Jackson, Brad et al.

Patent Trials and Appeals Board

Nov 16, 2020

14725221 - (D) (P.T.A.B. Nov. 16, 2020)

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.
14/725,221 05/29/2015 Brad Jackson 356080US01/1213-025US01 5538
137834 7590 11/16/2020
MDT_RTGNV/Shumaker & Sieffert P.A.
Attn: IP Legal Department
826 Coal Creek Circle
Louisville, CO 80027
EXAMINER
ROLDAN-RAMOS, CHRISTIAN
ART UNIT PAPER NUMBER
1723
NOTIFICATION DATE DELIVERY MODE
11/16/2020 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):
pairdocketing@ssiplaw.com
rs.patents.two@medtronic.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRAD JACKSON, RICK WILLIAMS,
ANTHONY HUYNH, and JOHN NGUYEN

Appeal 2019-001804
Application 14/725,221
Technology Center 1700
Before JILL D. HILL, LEE L. STEPINA, and ARTHUR M. PESLAK,
Administrative Patent Judges.
HILL, Administrative Patent Judge.
Appeal 2019-001804
Application 14/725,221

2
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–10 and 12–222. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.
BACKGROUND
Sole independent claim 1, reproduced below with certain limitations
italicized for emphasis, represents the claimed invention.
1. A method of forming a catheter, the method comprising:
positioning an inner liner over a first portion, a second
portion, and a third portion of a mandrel, the first portion
having a first diameter, the second portion having a second
diameter less than the first diameter, and the third portion
having a tapering diameter that tapers from the first diameter to
the second diameter, the third portion being located between the
first and second portions;
applying a thermoset adhesive to an outer surface of the
inner liner;
positioning a structural support member over the inner
liner after applying the thermoset adhesive to the outer surface,
wherein an inner diameter of the structural support member,
prior to being positioned over the inner liner, tapers along at
least a portion of a length of the structural support member;

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Medtronic plc of
Dublin, Ireland, which is the ultimate parent entity of the assignee of record,
Covidien LP. Appeal Br. 3.
2 The claims were amended after the final Office Action to cancel claim 11
and add the subject matter of claim 11 to claim 1.
Appeal 2019-001804
Application 14/725,221

3
curing the thermoset adhesive to adhere the structural
support member to the inner liner; and
positioning an outer jacket over the structural support
member after curing the thermoset adhesive.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Samson US 5,702,373 Dec. 30, 1997
Myers US 2010/0049167 A1 Feb. 25, 2010
Dinh US 2013/0253417 A1 Sept. 26, 2013
REJECTIONS3
I. Claims 1–10, 12, 13, 15, 17, 18, 21, 21, and 22 stand rejected
under
35 U.S.C. § 103(a) as unpatentable over Myers and Samson.
II. Claims 14, 16, 19, and 20 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Myers, Samson, and Dinh.
OPINION
Rejection I – Claims 1–10, 12, 13, 15, 17, 18, 21, 21, and 22
Regarding claim 1 as amended to include the subject matter of claim
11, the Examiner finds that Myers discloses a method of forming a catheter,
comprising: positioning an inner liner 30 over first, second, and third
portions of a mandrel 50, the first portion 50A having a first diameter, the

3 A rejection under 35 U.S.C. § 102(a) was withdrawn by the Examiner after
claim 1 was amended to include the subject matter of dependent claim 11.
Ans. 14. We understand the rejection of claims 1–6, 8, 17–18, 21, and 22,
which were previously rejected under 35 U.S.C. § 102(a) as anticipated by
Myers, to now be rejected under 35 U.S.C. § 103(a) as unpatentable over
Myers and Samson. Id. at 15–16; Reply Br. 3–4.
Appeal 2019-001804
Application 14/725,221

4
second portion 50B having a second diameter less than the first diameter,
and the third portion 50C having a diameter tapering from the first diameter
to the second diameter and extending between the first and second mandrel
portions. Final Act. 2–3. The Examiner also finds that Myers discloses
positioning a structural support member 40 over the inner liner 30, an inner
diameter of the structural support member 40, prior to being positioned over
the inner liner 30, tapering along at least a portion 40C of its length. Id. at 3.
The Examiner finds that Myers further discloses positioning an outer jacket
12 over the structural support member 40. Id.
The Examiner then finds that, although Myers does not disclose any
adhesive applied to an outer surface of its inner liner 30, Samson discloses
“an adhesive such as epoxy, a polyamide or a polyester applied to an outer
surface” of its inner liner 214 and a structural support member 206
positioned on top of the inner liner 214 and adhesive “to facilitate bonding.”
Final Act. 8. The Examiner reasons that it would have been obvious to have
utilized adhesive, as disclosed by Samson, “to predictably facilitate bonding
between the layers according to known methods in the catheter art.” Id.
Regarding the claimed adhesive being a thermoset, the Examiner
appears to admit that neither Myers nor Samson disclose a thermoset
adhesive, but contends that (1) “epoxies, polyesters, and polyimides only
come in two varieties. Those that cure at room temperature and those that
require heat,” and that (2) given such a finite number of adhesive
possibilities (two), it “would have been reasonable to try each.” Id. at 8–9
(citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415-421 (2007)). The
Examiner reasons that “the particular nature of the adhesive employed, its
composition, and/or physical properties would have been obvious to one
Appeal 2019-001804
Application 14/725,221

5
having ordinary skill in the art based on considerations of cost, availability,
bond strength, mode of application or environmental preference,” and
selection of a suitable adhesive could “be achieved in the course of routine
experimentation, by reference to standard technical literature (e.g., Adhesive
Age trade magazine, Adhesive Handbook), or through consultation with
industrial or specialty adhesive suppliers (e.g. Dupont, Dura, Loctite, Lord,
etc.).” Id.
The Examiner also reasons that, although Samson fails to teach curing
the adhesive before applying the outer layer, such structure and step would
have been obvious, because “failing to cure the adhesive prior to applying
the jacket would have predictably caused the coil to shift along the inner
layer when applying the jacket and such would have negated the purpose of
securing it in the first place.” Id. at 8–9. The Examiner contends that “a
particular selection of any order of performing process steps is prima facie
obvious in the absence of new or unexpected results. Id. at 9 (citing In re
Burhans, 154 F.2d 690 (CCPA 1946)).
Appellant contends that Samson discloses only that “an adhesive may
be coated onto the inner liner tubing. Polyesters and polyimides, in
particular, are useful as adhesives.” Appeal Br. 8 (citing Samson 10:33–35).
35. Appellant argues that, given Samson’s limited discussion of adhesives,
the Examiner’s reasoning lacks a rational underpinning. Id. More
specifically, Appellant argues that the combination of Myers and Samson
fails to disclose at least positioning an outer jacket over an inner liner and a
support member after curing a thermoset adhesive. Id. Appellant further
contends that the Examiner’s proposed reason for modifying Myers –– “to ...
achieve that specific process or bonding of the structural support member
Appeal 2019-001804
Application 14/725,221

6
[described by Samson ]” is merely an end result of the modification, rather
than a reason to make the modification. Appeal Br. 10 (citing Advisory Act.
3). Indeed, Appellant argues, the Examiner’s reasoning appears to come
only from an improper reliance on Appellant’s own disclosure and hindsight
reasoning. Id.
Appellant argues that the combination of Myers and Samson also fails
to disclose the order of the steps recited in claim 1. Appeal Br. 11.
According to Appellant, for various reasons, the Examiner’s reason why the
claimed sequence of steps would have been obvious lacks a rational basis.
See id. at 11–13. According to Appellant, because “Samson describes using
the adhesive in the context of connecting the outer member 202 and the
inner member 204 to each other, not in the context of connecting the braid
member 206 to the inner member 204,” the prior art’s failure “to cure the
adhesive prior to applying the jacket ... would have negated the purpose of
securing [the coil to the inner liner] in the first place,” such that the
Examiner’s reasoning regarding the claimed order of steps that includes
curing “finds no support in Samson.” Id. at 12. Further, Appellant argues,
“the Examiner failed to provide any objective evidence or technical
reasoning to establish that the proposed modification to Myers’ method . . .
would include curing Samson’s adhesive prior to applying Myers’ outer
jacket 12 over the coil member 40 and the inner member 30.” Id. at 13.
Regarding the Examiner’s reliance on Burhans, Appellant argues that,
unlike the facts of Burhans, “the order of the steps recited in Appellant’s
claim 1 produces new results not described by Myers and Samson,” for
example, applying “a thermoset polymer between member 20 and inner liner
18 may help eliminate an adhesive layer between member 20 and outer
Appeal 2019-001804
Application 14/725,221

7
jacket 24, which may help reduce the wall thickness T . . . of catheter body
12 and, therefore, increase the inner diameter of catheter body 12 for a given
outer diameter.” Appeal Br. 14–15 (quoting Spec. ¶ 230 (emphasis added)).
This increased inner diameter allows “more effective aspiration of thrombi,
for accommodation of a larger range of medical devices or easier
manipulation of medical devices within inner lumen 26, or both.” Id. at 15
(citing Spec. ¶ 232).
The Examiner responds that Myers uses fusion bonding to attach its
layers and Samson uses adhesive bonding or heating to attach its layers,
suggesting that both adhesive and heating are known in the art. Ans. 16.
Thus, the Examiner reasons, “Samson discloses adhesive bonding as a
suitable alternative to fusion bonding,” which supports the Examiner’s
“position of swapping out one known bonding method for another” in
addition to Samson’s teaching of “adhesive bonding as a suitable means for
bonding the inner liner in the catheter art.” Id. at 17. According to the
Examiner, under the exemplary rationales set forth in KSR “(combining prior
art elements according to known methods to yield predictable results, simple
substitution of one known element for another to yield a predictable result,
use of a known technique to improve a similar device in the same way,
etc.”), it would have been obvious to “have swapped out one known catheter
inner liner bonding method (fusion bonding) for another known method
(adhesive bonding),” predictably resulting in “a bonded catheter.” Id.
The Examiner asserts that Samson’s disclosure of an adhesive coating
on its inner layer 204 renders use of the claimed “thermoset adhesive”
obvious. Ans. 18–19. The Examiner then reasons, inter alia, that “a skilled
artisan would appreciate using an adhesive to bond the inner liner and the
Appeal 2019-001804
Application 14/725,221

8
structural support member and select a desired material for the outer jacket
that tack to the other layers upon heating,” making it “obvious to use [an]
adhesive that does not melt upon heating of the outer jacket so that the
already secured structural support member and inner liner do not slide or so
that heating have no effect in the layers configuration.” Id. at 19.
Appellant has the better argument. The only explicit disclosure of a
thermoset adhesive is in Dinh (at ¶ 90), upon which the Examiner does not
rely in the rejection of claim 1. Likewise, only Dinh discloses curing an
adhesive (at ¶ 36, 44). However, even Dinh does not disclose applying
thermoset adhesive on an outer surface of an inner liner, positioning a
structural support member on the thermoset adhesive after application
thereof, and then curing the thermoset adhesive before positioning an outer
jacket on the inner layer and the adhered structural support member.
Samson’s disclosure of using a polyester/polyimide adhesive to adhere its
inner liner 204 and its outer covering 204 (Samson, 10:12–35) is simply not
enough evidence to support the Examiner’s conclusion that it would have
been obvious to apply, specifically, a thermoset polymer to Myers’ inner
liner 30 before positioning its structural support member 40 thereon, and
then cure the thermoset material before positioning Myers’ outer jacket 12
over its structural support member 40. We are simply not persuaded that the
claimed steps not disclosed in Myers and Samson can be rendered obvious
without evidence establishing that Samson’s polyester/polyimide adhesives
include a thermoset adhesive, or that a thermoset adhesive is a known
alternative to polyester/polyimide adhesives. Further lacking is any reason,
having a rational basis other than Appellant’s own disclosure, that a skilled
artisan would have cured the thermoset adhesive after positioning Myers’
Appeal 2019-001804
Application 14/725,221

9
structural support member 40 on its inner liner 30 and before positioning
Myers’ outer jacket 12 thereon. For these reasons, the Examiner’s reasoning
lacks a rational basis, and we do not sustain the rejection of independent
claim 1. Claims 2–13, 15, 17, 18, 21, 21, and 22 depend directly or
indirectly from claim 1 and are similarly rejected over Myers and Samson.
We, therefore, do not sustain the rejection of dependent claims 2–13, 15, 17,
18, 21, 21, and 22.
Rejection II – Claims 14, 16, 19, and 20
Claims 14, 16, 19, and 20 depend from claim 1. Claim 14 recites the
thermoset adhesive comprising a urethane adhesive. Claim 16 recites a
thickness of the thermoset adhesive. Claim 19 recites a marker band, and
claim 20 depends from claim 19 and additionally recites an outer jacket
positioned distal to the marker band and the structural support member.
The Examiner additionally rejects dependent claims 14, 16, 19, and 20
over Dinh. In addition to the findings set forth above for Myers and
Samson, the Examiner finds that “Samson discloses a thermoset adhesive,”4
and Dinh discloses a catheter having an inner liner 202, an outer jacket 206,
and a structural support member 208 positioned therebetween. Final Act.
11. The Examiner also finds that an elastomeric adhesive 210 is applied
between Dinh’s inner liner 202, structural support member 208, and outer
jacket 206. Id. The Examiner further finds that Dinh discloses “the
adhesive can comprise materials such as urethane adhesives (paragraph

4 In contradiction to this statement, the initial rejection of claim 11, which
now applies to amended claim 1, explicitly stated that Samson “fails to teach
the adhesive is specifically a thermoset and fails to specifically teach curing
the adhesive before applying the outer layer.” Final Act. 8.
Appeal 2019-001804
Application 14/725,221

10
[0077]),” and “[b]ased on the teachings of Dinh it would have been obvious
to an ordinary skilled artisan before the effective filing date of the
application that urethane adhesives were suitable in catheter construction . . .
to predictably produce a product suitable for its intended medical use.” Id.
The Examiner has not provided evidence to support the finding that
“Samson discloses a thermoset adhesive” (Final Act. 11). However, Dinh
discloses a thermoset adhesive (at ¶ 90), and curing an adhesive (at ¶ 36,
44). However, the Examiner makes no finding that Dinh discloses or
suggests applying thermoset adhesive on an outer surface of an inner liner,
positioning a structural support member on the thermoset adhesive after
application thereof, and then curing the thermoset adhesive before
positioning an outer jacket on the inner layer and the adhered structural
support member. The Examiner further fails to explain how or why a skilled
artisan would combine Dinh, Myers, and Samson to achieve the claimed
steps of positioning a structural support member on the thermoset adhesive
after application thereof, and then curing the thermoset adhesive before
positioning an outer jacket on the inner layer and the adhered structural
support member. These limitations are recited in claim 1, upon which
claims 14, 16, 19, and 20 depend. For this reason, we do not sustain
Rejection II.
CONCLUSION
We do not sustain the pending obviousness rejections.
Appeal 2019-001804
Application 14/725,221

11
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–13, 15,
17, 18, 21,
21, 22
103(a) Myers, Samson 1–10, 12,
13, 15,
17, 18,
21, 21, 22
14, 16, 19,
20
103(a) Myers, Samson, Dinh 14, 16,
19, 20
Overall
Outcome
1–10, 12–
22

REVERSED