Ex Parte Wolfe et al

Patent Trial and Appeal Board

Jul 19, 2016

11136204 (P.T.A.B. Jul. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111136,204 0512412005 Justin Wolfe
34284 7590 07/21/2016
Rutan & Tucker, LLP
611 ANTON BL VD
SUITE 1400
COST A MESA, CA 92626
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
101674.0029P 4903
EXAMINER
ORKIN, ALEXANDER J
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
07/21/2016 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):
patents@rutan.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JUSTIN WOLFE and TRACEY E. KNAPP
Appeal2014-007373
Application 11/136,204
Technology Center 3700
Before MICHAEL L. HOELTER, JILL D. HILL, and
GORDON D. KINDER, Administrative Patent Judges.
KINDER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
6, 10, 13, 16, 17, 29-33, and 37. 1 We have jurisdiction under 35 U.S.C.
§ 6(b ).
We affirm.
1 Claims 10, 13, and 16 have been withdrawn. Final Act. 1; Appeal Br. 3.
Appeal2014-007373
Application 11/136,204
CLAIMED SUBJECT MATTER
The claims are directed to laser-resistant surgical devices. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A laser-resistant surgical device, comprising:
a single refractory metal laser-resistant wire that is
exposed when used in the body during a surgical procedure so
as to be susceptible to a laser beam strike, the laser-resistant
wire compnsmg:
a core consisting of a high-temperature metal that is
highly resistant to thermal shock, the core extending from a
proximal end of the laser resistant surgical device to a distal end
thereof, and
a polymeric jacket surrounding the core.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Badera
Moutafis
Pantages
us 5,040,543
us 5,333,620
us 6,261,246
REJECTIONS
Aug.20, 1991
Aug. 2, 1994
July 17, 2001
The Examiner makes the following rejections:
1. Claims 1--4, 6, 17, 29--32 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Moutafis and Pantages.
2. Claims 5 and 33 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Moutafis and Pantages.
3. Claim 37 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Moutafis, Pantages, and Badera.
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Application 11/136,204
OPfNION
Rejection 1- Claims 1-4, 6, and 17
Obvious over Moutafis and Pantages.
Appellants argue claims 1--4, 6, and 17 as a group. We select claim 1
as representative and claims 2--4, 6, and 17 stand or fall with claim 1. 37
C.F.R. § 41.3 7 ( c )(1 )(iv).
Appellants argue that although Moutafis shows a guide wire with a
metal core that has a tapering tip to enhance flexibility and although
Pantages shows a guidewire with a tip made of tungsten, they do not teach
the claimed subject matter because "neither Moutafis nor Pantages teaches a
tungsten or high temperature metal core extending from the proximal end of
the laser-resistant surgical device to a distal end thereof. Instead, the only
high-temperature metal is disposed in a very distal end of Pantages [sic]
device." Appeal Br. 9. The Appellants make the same arguments in their
Reply Brief, saying that the
Examiner has not established that the "floppy tip" of Pantages
would be suitable for the entire core of Moutafis. As discussed
in the Appeal Brief, the material used for the core in Moutafis
has substantially different material properties from the tungsten
tip described in Pantages. Further, the characteristics of the
floppy tip of Pantages do not satisfy the stated goals and
properties taught by Moutafis for the main body of the guide
wire.
Reply 5.
The Examiner responds that
Pantages does teach that Tungsten is known to be used as an
alternative metal for a guide wire, similar to a given standard
guide wire, and can be used as a given core of guide wire with a
polymeric jacket surrounding the core. It is also to be noted that
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Application 11/136,204
Moutafis teaches the tapering/diameter/size of the guide wire
can be adjusted in order for the given flexibility/stiffness of the
guide wire (col. 3 11. 4 7-49), not necessarily having the material
of the guide wire define the characteristics. Therefore, one of
ordinary skill in the art would use the Tungsten, along with the
known characteristics of Tungsten, as taught by Pantages as an
"other known metal", that is similar to a given guide wire, as the
material of the core of the guide wire of Moutafis for the
purpose of using a known substituted material.
Ans. 3.
We are not persuaded by the Appellants' argument because it does not
address the basis of the rejection. The Examiner finds it obvious to
substitute one material for another, not one guide wire tip for another. Ans.
3. In the sentence immediately following that quoted from Moutafis by
Appellants (Appeal Br. 8) as specifying Moutafis' preferred stainless steel
(Moutafis 3:36-38), Moutafis suggests that any suitable metal can be used:
"The elongated metal core 12 also may be formed of an Inconel alloy, Monel
alloy, alloy of beryllium and copper and other metals and alloys as would be
apparent to those of skill in the art." Moutafis 3: 3 8--41.
Appellants say the Examiner is proposing an oversimplified
substitution of one material for another (Appeal Br. 9) while ignoring the
shape of the materials. While acknowledging that Moutafis creates a
flexible tip by changing the cross-section of his wire, Appellants note only
that Pantages uses a different material (id.), ignoring the fact that Pantages
also has his material take the form of a flexible coil spring. One of skill in
the art would recognize that Pantages achieves the desired "floppy-ness" not
only by material selection but also by making his tip in the form of a flexible
coil spring. Pantages 8:48--49 ("The floppy tip 28 is preferably formed from
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Application 11/136,204
a flexible coil spring .... "). Accordingly, like Moutafis, Pantages teaches
changing the shape of the metal component to vary the mechanical
properties of the finished product. Discussing Moutafis, the Examiner found
that
it is the size of the metal wire that provides the stiffness and/ or
flexibility to the guide wire. Therefore, substituting one known
metal used in the art for another known metal would provide
predictable results (thicker wire providing stiffness and thinner
wire providing flexibility) under KSR International Co. v.
Teleflex, Inc., 550 US 398 ... (2007).
Final Act. 7. Appellants have not addressed the teachings in Moutafis that
various materials may be used and that the material selected should be
shaped so that the resulting guidewire has the desired physical properties.
Accordingly, we have not been apprised of error in the Examiner's findings,
and so affirm the rejections claims 1--4, 6, and 17.
Rejection 1 - Claims 29-32
Obvious over Moutafis and Pantages.
Appellants argue claims 29-32 as a group. App. Br. 10-14. We
select independent claim 29 for review with dependent claims 30-32
standing or falling with claim 29.
Appellants argue, as they did in the previous section that it
would not have been obvious to use tungsten, shown in Pantages only
as a "floppy tip," as the sole material for the guide wire core of
Moutafis. Appeal Br. 10-12. As they did above, Appellants argue that
one skilled in the art at most would put Pantages' floppy tip in place of
the reduced diameter tip of Moutafis. Appeal Br. 12. As before we
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Application 11/136,204
find this argument unpersuasive because Moutafis explicitly suggests
using other materials (Moutafis 3:36-41) and Pantages suggests using
tungsten (Pantages 8:54--56).
Appellants also argue that the material properties of tungsten
and stainless steel or Nitinol are so different that they cannot be
substituted one for another. Appeal Br. 12. As they did before,
Appellants ignore the teachings of both references that the cross
section and shape (e.g. solid cylinder and/or coiled spring) of the wire
is important and variable to obtain the desired performance.
Appellants assert that the desired "strength, pushability, and torsional
strength at the proximal end of the device ... is not achieved by
Tungsten at a reasonable dimension." Appeal Br. 13-14. This last
assertion is made without any supporting evidence and amounts to
speculation.
"In the prosecution of a patent, the initial burden falls on the PTO to
set forth the basis for any rejection, i.e., a prima facie case .... Once the
applicant is so notified, the burden shifts to the applicant to rebut the prima
facie case with evidence and/or argument." Hyatt v. Dudas, 492 F.3d 1365,
1369-70 (Fed. Cir. 2007) (citations omitted). Appellants must support their
position with evidence rather than speculation or conjecture. Alza Corp. v.
Mylan Labs., Inc., 464 F. 3d 1286, 1290 (Fed. Cir. 2006). Here, Appellants
offer no evidence to support their assertion that the strength, pushability, and
dimensional requirements for Moutafis' guidewire cannot be met by
tungsten. Speculation that the modification proposed by the Examiner
cannot achieve the necessary design goals is not sufficient to overcome the
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Application 11/136,204
Examiner's prima facie case, and we find that a preponderance of the
evidence supports the Examiner's conclusion.
Rejection 2- Claims 5 and 33
Obvious in view of Moutafis and Pantages.
Appellants argue claims 5 and 33 together. App. Br. 14--15. We select
claim 5 for review with claim 33 standing or falling with claim 5.
Claim 5 depends from claim 1 further limiting it by requiring that "the
high-temperature metal has a tensile strength of at least 10 kilo pounds per
square inch at temperatures over 2000 °C." The Specification states, "Those
properties render refractory metals highly resistant to breakage due to
thermal shock, such as that created by a laser beam strike." Spec. 7: 11-12.
In rejecting this claim over the combination of Moutafis and Pantages the
Examiner notes that
it is well known that tungsten has the highest tensile strength of
all the elements above 1650°C.
(http://www.tungsten.com/rntstung.htrnl). Therefore, it would
have been obvious to one of ordinary skill in the art at the time
the invention was made to arrive at the recited limitation of the
claims since tungsten already has the highest tensile strength at
a high temperature and that discovering an optimum value of a
result effective variable involves only routine skill in the art. In
re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Final Act. 5.
Appellants challenge the finding that optimization of a variable is a
routine skill that does not lead to patentable invention. Appeal Br. 15.
However, Appellants do not question that tungsten possesses the properties
claimed and that tungsten is suggested by the cited references. As noted
above, the evidence supports the Examiner's conclusion that it would have
been obvious to use tungsten to make the guide wire of Moutafis and that
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such tungsten would have the physical properties recited in claim 5.
Accordingly, we have not been apprised of error, and we sustain the
Examiner's rejection of claim 5. Appellants make the same argument for
claim 33, which we likewise find unpersuasive.
In view of the foregoing we sustain the rejection of claims 5 and 33.
Rejection 3 - Claim 3 7
Obvious in view of Moutafis, Pantages, and Badera.
Independent Claim 29 describes:
A guidewire for use in facilitating insertion of a medical device
into a body vessel, the guidewire comprising:
a laser-resistant wire including:
a single refractory metal core consisting of a high-
temperature metal at an exposed distal section of the guidewire
during a surgical procedure extending from a proximal end of the
guidewire to the exposed distal section, and
a polymeric jacket surrounding the core.
Appeal Br. 19 (Claims App.) Claim 37 depends from claim 29 and adds "a
coiled wire surrounding the core along the wire distal section, and a safety
wire positioned between the core and the coiled wire." Appeal Br. 20
(Claims App.) The Examiner cites Badera as disclosing a guide wire with a
coil 2 and a safety wire 10. In light of these teachings, the Examiner finds
"it would have been obvious to one of ordinary skill in the art at the time the
invention was made to modify the device of Moutafis to include the coil and
safety wire of Badera because it would provide additional flexibility in the
distal end of the guidewire." Final Act. 6.
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Application 11/136,204
Badera discloses a two-part apparatus which includes a coil that
surrounds an axially movable core. Badera 2: 14--17. The coil may have a J-
shape, and extending or retracting the movable core affects the degree of
curvature of the coil. Id. at 2:65---68. Moutafis discloses a guide wire which
may include a flexible coil tip. Moutafis, Figs. 2, 3. Appellants argue that
because Moutafis has a permanent connection between his guide wire and
flexible coil tip in his Figures 2 and 3 embodiments, there is no need for
modification to include a safety wire.
Appellants' argument does not address the combination of teachings
relied on to reject claim 37 and so does not apprise us of examiner error.
The Examiner relied on Figure 1 of Moutafis which shows a guide wire with
no flexible coil. One of ordinary skill in the art would have found it obvious
to substitute the Figure 1 guide wire of Moutafis as modified by Pantages for
the core wire of Badera, as the Examiner found.
We have not been apprised of error and so affirm the rejection of
claim 37.
DECISION
For the above reasons, the Examiner's rejections of claims 1---6, 17,
29-33, and 37 are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv) (2009).
AFFIRMED
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