FMD Co., Ltd.

Patent Trials and Appeals Board

Jul 1, 2021

2021002218 (P.T.A.B. Jul. 1, 2021)

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.
15/665,428 08/01/2017 Tsuyoshi TERASHI P17-1007 9032
94133 7590 07/01/2021
Toshiyuki Yokoi
11500 S Eastern Ave #150
Henderson, NV 89052
EXAMINER
MELHUS, BENJAMIN S
ART UNIT PAPER NUMBER
3791
NOTIFICATION DATE DELIVERY MODE
07/01/2021 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):
jimu@yokoi.or.jp
yokoi@yokoi.or.jp
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TSUYOSHI TERASHI and SEIJI SHIMURA
__________

Appeal 2021-002218
Application 15/665,428
Technology Center 3700
____________

Before STEFAN STAICOVICI, JEREMY M. PLENZLER, and
MICHAEL L. WOODS, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE.
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision in the Final Office Action (dated Apr. 29, 2020, hereinafter “Final
Act.”) rejecting claims 1–3.2 We have jurisdiction over this appeal under
35 U.S.C. § 6(b).

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. FMD Co., Ltd. is identified as the real party in interest in
Appellant’s Appeal Brief (filed Sept. 27, 2020, hereinafter “Appeal Br.”).
Appeal Br. 3.
2 Claim 5 is withdrawn. Appeal Br. 3.
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Application 15/665,428

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SUMMARY OF DECISION
We REVERSE.

INVENTION
Appellant’s invention is directed “to a medical guide wire used for
treatment of an occluded lesion of a blood vessel.” See Spec. para. 1.
Claim 1, the sole independent claim, is representative of the claimed
invention and reads as follows:
1. A medical guide wire, comprising:
a core that has a portion tapered in diameter from a
proximal end side to a distal end side; and
an outer coil into which the distal end side of a
core distal end portion of the core is inserted, wherein
a distal joining section is provided on a distal end
portion of the outer coil and a proximal joining section is
provided on a proximal end portion of the outer coil, the
distal joining section being connected with the core distal
end portion,
the outer coil includes a coil inclined portion on
the distal end side,
the distal joining section includes the coil inclined
portion;
the coil inclined portion is flat-shaped having a
first minor axis and a first major axis when the coil
inclined portion is viewed from the distal end side along
a direction extending a center line of the outer coil, and
each one turn of the coil wire of the coil inclined portion
is continuously inclined in one direction along a center
line of the outer coil,
the distal joining section is formed by connecting
the coil inclined portion with a tip of the core distal end
portion by a joint member, the distal joining section
having an elliptic shape having a second minor axis and a
second major axis when the distal joining section is
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viewed from the distal end side along the direction
extending the center line of the outer coil,
a direction of the first minor axis in the flat-shaped
coil inclined portion is same as a direction of the second
minor axis in the distal joining section when the coil
inclined portion and the distal joining section are viewed
from the distal end side along the direction extending the
center line of the outer coil, and
a direction of the first major axis in the flat-shaped
coil inclined portion is same as a direction of the second
major axis in the distal joining section when the coil
inclined portion and the distal joining section are viewed
from the distal end side along the direction extending the
center line of the outer coil.

Appeal Br. 32 (Claims App.).

REJECTIONS

I. The Examiner rejects claims 1 and 2 under 35 U.S.C. § 103 as
being unpatentable over Nishigishi3 and Klint.4
II. The Examiner rejects claim 3 under 35 U.S.C. § 103 as being
unpatentable over Nishigishi, Klint, and Segner.5

ANALYSIS
Rejection I
The Examiner finds Nishigishi discloses medical guide wire 10
including, inter alia, core 14 having a diameter tapered portion 30 extending
from a distal end to a proximal end and outer coil 60 having a coil inclined

3 Nishigishi, US 2012/0041421 Al, published Feb. 16, 2012.
4 Klint, US 2004/0082879 Al, published Apr. 29, 2004.
5 Segner et al., US 2011/0230862 Al, published Sept. 22, 2011.
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portion 64 with a first major axis and a first minor axis, but “fails to teach
the [coil] inclined portion [64] is flat-shaped and each one turn of the coil
wire of the coil inclined portion is continuously inclined in one direction
along a center line of the outer coil.” Final Act. 2–4 (citing Nishigishi paras.
40, 48, 51, 75, Figs. 1, 2). Nonetheless, the Examiner finds that Klint
discloses a guidewire including, inter alia, inclined flat-shaped distal section
408, 410, i.e., tilted/angled turns of coils, having first inclined portion 408 at
distal end and second inclined portion 410, wherein “each one turn of the
coil wire of the coil inclined portion is continuously inclined in one direction
of a longitudinal direction with respect to a center line of the outer coil.” Id.
at 4–5 (citing Klint, paras. 81–88, Figs. 28–32). Thus, the Examiner
concludes that it would have been obvious for a person of ordinary skill in
the art “to modify the inclined portion [64] and joining section [15] of
Nishigishi to incorporate the shape and tilt (i.e., including angles less than
80°) of Klint in order to ensure the coil has proper flexibility and pushability
(i.e., strength).” Id. at 5 (citing Klint, paras. 2–11, 69; Nishigishi, para. 79).
Pointing to various portions of Klint’s disclosure, Appellant contends
that “all of the body portion 402, the taper portion 410 and the distal end 408
[of Klint’s coil] have a circular cross-section although the diameters are
different.” Appeal Br. 13–14 (citing Klint, paras. 13, 54, 62, 79, 81, 87,
Figs. 28–32). In particular, Appellant asserts that “the body portion 402 is a
hollow cylinder having a circular cross section . . . the taper portion 410
continued from the body portion 402 is a hollow cone having a circular cross
section . . . and the distal end 408 continued from the taper portion 410 is a
hollow cylinder.” Id. at 14–15. Thus, according to Appellant, when Klint’s
coil “is viewed from the distal end side along the direction extending the
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center line of the coil, the stranded coil has a circular shape,” whereas the
claimed coil inclined portion 310 is “flat-shaped.” Id. at 14 (emphasis
added), 20.
In response, the Examiner relies on Appellant’s Figure 3 and Klint’s
Figure 30 to illustrate “a coil having a flat-shaped incline portion, having
major and minor axes, and continuously inclined in one direction.”
Examiner’s Answer (dated Nov. 19, 2020, hereinafter “Ans.”) 11.
According to the Examiner, the broadest reasonable interpretation of the
viewpoint of claim 1, namely, “from the distal end side along a direction
extending a center line of the outer coil,” is the view illustrated in
Appellant’s Figure 3 and Klint’s Figure 30. Final Act. 7.
Under the broadest reasonable interpretation standard, claim terms are
given their ordinary and customary meaning as would be understood by one
of ordinary skill in the art in the context of the entire disclosure. In re
Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). However, our
reviewing court guides,
[U]nder the broadest reasonable interpretation, the Board’s
construction “cannot be divorced from the specification and the
record evidence,” In re NTP, Inc., 654 F.3d 1279, 1288 (Fed. Cir.
2011), and “must be consistent with the one that those skilled in
the art would reach,” In re Cortright, 165 F.3d 1353, 1358 (Fed.
Cir. 1999). A construction that is “unreasonably broad” and
which does not “reasonably reflect the plain language and
disclosure” will not pass muster.
Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015)
(quoting In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010)).
For the reasons discussed infra, in light of Appellant’s Specification, we
determine that the Examiner’s rejection, which equates the claimed
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viewpoint of claim 1, namely, “from the distal end side along a direction
extending a center line of the outer coil,” with the front, longitudinal view of
Appellant’s Figure 3, rests upon an unreasonably broad interpretation.
In particular, the Specification describes coil inclined portion 310A as
being “flat-shaped together with the distal joining section 4A,” which in turn
is described as having an elliptic shape with major and a minor axes. Spec.
paras. 33, 47 (emphasis added). The Specification further describes distal
small-diameter body 27, which is arranged inside coil inclined portion 310A,
as being “a flat-shaped rectangle in cross-section having the flat direction
same as the flat direction of the largely inclined portion 310A.” Id.
(emphasis added). As such, in light of Appellant’s Specification, the only
view that would permit a skilled artisan to observe a flat-shaped distal
joining section 4A having an elliptic shape, a flat-shaped inclined coil
portion 310A, and a rectangular cross-section of small-diameter body 27
having the same flat direction as inclined coil portion 310A, is Appellant’s
Figure 4, which represents a “left side view of . . . the distal joining section
of the guide wire in the embodiment shown in Fig. 3.” Id. para. 23.
Therefore, in light of Appellant’s Specification, we construe the viewpoint
limitation of claim 1, namely, “from the distal end side along a direction
extending a center line of the outer coil” to correspond to a “side view” of
the distal joining section shown in the front, longitudinal view of
Appellant’s Figure 3.
For a better understanding, we reproduce below an amended version
of Appellant’s Figure 3:
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The Board’s amended version of Appellant’s Figure 3 illustrates the
“side view” direction corresponding to the viewpoint direction of claim 1,
namely, “from the distal end side along a direction extending a center line of
the outer coil.”
Accordingly, for the foregoing reasons, we construe the limitation in
claim 1 of “the coil inclined portion is flat-shaped . . . when . . . viewed from
the distal end side along a direction extending a center line of the outer coil”
to mean that “the coil inclined portion is flat-shaped” when viewed from a
side of a front, longitudinal view of the distal joining section, which
specifically is in6 “a direction extending a center line of the outer coil.” See
Appeal Br. 32 (Claims App.). Therefore, the Examiner’s finding that Klint’s
Figure 30 illustrates a flat-shaped coil inclined portion, as called for by
independent claim 1 (see Ans. 11), is in error because the coil inclined

6 An ordinary and customary use of the term “along” is “in accordance with :
in.” See Merriam-Webster, http://www.merriam-
webster.com/dictionary/along (last accessed June 23, 2020)
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portion 410 depicted in Figure 30 is not a “side view” of a distal joining
section, as discussed supra, but rather, is a front, longitudinal view of the
distal joining section. Appellant is correct that Klint’s disclosure supports
by a preponderance of the evidence a finding that “the shapes of the stranded
coil (402, 410, 408) are circular when the stranded coil (402, 410, 408) is
viewed from the distal end side along a direction extending a center line of
the coils,” that is, when viewed from a (right) side of the front, longitudinal
view of the distal joining section illustrated in Klint’s Figure 30. Appeal Br.
20 (emphasis added) (citing Klint, para. 81).
Lastly, we note Appellant’s reliance on either the side view of Figure
4 or the combination of plan view of Figure 2 and front view of Figure 3 to
illustrate a “coil inclined portion [that] is flat-shaped having a first minor
axis and a first major axis, as called for by claim 1.” See Appeal Br. 7–8
(Reference drawing 1). In contrast, the Examiner relies only on Klint’s
Figure 30, which constitutes a front view of the distal joining section. See
Ans. 11. Therefore, as Klint does not illustrate other views, such as a plan
view (as per Appellant’s Fig. 2) or a side view of the front view (as per
Appellant’s Figure 4), the Examiner’s determination that coil inclined
portion 410 is “flat-shaped,” as called for by independent claim 1, requires
speculation on the Examiner’s part. See Alza Corp. v. Mylan Laboratories,
Inc., 464 F. 3d 1286, 1290 (Fed. Cir. 2006) (Patentability determinations
“should be based on evidence rather than on mere speculation or
conjecture.”). As speculation cannot form the basis for concluding
obviousness, the Examiner’s legal conclusion of obviousness is not
supported by sufficient factual evidence cannot stand. See In re Warner,
379 F.2d 1011, 1017 (CCPA 1967) (holding that “[t]he legal conclusion of
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obviousness must be supported by facts. Where the legal conclusion is not
supported by facts it cannot stand.”).
In conclusion, for the foregoing reasons, we do not sustain the
rejection under 35 U.S.C. § 103 of independent claim 1, and its dependent
claim 2, as unpatentable over Nishigishi and Klint.

Rejection II
The Examiner’s use of the Segner disclosure does not remedy the
deficiency of the Nishigishi and Klint combination discussed supra. See
Final Act. 5. Therefore, for the same reasons discussed above, we also do
not sustain the rejection under 35 U.S.C. § 103 of claim 3 as unpatentable
over Nishigishi, Klint, and Segner.

CONCLUSION

Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 2 103 Nishigishi, Klint 1, 2
3 103 Nishigishi, Klint,
Segner
3
Overall
Outcome
1–3

REVERSED