Ex Parte Tucker

Patent Trial and Appeal Board

Mar 26, 2013

11012824 (P.T.A.B. Mar. 26, 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.
11/012,824 12/16/2004 David Jason Tucker 0100/0182 9664
21395 7590 03/26/2013
LOUIS WOO
LAW OFFICE OF LOUIS WOO
717 NORTH FAYETTE STREET
ALEXANDRIA, VA 22314
EXAMINER
GRAY, PHILLIP A
ART UNIT PAPER NUMBER
3767
MAIL DATE DELIVERY MODE
03/26/2013 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 DAVID JASON TUCKER
____________________

Appeal 2011-010409
Application 11/012,824
Technology Center 3700
____________________

Before: JENNIFER D. BAHR, MICHAEL L. HOELTER, and
JOHN W. MORRISON, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-010409
Application 11/012,824
2
STATEMENT OF THE CASE
David Jason Tucker (Appellant) appeals under 35 U.S.C. § 134 from
the Examiner’s decision rejecting claims 1-20, 23, and 24. Specifically, the
Examiner rejected claims 1-3, 6-14, 17-20, 23, and 24 under 35 U.S.C.
§ 102(b) as anticipated by McGuckin (US 6,425,887 B1, iss. Jul. 30, 2002),
and rejected claims 4, 5, 15, and 16 under 35 U.S.C. § 103(a) as
unpatentable over McGuckin in view of Ishii (US 7,163,524 B2, iss. Jan. 16,
2007). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
The Claimed Subject Matter
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A catheter to be used with and passable through a guide for
insertion into a patient, comprising:
a tubing having at least one portion having a cross
sectional profile that is configured to bend the tubing in a given
direction so that when said one portion of said tubing extends
out of said guide, said tubing is bent so as to be routed in said
given direction.
OPINION
Anticipation based on McGuckin
Each of Appellant’s independent claims 1, 13, and 23 calls for a
catheter comprising at least one portion or junction having, or configured to
have, a cross sectional profile that bends or causes the catheter to bend, or is
configured to predispose the distal end of the catheter toward a given
direction to cause movement of the catheter in said given direction when or
once the junction is not constrained by a guide.
Appeal 2011-010409
Application 11/012,824
3
Consistent with Appellant’s Specification, we construe “cross
sectional profile” as the shape of a section made by a plane cutting
transversely and at right angles to the longitudinal axis of the catheter
tubing. See, e.g., Collins English Dictionary – Complete and Unabridged
(1991, 1994, 1998, 2000, 2003), http://www.thefreedictionary.com/
cross+section (last visited Mar. 21, 2013) (defining “cross section” as “1.
(Mathematics) Maths a plane surface formed by cutting across a solid, esp
perpendicular to its longest axis”). Our construction is consistent with that
of the Examiner. See Ans. 4 (alluding to oval and round shaped cross
sectional profiles of McGuckin); id. at 8 (asserting that needle, tube, lumen,
and cannula are “by definition . . . round or circular in cross section”).
As pointed out by Appellant (App. Br. 11-12), McGuckin forms a
permanent bend in the needle cannula by either heat setting it in superelastic
nitinol while maintaining it in the desired final shape to effect a local phase
change at the point of stress to “what is called ‘stress-induced martensite’”
(col. 3, ll. 2-12) or cold working the cannula material to lock in a permanent
curve to at least a partial martensitic crystalline state (col. 3, ll. 13-22). See,
e.g., fig. 1 (illustrating a curved needle cannula). The predefined curve
effected by the change in the crystalline structure by heat setting or cold
working, not a cross sectional profile of the cannula, causes or predisposes
McGuckin’s needle cannula to bend when it is not constrained in the outer
cannula. We do not find, and the Examiner does not point to, any disclosure
in McGuckin of configuring the cross sectional profile of a portion or
junction of the cannula to bend or cause the cannula to bend, or to
predispose the distal end of the cannula toward a given direction to cause
movement of the cannula in said given direction when or once the junction is
not constrained by the outer cannula, as called for in claims 1, 13, and 23.
Appeal 2011-010409
Application 11/012,824
4
Thus, we do not sustain the Examiner’s rejection of claims 1, 13, and
23, and their dependent claims 2, 3, 6-12, 14, 17-20, and 24 as anticipated by
McGuckin.
Obviousness based on McGuckin and Ishii
The Examiner found that Ishii teaches using a C-shaped or concaved
cross sectional profile to provide the catheter “with excellent followability
and ease of operation while securing torque transmissibility and
pushability.” Ans. 6; see Ishii, col. 2, ll. 52-64; figs. 1, 2. The Examiner
then concluded that it would have been obvious to modify McGuckin’s
cannula by providing it with a cross sectional profile that is C-shaped or
partially concaved as taught by Ishii to provide the system with “a catheter
with excellent followability and ease of operation while securing torque
transmissibility and pushability.” Ans. 6.
Appellant argues that the modification proposed by the Examiner
would not have been obvious because, according to Appellant, Ishii’s
catheter operates in an opposite fashion to that of McGuckin’s needle
cannula “in that the McGuckin needle cannula has a preformed bend 16
whereas the Ishii catheter has no preformed configuration and follows any
configuration of the cannula guide or vessel in which it has been inserted.”
App. Br. 13. Appellant contends that “Ishii teaches against McGuckin in
that it uses a cross sectional profile along its length to impart followability,”
thus running counter to McGuckin’s use of heat treatment or cold working to
preform the bend in the needle cannula. Id. Appellant further contends that
Ishii teaches against configuring the cross sectional profile at a particular
portion of a catheter, as called for in the claims. Id.
We do not agree with Appellant that Ishii’s catheter operates in an
opposite fashion to that of McGuckin’s needle cannula. McGuckin’s
Appeal 2011-010409
Application 11/012,824
5
preformed bend gives the needle cannula the ability “to deflect at a
significant angle from the original longitudinal axis,” which “has great
utility in a number of applications where straight access is required followed
by redirection of the distal opening” (col. 3, ll. 53-56) and permits the
curved needle “to self-deflect laterally and be rotated to reach multiple
planes” (col. 4, ll. 3-5). Ishii’s groove 21 predisposes the catheter to bend
most readily in a given direction (i.e., the direction shown by A in figure 3),
while retaining a high stiffness with relatively high rigidity. Col. 6, ll. 20-
22; 36-38. Thus, Ishii’s groove 21 permits the catheter to be inserted and
advanced in a straight manner and then turned such that the groove formed
portion is positioned on the inner side of curvature in conformity to the
curvature of the vessel in which it is to be maneuvered. Col. 6, ll. 28-35. In
other words, McGuckin’s needle cannula and Ishii’s catheter operate in very
similar fashion. McGuckin’s preformed bend and Ishii’s groove both
predispose the cannula or catheter to bend in a predetermined direction when
needed while retaining sufficient rigidity to permit straight insertion or
access. Thus, McGuckin and Ishii do not teach against their combination.
Appellant’s argument that Ishii teaches against configuring the cross
sectional profile at a particular portion of a catheter is incorrect. Ishii
teaches that the groove 21 may be provided in one or more portions of the
catheter, while there may be no groove 21 in other portions of the catheter.
Col. 9, ll. 21-25. In one embodiment, Ishii discloses a catheter having a
groove 21 with a depth that decreases stepwise toward the proximal end of
the catheter body. Col. 9, ll. 40-43; fig. 5.
Appellant also argues that Appellant’s claims are directed to a
catheter, which, according to Appellant, “is quite different from a needle
cannula” as disclosed by McGuckin. App. Br. 12.
Appeal 2011-010409
Application 11/012,824
6
An ordinary and customary meaning of the term “catheter” is “[a]
tube made of elastic, elastic web, rubber, glass, metal, or plastic used to
evacuate or inject fluids into the body.” Gale Encyclopedia of Medicine
(2008), http://medical-dictionary.thefreedictionary.com/catheter (last visited
Mar. 21, 2013). The needle cannula described by McGuckin falls within this
definition. See McGuckin, col. 3, ll. 58-60 (describing use of the needle
cannula in vertebroplasty procedure in which stabilizing cement is infused
into the vertebral body); col. 4, ll. 29-32 (describing use of the needle
cannula to inject medicaments within the neural canal or epidural space). It
is not apparent, and Appellant does not adequately explain, why
McGuckin’s needle cannula is not a “catheter” as called for in claims 1 and
13, from which claims 4, 5, 15, and 16 depend.
For the above reasons, Appellant’s arguments do not apprise us of
error in the Examiner’s rejection of claims 4, 5, 15, and 16 under 35 U.S.C.
§ 103(a) as unpatentable over McGuckin and Ishii. We sustain the rejection
of these claims, as well as the like rejection of claims 1 and 13 encompassed
therein. Although the Examiner did not expressly include independent
claims 1 and 13 in the rejection under 35 U.S.C. § 103(a), the Examiner’s
rejection of claims 4 and 5, which depend from and thus incorporate all the
limitations of claim 1, and of claims 15 and 16, which depend from and thus
incorporate all the limitations of claim 13, inherently includes a rejection of
claims 1 and 13. See Ormco Corp. v. Align Tech., 498 F.3d 1307, 1319
(Fed. Cir. 2007) (when a dependent claim is “found to have been obvious,
the broader claims . . . must also have been obvious”).
Appeal 2011-010409
Application 11/012,824
7
DECISION
The Examiner’s decision rejecting claims 1-20, 23, and 24 is affirmed
as to claims 1, 4, 5, 13, 15, and 16, and is reversed as to claims 2, 3, 6-12,
14, 17-20, 23, and 24.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED-IN-PART

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