cross-sectional dimension, and
wherein said plastic tube comprises:
i) 4 longitudinal slit type openings defining an enlargeable
section in said plastic tube, wherein said 4 longitudinal slit type
openings are openings in said plastic tube itself, wherein said
enlargeable section is located between said proximal end and said
distal end of said plastic tube, wherein said enlargeable section is
composed of 4 walls and is movable between a non-enlarged position
and an enlarged position, wherein said walls have inward passive
spring action that returns said enlargeable section to said non-enlarged
position when deployment forces are released or counteracted,
wherein said enlarged position has a cross-sectional dimension that is
at least 4 times larger than said non-enlarged position, and wherein
each of said 4 longitudinal slit type openings is at least 6 mm in
length, and
ii) a distal tip located at said distal end of said plastic tube,
wherein said distal tip is adjacent to said enlargeable section, wherein
said distal tip has approximately the same cross-sectional dimension
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Application 10/968,490

3
as said primary cross-sectional dimension, and wherein said distal tip
is attached to said enlargeable section;
b) an inner utility member, wherein at least a portion of said
inner utility member is within said elongate member; and
c) a sleeve member configured for enclosing at least a portion
of said elongate member, said sleeve member being moveable
between a first position along said elongate member that fully
encloses said enlargeable section, and a second position along said
elongate member that at most partially encloses the enlargeable
section.
The claims stand rejected under 35 U.S.C. § 103(a) as obvious over
Ham et al. (U.S. Pat. No. 5,456,667, issued Oct. 10, 1995) as modified by
Ginn (Pat. Appl. Publ. No. US 2002/0072768 A1, published Jun. 13, 2002)
1
.
Analysis
The Examiner finds that Ham discloses the system recited in claim 36,
except that it does not include a sleeve member as recited in c) of the claim
(Ans. 3). The Examiner finds that Ginn discloses a catheter system having
“an introducer sheath 12,” which corresponds to a sleeve member as recited
in c) (Ginn, Fig. 1, [0043], [0003]; Ans. 3-4). According to the Examiner, it
“would have obvious to one having ordinary skill in the art at the time of the
invention to modify the device of Ham et al with a sleeve member as taught
by Ginn since such a modification would facilitate insertion of the device”
(Ans. 4).

1
The Ginn patent states that it is a continuation-in-part of Application No.
09/732,835, filed Dec. 7, 2000. The „835 Application issued Aug. 24, 2004,
as US 6,780,197 B2 to Roe, Ginn, and Belef (hereinafter “Ginn „197
patent”).
Appeal 2011-000142
Application 10/968,490

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Appellants do not dispute that the two references disclose the
elements of claim 36, as found by the Examiner. Rather, Appellants argue
that Ham and Ginn (referenced by Appellants as U.S. Pat. No. 6,780,197,
issued to inventors Roe, Ginn and Belef) (Ginn „197 patent) “apply to
different technologies, which are applied for different purposes and in
different parts of the body” (App. Br. 5). Specifically, Appellants state that
Ginn‟s device “is used in the peripheral vasculature (column 3, lines 26-31)
near the skin surface, and is intended to close holes in those blood vessels
(column 1, lines 13-19)” (id. (citing the „197 patent)). Conversely,
according to Appellants, Ham‟s device “is intended to hold arteries open
after angioplasty, and is applied to coronary arteries, which reside deep
within the body, on the surface of the heart (column 1, lines 10-35)” (id.)
Appellants further argue that because the devices of the two
references “are used in different locations and for different purposes, their
dimensions are very different” (id. at 5-6). Ham‟s device “intended for
accessing the heart, would extend far beyond the sheath of [Ginn], which is
only intended for accessing the periphery” (id. at 6). Appellants allege that
neither reference taught or suggested that Ginn‟s sheath could be extended to
the length required by Ham‟s device, or that it would “function properly
after such drastic structural alteration” (id. at 6, 7 (citing a Declaration by
inventor Dr. Eric Stecker)). Thus, according to Appellants, one would not
have had reason to combine the sheath of Ginn with the device of Ham, or
have a reasonable expectation of success in doing so (id. at 6-8).
Both Ham and Ginn describe intravascular catheters (Ham, col. 1, ll.
7-9; id. at col. 5; Ginn [0003], [0012]; see also Ginn „197 patent, col. 1, ll.
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Application 10/968,490

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21-36). In that context, Ham discloses a catheter assembly having
“essentially the same dimensions of vascular catheters used in angioplasty
procedure” (Ham, col. 7, ll. 24-26). Ginn similarly describes devices
comprising an introducer sheath (12), where the devices “may be used to
perform a therapeutic or diagnostic procedure, such as angioplasty … within
the patient‟s vasculature” (Ginn [0062]). Appellants do not persuade us that
Ginn only describes devices that may be used “in the peripheral vasculature”
or only those necessarily using “a short sheath,” as asserted by Appellants
(App. Br. 5-7). While the Ginn „197 patent discloses such embodiments as
examples, the reference does not limit its teaching to these embodiments
(see, e.g., Ginn „197 patent, col. 1, ll. 29-32 (describing use in a “medical
procedure”); col. 3, ll. 26-31, (discussing “a preferred embodiment”); see
also Declaration of Eric Stecker, M.D., dated Jan. 4, 2010, ¶4 (stating that
Ginn‟s device was “preferably used” in the peripheral vascular)). Moreover,
the „768 Ginn publication reference, cited by the Examiner, further fails to
limit its devices as asserted by Appellants (Ginn [0012], [0013], [0062]).
Like the Examiner, we find that an ordinary artisan had reason to
modify Ham‟s device to include a sleeve member, i.e., an “introducer
sheath,” as taught by Ginn because “such a modification would facilitate
insertion of the device” (Ans. 4). Consistently, as noted by the Examiner
(id.), Ginn teaches that “the introducer sheath may facilitate introduction of
various devices into the vessel, while minimizing trauma to the vessel wall
and/or minimizing blood loss during a procedure,” providing further reason
to add the sheath to Ham‟s catheter device (Ginn [0003]).
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The record before us does not persuade us that the devices of Ham
and Ginn were only “used in different locations and for different purposes,”
as asserted by Appellants (App. Br. 5-6). Likewise, we are not persuaded
that an ordinary artisan would have understood that Ham‟s device modified
to include the sleeve member of Ginn would fail to “function properly” (id.
at 6). Appellants‟ assertion that the sheath of Ginn “is so much shorter than
the device” of Ham (id. at 7 (quoting the Stecker Declaration)) does not
persuade us otherwise, especially when Ginn did not limit its teachings to
“shorter” devices, as discussed above.
We therefore conclude that the Examiner establishes by a
preponderance of the evidence that claim 36 is obvious over Ham as
modified by Ginn. Because Appellants do not argue claims 38-40
separately, these dependent claims fall with independent claim 36. 37
C.F.R. § 41.37(c)(1)(vii).
SUMMARY
We affirm the rejection of claims 36 and 38-40 under 35 U.S.C.
§ 103(a) as obvious over Ham as modified by Ginn.

TIME PERIOD FOR RESPONSE
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

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