Ex Parte Wang et al

Patent Trial and Appeal Board

Jun 19, 2017

12539110 (P.T.A.B. Jun. 19, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
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Alexandria, Virginia 22313-1450
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/539,110 08/11/2009 Dongfang Wang 1936-002 8660
1009 7590 06/21/2017
KING & SCHICKLI, PLLC
800 CORPORATE DRIVE, SUITE 200
LEXINGTON, KY 40503
EXAMINER
BOSQUES, EDELMIRA
ART UNIT PAPER NUMBER
3763
NOTIFICATION DATE DELIVERY MODE
06/21/2017 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DONGFANG WANG and JOSEPH B. ZWISCHENBERGER
Appeal 2015-006574
Application 12/539,110
Technology Center 3700
Before DONALD E. ADAMS, JEFFREY N. FREDMAN,
and TIMOTHY G. MAJORS, Administrative Patent Judges.
PER CURIAM.
DECISION ON REQUEST FOR REHEARING1
Appellants request rehearing of the decision entered April 3, 2017
(“Decision”) affirming-in-part but designating the affirmance as new ground
of rejection of claims 12—14, 16, and 32—34 under 35 U.S.C. § 103(a).
We deny the requested relief.
ANALYSIS
Appellants contend that the Decision incorrectly “characterizes
Maginof s multi-lumen catheter as including first and second distal working
1 Appellants identify “the real parties in interest [as] W-Z Biotech, LLC”
(see Br. 3).
Appeal 2015-006574
Application 12/539,110
orifices or lumens, ‘wherein the length of the second lumen is greater than
the first lumen’” (Req. Reh’g. 1, citing Dec. 9).
Appellants contend that
Maginot teaches that in any embodiment of its catheter systems,
the working catheters (303, 304 in the embodiment of Figure 16)
may be moved from a stowed position within the guide catheters
and advanced distally relative to the guide catheters (308, 310 in
the embodiment of Figure 16) to an operative position exposing
the working catheters and associated distal orifices (340, 336 in
Figure 16) to blood flow.
{Id. at 2, citing Maginot 13:27—33 (emphasis added)). According to
Appellants, “as is clear from [Maginot’s] Figure [16 that] guide lumens 308,
310 share a common wall and are fixed to one another” {id.), and that “the
drawing figure relied on by the Board lacks any scale,” such that “it is
improper to simply assume particular relative or actual dimensions for a
feature of a device as the Board seems to have done” {id. at 3). We are not
persuaded.
We acknowledge Appellants’ contention that Maginot’s guide lumens
308 and 310 may not have different lengths {id. at 2—3). As Appellants
recognize, however, Maginot’s working catheters 303 and 304 move within
the guide lumens 308 and 310 and are capable of reaching different areas or
positions {id. at 2 (Maginot’s working catheters 303 and 304 “may be moved
from a stowed position within the guide catheters and advanced distally
relative to the guide catheters (308, 310 in the embodiment of Figure 16) to
an operative position exposing the working catheters and associated distal
orifices (340, 336 in Figure 16) to blood flow” (emphasis added))). Thus, a
person of ordinary skill in this art would have recognized that the working
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Appeal 2015-006574
Application 12/539,110
catheters 303 and 304 can be advanced through the guide lumens 308 and
310 to different lengths. It is proper to “take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.” KSR
Inti Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). See also id. at 421 (“A
person of ordinary skill is also a person of ordinary creativity, not an
automaton”). In this regard, we find that “where[, as here,] the general
conditions of a claim are disclosed in the prior art, it is not inventive to
discover the optimum or workable ranges by routine experimentation.” In re
Aller, 220 F.2d 454, 456 (CCPA 1955). As the Decision explains,
a person of ordinary skill in this art would have recognized that
the second lumen of Maginot’s bifurcated device is capable of
being positioned in an interior of the pulmonary artery lumen or
the heart left atrium interior when a distal end of the first lumen
is disposed with the heart right atrium
(Dec. 9 (emphasis added).) Therefore, we find that it would have been
obvious to one of ordinary skill in the art to advance the working catheters
303 and 304 to different lengths in order to reach different areas or positions
in the body.
We are not persuaded by Appellants’ contention that “the modified
Maginot/Appling device would no longer fit within a blood vessel, or at least
could no longer be said to have an atraumatic tip as is advanced by the
Board as its reason for obviousness” {id. at 5; see also id. at 6—7). As the
Decision explains,
[notwithstanding Appellants’ contention, and absent evidence to
the contrary, modifying Maginot’s catheter system to include
Appling’s flexible distal end, which comprises a predetermined
curvature, would have been prima facie obvious to a person of
ordinary skill in this art in order to provide the distal end of
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Appeal 2015-006574
Application 12/539,110
Maginot’s catheter “with an atraumatic tip, when placed within
a vessel,” as is disclosed by Appling (see FF 6).
(Dec. 11—12.) Stated differently, at the time of Appellants’ claimed
invention, it would have been prima facie obvious to a person of ordinary
skill in this art to modify Maginot’s catheter system to include Appling’s
flexible distal end. In this regard, “[t]he distal portion of [Appling’s]
catheter has flexibility and a shaped memory” (Dec. 8). Taken as a whole,
Appellants’ fail to provide persuasive evidence or argument to support
Appellants’ contention that placing Appling’s flexible, shaped memory, on
the distal end of Maginot’s working catheters would render Maginot’s
device “unsatisfactory for its intended purpose” (Req. Reh’g 5). See In re
Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (“[Attorney argument [is] not
the kind of factual evidence that is required to rebut a prima facie case of
obviousness”).
We are not persuaded by Appellants’ contention that
Maginot never even suggests any need for a split-tip catheter
embodiment configured wherein one tip could be placed in a
blood vessel and the other tip could be placed in another blood
vessel branching from the first blood vessel, much less in
separate body lumens such as different heart chambers or arteries
as required by the Appellant’s claims.
(Req. Reh’g. 7.) As the Decision explains,
a person of ordinary skill in this art would have recognized that
the first lumen of Maginot’s device is capable of removing a
fluid from the interior of a human heart right atrium and the
second lumen is capable of delivering fluid to an interior of a
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Appeal 2015-006574
Application 12/539,110
human pulmonary artery lumen or an interior of a human heart
left atrium (see FF 1—3; cf. Appellants’ claim 12).
(Dec. 9 (emphasis added).) In this regard, we note that Appellants’
independent claims 12 and 32 are drawn to a dual lumen cannula, not a
method of using a dual lumen cannula. See Hewlett-Packard Co. v. Bausch
&Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990) (“[Apparatus claims
cover what a device is, not what a device does”).
In summary, Appellants have pointed to no issue of fact or law that
the Panel overlooked or misunderstood. Therefore, the Request for
Rehearing is denied.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
REHEARING DENIED
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