Ex Parte Ehr et al

Patent Trial and Appeal Board

Sep 27, 2012

10027154 (P.T.A.B. Sep. 27, 2012)

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.
10/027,154 12/20/2001 Timothy G.J. Ehr 1001.2199101 1216
11050 7590 09/28/2012
SEAGER, TUFTE & WICKHEM, LLC
1221 Nicollet Avenue
Suite 800
Minneapolis, MN 55403
EXAMINER
FOREMAN, JONATHAN M
ART UNIT PAPER NUMBER
3736
MAIL DATE DELIVERY MODE
09/28/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte TIMOTHY G.J. EHR and BRUCE HOWARD ASMUS
__________

Appeal 2009-013182
Application 10/027,154
Technology Center 3700
___________

Before SCOTT R. BOALICK, BRADLEY W. BAUMEISTER, and
ANDREW CALDWELL, Administrative Patent Judges.

PER CURIAM.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 10, 13, 14, 16, and 19.
Claims 10, 13, and 16 stand rejected under 35 U.S.C. § 103(a) as
being obvious over Kenigsberg (US 4,168,703) and Peacock
(US 2002/0049402 A1).
Claims 14 and 19 stand rejected under 35 U.S.C. § 103(a) as being
obvious over Kenigsberg, Peacock, and Zarychta (US 6,259,938 B1).
We reverse.

THE INVENTION
Appellants disclose a pressure meter for evaluating a blood vessel
occlusion. (Abstract.) Appellants’ Figures 1 and 2, reproduced below,
illustrate an exemplary meter while employed within a vessel. (Spec. 4:13-
19.)
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Appellants’ Figures 1 and 2 show a lengthwise, cross-sectional
view of the invention within a vessel.
As shown, a tube 21 slides concentrically within a sheath 16 to
measure the vessel’s blood pressures at opposing sides of an occlusion 12.
(Spec. 5:16-22; 6:3-11; 6:28 – 7:8.) More particularly, the sliding causes a
distal opening 22 of the tube 21 to sequentially align with two openings 17,
18 of the sheath 16, which are respectively positioned at the opposing sides
of the occlusion 12. (Id.) When the distal opening 22 of the tube 21 aligns
with one of the openings 17, 18 of the sheath 16, the pressure P2 or P3 at the
respective of side of the occlusion 12 may be measured. (Id.; Spec. 6:23-
24.) The difference in the pressures P2, P3 at the opposing sides of the
occlusion 12 indicates the amount of vessel blockage. (Spec., 5:21-22.)

CLAIMS 10, 13, AND 14
Independent claim 10 and dependent claims 13 and 14 stand rejected
as being obvious over Kenigsberg and Peacock. We reproduce claim 10,
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below, with emphasis on several features addressed by Appellants’
arguments.
10. A device for measuring blood pressure in a
vascular structure, comprising:
a tubular sheath sized for insertion into the vascular
structure, the tubular sheath including an open proximal end, a
closed distal end, at least two axially spaced apart openings in a
sidewall thereof, and an inside peripheral surface,
an elongated tube disposed within the tubular sheath and
including an open proximal end, a closed distal end, a single
opening in a sidewall thereof and an outside peripheral surface
engaging the inside peripheral surface of the tubular sheath
about the entire outside peripheral surface of the elongated tube,
the elongated tube being frictionally received within the
tubular sheath thereby allowing the opening of the elongated
tube to be selectively aligned with one of the axially spaced
apart openings of the tubular sheath at a time and so that
engagement between the inside peripheral surface of the tubular
sheath and the outside peripheral surface of the elongated tube
substantially prevents fluid communication between the inside
peripheral surface of the tubular sheath and the outside
peripheral surface of the elongated tube and through the tubular
sheath, and
a pressure transducer in fluid communication with the
elongated tube proximal end so that blood from the vascular
structure is communicated to the pressure transducer when the
elongated tube opening is aligned with one of the tubular sheath
openings, thereby to directly measure the blood pressure;
wherein the blood pressure measuring device has a distal
portion that is inserted into the vascular structure, and wherein
an exterior surface of the distal portion of the blood pressure
measuring device has a cross-sectional profile of a single
circle.
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The Examiner finds that Kenigsberg teaches all but the above-
emphasized: (i) closed distal end of the sheath; (ii) circular cross-sectional
profile of the device; and (iii) measuring of blood pressure. Appellants
argue that these features patentably distinguish the claimed invention over
the applied prior art. We separately address the Examiner’s findings and
Appellants’ arguments for each of these features (i) to (iii).

Closed Distal End of the Sheath
The Examiner finds that the closed distal end of the claimed sheath
does not patentably distinguish the invention over the device of
Kenigsberg’s Figures 1-3, reproduced below. (Ans. 4.) We agree.

Kenigsberg’s Figures 1 and 2 show a perspective view and
cross-sectional view of Kenigsberg’s device, respectively.
Kenigsberg’s Figure 3 shows a schematic view of the device in
use.
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Kenigsberg discloses a tool for assessing gastroesophageal reflux.
(Kenigsberg, Abstract.) As shown, a tube 22 (“probe 22”) slides
concentrically within a sheath 12 (“sleeve 12”) to measure the pressure at an
open distal end 24 of the tube 22. Particularly, as the open distal end 24 of
the tube 22 slides leftward past an opening 20 of the sheath 12, the
gastroesophageal pressure may be measured at the location of the opening
20. (Kenigsberg, col. 2, l. 56 – col. 3, l. 27; col. 4, ll. 38-64.)
The distal end 14 of the illustrated sheath 12 is open; not closed like
the distal end of the claimed sheath. However, there are at least two reasons
articulated by the Examiner as to why it would have been obvious to open
the distal end of Kenigsberg’s sheath 12.
First, as explained by the Examiner, Kenigsberg teaches that the distal
end 14 of the sheath 12 is “preferably open.” (Ans. 4 (citing Kenigsberg,
col. 2, ll. 58-60).)
1
From this, a skilled artisan would infer that the distal end
14 is more desirably open but also could be closed (albeit less desirably).
2

That inference is supported by Kenigsberg’s teachings for the distal end 40
of a reference tube 38 (shown), which is also “preferably open” but can be

1
See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[A]
court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.”); see also In re Preda, 401 F.2d 825,
826 (CCPA 1968) (“[I]n considering the disclosure of a reference, it is
proper to take into account not only specific teachings of the reference but
also the inferences which one skilled in the art would reasonably be
expected to draw therefrom”).
2
See “preferable.” Dictionary.com. Dictionary.com Unabridged. Random
House, Inc. http://dictionary.reference.com/browse/preferably (accessed:
April 12, 2012) (meaning “more desirable”).
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optionally closed if the side wall of the reference tube 38 is opened near the
distal end 40. (Kenigsberg, col. 3, l. 67 – col. 4, l. 2.)
Second, as also explained by the Examiner, closing the distal end 14
of the sheath 12 is a common sense solution to a problem expressly
identified by Kenigsberg.
3
(Ans. 4.) Kenigsberg cautions that the tube 22
should not extend past the distal end 14 of the sheath 12. (Kenigsberg, col.
3, ll. 28-40.) Kenigsberg’s solution is to select the lengths of the tube 22 and
sheath 12 such that their proximal ends 26, 30 will abut to stop the sliding of
the tube 22 before overextension occurs. (Id.) It would have been common
sense to additionally or alternatively prevent the overextension by closing
the distal end 14 of the sheath 12, as proposed by the Examiner.
4

Appellants argue that the identified overextension problem cannot
serve as a reason to close the distal end 14 of Kenigsberg’s sheath 12,
because Kenigsberg’s solution vitiates the need for such further measures.
(App. Br. 12.) However, Appellants have not shown why the benefits of
Kenigsberg’s solution would render the common sense solution unobvious.
Furthermore, Appellants neglect that the proposed closing of the distal end

3
See KSR, 550 U.S. at 419-20 (“One of the ways in which a patent’s subject
matter can be proved obvious is by noting that there existed at the time of
invention a known problem for which there was an obvious solution
encompassed by the patent’s claims.”).
4
See KSR, 550 U.S. at 421 (“A person of ordinary skill is also a person of
ordinary creativity, not an automaton.”); see also id. (“Rigid preventative
rules that deny factfinders recourse to common sense, however, are neither
necessary under our case law nor consistent with it.”).
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14 of the sheath 12 could be implemented as an alternative to Kenigsberg’s
solution.
5

For the above reasons, we find no Examiner error with respect to the
closed distal end feature of the claimed sheath.

Circular Cross-Sectional Profile
The Examiner finds that the circular cross-sectional profile of the
claimed device does not patentably distinguish the invention over
Kenigsberg’s device, especially in view Peacock. (Ans. 4-5.) We agree.
As determined by the Examiner, Kenigsberg implicitly teaches that
the tube 22, sheath 12, and reference tubes 32, 38 may be integrated into a
single device with a circular profile. (Ans. 7.) Kenigsberg does so in
teaching, as follows, that the one of the reference tubes 32 can be “located
within” the sheath 12 (Kenigsberg 3:61-65):
Although shown positioned on the surface of the sheath 12 in
the drawing, the member 32 may be located within a suitably
modified sheath (not shown) provided its placement within the
sheath does not interfere with the free movement of the probe
22 therein.
Given the above teaching, a skilled artisan would have understood that the
conduits of the reference tubes 32, 38 can be alternatively placed within the
conduit of the sheath 12 or embedded inside the sidewalls of the sheath 12.
The resulting omission of the reference tubes 32, 38 (as opposed to their

5
See DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314,
1327 (Fed. Cir. 2009) (“A reference does not teach away […] if it merely
expresses a general preference for an alternative invention but does not
‘criticize, discredit, or otherwise discourage’ investigation into the invention
claimed.” (citations omitted)).
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conduits) would yield a circular cross-sectional profile for the device, as
claimed.
As also determined by the Examiner, the arterial catheter of Peacock’s
Figure 1B, reproduced below, confirms that it was within the skill in the art
to embed conduits inside the sidewalls of catheter tubing (such as
Kenigsberg’s sheath 12). (Ans. 5.) As shown, the tubing includes a central
lumen 2’ that shunts blood and fluid conduits 3’, 6’-9’ that control
associated valves and deliver drugs. (Peacock ¶ [0075].) Peacock teaches
that the sidewall embedment of the conduits 3’, 6’-9’ was a known
alternative to employing additional tubing (such as Kenigsberg’s reference
tubes 32, 38). (Peacock ¶ 72). Having knowledge of this alternative
placement, a skilled artisan would have considered embedding the reference
tubes 32, 38 inside the walls of the sheath 12 (as proposed), especially given
Kenigsberg’s suggestion to place the reference tubes 32, 38 within the
sheath 12 but not at the expense of hindering the tube 22.
6

6
See KSR, 550 U.S. at 417 (“[I]f a technique has been used to improve one
device, and a person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is obvious
unless its actual application is beyond his or her skill.” (citations omitted)).
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Peacock’s Figure 1B shows a cross-sectional view of Peacock’s
arterial catheter.
Appellants argue that the proposed modification would be
“extensive,” particularly because the proximal ends 36, 42 of the reference
tubes 32, 38 splay away from the sheath 12. However, Appellants have not
shown that the proximal ends 36, 42 of the reference tubes 32, 38 must splay
away from the sheath 12, much less shown that it would have been beyond
the level of skill in the art to make the proposed modification while also
preserving the splaying of the reference tubes 32, 38.
For the above reasons, we find no Examiner error with respect to the
circular cross-sectional profile feature of the claimed device.

Blood Pressure Measurement
The Examiner does not meaningfully address the claimed measuring
of blood pressure, but merely states that “Kenigsberg discloses a distal
portion of the blood pressure measuring device having an exterior surface
having a cross-sectional profile of a single circle (Col. 3, lines 61-65; Col. 4,
lines 9-12).” (Ans. 4-5 (emphasis added).) Appellants argue that “[n]either
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of the references cited by the Examiner monitors blood pressure on two
sides of a stenosis.” (App. Br. 22.)
As the claim requirements for measuring blood pressure are strictly
functional requirements, the Examiner need only present a factual basis to
conclude that Kenigsberg’s device is capable of measuring blood pressure.
See In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997); In re Swinehart,
439 F.2d 210, 213 (Fed. Cir. 1971).
7
However, the cited portion of
Kenigsberg states nothing of using the device for blood pressure
measurements. Given the Examiner’s failure to explain why Kenigsberg’s
device is capable of blood making pressure measurements, on this record we
conclude the Examiner has not established a prima facie case of
obviousness.
For the above reasons, we find the Examiner erred.

Conclusion
The rejections of claim 10 and dependent claims 13 and 14 is not
sustained.

CLAIMS 16 AND 19
Like claims 10, 13, and 14, independent claim 16 and dependent claim
19 require a device that is capable of measuring blood pressure. Because the
Examiner did not meaningfully address this requirement, the rejections of
claims 16 and 19 are not sustained.

7
Of course, the Examiner could alternatively propose to modify Kenigsberg
device for blood pressure measurement. No such modification, much less a
reason for such a modification, was presented by the Examiner’s Answer.
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DECISIONS
The rejection of claims 10, 13, and 16 under 35 U.S.C. § 103(a) as
being obvious over Kenigsberg and Peacock is reversed.
The rejection of claims 14 and 19 under 35 U.S.C. § 103(a) as being
obvious over Kenigsberg, Peacock, and Zarychta is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

REVERSED

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