Cartier, William A. et al.

Patent Trials and Appeals Board

Sep 12, 2019

14708355 - (D) (P.T.A.B. Sep. 12, 2019)

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.
14/708,355 05/11/2015 William A Cartier P-102C CON 1 6874
64508 7590 09/12/2019
ANGIODYNAMICS, INC.
14 PLAZA DRIVE
LATHAM, NY 12110
EXAMINER
TANNER, JOCELIN C
ART UNIT PAPER NUMBER
3771
NOTIFICATION DATE DELIVERY MODE
09/12/2019 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):
pflora@angiodynamics.com
tking@angiodynamics.com
uspto@angiodynamics.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte WILLIAM A. CARTIER, WILLIAM C. HAMILTON JR.,
JAMES J. MITCHELL, and DANIEL T. LAGOE
____________

Appeal 2019-001973
Application 14/708,355
Technology Center 3700
_______________

Before EDWARD A. BROWN, LISA M. GUIJT, and
BRENT M. DOUGAL, Administrative Patent Judges.

GUIJT, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE

Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 19, 22–25, and 27–36.2 We have jurisdiction under 35
U.S.C. § 6(b).
We REVERSE.

1 AngioDynamics, Inc. (“Appellant”), the applicant as provided for under
37 C.F.R. § 1.46, is also identified as the real party in interest. Br. 3.
2 Appeal is taken from the Final Office Action dated Oct. 19, 2017.
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CLAIMED SUBJECT MATTER
Claim 19, reproduced below as the sole independent claim on appeal,
is also exemplary of the subject matter on appeal. The Appeal Brief omitted
the disputed claim limitation, which is inserted and emphasized below, from
the Claims Appendix; this disputed limitation was added by amendment
with the July 7, 2016 filing of a Request for Continued Examination. See
Br. 14 (Claims App.).
19. A system for removing material from a hollow
anatomical structure, comprising:
an outer shaft having a distal end and a proximal end;
an inner shaft having a distal end and a proximal end, the
inner shaft being movable independent of the outer shaft;
a macerator element comprising a tubular extension and a
shearing member, the tubular extension being affixed to a distal
most end of the inner shaft and having at least one opening along
a wall of the tubular extension, the shearing member comprising
at least one opening along a wall of the shearing member, the
shearing member being coaxially disposed and freely rotatable
within the tubular extension, the opening of the tubular extension
may align with the opening of the shearing member and create a
path for fluid communication therethrough, [the macerator
element able to be advanced and/or retracted while the outer
shaft remains stationary];
a drive shaft coaxially disposed within a lumen of the inner
shaft, the drive shaft is attached to the shearing member, the drive
shaft capable of rotating the shearing member at a rate of up to
10,000 RPMs;
an aspiration force applied to an aspiration lumen situated
between an inner wall of the inner shaft and an outer wall of the
drive shaft, when the tubular extension opening and the shearing
member opening are aligned so that the aspiration force causes
the fluid to move from the outside of the macerator element to
within the aspiration lumen for removal.

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THE REJECTIONS
I. Claims 19, 22, 28, 31, 35, and 36 stand rejected under 35
U.S.C. § 102(b) as anticipated by Escudero (US 2009/0018567 A1;
published Jan. 15, 2009).
II. Claim 23 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Escudero and Kim (US 2009/0099581 A1; published Apr.
16, 2009).
III. Claim 24 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Escudero.
IV. Claims 25, 29, 30, and 34 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Escudero and Goll (US 2006/0195138 A1;
published Aug. 31, 2006).
V. Claim 27 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Escudero and Reger (US 5,211,651; issued May 18,
1993).
VI. Claim 32 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Escudero and Glines (US 2007/0239182 A1; published
Oct. 11, 2007).
VII. Claim 33 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Escudero, Goll, and Nool (US 2005/0004594 A1;
published Jan. 6, 2005).

ANALYSIS
Rejection I
The Examiner finds that Escudero discloses the limitations of claim
19, including an inner shaft (i.e., catheter 120) movable independent of an
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outer shaft (i.e., member 124), and also a macerator element (i.e., housing
104 of cutter assembly 102) comprising a tubular extension (i.e., mechanical
locking ring 126) and a shearing member (i.e., cutting edges 112, 109),
wherein the tubular extension (126) is affixed to a distal most end of the
inner shaft (i.e., catheter 120). Final Act. 4 (citing Escudero ¶¶ 164, 170,
262, Figs. 8A, 8B, 26A, 26B); see also Escudero ¶ 170, Figs. 2A
(mechanical locking ring 126), 8A, 8B. The Examiner also finds that the
macerator element (i.e., cutter assembly 102) is able to be advanced and/or
retracted while the outer shaft (i.e., member 124) remains stationary, as
claimed. Final Act. 4–5.
Appellant argues that Escudero fails to disclose that “the macerator
element is able to be advance[d] and/or retracted while the outer shaft
remains stationary,” as expressly recited in claim 19. Br. 10. Appellant
submits that the Examiner’s findings relative to Escudero are speculative
and also that the Examiner improperly relies on hindsight reasoning. Id. In
support, Appellant submits that paragraph 262 of Escudero discloses that “it
is the member 124 [i.e. the “outer shaft”] that is advanced and retracted
relative to the flexible distal portion 122 and macerator.” Id. at 11.
Appellant concludes that the Examiner “incorrectly equate[s] the
advancement and retraction of the sheath 124 with the claimed stationery
outer shaft,” which is contrary to claim 19, “which states that the macerator
element is able to be advanced and/or retracted while the outer shaft
remains stationary.” Id.
The Examiner determines that the disputed claim limitation is
“functional language,” which “does not impose any structural limitation on
the claim.” Ans. 2. Alternatively, the Examiner determines that, “even
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though it is not the method that is disclosed by Escudero,” Escudero’s
macerator element (i.e., cutter assembly 102) of inner shaft (i.e., catheter
120) is capable of being advanced and/or retracted while the outer shaft
remains stationery, “if one so desires to do so.” Id. at 2–3. Specifically, the
Examiner determines that
if the user held the outer shaft stationary in one hand, the use[r]
could use the other hand to grab the macerator at the distal tip
and push or pull it within the sheath. There is no structure along
the length of the shaft or along or within the handle that would
preclude one from being able to perform this function.
Id. at 3. The Examiner provides annotations of Figures 26A and 26B.

Figures 26A and 26B of Escudero depict “side views of the flexible distal
portion of the catheter having an adjustable flexible distal length,” wherein
the Examiner has identified member 124 as corresponding to claimed outer
shaft, catheter 120 as corresponding to the claimed inner shaft, and cutting
assembly 102 (including cutter 108 and counterweight 123) as
corresponding to the claimed macerator element. Escudero ¶ 112, Figs.
26A, 26B.
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First, the claim limitation requiring the macerator element to be able
to advance and/or retract while the outer shaft remains stationary is a
structural limitation defining a physical relationship between the macerator
element and the outer shaft. Thus, the Examiner’s construction of the
disputed claim limitation as “functional language” and not a structural
limitation is not supported. See Ans. 2. Second, we agree with Appellant
that Escudero fails to disclose this required physical relationship between
member 124 (i.e., the outer shaft) and housing 104 and cutter assembly 102
(i.e., the macerator element).
In particular, Escudero discloses that, with reference to Figures 26A
and 26B,
[t]he length of the flexible distal portion 122 (or a predefined
portion) may be controlled, i.e., adjusted by including a member
124 either inside or outside the catheter 120, or both inside and
outside the catheter. The member 124 may comprise an axially
adjustable sheath, wire, or guidewire, for example, the member
124 having a stiffness greater than the flexible distal portion. . .
. [W]hen the sheath 124 is advanced distally, its added stiffness
reduces the flexibility of the flexible distal portion 122. When
the sheath 124 is retracted proximally, the length of the flexible
distal portion may be increased relative to the portion the sheath
124 was retracted . . . .

Escudero ¶ 262. Thus, as argued by Appellant, Escudero discloses that
member 124, which corresponds to the claimed outer shaft according to the
Examiner’s findings supra, is axially movable relative to catheter 120,
including housing 104 and cutter assembly 102 (i.e., the macerator element).
Escudero is silent as to whether the construction of Escudero’s system
(including, for example, any connection between member 124 and handle
200) would allow member 124 to be held stationary, while housing 104 and
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cutter assembly 102 are advanced and/or retracted relative to member 124.
Thus, we agree with Appellant that the Examiner’s finding is speculative.
To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either expressly or inherently. Blue
Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1341 (Fed. Cir. 2016).
Accordingly, we do not sustain the Examiner’s rejection of
independent claim 19, and claims 22, 28, 31, 35, and 36.

Rejections II–VII
The Examiner’s reliance on the following references in the rejection
of the dependent claims fails to cure the deficiencies in the Examiner’s
rejection of independent claim 19 supra: (i) Kim for disclosing a balloon
(Final Act. 7); (ii) Goll for disclosing an expandable basket having multiple
arms, and also embolic protection and expandable wire filters (id. at 8–10);
(iii) Reger for disclosing a distal protection device securely attached and
immovably connected to the inner shaft (id. at 10–11); (iv) Nool for
disclosing a cover made of permeable material; and (iv) Escudero for further
disclosing collars (id. at 8).
Accordingly, we also do not sustain the Examiner’s rejections of
claims 23–25, 27, 29, 30, and 32–34.

DECISION
The Examiner’s decision rejecting claims 19, 22–25, and 27–36 is
reversed.

REVERSED