Ex Parte Wise et al

Board of Patent Appeals and Interferences

Mar 25, 2011

09864488 (B.P.A.I. Mar. 25, 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.
09/864,488 05/24/2001 Marcia A. Wise 7733.D2 3552
7590 03/25/2011
FAY KAPLUN AND MARCIN, LLP
150 BROADWAY, SUITE 702
NEW YORK, NY 10038
EXAMINER
GRAY, PHILLIP A
ART UNIT PAPER NUMBER
3767
MAIL DATE DELIVERY MODE
03/25/2011 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 MARCIA A. WISE and H. ROBERT MOOREHEAD
____________

Appeal 2009-009933
Application 09/864,488
Technology Center 3700
____________

Before WILLIAM F. PATE, III, JOHN C. KERINS, and MICHAEL W.
O’NEILL, Administrative Patent Judges.

KERINS, Administrative Patent Judge.
Appeal 2009-009933
Application 09/864,488

DECISION ON APPEAL
STATEMENT OF THE CASE
Marcia A. Wise and H. Robert Moorehead (Appellants) seek our
review under 35 U.S.C. § 134 of the Examiner’s non-final rejection1 of
claims 56, 59-66, 68-72 and 74-81. Claims 1-54 were previously canceled,
and claims 55, 57, 58, 67 and 73 have been withdrawn from consideration.
We have jurisdiction under 35 U.S.C. § 6(b) (2002). We AFFIRM.
THE INVENTION
Appellants’ claimed invention is to a system for establishing
intermittent fluid communication with a patient’s bloodstream. Claim 56,
reproduced below, is illustrative of the claimed subject matter:
56. A system for establishing intermittent fluid
communication with a patient’s bloodstream,
comprising:

a catheter including first and second lumens
extending therethrough from a proximal end of the
catheter to a distal end thereof, wherein, when in
an operative position, the distal end of the catheter
resides within a blood vessel of a patient; and

a first sealing balloon positionable within a distal
end of the first lumen, so that, when inflated, the
first balloon seals the distal end of the first lumen
to prevent blood flow thereinto; and

a deflation mechanism for deflating the first
balloon to reopen the first lumen to blood flow

1 Non-final Office Action dated March 9, 2007, reopening prosecution
subsequent to the Appeal Brief filed August 22, 2006. Reference to the
Appeal Brief herein is to the Appeal Brief filed April 23, 2008.

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Application 09/864,488

thereinto while the distal end of the catheter
remains within the blood vessel.

THE REJECTIONS
The Examiner has rejected:
(i) claims 56, 59-66, 68, 69 and 80 under 35 U.S.C. § 102(b) as being
anticipated by Wijay (US 5,158,540, issued October 27, 1992);
(ii) claims 56, 59-66, 68, 69 and 80 under 35 U.S.C. § 102(b) as being
anticipated by Horzewski (US 4,771,777, issued September 20, 1988);
(iii) claims 56, 59-66, 68, 69 and 80 under 35 U.S.C. § 102(b) as
being anticipated by Cannon (US 5,403,274, issued April 4, 1995);
(iv) claims 59-64 under 35 U.S.C. § 102(b) as being anticipated by
Wijay, or, in the alternative, under 35 U.S.C. § 103(a) as being unpatentable
over Wijay in view of Burns (US 5,176,698, issued January 5, 1993); and
(v) claims 70-72, 74-79 and 81 under 35 U.S.C. § 103(a) as being
unpatentable over each of Wijay, Horzewski, Cannon and Calderon (US
4,867,742, issued September 19, 1989).
The Examiner withdrew, on appeal, a rejection of claim 56 under
35 U.S.C. § 112, second paragraph, and a rejection of claims 56, 59-66, 68,
69 and 80 under 35 U.S.C. § 102(b) as being anticipated by Calderon. (Ans.
3).

ISSUES
Did the Examiner err in finding that any of Wijay, Horzewski, or
Cannon discloses all elements of claims 56, 59-66, 68, 69 and 80?
Did the Examiner err in concluding that Wijay and Burns render
obvious the subject matter of claims 59-64?

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Application 09/864,488

Did the Examiner err in concluding that each of Wijay, Horzewski,
Cannon and Calderon renders obvious the subject matter of claims 70-72,
74-79 and 81?
ANALYSIS
Claims 56, 59-66, 68, 69 and 80--Anticipation by Wijay
Appellants argue that claim 56 is not anticipated by Wijay because
Wijay does not disclose “‘a first sealing balloon positionable within a distal
end of the first lumen, so that, when inflated, the first balloon seals the distal
end of the first lumen to prevent blood flow thereinto’”. (Appeal Br. 9,
quoting from claim 56). Appellants contend that balloon 16 is not located
or locatable at a distal end of annular passage 30. (Id.). Appellants
characterize balloon 16 as being “positioned along a length of the annular
passage 30 spaced from a distal end thereof to seal off the annular passage
for distal hemoperfusion.” (Id.).
The Examiner’s position is that balloon 16 seals the distal end of
passage 30, with the distal end being the portion of the passage located
downstream of the 3-3 section line in Figure 1. (Ans. 7). Giving the claim
term “distal end” its broadest reasonable meaning, we do not find error with
the Examiner’s position as to what constitutes the distal end.
Furthermore, to the extent that Appellants would assert that the
claimed distal end must include the distal tip or distal-most extent of the
passage2, we note that claim 56 requires only that the first sealing balloon be
“positionable” within a distal end to prevent blood flow into the lumen. The
suffix “-able” indicates in English that the word so modified “is capable of”.

2 Appellants do not appear to take this position in arguing the anticipation
rejections over Horzewski and Cannon.

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Application 09/864,488

Consequently, “positionable” connotes that the first sealing balloon is
capable of being positioned at the claimed location. Thus, even if Figure 1
of Wijay were regarded as not illustrating balloon 16 within the distal end of
passage 30, it appears that balloon 16 would be capable of being positioned
at the distal-most extent of passage 30, despite Appellants’ protestation to
the contrary. As such, Wijay discloses the claimed feature. In re Collier,
397 F.2d 1003, 1006 (CCPA 1968)(crimpable ferrule or connector member
was not required, structurally, to be crimped).
For the remaining independent claims subject to this ground of
rejection, i.e., claims 59, 64, 65 and 80, Appellants simply quote selected
language from these claims and state that those claims are “allowable for at
least the same reasons as claim 56.” (Appeal Br. 11-12). Dependent claims
60-63, 66, 68 and 69 are not separately argued.
As discussed above, we are not persuaded that claim 56 is allowable
over Wijay. Furthermore, statements which merely point out what a claim
recites are not regarded as arguments for separate patentability of the claim.
37 C.F.R. § 41.37(c)(1)(vii). We will thus sustain the anticipation rejection
in view of Wijay for all of claims 56, 59-66, 68, 69 and 80 subject to the
rejection.
Claims 56, 59-66, 68, 69 and 80--Anticipation by Horzewski
Appellants contend that Horzewski does not anticipate claim 56
because: (1) only one lumen extends from the proximal to distal end of
the catheter, because tubular membrane 77 of Horzewski “does not share
proximal and distal ends with the tubular member 14” and thus does
not extend through the catheter from a proximal to a distal end; and (2)
Horzewski does not teach a balloon sealing the distal end of a first lumen to

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Application 09/864,488

prevent blood flow thereinto, because the Horzewski device allows blood to
flow through its dilatation catheter into a region beyond a stenosis being
treated. (Appeal Br. 12-13).
We are not persuaded by argument (1) above. We see no requirement
in claim 56 that the tubular membrane 77 corresponding to the element
having the second lumen therein must share the same proximal and distal
ends as catheter 12 having the first lumen therein. Both the first and second
lumens within elements 12 and 77 extend from a proximal to a distal end of
catheter 12, as claimed. (Horzewski, Fig. 9).
Argument (2) fails to persuade us of the novelty of claim 56 as well.
While balloon 82 does not prevent blood flow through a lumen in tubular
membrane 77, as noted by Appellants, balloon 82 does prevent blood flow
into the lumen (thereinto, per claim 56) of catheter 12, a point not contested
by Appellants. (Ans. 8, citing Horzewski, col. 7, ll. 19-21; see also
Horzewski, Fig. 9).
For the remaining independent claims subject to this ground of
rejection, i.e., claims 59, 64, 65 and 80, Appellants simply quote selected
language from these claims and state that those claims are “allowable for at
least the same reasons as claim 56.” (Appeal Br. 14-15). Dependent claims
60-63, 66, 68 and 69 are not separately argued.
As discussed above, we are not persuaded that claim 56 is allowable
over Horzewski. Furthermore, statements which merely point out what a
claim recites are not regarded as arguments for separate patentability of the
claim. 37 C.F.R. § 41.37(c)(1)(vii). We will thus sustain the anticipation
rejection in view of Horzewski for all of claims 56, 59-66, 68, 69 and 80
subject to the rejection.

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Application 09/864,488

Claims 56, 59-66, 68, 69 and 80--Anticipation by Cannon
Appellants argue that Cannon does not disclose a balloon sealing the
distal end of a first lumen to prevent blood flow thereinto, because the
Cannon device, even with balloon 44 inflated, an injection port 32 of the
second lumen is always in fluid communication with the blood vessel, via
opening 48 which opens into the first lumen. (Appeal Br. 19). The blood
entering port 32 flows through the balloon lumen past the inflated balloon 44
and out opening 34 at the distal end of the balloon catheter. (Cannon, Fig.
3). This, according to Appellants, means that the balloon 44 does not seal
the distal end of the first lumen to prevent blood flow thereinto. (Appeal Br.
18-19).
Keeping in mind that the first lumen in Cannon is, in the Examiner’s
findings, the opening through catheter 12, Cannon specifically states that,
“the inflation of the trapper balloon 44 effectively seals the distal end of the
guide catheter, as may be seen in FIGS. 2, 3, and 5.” (Cannon, col. 5, ll. 58-
61). As such, the balloon will prevent blood flow into the distal end of the
lumen. That blood may flow into the lumen through opening 48 at a point
inboard of the distal end, and through a port into the second lumen, does not
compel a finding that the inflated balloon does not seal the distal end and
does not prevent blood flow into the sealed-off distal end. We are not
persuaded of error in the Examiner’s findings in this respect.
For the remaining independent claims subject to this ground of
rejection, i.e., claims 59, 64, 65 and 80, Appellants simply quote selected
language from these claims and state that those claims are “allowable for at
least the same reasons as claim 56.” (Appeal Br. 19-21). Dependent claims
60-63, 66, 68 and 69 are not separately argued.

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As discussed above, we are not persuaded that claim 56 is allowable
over Cannon. Furthermore, statements which merely point out what a claim
recites are not regarded as arguments for separate patentability of the claim.
37 C.F.R. § 41.37(c)(1)(vii). We will thus sustain the anticipation rejection
in view of Cannon for all of claims 56, 59-66, 68, 69 and 80 subject to the
rejection.
Claims 59-64--§ 102 or § 103--Wijay or Wijay/Burns
Appellants contend that Burns does not remedy the alleged
deficiencies in Wijay (discussed above in the anticipation rejection in view
of Wijay), and thus Wijay and Burns, taken alone or in combination, do not
show or suggest inflating a first balloon to seal the first lumen at the distal
end thereof to prevent fluid from entering the distal end. (Appeal Br. 21).
As noted above, we do not agree with what Appellants regard as deficiencies
in the Wijay reference, namely that the balloon 16 is Wijay is not inflated
at a distal end of the first lumen. Accordingly, we are not persuaded that
Wijay is deficient in the manner alleged by Appellants.
For the other independent claim subject to this ground of rejection,
i.e., claim 64, Appellants simply quote selected language from this claim
and state that the claim is allowable “at least for the reasons described above
with respect to claim 59.” (Appeal Br. 22). Dependent claims 60-63 are not
separately argued.
We will thus sustain the rejection of claims 59-64 as anticipated by
Wijay, or as rendered obvious by Wijay and Burns.
Claims 70-72, 74-79 and 81--§ 103--Wijay, Horzewski, Cannon, Calderon
Appellants present the same arguments for the patentability of
independent claim 70 as were presented in connection with claim 56 in

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opposition to the anticipation rejections in view of Wijay, Horzewski and
Cannon. (Appeal Br. 22-27). For the same reasons presented above as to
the lack of persuasiveness of those arguments, we will sustain the rejection
of claim 70 as being obvious in view of each of these references. Claims 71,
72, 74-79 and 81 are not separately argued, and thus fall with claim 70.
The rejection of these claims as being obvious in view of Calderon
relies on findings made initially by the Examiner in rejecting other claims,
including claim 56, as being anticipated by Calderon. That anticipation
rejection has been withdrawn, and the instant rejection is thus not supported
by adequate findings in order to conclude that claims 70-72, 74-79 and 81
would have been obvious over Calderon. This rejection will thus not be
sustained.
CONCLUSIONS
The Examiner was not shown to have erred in finding that each of
Wijay, Horzewski, and Cannon discloses all elements of claims 56, 59-66,
68, 69 and 80.
The Examiner was not shown to have erred in concluding that Wijay
and Burns render obvious the subject matter of claims 59-64.
The Examiner was not shown to have erred in concluding that each of
Wijay, Horzewski, and Cannon renders obvious the subject matter of claims
70-72, 74-79 and 81. The Examiner did err in concluding that the subject
matter of claims 70-72, 74-79 and 81 was rendered obvious by Calderon.

DECISION
The decision of the Examiner to reject claims 56, 59-66, 68-72 and
74-81 is AFFIRMED.

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Appeal 2009-009933
Application 09/864,488

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED

JRG

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