Ex Parte Tremaglio

Board of Patent Appeals and Interferences

Jun 23, 2010

11105808 (B.P.A.I. Jun. 23, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ANTHONY TREMAGLIO
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Appeal 2009-008759
Application 11/105,808
Technology Center 3700
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Decided: June 23, 2010
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Before JENNIFER D. BAHR, STEVEN D.A. McCARTHY, and
FRED A. SILVERBERG, Administrative Patent Judges.

SILVERBERG, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Anthony Tremaglio (Appellant) seeks our review under 35 U.S.C.
§ 134 of the final rejection of claims 1-24. We have jurisdiction under 35
U.S.C. § 6(b) (2002).

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Application 11/105,808

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SUMMARY OF DECISION
We REVERSE.

THE INVENTION
Appellant’s claimed invention is directed to an access sheath for
insertion into a body cavity or passage, in particular, a non-uniform axial-
stiffness ureteral access sheath (Spec. 1: 6, 7 and 22-24).
Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A nonuniform axial-stiffness ureteral access
sheath, comprising:

a tubular inner liner;

a reinforcement layer coaxially located over
the inner liner; and

an outer jacket coaxially located over the
reinforcement layer, the outer jacket having
a jacket proximal portion and a jacket distal
portion, the jacket proximal portion having a
higher durometer than the jacket distal
portion, wherein along a length of the
sheath, spanning the jacket distal portion
and jacket proximal portion, there are spaces
between the tubular inner liner and the outer
jacket that are void of reinforcement layer
structure.

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THE REJECTIONS
The following rejections by the Examiner are before us for review:
1. Claims 1-3, 5-11, 13-24 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Parisi (US 6,648,874 B2, issued Nov. 18,
2003) in view of Griffin (US 2004/0193140 A1, issued Sep. 30,
2004).
2. Claims 4 and 12 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Parisi in view of Griffin, and further in view of
Ferrera (US 6,240,231 B1, issued May 29, 2001).

ISSUE
The issue before us is whether the Examiner erred in concluding that
the combined teachings of Parisi and Griffin would have led a person having
ordinary skill in the art to provide “spaces between the tubular inner liner
and the outer jacket that are void of reinforcement layer structure,” as called
for in independent claims 1, 8, 15 and 20 (App. Br. 4).

ANALYSIS
Rejection of claims 1-3, 5-11, 13-24 under 35 U.S.C. § 103(a) as being
unpatentable over Parisi and Griffin
Appellant contends that the combined teachings of Parisi and Griffin
do not describe “spaces between the tubular inner liner and the outer jacket
that are void of reinforcement layer structure,” as called for in independent
claims 1, 8, 15 and 20 (App. Br. 4).
Appellant admits that Parisi describes a catheter having an “outer
tubular member 16, a support member layer 14, and a tubular inner member
12,” wherein these elements generally correspond to Appellant’s “outer
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jacket 40, reinforcement layer 30, and inner liner 20.” (Emphasis added)
(App. Br. 5, see also Reply Br. 4).
In particular, Appellant contends that Parisi does not describe “spaces
between the outer tubular member 16, support member layer 14, and inner
tubular member 12, [as] all space between [the] layers is in-filled with a
flowable material during manufacture.” (Emphasis added) (App. 5-6).
In particular, Appellant further contends that Griffin does not describe
spaces between a tubular inner liner and outer jacket, as claimed (App. Br.
7).
The Examiner found (1) that Parisi describes all of limitations called
for in the independent claims 1, 8, 15 and 20, except that Parisi does not
describe the claimed spaces (Ans. 3, 4); and (2) that Griffin describes “a
medical device having a reinforcement member 26 having spaces 44 that are
void of material to allow the device to maintain a degree of flexibility”
(emphasis added) (Ans. 4).
The Examiner states (1) that “[t]he benefit of the peaks and valley[s]
as disclosed by Parisi and pointed out by [A]ppellant can still exist if the
interstitial spaces are not filled completely” (Ans. 6), and (2) that Griffin is
relied upon to teach that it is a well known and obvious modification to
include spaces and voids within a reinforcement layer, not to teach spaces
oriented between an inner liner and an outer jacket per se (Ans. 5).
The Examiner concluded that “it would have been obvious to one of
ordinary skill in the art . . . to modify the reinforcement member of Parisi to
have interstitial spaces void of material as taught by Griffin to allow the
device to maintain a degree of flexibility . . . ” (Ans. 4).
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Parisi describes (1) that in order to modify the characteristics of the
guide catheter 10, the catheter 10 is prepped by removing the outer portions
of the outer tubular member 16, that is, at the distal portion 20 (col. 6, ll. 48-
55 and fig. 4); (2) that the procedure generally provides an outer surface
following the contours of filament 30, wherein a series of peaks 37 and
valleys 39 are formed (col. 7, ll. 33-46 and fig. 5); and (3) that tubular inserts
51, 53, 55, 57 may be disposed over the distal portion of the catheter shaft
20, with each subsequent insert having a lower durometer in order to
produce a shaft that becomes more flexible (col. 8, l. 46-col. 9, l. 5 and fig.
6).
Parisi further describes that once the inserts 51, 53, 55, 57 are
properly positioned, the catheter is heated, wherein
[t]he temperature from the heating source causes
the outer tubular member materials to flow
sufficiently to adherer [sic adhere] to the shaft and
to each other, with the inside surface conforming
to the contour surface of the modified shaft. Outer
tubular member inserts [51, 53, 55, 57] flow into
the peaks 37 and valleys 39 formed during the
preparation stage.
(col. 9, ll. 6-23).
Parisi still further describes that the peak and valley modification
affords several advantages, that is, “the modification allows for greater outer
tubular member insert retention” due to the inability of the inserts to slide
longitudinally along the length of the catheter (col. 9, ll. 24-30); and that the
“design imparts greater versatility in altering the flexibility of the modified
section 70" (col. 9, ll. 31-37).
We conclude that creating voids in Parisi between the outer tubular
member 16 and inner tubular member 12, or partially filing Parisi’s peaks 37
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and valleys 39 with the insert material, which would also create voids, as
proposed by the Examiner, would defeat the advantages described by Parisi,
that is, greater retention and greater versatility in altering the flexibility of
the catheter. In particular, in Parisi, creating a void where material was
intended would not provide surface to surface contact, which is needed to
make available the advantage afforded by Parisi’s invention, that is, greater
retention between the surfaces.
Further, we conclude that the Examiner’s rationale that “[t]he benefit
of the peaks and valley[s] as disclosed by Parisi and pointed out by
Appellant can still exist if the interstitial spaces are not filled completely”
(Ans. 6) is a mere conclusory statement, as we find no adequate evidence to
support such rationale. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007) (“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness”).
We reverse the rejection of independent claims 1, 8, 15 and 20.
Likewise, we reverse the rejection of claims 2, 3, 5-7, 9-11, 13, 14, 16-19
and 21-24, which depend from claims 1, 8, 15 and 20, respectively.

Rejection of claims 4 and 12 under 35 U.S.C. § 103(a) as being
unpatentable over Parisi, Griffin and Ferrera
The Examiner has not relied on Ferrera for any teaching that would
remedy the deficiency in Parisi and Griffin (Ans. 4). We thus conclude that
the Examiner also erred in rejecting claims 4 and 12 as being unpatentable
over Parisi, Griffin and Ferrera.

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CONCLUSIONS
The Examiner has erred in concluding that the combined teachings of
Parisi and Griffin would have led a person having ordinary skill in the art to
provide “spaces between the tubular inner liner and the outer jacket that are
void of reinforcement layer structure,” as called for in independent claims 1,
8, 15 and 20.

DECISION
The decision of the Examiner to reject claims 1-24 is reversed.

REVERSED

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