Ex parte VODA

Board of Patent Appeals and Interferences

Sep 17, 1999

08558006 (B.P.A.I. Sep. 17, 1999)

Application for patent filed November 13, 1995. 1
According to appellant, this application is a continuation of
Application No. 08/190,149 filed February 4, 1994, now
abandoned; which is a national stage application of
PCT/US93/04031 filed April 29, 1993; which is a continuation-
in-part of Application No. 07/877,288 filed May 1, 1991, now
U.S. Patent No. 5,306,263 issued April 26, 1994.
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was
not written for publication in a law journal and (2) is not
binding precedent of the Board.
Paper No. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JAN VODA
____________
Appeal No. 1998-2830
Application No. 08/558,0061
____________
ON BRIEF
____________
Before ABRAMS, McQUADE and GONZALES, Administrative Patent
Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 1998-2830
Application No. 08/558,006
2
This is an appeal from the decision of the examiner
finally rejecting claims 11-16, which constitute all of the
claims remaining of record in the application.
The appellant's invention is directed to a catheter. The
subject matter before us on appeal is illustrated by reference
to claim 11, which reads as follows:
11. A catheter comprising:
an elongate catheter body having a proximal end and a
distal end and having a central lumen from the proximal end to
the distal end adapted to slidably receive a therapeutic
catheter;
a soft tip fixedly attached to the elongate catheter body
adapted to removably lodge in the ostium of the right coronary
artery; and
the elongate catheter body being bendably formed near the
distal end to impinge against the opposite wall of the aorta
along a line wherein the line is proximal of the ostium of the
coronary artery.
The reference relied upon by the examiner to support the
final rejection is:
European Patent Application 0 277 366 A1 Aug. 10, 1988
(EPO ‘366)
Appeal No. 1998-2830
Application No. 08/558,006
3
Claims 11-16 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by EPO ‘366.
The rejection is explained in the Examiner's Answer, and
the opposing viewpoints of the appellant are set forth in the
Brief.
We reverse the rejection and remand the application to
the examiner, as explained below.
OPINION
Anticipation is established only when a single prior art
reference discloses, either expressly or under the principles
of inherency, each and every element of the claimed invention.
See, for example, In re Paulsen, 30 F.3d 1475, 1480-1481, 31
USPQ2d 1671, 1675 (Fed. Cir. 1994).
Independent claim 11 requires, inter alia, that there be
an elongate catheter body to which is attached a tip “adapted
to removably lodge in the ostium of the right coronary
artery,” with the catheter body being bendably formed near the
distal end “to impinge against the opposite wall of the aorta
along a line . . . proximal of the ostium of the [right]
Appeal No. 1998-2830
Application No. 08/558,006
4
coronary artery.” Contrary to the view of the examiner, it is
our opinion that this recitation constitutes functional
limitations upon the claimed structure that cannot be ignored
as being directed to intended use.
EPO ‘366 discloses a catheter formed into “the
conventional J-shape” (column 3, line 52). Insofar as the
coronary arteries are concerned, the disclosed shape would
appear to limit the use of this catheter to removable lodging
in the left coronary artery only, and we find no explanation
in the disclosure that would indicate otherwise. This being
the case, the reference does not anticipate the structure
recited in claim 11, which requires that the catheter be
capable of lodging in the ostium of the right coronary artery
while impinging against the opposite wall of the aorta.
The rejection therefore cannot be sustained.
REMAND TO THE EXAMINER
Beginning on page 5 of the specification, the appellant
discusses the “Arani-type Double Loop” guide catheter, which
is shown in the drawings in Figures 2A, 2B and 2C. As is
evident from Figure 2B, the Arani catheter is adapted to
Appeal No. 1998-2830
Application No. 08/558,006
5
removably lodge in the ostium of the right coronary artery
while impinging against the opposite wall of the aorta. From
our perspective, this reference is relevant to the
patentability of independent claim 11 and at least some of the
other claims on appeal.
Therefore, pursuant to Section 1211 of the Manual of
Patent Examining Procedure, this application is remanded to
the examiner for consideration of the Arani catheter as
disclosed in the appellant’s specification and other prior art
that might be considered relevant in addition thereto.
Appeal No. 1998-2830
Application No. 08/558,006
6
SUMMARY
The rejection is not sustained.
The decision of the examiner is reversed.
The application is remanded to the examiner.
It is important that the Board of Patent Appeals and
Interferences be informed promptly of any action affecting the
appeal.
REVERSED AND REMANDED
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOHN P. McQUADE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOHN F. GONZALES )
Administrative Patent Judge )
bae
Appeal No. 1998-2830
Application No. 08/558,006
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Glenn M. Seager
Crompton, Seager & Tufte, LLC
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