Ex Parte Venugopalan et al

Patent Trial and Appeal Board

Feb 18, 2016

11262697 (P.T.A.B. Feb. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/262,697 10/31/2005
27777 7590 02/22/2016
BERNARD F PLANTZ
JOHNSON & JOHNSON
ONE JOHNSON & JOHNSON PLAZA
NEW BRUNSWICK, NJ 08933-7003
FIRST NAMED INVENTOR
Ramakrishna Venugopalan
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
COD5114USNP 1077
EXAMINER
SIRMONS, KEVIN C
ART UNIT PAPER NUMBER
3763
NOTIFICATION DATE DELIVERY MODE
02/22/2016 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):
jnjuspatent@corus.jnj.com
lhowd@its.jnj.com
pairjnj@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAMAKRISHNA VENUGOP ALAN and GREG M. SCH OM
Appeal2013-005974
Application 11/262,697 1
Technology Center 3700
Before MICHELLE R. OSINSKI, JAMES J. MAYBERRY, and
MARK A. GEIER, Administrative Patent Judges.
GEIER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from the
Examiner's rejection of claims 1, 3-14, 16-20,2 22, and 23. 3 Br. 2. We
1 According to Appellants, the real party in interest is Codman & Shurtleff,
Inc., a wholly-owned subsidiary of Johnson & Johnson. Br. 1.
2 We note that while both Appellants and the Examiner indicate that claim
15 has been rejected, (see Final Act. l; see also Br. 2), we do not identify a
specific rejection of claim 15.
3 Appellants cancelled claims 2 and 21, and those claims are not before us
in this Appeal. See Br. 2.
Appeal2013-005974
Application 11/262,697
have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM and enter NEW GROUNDS OF REJECTION UNDER
37 C.F.R. § 41.50(b).
THE CLAIMED SUBJECT MATTER
The claimed subject matter relates "to a method of removing a stylette
from a catheter." Spec. i-f 1. Claim 1 is the only independent claim and
recites:
1. A method of removing a hydrophilic coated stylette from
an implantable catheter, said method comprising the steps of:
handling a catheter that is preloaded with a hydrophilic
coated stylette within the catheter;
handling the catheter having an inner surface that is
coated with a hydrophilic material;
placing the hydrophilic coated stylette within a catheter;
wetting the hydrophilic coated stylette; and
removing the hydrophilic coated stylette from the
catheter;
wherein the wetting step occurs after the placing the
hydrophilic coated stylette within a catheter step.
THE REJECTIONS ON APPEAL
The Examiner rejected claims 1, 3, 10-12, and 22-23 4 as unpatentable
under 35 U.S.C. § 103(a) over Fields (US 5,823,961; iss. Oct. 20, 1998),
Calhoun (US 5,606,980; iss. Mar. 4, 1997), and McCorkle (US 4,582,056;
iss. Apr. 15, 1986).
4 Although not mentioned in the heading of the Examiner's rejection, the
Examiner provides a rationale for rejecting claims 22-23 under that heading.
See Final Act. 4. As such, we understand claims 22 and 23 to also be
rejected as unpatentable over Fields, Calhoun, and McCorkle. See Br. 3.
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Application 11/262,697
The Examiner rejected claims 4--9 as unpatentable under 35 U.S.C.
§ 103(a) over Fields, Calhoun, McCorkle, and Kaneko (US 2003/0165647
Al; pub. Sept. 4, 2003).
The Examiner rejected claims 16-18 as unpatentable under 35 U.S.C.
§ 103(a) over Fields, Calhoun, McCorkle, Sugita (US 4,969,890; iss. Nov.
13, 1990), 5 and Kaneko.
The Examiner rejected claim 13 as unpatentable under 35 U.S.C.
§ 103(a) over Fields, Calhoun, McCorkle, and Brand (US 2004/0209801 Al;
pub. Oct. 21, 2004).
The Examiner rejected claim 14 as unpatentable under 35 U.S.C.
§ 103(a) over Fields, Calhoun, McCorkle, and Roorda (US 6,283,949 Bl;
iss. Sept. 4, 2001 ).
ANALYSIS
Rejection of claims 1, 3, and 10-12
Appellants challenge the Examiner's finding that McCorkle "teaches
handling the catheter having an inner surface that is coated with a
hydrophilic material." Final Act. 3. Appellants argue that
McCorkle [] teaches a first dilating catheter 1 with stylets 9A
extending through the entire length of the grasping catheter.
(See, column 7, lines 2-5) McCorkle [] also teaches a second
dilating catheter 3 that is concentrically disposed about the
5 We note that the Examiner does not identify a citation for "Sugita et al." in
the appealed action. In a non-final rejection mailed on January 4, 2008, the
Examiner indicates that Sugita et al. is "US Patent 4969890." Non-Final
Act. mailed Jan. 4, 2008 at 3. We have assumed that this is the correct
citation for the Examiner's reference to Sugita et al. in the appealed action.
See Final Act. 6.
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Appeal2013-005974
Application 11/262,697
Br. 4.
grasping catheter 1. (See, column 6, lines 53-56) McCorkle []
also teaches a third ensheathing catheter 5 that is concentrically
disposed about the dilating catheter 3. (See, column 6, lines 56-
59) The Examiner has correctly pointed out that McCorkle []
only teaches and suggests that the inner channels of catheters 3
and 5 may, if needed, be coated with a hydrophilic compound.
McCorkle [] clearly does not teach or suggest that first grasping
catheter 1 be coated with a hydrophilic compound. Of course,
first grasping catheter 1 is the only catheter disclosed by
McCorkle [] that has stylets 9A extending through the entire
length of the catheter. Thus, McCorkle [] teaches away from, not
suggesting as the Examiner asserts, [] coating the inner surface
of a catheter that has a stylet extending through the entire length
of the catheter.
"A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant." In re Gurley, 27 F.3d 551, 553
(Fed. Cir. 1994). "The degree of teaching away will of course depend on the
particular facts; in general, a reference will teach away if it suggests that the
line of development flowing from the reference's disclosure is unlikely to be
productive of the result sought by the applicant." Id. "A reference does not
teach away, however, if it merely expresses a general preference for an
alternative invention but does not 'criticize, discredit, or otherwise
discourage' investigation into the invention claimed." DePuy Spine, Inc. v.
Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009)
(quoting In re Fulton, 391 F.3d 1195, 1201 (Fed Cir. 2004)).
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Appeal2013-005974
Application 11/262,697
In our view Appellants have not identified a disclosure in McCorkle
that criticizes, discredits, or otherwise discourages the coating of an inner
surface of a catheter having a stylet running through it. See Br. 4.
Mccorkle discloses that "[t]he inner channel surfaces of catheters 3 and 5
are very smooth to allow smooth sliding thereof. If needed, suitable
lubricants, such as hydrophilic compounds, are used to coat the surfaces."
McCorkle 9:63---66. While Appellants are correct that McCorkle only
identifies the two outer catheters as having an inner surface coated with a
hydrophilic material, the mere omission of a reference to the innermost
catheter does not amount to a teach away under the applicable legal
standards. See DePuy, 567 F.3d at 1327.
In addition, we also note that, as suggested by the Examiner, the
application of the hydrophilic material to the innermost catheter would
involve merely the application of the material for the purpose described in
the art. Final Act. 3--4. 6 Moreover, the Examiner correctly notes that
Appellants' argument relies upon a feature not recited in the claims. See
Ans. 9 (noting the claims at issue have "no mention of a stylet extending
through the entire length of the catheter").
For the foregoing reasons, we sustain the Examiner's rejection of
claim 1. As Appellants do not present separate arguments with respect to
6 We note that the Examiner refers to "Kaneko" here, but we understand
that reference to be a typographical error in the context of the rejection. See
Final Act. 3--4.
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Appeal2013-005974
Application 11/262,697
claims 3 and 10-12, we also sustain the Examiner's rejection of those
claims.
Rejection of claims 4-9
Appellants indicate that each of claims 4--9 "stand or fall with
independent claim 1." Br. 5. As such, we sustain the Examiner's rejection
of claims 4--9 for the same reasons stated with respect to claim 1.
Rejection of claims 16-18
Appellants indicate that each of claims 16-18 "stand or fall with
independent claim 1." Br. 5. As such, we sustain the Examiner's rejection
of claims 16-18 for the same reasons stated with respect to claim 1.
Rejection of claim 13
Appellants indicate that claim 13 "stands or falls with independent
claim 1." Br. 5. As such, we sustain the Examiner's rejection of claim 13
for the reasons stated with respect to claim 1.
Rejection of claim 14
Appellants indicate that claim 14 "stands or falls with independent
claim 1." Br. 6. As such, we sustain the Examiner's rejection of claim 14
for the reasons stated with respect to claim 1.
NEW GROUNDS OF REJECTION
As we do not have a rationale for the rejection of claim 15, we express
no opinion regarding the applicability of the Examiner's rejections to claim
15. However, pursuant to our authority under 37 C.F.R. § 41.50(b), we
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Application 11/262,697
reject claim 15 under 35 U.S.C. § 112, fourth paragraph, for failure to
further limit the subject matter of the claims from which it depends.
The fourth paragraph of 35 U.S.C. § 112 requires that "a claim in
dependent form shall contain a reference to a claim previously set forth and
then specify a further limitation of the subject matter claimed." Claim 15
depends from claim 12 and recites "wherein the wetting step occurs after the
placing step." Claim 12 depends from claim 11 and recites: "wherein the
placing the stylette loaded catheter step occurs after the wetting step."
Claim 11 depends from claim 1 and recites "the step of placing the stylette
loaded catheter at a desired target site within the body." Given the subject
matter, we understand the "placing step" recited in claim 15 to be the step of
"placing the hydrophilic coated stylette within a catheter" that claim 1
recites. Importantly, claim 1 already includes a limitation on the order in
which that step occurs, requiring that "the wetting step occurs after the
piacing the hydrophiiic coated styiette within a catheter step." Accordingiy,
we determine that claim 15 provides a limitation redundant to a limitation of
claim 1 and, therefore, does not further limit the claimed subject matter. For
that reason, we reject claim 15. See Pfizer, Inc. v. Ranbaxy Labs. Ltd., 457
F.3d 1284, 1292 (Fed. Cir. 2006).
DECISION
We affirm the Examiner's rejection of claims 1, 3-14, 16-20, 22, and
23 under 35 U.S.C. § 103(a).
We enter NEW GROUNDS OF REJECTION of claim 15 under 35
U.S.C. § 112, fourth paragraph for failure to further limit the subject matter
of the claims from which it depends.
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Application 11/262,697
Regarding the affirmed rejections, 37 C.F.R. § 41.52(a)(l) provides
"Appellant may file a single request for rehearing within two months from
the date of the original decision of the Board."
In addition to affirming the Examiner's rejection of claims 1, 3-14,
16-20, 22, and 23, this decision contains a new ground of rejection pursuant
to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides "NEW GROUND[S]
OF REJECTION pursuant to this paragraph shall not be considered final for
judicial review." 37 C.F.R. § 41.50(b) also provides that Appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must
exercise one of the following two options with respect to the new grounds of
rejection to avoid termination of the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
Examiner, in which event the proceeding will be remanded to the
Examiner . . . .
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record ....
Should Appellant elect to prosecute further before the Examiner
Pur"uant to :n c~ F r< ~ .ct 1 "f11hV l \ 1·n order to p1·ese ...... re tl1e. ri"ght to see1< 0 ,._,•f '---'•-"- •-... ~~ '":!~."" .. \..,~j)\-"-}' ' _l_'i; < l'IL
review under 35 tLS.C. §§ 141 or 145 with respect to the affirmed
rejections, the effective date of the affirmance is deferred until conclusion of
the prosecution before the Exarniner unless, as a mere incident to the limited
prosecution, the affin11ed rejections are overcome.
If AppeUant elects prosecution before the Examiner and this does not
result in aUowance of the application, abandonment or a second appeal, this
case should be returned to the Patent Trial and Appeal Board for final action
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Appeal2013-005974
Application 11/262,697
on the affinned rejections, including any timely request for rehearing
thereof
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R § 1.136(a)(l )(iv).
AFFIRMED; 37 C.F.R. § 41.50(b)
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