Ex Parte Boyle et al

Patent Trial and Appeal BoardOct 30, 2012

10675611 (P.T.A.B. Oct. 30, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte WILLIAM J. BOYLE, JOHN E. PAPP, CHARLES R. PETERSON, PAUL F. MULLER, DONALD SCHWARTEN, and KATHERN J. LIND ____________________ Appeal 2010-010128 Application 10/675,611 Technology Center 3700 ____________________ Before: STEVEN D.A. MCCARTHY, BRETT C. MARTIN, and ANNETTE R. REIMERS, Administrative Patent Judges. MARTIN, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-010128 Application 10/675,611 2 STATEMENT OF CASE William J. Boyle et al. (Appellants) appeal under 35 U.S.C. § 134 of the Examiner’s rejection of claims 1, 2, 4, 7-10, and 12-27. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. THE INVENTION Appellants’ claims are directed generally to “filtering devices and systems which can be used, for example, when an interventional procedure is being performed in a stenosed or occluded region of a body vessel to capture embolic material that may be created and released into the body fluid during the procedure.” Spec. para. [02]. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An embolic filtering system used to capture embolic debris in a body vessel, comprising: an expandable filter assembly including a self-expanding frame moveable between an expanded position and an unexpanded position, the expandable filter being disposed on a guide wire; a filtering element attached to and movable with the frame; a sheath having a lumen for receiving the guide wire and having a distal end portion and a proximal end, the distal end portion of the sheath being adapted to receive the expandable filter assembly for maintaining the filter assembly in the unexpanded position and being movable to expose the filter assembly; and a torque device including: a handle with a lumen extending therethrough for receiving the guide wire which allows the handle to be directly mountable on the guide wire, Appeal 2010-010128 Application 10/675,611 3 means associated with the handle for locking the guide wire to the torque handle to allow the user to rotate the guide wire, a side port adapted to receive the proximal end of the sheath which allows a portion of the guide wire to shear the sheath from the guide wire through retraction of the sheath through the side port; and an extension arm extending from the handle which includes a distal end having an opening adapted to receive both the guide wire and the sheath, the end of the extension arm being disposed longitudinally away from the side port. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Ring Berthiaume Broome US 3,459,184 US 5,161,534 US 6,152,946 Aug. 5, 1969 Nov. 10, 1992 Nov. 28, 2000 REJECTIONS The Examiner made the following rejection: Claims 1, 2, 4, 7-10, and 12-27 stand rejected under 35 U.S.C §103(a) as being unpatentable over Broome, Berthiaume, and Ring. Ans. 3. ANALYSIS As Appellants state, “[t]he Examiner has taken the position that [the] plastic catheter 7 [of Ring] constitutes a guide wire, as the term guide wire is used in the art, since ‘any member that can be used to track a catheter or tube to a desired site can be considered a guidewire.’” App. Br. 8-9. See also Ans. 3-4. Appellants go on to point out that “[i]n the context of the present invention, the term ‘guide wire’ is properly construed to mean a Appeal 2010-010128 Application 10/675,611 4 flexible elongate wire that can [be] used in combination with a number of medical devices, such as balloon catheters, atherectomy devices, filtering device, just to name a few.” App. Br. 10. Appellants also note that this “construction of the term ‘guide wire’ is consistent with the meaning understood by those skilled in the art” and assert “that the Ring patent fails to disclose a guide wire as the term is known to one skilled in the art.” Id. As Appellants further point out, Ring “is directed to an intravenous catheter placement unit which utilizes a solid needle 1 to implant a plastic catheter 7 into a patient.” App. Br. 8. Even under the Examiner’s broad construction, the catheter in Ring is the item to be implanted and is not used to “track another catheter or tube to a desired site,” so it is not acting as a guide wire in Ring under either definition of guide wire. “[I]t is simply a plastic tubing insertable into the patient for administering fluids.” App. Br. 11. Accordingly, we find the Examiner’s rejection to be based upon an erroneous finding of fact: that the catheter in Ring is a guide wire. While we appreciate the Examiner’s finding that the sheath-stripping features of the Ring torque handle may be relevant to Appellants’ claims, the use of Ring in the combination cannot be based on a finding that the Ring catheter is, or functions as, a guide wire as the Examiner has done. Because of this we cannot sustain the rejection of claims 1, 2, 4, 7-10, and 12-27. DECISION For the above reasons, we REVERSE the Examiner’s decision to reject claims 1, 2, 4, 7-10, and 12-27. REVERSED Appeal 2010-010128 Application 10/675,611 5 tj