Ex Parte Vrba

Board of Patent Appeals and Interferences

Sep 8, 2011

11608619 (B.P.A.I. Sep. 8, 2011)

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.
11/608,619 12/08/2006 Anthony C. Vrba 1001.1610102 9660
11050 7590 09/09/2011
SEAGER, TUFTE & WICKHEM, LLC
1221 Nicollet Avenue
Suite 800
Minneapolis, MN 55403
EXAMINER
HOEKSTRA, JEFFREY GERBEN
ART UNIT PAPER NUMBER
3736
MAIL DATE DELIVERY MODE
09/09/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ANTHONY C. VRBA
____________________

Appeal 2009-010846
Application 11/608,619
Technology Center 3700
____________________

Before JENNIFER D. BAHR, STEFAN STAICOVICI, and
FRED A. SILVERBERG, Administrative Patent Judges.

SILVERBERG, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-010846
Application 11/608,619

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STATEMENT OF THE CASE
Anthony C. Vrba (Appellant) seeks our review under 35 U.S.C. § 134
of the final rejection of claims 2-15, 17-25 and 27. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.

THE INVENTION
Appellant’s claimed invention is directed to intravascular guidewires
having a proximal section formed of a first material, and a distal section
formed of a second material different from the first material (Spec. 2:2-10).
Claim 2, reproduced below, is representative of the subject matter on
appeal.
2. A guidewire, comprising:
an elongate shaft including a proximal section having a
distal end, a distal section having a proximal end, and a
transition section, the proximal section comprising a first
material, the distal section comprising a second material
different from the first material, the transition section includes
the distal end of the proximal section abutting the proximal end
of the distal section;
a coupling member attached adjacent to the transition
section, said coupling member configured to secure the
proximal section to the distal section; and
further comprising a distal stop disposed about a portion
of said distal section.

THE REJECTIONS
The following rejections by the Examiner are before us for review:
1. Claims 2, 4-9, 11, 12, 14, 15, 17, 19-22, 24 and 25 are rejected under
35 U.S.C. § 102(b) as being anticipated by Jansen (US 5,365,943,
issued Nov. 22, 1994).
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Application 11/608,619

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2. Claims 3, 18 and 27 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Jansen in view of Cassell (US 5,827,324, issued
Oct. 27, 1998).
3. Claims 13 and 23 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Jansen in view of Eder (US 6,488,637 B1, issued
Dec. 3, 2002).
4. Claim 10 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Jansen.

ISSUE
The issue before us is whether the Examiner erred in finding that
Jansen describes “a distal stop disposed about a portion of said distal
section,” as called for in independent claims 2, 17 and 27 (Reply Br. 3).

ANALYSIS
Rejection of claims 2, 4-9, 11, 12, 14, 15, 17, 19-22, 24 and 25 under 35
U.S.C. § 102(b) over Jansen
Appellant contends that Jansen does not describe “a distal stop
disposed about a portion of said distal section,” as called for in independent
claims 2 and 17 (Reply Br. 3).
The Examiner found that Jansen describes a distal section 58, 66, 68
and a distal stop 78 disposed about a portion of the distal section (Ans. 4).
The Examiner (1) proffered that the term “about” may be reasonably defined
as something “near” or “close to” and (2) found that that in Jansen, Figure 3
shows distal stop 78 (incorrectly denoted by numeral 74) as being near and
close to a portion of the distal section (Ans. 10).
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Application 11/608,619

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We agree with the Examiner that in Figure 3 of Jansen, tip bead head
78 has been incorrectly denoted by numeral 74.1
Independent claims 2 and 17 call for, inter alia, “a distal stop disposed
about a portion of said distal section.”
When construing claim terminology in the United States Patent and
Trademark Office, claims are to be given their broadest reasonable
interpretation consistent with the specification, reading claim language in
light of the specification as it would be interpreted by one of ordinary skill in
the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004).
Appellant’s Specification does not assign or suggest a particular
definition to the term “about” or otherwise indicate that this term is used in a
manner other than its ordinary and customary meaning. Therefore, in
determining the ordinary and customary meaning of the claim term “about”
as viewed by a person of ordinary skill in the art, it is appropriate to consult
a general dictionary definition of the word “about” for guidance. Comaper
Corp. v. Antec, Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010).
Appellant’s Specification describes that (1) “the proximal end 42 of
the wire coil 40 acts as a distal stop” (Spec. 7:16-17) (emphasis bolded), and
(2) “[g]uidewire 110 further includes a distal stop 166 disposed about a
portion of the distal section 114” (Spec. 8:20-21) (emphasis bolded).
Appellant’s Drawings show in Figures 1 and 2 proximal end 42 and
distal stop 166 as being formed around distal section 14, 114.

1 On page 4, lines 9-12 of the Brief filed February 24, 2009, Appellant also
noted the incorrect denotation.
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Application 11/608,619

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Accordingly, we find the Examiner’s definition of the word “about” to
be unreasonably broad, as we find that the ordinary meaning of the word
“about,” consistent with Appellant’s Specification, includes “around the
outside.”2
In Jansen, element 78 defines a tip bead head (col. 8, ll. 20-21).
In Jansen, Figure 3 shows tip bead head 78 (incorrectly denoted as 74)
as being spaced from the distal section, which the Examiner found to be
elements 58, 66, 68. Thus, Jansen’s tip bead head 78 is not formed around,
that is, disposed about distal section 58, 66, 68, as called for in independent
claims 2, 17 and 27.
We reverse the rejection of independent claims 2 and 17, and
dependent claims 4-9, 11, 12, 14, 15, 19-22, 24 and 25.

Rejections under 35 U.S.C. § 103(a) of claims 3, 18 and 27 over Jansen and
Cassell; claims 13 and 23 over Jansen and Eder; and claim 10 over Jansen.
The Examiner’s conclusion of obviousness has not relied on Cassell
(cls. 3, 18 and 27) (Ans. 5) or Eder (cls. 13 and 23) (Ans. 6) for any teaching
that would remedy the deficiency in Jansen (1) as to independent claims 2
and 17, from which claims 3, 13, 18 and 23 depend , and (2) also as to
independent claim 27.
The Examiner’s conclusion of obviousness based on Jansen alone (cl.
10) (Ans. 6-7) does not remedy the deficiency in Jansen.
Thus, for the same reasons set forth supra regarding independent
claims 2 and 17; we reverse the rejection of claims 3, 10, 13, 18, 23 and 27.

2 MERRIAM-WEBSTER’S COLLEGIATE DICTIONARY (10th ed. 1996)
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Application 11/608,619

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CONCLUSION
The Examiner has erred in finding that Jansen describes “a distal stop
disposed about a portion of said distal section,” as called for in independent
claims 2, 17 and 27.
DECISION
The decision of the Examiner to reject claims 2-15, 17-25 and 27 is
reversed.

REVERSED

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