Wade Bowe et al.

Patent Trials and Appeals Board

Jul 2, 2020

13333783 - (D) (P.T.A.B. Jul. 2, 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.
13/333,783 12/21/2011 Wade A. Bowe 2005P03355US02 3444
24737 7590 07/02/2020
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus Avenue
Suite 340
Valhalla, NY 10595
EXAMINER
TANNER, JOCELIN C
ART UNIT PAPER NUMBER
3771
NOTIFICATION DATE DELIVERY MODE
07/02/2020 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):
katelyn.mulroy@philips.com
marianne.fox@philips.com
patti.demichele@Philips.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte WADE A. BOWE, PATRICK HUNKINS, BRIAN KAGARISE,
CHRISTOPHER REISER, and KEVIN D. TAYLOR

Appeal 2019-006923
Application 13/333,783
Technology Center 3700
____________

Before JOSEPH A. FISCHETTI, MICHAEL C. ASTORINO, and
BRUCE T. WIEDER, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Examiner’s decision to reject claims 50–57, 65–67, 69, and 70. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as “THE
SPECTRANETICS CORPORATION[, which] is [a] subsidiary
KONINKLIJKE PHILIPS N.V.” Appeal Br. 2.
Appeal 2019-006923
Application 13/333,783

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STATEMENT OF THE CASE
Claimed Subject Matter
Claims 50 and 66 are the independent claims on appeal. Claim 50,
reproduced below, is illustrative of the claimed subject matter.
50. An endocardial lead removing apparatus for removing a
lead implanted within a patient, comprising:
a tubular member having a proximal end, a distal end,
and a central longitudinal axis, wherein said distal end
comprises a fixed cutting surface disposed at an acute angle
relative to said central longitudinal axis;
a blade comprising a pivotable cutting surface, said blade
pivotally connected to said distal end and pivotable about a
pivot axis between a retracted position and an extended
position, in said retracted position said pivotable cutting surface
being disposed on a first side of said central longitudinal axis
and in said extended position said pivotable cutting surface
being disposed entirely on a second side of said central
longitudinal axis, said pivot axis intersecting said central
longitudinal axis; and
a pull wire for pivoting said blade between said retracted
and extended positions, whereupon applying a pulling force to
tension said pull wire pivots said blade from said retracted
position to said extended position, and whereupon pivoting said
blade from said retracted position to said extended position
causes said pivotable cutting surface to pivot toward said
central longitudinal axis and toward said fixed cutting surface
to facilitate severing said lead between said fixed cutting
surface and said pivotable cutting surface.

Rejections
Claims 50–52, 54–57, 65–67, 69, and 70 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Basile et al. (US 5,431,674, iss. July 11, 1995)
(hereinafter “Basile”) and Slater (US 5,241,968, iss. Sept. 7, 1993).
Appeal 2019-006923
Application 13/333,783

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Claim 53 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Basile, Slater, and Dycus et al. (US 2003/0018331 A1, pub. Jan. 23, 2003)
(hereinafter “Dycus”).

ANALYSIS
Independent claims 50 and 66 require “[a]n endocardial lead
removing apparatus” including “a tubular member having . . . a distal end
. . . wherein said distal end comprises a fixed cutting surface” and “a blade
comprising a pivotable cutting surface, said blade pivotally connected to
said distal end and pivotable about a pivot axis between a retracted position
and an extended position.” Appeal Br., Claims App. (emphases added).
The Examiner finds that Basile teaches the foregoing requirements of
claims 50 and 66. Final Act. 4–5. The Examiner finds that tubular member
34 and anvil 64’s first end 68 correspond to the claimed “tubular member.”
Id. (citing Basile col. 5, ll. 9–11). The Examiner finds that the distal end of
these structures includes a fixed cutting surface, namely toothed surface 75.
See id. Toothed surface 75 extends to anvil 64’s distal end 70. Basile
Fig. 5, col. 5, ll. 9–11. The Examiner also finds cutting member 66
corresponds with the claimed “blade” and cutting edge 96 corresponds to the
claimed “pivotable cutting surface.” Final Act. 5 (citing Basile col. 7, ll. 20–
22).
The Examiner explains that Basile’s Figure 5 shows cutting
member 66 in the retracted position when the blade “is pivoted in an open
position in which the cutting member is drawn back or retracted away from
the fixed cutting surface (75).” See Ans. 4. The Examiner explains that
Figure 5 shows cutting member 66 in the extended position when the blade
Appeal 2019-006923
Application 13/333,783

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is in a closed position, i.e., when cutting member 66 “is extended into the
slot (72) of the fixed cutting surface [(75)].” Id. Therefore, the Examiner’s
convention for the retracted and extended positions of Basile’s cutting
member 66 is based on its proximity to toothed surface 75 and elongated slot
72. See id.
The Appellant argues that the Examiner confuses the retracted and
extended positions of Basile’s cutting member. See Appeal Br. 5–7; Reply
Br. 2–4. The Appellant argues that the plain and ordinary meaning of the
term “extend,” when read in light of the Specification, supports a
construction where Basile’s cutting member is in a “retracted position” when
it is depicted by the solid lines in Figure 5 and in an “extended position”
when it is depicted by the dash lines in Figure 5 (or solid lines in Figure 6).
Appeal Br. 6. The Appellant has the better position.
We understand the broadest reasonable interpretation of the claimed
“retracted” and “extended” positions of the “blade,” as understood by one of
ordinary skill in the art upon reading the Specification, by the blade’s
position relative to the tubular member’s distal end. For example, in
Appellant’s Figures 8A–C, Figure 8A shows the “retracted position” of
blade 352 and Figures 8B and 8C show the “extended position” of blade
352. Spec. ¶ 42. In Figure 8A, blade 352 is drawn back (i.e., retracted)
from tubular member 312’s longitudinal distal end 318. In Figures 8B and
8C, blade 352 is stretched (i.e., extended) beyond the tubular member 312’s
longitudinal distal end 318. See Reply Br. 3. The Specification uses the
same convention for “retracted” and “extended” positions in an alternative,
but similar, embodiment. Spec. ¶¶ 22, 41, Figs. 6A–C.
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Application 13/333,783

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Based on this construction of claims 50 and 66, we determine that the
Examiner’s finding that the Basile’s Figure 5 shows cutting member in a
retracted position when the blade is in an open position, which is depicted
using dashed lines, and in an extended position when cutting member is in a
closed position, which is depicted using solid lines, is in error. Rather,
Basile’s Figure 5 shows the cutting member in an extended position when
the blade is in an open position, which is depicted using dashed lines,
because the cutting member is stretched (i.e., extended) beyond distal end 70
of anvil 64. See Basile Fig. 6. And, Basile’s Figure 5 shows the cutting
member in a retracted position when the blade is in a closed position, which
is depicted using solid lines, because it is in a position where it is being
drawn back (i.e., retracted) from distal end 70 of anvil 64.
We note that claims 50 and 66 add further requirements to the
“retracted position” and the “extended position” of the blade by requiring a
specific movement when tension is applied by a pull wire. See Appeal Br.,
Claims App. For example, claim 50 recites:
whereupon applying a pulling force to tension said pull wire
pivots said blade from said retracted position to said extended
position, and whereupon pivoting said blade from said retracted
position to said extended position causes said pivotable cutting
surface to pivot toward said central longitudinal axis and
toward said fixed cutting surface to facilitate severing said lead
between said fixed cutting surface and said pivotable cutting
surface.
Id. (emphasis added). This further requirement does not define the meaning
of either “retracted position” or “extended position.” Rather, the foregoing
recitation further limits the positional relationship of the claimed “blade”
when it moves from the retracted position to the extended position.
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Application 13/333,783

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The Appellant argues that, contrary to the Examiner’s finding,
“Basile’s cutting member (66) pivots from an extended position to a
retracted position when the drive rod (42) allegedly moves rearwardly by a
pulling force.” Appeal Br. 6–7. The Appellant’s argument is persuasive.
Accordingly, “Basile’s cutting member (66), therefore, does not pivot from a
retracted position to an extended position when the drive rod (42) moves
rearwardly by a pulling force,” as required by claims 50 and 66. Id. at 7.
The Examiner fails to rely on Slater or Dycus in any manner which
would remedy the deficient findings discussed above. Therefore, we do not
sustain the Examiner’s rejections of independent claims 50 and 66 and
dependent claims 51, 52, 54–57, 65, 67, 69, and 70 as unpatentable over
Basile and Slater, and dependent claim 53 as unpatentable over Basile,
Slater, and Dycus.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § References/Basis Affirmed Reversed
50–52, 54–
57, 65–67,
69, 70
103(a) Basile, Slater

50–52, 54–
57, 65–67,
69, 70
53 103(a) Basile, Slater, Dycus 53
Overall
Outcome
50–57, 65–
67, 69, 70

REVERSED