Ex Parte Tyson

Patent Trial and Appeal Board

Jan 17, 2017

13312427 (P.T.A.B. Jan. 17, 2017)

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.
13/312,427 12/06/2011 Archie A. Tyson JR. P0022703.USV4/1111-104 4468
80584 7590
Medtronic, Inc.
710 Medtronic Parkway
Minneapolis, MN 55432
01/19/2017 EXAMINER
FLICK, JASON E
ART UNIT PAPER NUMBER
3763
NOTIFICATION DATE DELIVERY MODE
01/19/2017 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):
pairdocketing @ ssiplaw.com
medtronic_crdm_docketing @ c ardinal-ip .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ARCHIE A. TYSON JR.
Appeal 2015-001516
Application 13/312,427
Technology Center 3700
Before NINA L. MEDLOCK, PHILIP J. HOFFMANN, and
CYNTHIA L. MURPHY, Administrative Patent Judges.
MURPHY, Administrative Patent Judge.
DECISION ON APPEAL
The Appellant1 appeals under 35 U.S.C. § 134 from the Examiner’
rejections of claims 1—15.2 We have jurisdiction over this appeal under
35 U.S.C. § 6(b).
We REVERSE.
1 The Appellant identifies the real party in interest as “Medtronic, Inc.”
(Appeal Br. 2.)
2 “The amendment cancelling claims 16—30 is entered.” (Advisory
Action 1.)
Appeal 2015-001516
Application 13/312,427
STATEMENT OF THE CASE
The Appellant’s invention relates “to implantable medical devices
and, in particular, to an active fixation, transvenous lead and associated
delivery system.” (Spec. 12.)
Illustrative Claim3
Claim 1: A medical electrical lead system, comprising:
a catheter extending from a proximal catheter end to a
distal catheter end;
a lead, insertable within the catheter, including a lead body
extending from a proximal lead end to a distal lead end and an
active fixation member positioned at the distal lead end;
an advancement tool for advancing the active fixation
member outward from the distal catheter end, the advancement
tool being adapted to be positioned around the lead body and
further adapted to be removably fixedly engaged with the
proximal catheter end.
References
Tockman US 6,033,414 Mar. 7, 2000
Froberg US 2003/0014099 A1 Jan. 16, 2003
Seifert US 2004/0172116 A1 Sept. 2, 2004
Hess US 2005/0085886 A1 Apr. 21,2005
Rejections
The Examiner rejects claims 1, 2, 4—7, and 9-11 under 35 U.S.C.
§ 102(b) as anticipated by Seifert. (Final Action 2.)
The Examiner rejects claim 12 under 35 U.S.C. § 103(a) as
unpatentable over Seifert. (Final Action 4.)
3 This illustrative claim is quoted from the Claims Appendix (“Claims
App.”) set forth on pages 10—12 of the Appeal Brief.
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Appeal 2015-001516
Application 13/312,427
The Examiner rejects claim 3 under 35 U.S.C. § 103(a) as
unpatentable over Seifert in view of Hess. (Final Action 7.)
The Examiner rejects claim 8 under 35 U.S.C. § 103(a) as
unpatentable over Seifert in view of Tockman. (Final Action 8.)
The Examiner rejects claims 13—15 under 35 U.S.C. § 103(a) as
unpatentable over Seifert in view of Froberg. (Final Action 8.)
ANAFYSIS
Independent claim 1 recites “a catheter” and “an advancement tool”
that is “adapted to be removably fixedly engaged with the proximal catheter
end.” (Claims App.) The Examiner determines that Seifert discloses such a
catheter (sheath body 104) and such an advancement tool (handle 112 and
cap 114). (See Final Action 2—3.) This determination relies upon a finding
that handle 112 is adapted to be “removably fixedly engaged” with a
proximal end of sheath body 104. (See id. at 3.) The Appellant argues that
the Examiner does not sufficiently support this finding. (See Appeal Br. 7;
see also Reply Br. 5.)
We are persuaded by the Appellant’s position because the Examiner
does not adequately explain why, in Seifert, the alleged advancement tool is
adapted to be both “removably” and “fixedly” engaged with a proximal end
of sheath body 104.
Seifert discloses that handle 112 “is formed of an outer tubular
shell 122,” that shell 122 “encloses a relatively flexible strain relief
tube 118,” and that tube 118 “is maintained in a bore [of shell 122] by
adhesive 132.” (Seifert | 76; see also id. at Fig. 7.) Seifert also discloses
that tube 118 is “disposed around a proximal segment of the torque transfer
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Appeal 2015-001516
Application 13/312,427
sheath body 104” (id.), but Seifert does not specify whether tube 118 fixedly
and/or removably engages this proximal segment of sheath body 104.
Seifert additionally discloses that shell 122 “also supports and
encloses (at least in part) elastic gripping ring 130,” and that “a most
proximal segment 125 of torque transfer sheath body 104 extends into [the
ring 130].” (Seifert 176; see also id. at Fig. 7.) However, Seifert does not
specify whether ring 130 fixedly and/or removably engages this most
proximal segment of sheath body 104.
Seifert does further disclose that handle 112 is “affixed to a proximal
segment of the torque transfer sheath body 104.” (Seifert 175.) This
disclosure may support a finding that handle 112 is fixedly engaged with a
proximal end of sheath body 104, via tube 118 and/or ring 130. But such
disclosure does not support a finding that handle 112 is removably engaged
with a proximal end of sheath body 104. Thus, we do not agree with the
Examiner that the advancement tool taught by Seifert “is unmistakably
‘removably fixedly engaged’” to the proximal end of a catheter “via strain
relief tube 118 maintained within structure 112 by adhesive 132.”
(Answer 9.)
The Examiner maintains that “the advancement tool taught by Seifert
must only be capable of being ‘removably fixedly engaged’ in order to meet
the limitations of the claim.” (Answer 9.) However, the Examiner does not
provide findings and/or technical reasoning as to what features in Seifert’s
alleged advancement tool afford this capability. For example, the Examiner
does not explain why a relatively flexible strain relief tube (e.g., Seifert’s
tube 118) is capable of being both removably and fixedly engaged with the
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Appeal 2015-001516
Application 13/312,427
proximal end of a catheter when it is adhesively maintained within a shell
structure.
Thus, we do not sustain the Examiner’s rejection of independent
claim 1 under 35 U.S.C. § 102(b) as anticipated by Seifert.
The remaining claims on appeal (i.e., claims 2—15) depend directly or
indirectly from independent claim 1. (Claims App.) The Examiner’s further
findings and determinations with respect to these claims do not compensate
for the above-discussed shortcoming in the rejection of independent claim 1.
(See Final Action 3—9; see also Answer 3—7.) Thus, we do not sustain the
Examiner’s rejection of dependent claims 2, 4—7, and 9—11 under 35 U.S.C.
§ 102(b) as anticipated by Seifert; and we do not sustain the Examiner’s
rejections of dependent claims 3, 8, and 12—15 under 35 U.S.C. § 103(a) as
unpatentable over Seifert alone or in view of Hess, Tockman, or Froberg.
DECISION
We REVERSE the Examiner’s rejections of claims 1—15.
REVERSED
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