Ex Parte Ward et al

Patent Trial and Appeal Board

Dec 9, 2014

10899807 (P.T.A.B. Dec. 9, 2014)

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.
10/899,807 07/27/2004 John H. Ward 10922/92 6997
757 7590 12/09/2014
BGL
P.O. BOX 10395
CHICAGO, IL 60610
EXAMINER
SIMPSON, SARAH A
ART UNIT PAPER NUMBER
3731
MAIL DATE DELIVERY MODE
12/09/2014 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOHN H. WARD, MARVIN O. ANDREWS, and
FRANK J. FISCHER, JR.
____________

Appeal 2012-007004
Application 10/899,8071
Technology Center 3700
____________

Before DEMETRA J. MILLS, ULRIKE W. JENKS, and
ELIZABETH A. LaVIER, Administrative Patent Judges.

LaVIER, Administrative Patent Judge.

DECISION ON APPEAL

The Examiner finally rejected claims 13–18, 20, 32–34, and 39.2
Appellants seek reversal of the Examiner’s rejections, pursuant to 35 U.S.C.
§ 134(a). We have jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we AFFIRM.

1 According to Appellants, the real parties in interest are Cook Medical
Technologies, LLC and Vance Product Inc., d/b/a Cook Urological, Inc.
(Appeal Br. 2.)
2 The Examiner also finally rejected claims 1, 2, 4–12, and 36–38. (Final
Office Action, Feb. 1, 2011.) These claims were subsequently cancelled by
Appellants, and are not pending in this appeal. (Amended Appeal Br. 2.)
Appeal 2012-007004
Application 10/899,807

2
BACKGROUND
The Specification generally describes stent delivery systems. (Spec.
¶ 1.) Claim 13 is representative:
13. A positioning device, comprising:
a tapered outer sheath;
an inner sheath within the outer sheath;
a positioner having a proximal end and a distal end;
a connector selectively operatively engaged with an outer
surface of the outer sheath, each of the inner sheath, outer
sheath, and positioner passing through the connector;
a handle with a stationary portion fixed to the positioner and a
longitudinally pivoting portion selectively operatively engaged
with the outer sheath by way of the connector;
wherein the connector comprises a gripping portion that
selectively operatively engages the outer surface of the outer
sheath during pivoting motion of the handle in a first direction
and urges the outer sheath to translate with the connector with
respect to the positioner in a second direction generally
opposite the first direction, and the gripping portion is
configured to release the outer sheath with pivoting motion of
the handle generally in the second direction causing the
connector to translate with respect to the outer sheath.
(Amended Appeal Br. 4 (Claims App.) (emphases added).)
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 13, 14, 16–18, 20, 32, 33, and 39 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Randall3 in view of Lenker.4 (Ans. 5.)

3 U.S. Patent No. US 7,122,050 B2, issued Oct. 17, 2006.
4 U.S. Patent No. 5,683,451, issued Nov. 4, 1997.
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Appeal 2012-007004
Application 10/899,807

4
catheter (11) includes an outer sheath (10), a tube spring (12), and an inner
tube (14). (Id. at col. 3, ll. 45–48; col. 4, l. 57.) The proximal end of the
catheter (11) is connected to a delivery system. (Id. at col. 3, ll. 41–42.)
Figure 2 shows a cross-sectional view of a stent delivery system
incorporating a moving rail mechanism. (Id. at col. 2, ll. 63–65.) The
mechanism is generally a “V-shaped lever device” with a housing shell (30),
from which the outer sheath (10) of the catheter extends. (Id. at col. 5, ll. 7–
10.) The outer sheath (10) is secured to a pawl/sheath hub (32). (Id. at col.
5, ll. 10–11.) A spring pawl (34), which is attached to the sheath hub (32),
engages a ratchet (36) that is integrated into the housing shell (30), thus
constraining the movement of the sheath hub (32) within the housing shell
(30) to a rightward direction (as depicted in Figure 2). (Id. at col. 5, ll. 11–
15.) A ratchet rail (42) is reciprocal back and forth within the housing shell
(30), and includes ratchet teeth (44) that engage the spring pawl (34) and a
rack gear (46) that engages a pinion (48) that is rotated by means of a lever
handle (50). (Id. at col. 5, ll. 18–23.)
The Examiner finds that Randall discloses all of the limitations of
claim 13, except for the outer sheath being tapered and comprising at least
one slit. (Ans. 6.) For this missing limitation, the Examiner turns to the
disclosure of a positioning device with an outer sheath having a tapered end
with slits in Lenker, and concludes that it would have been obvious to one of
ordinary skill in the art to modify Randall’s device with the tapered outer
sheath with slits from Lenker. (See id.)
Of particular relevance to the arguments presented on appeal, the
Examiner finds that Randall’s sheath hub (32) and ratchet rail (42)
correspond to the “connector” recited in claim 13. (Ans. 5.) The Examiner
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Application 10/899,807

5
further finds that Randall’s outer sheath (10) corresponds to the recited
“outer sheath,” that Randall’s inner tube (14) corresponds to the recited
“inner sheath,” and that Randall’s tube spring (12) corresponds to the recited
“positioner.” (Id.) The Examiner interprets the connector as having a
gripping portion (42) to engage with an outer surface of the outer sheath,
with each of the inner sheath, outer sheath, and positioner passing through
the connector. (Id. (citing Randall Figs. 1–2, 17–20).) Further with respect
to the gripping portion (42) of the connector of Randall, the Examiner finds:
[G]ripping portion (42) . . . selectively operatively engages the
outer surface of the outer sheath during pivoting motion of the
handle in a first direction and urges the outer sheath to translate
with the connector with respect to the positioner in a second
direction generally opposite the first direction (figs. 4, 3), and
the gripping portion is configured to release the outer sheath
with pivoting motion of the handle generally in the second
direction causing the connector to translate with respect to the
outer sheath (column 5, lines 29-44; wherein the rail 42 is a part
of the connector and it translates with respect to the outer
sheath), wherein the pivoting portion and the fixed portion of
the handle are biased in the second direction by a spring (54),
wherein the connector further comprises fingers (34) for
securing the outer sheath (fig. 2).
(Ans. 5–6.)
DISCUSSION
A. Rejection 1
Appellants offer specific arguments only with respect to claim 13, and
argue the other rejected claims by virtue of their dependency on claim 13.
(See Appeal Br. 3–6.) Accordingly, we review this rejection by considering
claim 13 alone; claims 14, 16–18, 20, 32, 33, and 39 rise or fall with claim
13. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
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Application 10/899,807

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Appellants make two arguments regarding claim 13 in the Appeal
Brief.7 First, Appellants argue that the sheath hub (32) of Randall is fixed to
the outer sheath (10), and thus does not satisfy claim 13’s requirement that
“the outer sheath translates with the connector with respect to the positioner
as the pivoting portion of the handle is translated in a first direction, and the
connector translates with respect to the outer sheath as the pivoting portion
is translated in the second direction.” (Appeal Br. 5.) Second, Appellants
argue that modifying the sheath hub (32) of Randall to allow it to translate
with respect to the outer sheath (10) would not have been obvious to one of
ordinary skill in the art because this modification would render Randall’s
device inoperative. (Id.) As Lenker does not cure these alleged deficiencies
of Randall, Appellants argue claim 13 was improperly rejected. (Id.)
The Examiner responds that Appellants’ argument fails to account for
the Examiner’s correspondence of the sheath hub (32) and the rail (42) of

7 In the Reply Brief, Appellants present arguments regarding Examiner’s
inclusion of the rail (42) of Randall as part of the claimed “connector,” but
these arguments were not introduced in the Appeal Brief. (Compare Reply
Br. 2–4 with Appeal Br. 3–5.) A new argument not timely presented in the
Appeal Brief will not be considered when filed in a Reply Brief, absent a
showing of good cause explaining why the argument could not have been
presented in the Appeal Brief. See Ex parte Borden, 93 USPQ2d 1473, 1477
(BPAI 2010) (informative). As the Examiner’s Answer is consistent with
the Final Rejection of February 1, 2011 in relying on both the sheath hub
(32) and the rail (42) of Randall as corresponding to the claimed “connector”
in the Final Rejection (compare Ans. 5 with Final Rejection 7), we discern
no reason why Appellants’ arguments regarding the rail could not have been
presented in the Appeal Brief, and Appellants offer none. When an
argument is new in the Reply Brief, the Examiner has no opportunity to
respond. As Appellants offer no showing of good cause for presenting the
new arguments in the Reply Brief, these arguments are improper. Thus, we
do not consider them further.
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Application 10/899,807

7
Randall to the “connector” of claim 13, which the Examiner finds can
include “many portions or sections. . . .” (Ans. 8.) The Examiner
acknowledges that the sheath hub (32) of Randall may be fixed. (Id. at 9.)
But, the Examiner explains that the rail (42) is not fixed, and instead
“selectively operatively engages/grips the outer surface of the outer sheath
10 via hub 32 during pivoting motion of the handle,” thus enabling the
connector to translate with respect to the outer sheath, as recited in claim 13.
(Id. at 9.)
We agree with the Examiner. Claim 13 does not limit the “connector”
to a unitary structure; indeed, after introducing the connector, claim 13
further recites attributes of “a gripping portion” of the connector. (Claims
App.) The Specification also appears to contemplate a connector with
multiple parts or components. (See Spec. ¶¶ 24–25; Fig. 2.) Accordingly,
we see no error in the Examiner’s findings that the “connector” of claim 13
can include multiple parts, within the broadest reasonable interpretation of
the term, and that the sheath hub (32) and rail (42) described in Randall,
when taken together, can comprise the recited “connector.”
Having considered all of Appellants’ arguments that are properly
before us, and having found them to be unpersuasive, we affirm the
Examiner’s rejection of claim 13. Claims 14, 16–18, 20, 32, 33, and 39 fall
with claim 13.
B. Rejections 2 and 3
For Rejections 2 and 3, respectively of claims 15 and 34, Appellants
refer back to their arguments regarding claim 13, from which claims 15 and
34 depend. (See Appeal Br. 5–6.) Further, Appellants assert, without
offering any analysis, that the references unique to Rejections 2 and 3 do not
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Application 10/899,807

8
disclose the limitations of the rejected claims. (See id. at 6 (e.g., “Derus
does not disclose the limitations of dependent claim 15 missing from
Randall/Lenker” (regarding Rejection 2)).) These statements do not point
out with particularity or explain why the limitations of claims 15 and 34 are
separately patentable. See 37 C.F.R. § 41.37(c)(1)(vii) (2011); see also In re
Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[T]he Board reasonably
interpreted Rule 41.37 to require more substantive arguments in an appeal
brief than a mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art.”). Accordingly,
we need not address claims 15 and 34 separately from claim 13. Because we
affirm the Examiner’s rejection of claim 13, we also affirm the Examiner’s
rejections of claims 15 and 34.

CONCLUSION
The Examiner’s final rejections of claims 13–18, 20, 32–34, and 39
are affirmed for the reasons of record. No time period for taking any
subsequent action in connection with this appeal may be extended under 37
C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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