Ex Parte Tegg et alDownload PDFPatent Trials and Appeals BoardMay 13, 201914190854 - (D) (P.T.A.B. May. 13, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/190,854 02/26/2014 55962 7590 Wiley Rein LLP Patent Administration 1776 K Street, NW Washington, DC 20006 05/15/2019 FIRST NAMED INVENTOR Troy T. Tegg 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. OB-055405US/824 l 0.0544 5492 EXAMINER OSINSKI, BRADLEY JAMES ART UNIT PAPER NUMBER 3783 NOTIFICATION DATE DELIVERY MODE 05/15/2019 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): ptodocket@wileyrein.com ASJM_Patents@abbott.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TROY T. TEGG, RICHARD E. STEHR, ALAN M. FUENTES, and LINDA NEMEC Appeal2018-001669 Application 14/190,854 1 Technology Center 3700 Before ANTON W. PETTING, BRADLEY B. BAY AT, and ROBERT J. SILVERMAN, Administrative Patent Judges. SILVERMAN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 25, 26, 35-37, 40-45, 47, and 48. 2 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. 1 The Appellants identify St. Jude Medical, Atrial Fibrillation Division, Inc. as the real party in interest. Appeal Br. 2. 2 Throughout this Decision, the identification of the claims reflects the cancellation of claims 28, 29, and 46, in the Appellants' Amendment and Response Under 37 C.F.R. § 1.116 (received Jan. 30, 2017). Altogether, claims 1-24, 27-34, 38, 39, and 46 have been canceled. See Appeal Br. 4. Appeal2018-001669 Application 14/190,854 ILLUSTRATIVE CLAIM 25. A catheter assembly comprising: a catheter shaft having an axial length, a proximal end, a distal end, an outer layer of a first material, and an inner reinforcing layer; an outer jacket segment of a second material having an axial length, a proximal end, and a distal end, the second material being different from the first material; said catheter shaft operatively connected at its distal end to the proximal end of said outer jacket segment; said inner reinforcing layer of the catheter shaft extending throughout the entire axial length of the catheter shaft and the outer jacket segment, wherein the outer jacket segment is configured to assume a fixed arcuate shape along its axial length. CITED REFERENCES The Examiner relies upon the following references: DeMello et al. us 4,863,442 Sept. 5, 1989 (hereinafter "DeMello") Parisi et al. US 2001/0027310 Al Oct. 4, 2001 (hereinafter "Parisi") Pepin US 6,652,507 B2 Nov. 25, 2003 Shimada US 6,979,312 B2 Dec. 27, 2005 REJECTIONS 3 I. Claims 25 and 26 are rejected under 35 U.S.C. § I02(b) as anticipated by DeMello. 3 In addition to the enumerated rejections, the Final Office Action (pages 2- 3) rejects claims 35-37 and 40 under 35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with the written description requirement. This rejection is withdrawn. See Answer 11. 2 Appeal2018-001669 Application 14/190,854 II. Claims 25 and 26 are rejected under 35 U.S.C. § 102(b) as anticipated by Parisi. III. Claims 35-37 and 40 are rejected under 35 U.S.C. § 103(a) as unpatentable over Parisi and Pepin. IV. Claims 41--45 are rejected under 35 U.S.C. § 103(a) as unpatentable over Parisi and Shimada. V. Claim 47 is rejected under 35 U.S.C. § 103(a) as unpatentable over DeMello and Shimada. VI. Claim 48 is rejected under 35 U.S.C. § 103(a) as unpatentable over Parisi, Pepin, and Shimada. FINDINGS OF FACT The findings of fact relied upon, which are supported by a preponderance of the evidence, appear in the following Analysis. ANALYSIS Rejection I The Appellants contend that the Examiner erred in rejecting independent claim 25 and claim 26, depending therefrom, as anticipated by DeMello, because DeMello lacks the "inner reinforcing layer of the catheter shaft extending throughout the entire axial length of the catheter shaft and the outer jacket segment" recited in independent claim 25. See Appeal Br. 11-12. According to the Final Office Action, DeMello's Teflon layer 17 teaches the claimed "catheter shaft," DeMello's wire-braided Teflon core 16 teaches the claimed "inner reinforcing layer," and DeMello's soft tip 12 teaches the claimed "outer jacket segment." See Final Office Action 3. See also DeMello col. 3, 11. 45, 50, col. 4, 11. 10-11. 3 Appeal2018-001669 Application 14/190,854 In disputing the Examiner's mapping of claim 25' s limitations to DeMello, the Appellants do not refer to DeMello's wire-braided Teflon core 16 (which teaches the claimed "inner reinforcing layer," according to the Examiner); instead, the Appellants refer to DeMello's element 17, contending: "DeMello's purported inner reinforcing layer (17) does not even extend through the entire axial length of the catheter shaft, and indeed stops in what the Examiner labels the 'outer layer,' before even reaching what the 'outer jacket segment[.]"' Appeal Br. 11. The Examiner's Answer clarifies the mapping of the claimed features to DeMello -whereby DeMello's Teflon layer 17 would teach claim 25's "inner reinforcing layer" - stating: The examiner cited (Teflon) layer 17 as the inner reinforcing layer. The catheter shaft (with the outer layer) ends where marker 14 begins ( dashed line in unannotated figure 1 ), which instantly transitions to the outer jacket segment, which begins with marker 14 and ends where both teflon layer 17 and coating 25 end, which then transitions to a soft tip [12]. [Teflon] [l]ayer 17 thus extends through both the catheter shaft and the outer jacket segment. Answer 11. Responding to the Examiner's Answer, in the Reply Brief, the Appellants state: The Examiner appears to conflate DeMello' s Teflon core 1 7 and the wire braid thereabout. As Figure 1 of DeMello makes clear, "the wire braid about the Teflon layer 17 terminates several inches from the distal end." DeMello, 4:33-34 ( emphasis added). See also Specification ,r [0044] ("Inner reinforcing layer 30 may be a tube of braided metal wire or any other reinforcing material. ... "). For this reason, DeMello fails to anticipate claims 25 and 26. Reply Br. 4. 4 Appeal2018-001669 Application 14/190,854 The elements of DeMello, referenced by the Examiner and the Appellants, are shown in DeMello' s Figure 1, below: /0 / 12 Figure 1 of DeMello depicts a partial longitudinal section of a catheter. DeMello col. 3, 11. 34--36. Whether DeMello satisfies the "inner reinforcing layer" limitation depends, in part, upon whether the Teflon layer 17 of DeMello (identified by the Examiner as the corresponding element) "extend[ s] throughout the entire axial length of the catheter shaft and the outer jacket segment," as claim 25 reqmres. Notably, the Examiner identifies DeMello's soft tip 12 as teaching the claimed "outer jacket segment." See Final Office Action 3. See also DeMello col. 3, 1. 45. DeMello's Teflon layer 17, as seen in Figure 1 of the reference, extends into soft tip 12, but does not extend entirely therethrough. Accordingly, the Teflon layer 17 of DeMello does not "extend[] throughout the entire axial length of' soft tip 12, which the Examiner relies upon to teach claim 25's "outer jacket segment." Accordingly, the Appellants persuade us that the Examiner erred in rejecting independent claim 25, along with dependent claim 26, as 5 Appeal2018-001669 Application 14/190,854 anticipated by DeMello, under 35 U.S.C. § 102(b). This rejection is not sustained. Rejection II The Appellants contend that the Examiner erred in rejecting independent claim 25 and claim 26, depending therefrom, as anticipated by Parisi, because Parisi lacks claim 25's recited feature: "wherein the outer jacket segment is configured to assume a fixed arcuate shape along its axial length." See Appeal Br. 12. The Examiner takes the position that the Parisi "device is capable of bending and thus taking a fixed arcuate shape as either the material may be further treated to maintain its shape, or a shaped device is capable of being placed inside the device, giving it a fixed arcuate shape." Advisory Action 2 (Mar. 2, 2017). See also Final Action 5. Further, the Examiner's Answer states that the Parisi "device's ability to bend allows it to assume a fixed shape, such as via an insert placed in the lumen of the device, such as in Firth (US 4,037,605) which has an insert 2 which gives the tube/device 1 a fixed arcuate shape." Answer 12-13.4 The Appellants argue that the Examiner's position does not adequately consider whether Parisi teaches the "fixed" limitation of claim 25, asserting that "Parisi's device is described as 'flexible,' not of fixed curvature." Appeal Br. 12 (citing Parisi ,r 47). Further, the Appellants contend that the Examiner's reliance upon Parisi to teach the limitation at issue "goes beyond the broadest reasonable interpretation of 'fixed,'" and 4 The Examiner's Answer (page 12) withdraws an alternative position-to the effect that Parisi' s device is "circular in cross-section, which is arcuate in shape" (Final Action 5). 6 Appeal2018-001669 Application 14/190,854 further argue that "the term 'fixed' connotes something that is 'firm and not readily movable' or 'rigid."' Reply Br. 4 ( citing a dictionary definition provided at http://www.dictionary.com/bmwse/fixed?s=t (accessed Oct. 30, 2017)). According to the Appellants, "[t]his is the antithesis of Parisi's disclosure." Id. "During examination, 'claims ... are to be given their broadest reasonable interpretation consistent with the specification, and ... claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art."' In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (quoting In re Bond, 910 F.2d 831,833 (Fed. Cir. 1990)). As the Federal Circuit has explained: The correct inquiry in giving a claim term its broadest reasonable interpretation in light of the specification is not whether the specification proscribes or precludes some broad reading of the claim term adopted by the examiner. And it is not simply an interpretation that is not inconsistent with the specification. It is an interpretation that corresponds with what and how the inventor describes his invention in the specification, i.e., an interpretation that is "consistent with the specification." In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997) ( citation and internal quotation marks omitted); see also In re Suitco Surface, 603 F.3d 1255, 1259-60 (Fed. Cir. 2010). In re Smith Int 'l, Inc., 871 F.3d 1375, 1382-83 (Fed. Cir. 2017). In the present Appeal, the Specification sheds light on the construction of the claimed "outer jacket segment ... configured to assume a fixed arcuate shape along its axial length." Notably, the Specification addresses the properties of materials used for the "outer jacket segment" and other parts of the disclosed devices, in terms of their "hardness," whereby the recited characteristic of being "fixed" is contrasted with being "flexible." 7 Appeal2018-001669 Application 14/190,854 For example, "the axial length of the outer jacket segment may include materials of different durometer hardness"; furthermore, "[i]n some embodiments, the axial length of the outer jacket segment has an arcuate shape, which may optionally be either fixed or flexible." Spec. ,r 18. In addition: It is within the spirit of the invention for the outer jacket segment 25 to be constructed of segments of different lengths and hardness which can confer different physical properties to different longitudinal sections of the outer jacket. Typically, the outer jacket segment 25 will be formed from a different material having a different durometer hardness from that of the outer layer 20. Id. ,r 55. The Specification also presents reasons for choosing different degrees of hardness for the materials used in the disclosed devices, explaining: [I]t may be desirable to provide a mapping catheter with an extremely soft tip at its working end which allows it to easily conform to a variety of different shapes presented by the tissue. In another situation, it may be desirable to provide the working end of the catheter with a harder, fixed shape, such as a loop, which can conform to the shape of well known parts of the anatomy." Id. ,I 38. In view of the Specification, the claimed "outer jacket segment" that is "configured to assume a fixed arcuate shape along its axial length" refers to an "outer jacket segment" that is made of materials that are sufficiently hard to maintain the recited "arcuate shape" for the purposes described. A member that is capable of bending, such as the Examiner characterizes that of Parisi, which would be supported in an "arcuate" shape by some other structure, would not be "fixed" in a manner consistent with the 8 Appeal2018-001669 Application 14/190,854 Specification. Moreover, the Examiner's position that Parisi's "material may be further treated to maintain its shape" (Advisory Action 2 (Mar. 2, 2017)) is not adequately supported by the identified disclosure of the reference. In view of the foregoing, we are persuaded of error in the identified rejection of independent claim 25, such that we do not sustain the rejection of claims 25 and 26, as anticipated by Parisi, under 35 U.S.C. § 102(b). Rejection III The Appellants contend that the Examiner erred in rejecting independent claim 35 and claims 36, 37, and 40, depending therefrom, because the cited combination of Parisi and Pepin does not teach or suggest claim 35's recitation: "wherein the inner reinforcing layer is sandwiched between the outer layer and the outer jacket segment on one side and the inner layer and inner jacket segment on another side." Appeal Br. 13. As to Parisi, the Appellants contend: [ A ]n examination of Parisi' s Figure 7 demonstrates that, although there may be multiple different materials (e.g., 16, 51, 53, 55) on one side of the reinforcing layer (e.g., 14), only a single, continuous material (e.g., 12, as shown in Figure 2) is on the other side of the reinforcing layer (e.g., 14). Reply Br. 4. Yet, the Appellants do not address the Examiner's position that Pepin's Figure 4A teaches the claimed features at issue. See Answer 13-14. Pepin's Figure 4A is reproduced below: 9 Appeal2018-001669 Application 14/190,854 44 ·16 ... --· + Figure 4A of Pepin depicts a longitudinal section of a catheter. Pepin col. 1, 11. 44--45. The Examiner finds that Pepin's elements 22 and 32, together, teach the recited "inner reinforcing layer," Pepin's element 30 teaches the recited "outer layer," Pepin's element 20 teaches the recited "outer jacket segment," Pepin's element 34 teaches the recited "inner layer," and Pepin's element 24 teaches the recited "inner jacket segment." Answer 14. Pepin's Figure 4A shows elements 30 and 20 "on one side" of the identified "inner reinforcing layer" (i.e., Pepin's elements 22 and 32), as well as elements 34 and 24 "on another side" thereof, as recited in claim 35. See id. Accordingly, the Examiner sufficiently shows that Pepin teaches claim 35's recitation: "wherein the inner reinforcing layer is sandwiched between the outer layer and the outer jacket segment on one side and the inner layer and inner jacket segment on another side." In view of the foregoing, the Appellants do not persuasively argue for error in the rejection of independent claim 35, such that we sustain the rejection of claims 35 and claims 36, 37, and 40, depending therefrom, under 35 U.S.C. § 103(a). 10 Appeal2018-001669 Application 14/190,854 Rejection IV Regarding the obviousness rejection of claims 41--45, the Appellants rely upon the argument discussed above, with respect to independent claim 35. See Appeal Br. 13. Accordingly, for the reasons provided for claim 35, we sustain the rejection of claims 41--45 under 35 U.S.C. § 103(a). Rejection V Regarding the obviousness rejection of claim 47 (based upon the combination of DeMello and Shimada), the Appellants rely upon the argument discussed above, with respect to the rejection of independent claim 25 as anticipated by DeMello. See Appeal Br. 14. Accordingly, for the reasons provided for claim 25, we do not sustain the rejection of claim 4 7 under 35 U.S.C. § 103(a). Re} ection VI Regarding the obviousness rejection of claims 48, the Appellants rely upon the argument discussed above, with respect to independent claim 3 5. See Appeal Br. 14. Accordingly, for the reasons provided for claim 35, we sustain the rejection of claim 48 under 35 U.S.C. § 103(a). DECISION We REVERSE the Examiner's decision rejecting claims 25 and 26 under 35 U.S.C. § 102(b). We AFFIRM the Examiner's decision rejecting claims 35-37, 40--45, and 48 under 35 U.S.C. § 103(a). We REVERSE the Examiner's decision rejecting claim 47 under 35 U.S.C. § 103(a). 11 Appeal2018-001669 Application 14/190,854 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 12 Copy with citationCopy as parenthetical citation