Ex Parte Bedell

Patent Trial and Appeal Board

Aug 30, 2016

13363591 (P.T.A.B. Aug. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/363,591 02/01/2012
20480 7590
STEVEN L NICHOLS
Fabian Vancott
215 S. State Street
SUITE 1200
SALT LAKE CITY, UT 84111
09/01/2016
FIRST NAMED INVENTOR
Raymond Bedell
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.
34929-302578 4700
EXAMINER
CAREY, MICHAEL JAMES
ART UNIT PAPER NUMBER
3766
NOTIFICATION DATE DELIVERY MODE
09/01/2016 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@fabianvancott.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAYMOND BEDELL
Appeal2014-007674
Application 13/363,591
Technology Center 3700
Before JENNIFER D. BAHR, EDWARD A. BROWN, and
SEAN P. O'HANLON, Administrative Patent Judges.
BROWN, Administrative Patent Judge.
DECISION ON APPEAL
STATEivIENT OF THE CASE
Raymond Bedell (Appellant)1 appeals under 35 U.S.C. § 134(a) from
the Examiner's decision rejecting claims 1-16. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is representative of the claimed subject
matter:
1. A steerable catheter comprising:
a flexible body with a proximal end and a distal tip; and
1 Raymond Bedell is identified as the real party in interest. Appeal Br. 2.
Appeal2014-007674
Application 13/363,591
a continuous steering wire passing through the flexible
body from the proximal end to the distal tip and turning back
through the flexible body from the distal tip to the proximal end,
wherein when a curvature along a length of the flexible
body is generated, one segment of the continuous steering wire
is relaxed while the opposite segment is pulled.
Appeal Br. 16 (Claims App.).
REJECTION
Claims 1-16 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Brennen (US 5,873,842, issued Feb. 23, 1999), Shiu (US 7,105,016 B2,
issued Sept. 12, 2006), Bedell (US 2003/0004460 Al, published Jan. 2,
2003), Schatz (US 5,273,527, issued Dec. 28, 1993), and Stevens-Wright
(US 5,383,852, issued Jan. 24, 1995).
ANALYSIS
The Examiner finds that Brennen discloses an implantable steerable
catheter comprising flexible body 10 with proximal end 14 and distal tip 22,
and steering wire 12 passing through flexible body 10 from proximal end 14
to distal tip 22 and turning back through flexible body 10 from distal tip 22
to proximal end 14. Final Act. 3 (citing Brennen, col. 4, 11. 34--49; Fig. 1).
As to claim 1, Appellant contends that Brennen does not teach or
suggest the limitation of "a continuous steering wire passing through the
flexible body from the proximal end to the distal tip and turning back
through the flexible body from the distal tip to the proximal end." Appeal
Br. 8 ("disputed limitation"). Appellant contends that the description at
Brennen column 4, lines 34--49, does not teach or suggest "turning back of
the pull wire." Id. at 9. Rather, Appellant contends, "back within the
lumen" mentioned in Brennen "is merely the pull wire re-entering the lumen
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Application 13/363,591
after the portion of the wire that runs external to the device." Id.
(referencing Brennen, col. 4, 11. 34--49).
Figure 1 of Brennen shows that pull wire 12 passes through tubular
member 10 between proximal section 14 and first aperture 18, is located
outside of tubular member 10 between first aperture 18 and second aperture
20, and again passes through tubular member 10 between second aperture 20
and distal tip 22. See also Brennen, col. 4, 11. 34--49. Thus, pull wire 12
does not pass "through" tubular member 10 either ''from the proximal end to
the distal tip" or ''from the distal tip to the proximal end," as required by
claim 1.
The limitation "turning back" in claim 1 is not found in the written
description of Appellant's Specification. Appellant indicates that the
disputed limitation is supported by paragraphs 19 and 20 and Figure lB of
the Specification. Appeal Br. 6. We note the Specification describes that
wire 100 exits large lumen 104 at distal end 107 and "bends approximately
180° and reenters" flexible body 106 through smaller lumen 105 at distal
end 107. See Spec. i-f 20; Fig. lB. The bending and reentering of wire 100
at distal end 107 is consistent with "turning back."
We agree with Appellant that, in Brennen, "the exit and re-entry of the
pull wire relative to the lumen all occurs in a single direction, i.e., from the
distal portion to the proximal portion .... " Reply Br. 6 (emphasis added).
Pull wire 12 can be considered to either pass through a portion of tubular
member 10 between distal tip 22 and proximal end 14 or pass in the opposite
direction through a portion of tubular member 10 between proximal end 14
and distal tip 22. See Brennen, Fig. 1. Accordingly, we agree with
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Application 13/363,591
Appellant that pull wire 12 does not "tum[] back through the flexible body
from the distal tip to the proximal end." Appeal Br. 9-10.
The Examiner also finds Brennen teaches that "the steering wire ...
'tum[s] back' through the flexible body" at column 6, lines 29-36. Ans. 2.
In contrast, Appellant contends that this description in Brennen "teaches a
pull wire extending from the distal tip, through the apertures, along the
lumen to the proximal end[,]" but also does not teach "any sort of turning
back." Appeal Br. 10.
The description in Brennen at column 6, lines 29-36, relates to the
embodiment depicted in Figures 8-10. As shown, pull wire 12 extends
within lumen 13 of tubular member 10 from distal tip 22, out second
opening 20 and alongside tubular member 10, through first opening 18, and
through lumen 13 to the proximal end. Brennen, col. 6, 11. 29-36; Figs. 8-
10. We agree with Appellant that this embodiment of Brennen also does not
disclose or suggest the disputed limitation in claim 1 for the reasons
discussed above for the embodiment shown in Figure 1.
In the Answer, the Examiner states that Figures 12 and 13 of Brennen
also show wire member 12 "turning back" at tip 23, "[a]s the wire is present
both outside of the lumen and within lumen section [15]." Ans. 2. The
Examiner indicates this aspect is described in column 8, lines 38---61, of
Brennen. Id.
Appellant responds that Figures 12 and 13 and the cited description in
Brennen also do not teach "any sort of turning back." Reply Br. 6.
Appellant further contends that this disclosure in Brennen precludes "a
steering wire that turns back." Id. Particularly, Appellant points out that
Figure 12 illustrates that pull wire 10 terminates in ball shaped element 23
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Application 13/363,591
(citing Brennen, col. 8, 11. 49-50), and this "termination at the distal end
strictly precludes any 'turning back ... from the distal tip to the proximal
end.'" Id.
We agree with Appellant that this embodiment in Brennen also does
not disclose or suggest the disputed limitation in claim 1 for the reasons
discussed above for the embodiment shown in Figure 1.
The Examiner's application of Shiu to the rejection of claim 8,
Stevens-Wright to claims 1, 10 and 16, Bedell to claims 11 and 12, and
Schatz to claims 13 and 14 does not cure the deficiencies of Brennen as to
claim 1. See Final Act. 4--6. Accordingly, we do not sustain the rejection of
claims 1-16 as unpatentable over Brennen, Shiu, Bedell, Schatz, and
Stevens-Wright.
DECISION
We reverse the rejection of claims 1-16.
REVERSED
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