Ex Parte Tenerz et al

Patent Trial and Appeal Board

Jun 13, 2013

10390185 (P.T.A.B. Jun. 13, 2013)

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.
10/390,185 03/18/2003 Lars Tenerz 030481-0203 3677
22428 7590 06/13/2013
FOLEY AND LARDNER LLP
SUITE 500
3000 K STREET NW
WASHINGTON, DC 20007
EXAMINER
SMITH, FANGEMONIQUE A
ART UNIT PAPER NUMBER
3736
MAIL DATE DELIVERY MODE
06/13/2013 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 LARS TENERZ and PAR VON MALMBORG

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Appeal 2011-012253
Application 10/390,185
Technology Center 3700
________________

Before FRANCISCO C. PRATS, ULRIKE W. JENKS, and
JOHN G. NEW, Administrative Patent Judges.

NEW, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-012253
Application 10/390,185

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SUMMARY
Appellants file this appeal under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 1-6, 8-19, 21-28, and 30-42.
1

Specifically, claims 1, 22-28, 32-35, and 38-40 stand rejected as
unpatentable under 35 U.S.C. § 103(a) as being obvious over the
combination of Smith (US 2001/0037066 Al, November 1, 2001) (“Smith”)
and Linder (US 5,749,357, May 12, 1998) (“Linder”).
Claims 8, 9, 41, and 42 stand rejected as unpatentable under 35
U.S.C. § 103(a) as being obvious over the combination of Smith, Linder,
and Apple et al. (US 6,159,141, December 12, 2000) (“Apple”).
Claims 2-6, 10-19, 21, and 30-31 stand rejected as unpatentable
under 35 U.S.C. § 103(a) as being obvious over the combination of Smith,
Linder, and Pfeiffer (US 6,224,585 B1, May 1, 2001) (“Pfeiffer”).
Claims 36 and 37 stand rejected as unpatentable under 35 U.S.C. §
103(a) as being obvious over the combination of Smith, Linder, and Corl et
al. (US 6,106,476 B1, August 22, 2000) (“Corl”).
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

NATURE OF THE CLAIMED INVENTION
Appellants’ invention is directed to a measuring device, insertable
into a living body. The device includes an elongated flexible member in the
form of a thick-walled hollow tube with a proximal end and a distal end.
The tube defines a central lumen with an inner wall. The lumen may

1
Claims 7, 20, and 29 are canceled.
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contain a core and an insulating material provided between the core and the
inner wall. The core may be made of an electrically conductive material
and may be of essentially constant diameter over its entire length.
Alternatively, the lumen may contain at least two electrical leads. An
electrical sensor is attached to the distal end of the elongated flexible
member and is electrically connected to the core. Abstract.

REPRESENTATIVE CLAIM

Claim 1 is representative of the claims at issue. App. Br. 4, 9-22.
Claim 1 recites:
1. A sensor and guide wire assembly, comprising:

a guide wire, including:

a thick-walled hollow tube defining a lumen, the
hollow tube being made of conductive material; and

at least two electrical leads within the lumen;

an electrical sensor attached proximate a distal end
of the guide wire; and a connector attached to a proximal
end of the guide wire, the connector including at least
two conductors, wherein the thick-walled hollow tube,
when evaluated in a plane normal to a longitudinal
direction of the thick-walled hollow tube, has a cross-
section that is rotationally symmetric and is uniform, and
wherein a thickness of the hollow tube is at least 50% of
a diameter of the lumen.

App. Br. 24.

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ISSUE
Appellants argue that the Examiner erred because there is no reason
for an artisan of ordinary skill to combine the teachings of the Smith and
Linder references. App. Br. 5. We therefore address the issue of whether
the Examiner so erred.

ANALYSIS
Appellants argue that one of ordinary skill in the art would have no
reason to combine the teachings of Smith and Linder, because the teachings
of Linder are not applicable to the intravascular guide wire taught by Smith.
App. Br. 5. According to Appellants, Smith teaches that a primary concern
for inventions in the art is to reduce size, stating that: “[t]he first and
foremost problem is to make the sensor sufficiently small.” App. Br. 6
(quoting Smith, ¶ [0003]). Appellants argue that Smith further teaches that
“the number of electrical connections and leads should be minimized, in
order to obtain a sufficiently flexible guide wire which can be guided to the
desired location through the coronary vessels without too much difficulty.”
Id. Appellants contend that Smith thus teaches that the overall size of the
sensor and its accompanying guide wire should be made as small as
possible. App. Br. 6.
Appellants argue further that Linder, on the other hand, relates to an
endotracheal access guide, which is of such different structure and function
as to constitute non-analogous art. App. Br. 6. Appellants contend that the
device taught by Linder is much larger than a guide wire and, furthermore,
that different design considerations are present. Id. Appellants argue that
guide wires, such as those taught by Smith and claimed by Appellants’
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invention, are snaked through small blood vessels for distances of up to
several feet and that the design considerations of flexibility, steerability,
and pushability for the guide wires determine the guide wire’s ability to
reach its target through the tortuous path it must follow to the desired site in
the cardiovascular system. Id. Furthermore, maintain Appellants, the
different sections of a guide wire may possess different mechanical
characteristics along its length; whereas the distal end may need to be
highly steerable through winding blood vessels without damaging tissue,
the middle sections may need to be sturdy and capable of transferring
rotational forces reliably, and the proximal end should allow the user to
handle and guide the guide wire through the vessels. App. Br. 7.
By contrast, argue Appellants, endotracheal access devices perform
an entirely different function and are designed operate in a different region
of the human anatomy. App. Br. 7. Appellants argue that endotracheal
access devices are inserted into the trachea for intubation of the patient for
the delivery of gases or medication into the respiratory system. Id.
Appellants contend that endotracheal tubes are not inserted into, or pushed
through, blood vessels, lack the requisite flexibility to be snaked through
blood vessels, and are larger than guide wires by at least 300%. Id.
Appellants argue that Smith and Linder are therefore non-analogous
art because the design considerations of the guide wire of Smith and the
endotracheal access device of Linder are so different that one of ordinary
skill in the art would not view the teachings of Smith and Linder to be
applicable to each other. App. Br. 7. Therefore, argue Appellants, one of
ordinary skill in the contemporaneous art would have had no reason to
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modify the proximal tube 9 of Smith in view of the teachings of the thick-
walled cylindrical tube 12 of Linder. Id.
The Examiner responds that the device taught by Smith discloses a
sensor and guide wire assembly but does not disclose information regarding
the thickness of the wall of the hollow guide wire tube. Ans. 11. The
Examiner finds that Linder teaches a thick-walled endotracheal tube
assembly for accessing a desired site within the body of a patient, which the
Examiner interprets as corresponding to a guide wire. Id. The Examiner
finds that Linder is used to teach the limitation of claim 1 reciting “a thick-
walled hollow tube defining a lumen … wherein a thickness of the hollow
tube is at least 50% of a diameter of the lumen.” Id. The Examiner further
finds that Linder provides motivation to modify the Smith device, since the
hollow tube taught by Linder is designed as having a thick wall to resist
buckling and kinking. Id.
We are not persuaded by the Examiner’s reasoning. Appellants argue
that the Smith and Linder references are non-analogous art. The initial test
for analogous art inquires not only whether the references address the same
problem as the claimed invention, but also whether they are both from the
same field of endeavor as the claimed invention. In re Bigio, 381 F.3d
1320, 1325 (Fed. Cir. 2004). Smith and Appellants’ claimed invention
address the problem of introducing a necessarily small electrical sensor into
a specific location within the cardiovascular system of a body, whereas
Linder address the problem of introducing, via the pharynx, an endotracheal
tube into the trachea of the respiratory system for the delivery of gases
and/or medication. Compare Smith, ¶ [0003] with Linder, col. 1, ll. 51-60.
We agree with the Appellants that, not only does Linder therefore address a
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different problem, the nature of the problem imposes significantly different
design constraints upon Smith and Appellants’ claimed invention, on the
one hand, and Linder, on the other. See App. Br. 7.
Moreover, we find that the intravascular wire guide taught by Smith
and the endotracheal tube taught by Linder do not come from the same field
of endeavor. The former is designed to be introduced to a specific location
in the cardiovascular system, i.e., it is in the field of intravascular
catheterization. See Smith, ¶ [0003] (“Typically a sensor of very small size
is mounted on a guide wire, which is inserted in, e.g., the femoral artery and
guided to the desired point of measurement, e.g., a coronary vessel”). The
latter is designed to be introduced into the respiratory system via the mouth,
i.e., it is in the field of respiratory intubation. See Linder, col. 1, ll. 15-20
(“Of importance to the anesthesiologist is the class of catheter known in the
art as endotracheal tubes designed for intubation into the trachea of a
patient prior to anesthesia, in emergency situations such as those requiring
resuscitation, and for life support”).
A reference qualifies as prior art for an obviousness determination
under 35 U.S.C. § 103 only when it is analogous to the claimed invention.
Innovention Toys, LLC, v. MGA Entertainment, Inc., 637 F.3d 1314, 1321
(Fed. Cir. 2011). We therefore agree with Appellants that Smith and Linder
constitute non-analogous art and also agree that, given the significant
differences between the devices described in the two references, the
Examiner did not adequately explain why Linder would have prompted a
person of ordinary skill in the art to modify Smith’s device to produce the
claimed apparatus. A rejection for obviousness must include “articulated
reasoning with some rational underpinning to support the legal conclusion.”
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KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007), quoting In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). We therefore conclude that it
would not have been obvious for a person of ordinary skill in the art to
combine the teachings of Smith and Linder to arrive at Appellants’ claimed
invention.
DECISION

The Examiner’s rejection of claims 1-6, 8-19, 21-28, and 30-42 as
unpatentable under 35 U.S.C. 103(a) is reversed.

REVERSED

cdc