Ex Parte Teitelbaum

Board of Patent Appeals and Interferences

Jul 28, 2011

10688135 (B.P.A.I. Jul. 28, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte GEORGE P. TEITELBAUM
____________________

Appeal 2009-012860
Application 10/688,135
Technology Center 3700
____________________

Before: STEVEN D.A. MCCARTHY, WILLIAM V. SAINDON, and
MICHAEL HOELTER, Administrative Patent Judges.

SAINDON, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-012860
Application 10/688,135
2
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 11, 12, and 36-53. Claims 1-10 and 13-35 are canceled.
We have jurisdiction under 35 U.S.C. § 6(b).

The Invention
Claim 11, reproduced below, is illustrative of the claimed subject
matter.
11. A directing sheath comprising:
a proximal portion with a proximal end;
a distal portion with a distal end;
a central portion between the proximal portion and the
distal portion comprising at least two openings that extend
generally traverse to a longitudinal axis of the directing sheath;
and
a lumen extending through the directing sheath from the
proximal end to distal end generally along the longitudinal axis
of the directing sheath and intersecting the at least two
openings;
where the directing sheath is scored along its longitudinal
axis to allow the directing sheath to be split into two separate
halves and dividing the lumen by peeling the directing sheath
apart at either its proximal end or its distal end or both along the
scoring.

References
The Examiner relies upon the following prior art references:
Nissenbaum US 3,155,091 Nov. 3, 1964
Davey US 2005/0027257 A1 Feb. 3, 2005

Rejections
I. Claims 11, 36-41, 43, 44, 46-51, and 53 are rejected under 35 U.S.C.
§ 102(e) as anticipated by Davey.
Appeal 2009-012860
Application 10/688,135
3
II. Claims 12, 42, 45, and 52 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Davey and Nissenbaum.

SUMMARY OF DECISION
We REVERSE.

OPINION
In relevant part, independent claim 11 requires a sheath with a central
portion having at least two openings that intersect a lumen and that extend
generally traverse to a longitudinal axis of the sheath. Independent claim 44
requires a similar sheath with similar openings. The Examiner found that
Davey describes the openings required by claims 11 and 44 in figure 13.
Ans. 3-5. Appellant argues that the “openings” the Examiner finds in Davey
are only a single opening. App. Br. 10. As such, the dispositive issue in this
appeal is whether Davey describes at least two openings intersecting a lumen
as required by claims 11 and 44.
We reproduce the Examiner’s annotated copy of Figure 13 of Davey
below.
App
App
Fig
exten
Ans.
eal 2009-0
lication 10
ure 13 dep
The Exa
d through
5. The Ex
12860
/688,135
icts the sh
miner stat
the centra
aminer ad
eath 10 of
es that the
l portion,
ds, “[w]he
4
Davey wi
openings
but do not
n the dev
th the Exa
identified
extend en
ice is split
miner’s an
in Davey’s
tirely ther
in two hal
notations.
Figure 13
e through.
ves, there

App
App
will
open
like
the c
and/
befo
the t
arm
to th
of D
figur
Fig
To th
defin

1 The
desc
16 in
eal 2009-0
lication 10
be a right
ings being
It appear
receiving s
laimed “o
or wings 4
re reaching
wo arms o
structures
e lumen. F
avey, and
e 1 as gap

ure 1 dep
e extent th
ed by the

se arm-lik
ribed in pa
figure 1.
12860
/688,135
half with a
the portio
s the Exam
tructures o
penings.”
0 do not o
the lume
r the wing
in Davey d
igure 1 be
illustrates
s).
icts the ga
e Examin
locking ar

e structur
ragraph [0
n opening
ns [annota
iner cons
f hub 141
However,
verhang th
n (otherwi
s). As suc
o not ove
low is an
the Exami
ps between
wings 40
er’s positi
m structur

es are unla
046] and
5
and a left
ted in fig.
iders each
and the w
we find th
e lumen o
se, the dila
h, the “op
rhang the l
enlarged,
ner’s so-ca
the locki
of the hu
on is that t
es in addit
beled in D
shown lock
half with
13].” An
of the gap
ings 40 to
at the arm
pening but
tor 16 wo
enings” de
umen but
annotated
lled “open
ng arms of
b 14.
he “openin
ion to a po
avey’s Fig
ing onto t
an opening
s. 10.
s between
correspon
-like struc
rather ter
uld not fit
fined by th
rather are
portion of
ings” (lab
the hub 1
gs” are th
rtion of th
ure 13 bu
he flanges
, the
the arm-
d to one of
tures
minate
between
e locking
tangential
figure 13
eled in
4 and the
e gaps
e adjacent
t are
of dilator

Appeal 2009-012860
Application 10/688,135
6
space between them (identified in figure 1 as the dashed lines), we do not
find this interpretation of Davey reasonable. The areas defined by the gaps
act to secure the flanges of the dilator whereas the area between these gaps is
where the dilator passes into the lumen. See Davey, fig. 1. Because the area
between the gaps serves a different purpose than the area defined by the
gaps, we do not consider it reasonable to include the former as part of the
latter. Accordingly, we do not sustain the Examiner’s finding that Davey
describes two openings as required by claims 11 and 44 and dependent
claims 36-41, 43, 46-51, and 53. As such, we do not sustain the Examiner’s
anticipation rejection of claims 11, 36-41, 43, 44, 46-51, and 53.
The Examiner’s obviousness rejection of dependent claims 12, 42, 45,
and 52 does not address whether the combined teachings of Davey and
Nissenbaum render obvious at least two openings as required by
independent claims 11 and 44. Consequently, we do not sustain the
Examiner’s obviousness rejection of claims 12, 42, 45, and 52.

DECISION
For the above reasons, we reverse the Examiner’s decision regarding
claims 11, 12, and 36-53.

REVERSED

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