Ex Parte Eversull et al

Patent Trial and Appeal Board

Oct 12, 2017

13097051 (P.T.A.B. Oct. 12, 2017)

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.
CLPH-037 5766
EXAMINER
GILBERT, ANDREW M
ART UNIT PAPER NUMBER
3763
MAIL DATE DELIVERY MODE
13/097,051 04/28/2011
23410 7590
Vista IP Law Group LLP
100 Spectrum Center Drive
Suite 900
IRVINE, CA 92618
Christian S. Eversull
10/13/2017 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 CHRISTIAN S. EVERSULL and STEPHEN A. LEEFLANG1
Appeal 2016-002930
Application 13/097,051
Technology Center 3700
Before EDWARD A. BROWN, WILLIAM A. CAPP, and
FREDERICK C. LANEY, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1, 3—6, 9-16, and 19-26. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 According to Appellants, the real party in interest is CLPH, LLC.
See Appeal Br. 2.
Appeal 2016-002930
Application 13/097,051
THE INVENTION
Appellants’ invention relates to catheters with lubricious linings.
Spec. 1. Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A tubular device, comprising a proximal end, a distal
end sized for introduction into a body lumen, and a lumen
extending between the proximal and distal ends, the tubular
device comprising:
an inner liner comprising longitudinal edges extending
between the proximal and distal ends and a hydrophilic,
ultraviolet-light-cured coating on an inner surface thereof, the
longitudinal edges being disposed adjacent one another;
a braid surrounding at least a portion of the inner liner; and
an outer layer surrounding the braid and the inner liner.
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Kupiecki US 5,603,991 Feb. 18, 1997
Iwasaki US 6,503,193 B1 Jan. 7,2003
Chouinard US 2004/0176740 A1 Sept. 9,2004
The following rejections are before us for review:
1. Claims 24—26 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which the applicant regards as the
invention.
2. Claims 1, 3—6, and 24—26 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Chouinard and Kupiecki.
3. Claims 9—16, 19, and 21—23 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Chouinard, Kupiecki, and Iwasaki.
2
Appeal 2016-002930
Application 13/097,051
OPINION
Indefiniteness — Claims 24—26
The Examiner observes that claim 24 contains duplicative recitations
of the inner liner comprising “longitudinal edges disposed adjacent one
another.” Final Action 9. The Examiner further observes that if the first
recitation of “disposed adjacent on another” were deleted, claim 24 would
then exactly duplicate claim 1. Id. Claims 25 and 26 are rejected under
section 112 due to their dependency from claim 24. Id.
Apart from a naked denial that the claims are indefinite, Appellants do
not challenge the Examiner’s position with substantive arguments and,
consequently, fail to apprise us of any error in the rejection. See Appeal
Br. 16, see also Reply Br. 7. Appellants represent that they are willing to
amend the claims upon further prosecution of the application. Id.
Under the circumstances, we sustain the Examiner’s Section 112
rejection of claims 24—26.
Unpatentability of Claims 1, 3—6, and 24—26
over Chouinard and Kupiecki
Claims 1 and 3—6
Appellants argue claims 1 and 3—6 as a group. Appeal Br. 8—13. We
select claim 1 as representative. See 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that Chouinard discloses the claimed invention
except for an inner surface coating that is hydrophilic and cured by ultra­
violet (“UV”) light. Final Action 11. The Examiner relies on Kupiecki as
teaching a hydrophilic coating that is cured by UV light. Id. The Examiner
concludes that it would have been obvious to a person of ordinary skill in the
art at the time the invention was made to modify Chouinard’s device with
3
Appeal 2016-002930
Application 13/097,051
Kupiecki’s hydrophilic, UV-cured coating. Id. According to the Examiner,
a person of ordinary skill in the art would have done this to minimize
friction between a treatment device and the interior surface of the catheter.
Id. at 11—12.
In traversing the rejection, Appellants argue that Chouinard lacks a
lubricious coating that is hydrophilic and cured with UV light, a point
already conceded by the Examiner. Appeal Br. 9. Appellants further argue
that, since Chouinard already provides a lubricious surface, it would be
superfluous to add a coating as taught by Kupiecki. Id. Similarly,
Appellants argue that Kupiecki’s coating is redundant of Chouinard’s
coating. Id. at 10. In response, the Examiner states that Kupiecki’s coating
would not be superfluous as it adds hydrophilic UV-cured properties that are
not found in Chouinard. Ans. 14.
Appellants’ argument is not persuasive as it presumes that a person
of ordinary skill in the art would be limited to using Kupiecki’s coating in
addition to, rather than instead of, Chouinard’s coating. Appellants fail to
consider that a person of ordinary skill in the art would modify Chouinard by
substituting Kupiecki’s coating. See KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 416 (2007) (substituting one known element for another). Furthermore,
the obviousness inquiry does not ask “whether the references could be
physically combined but whether the claimed inventions are rendered
obvious by the teachings of the prior art as a whole.” In re Etter, 756 F.2d
852, 859 (Fed. Cir. 1985) (enbanc).
Appellants next argue that the two references could not be combined
successfully because Kupiecki requires the use of transparent tubing, while
Chouinard fails to teach the use of transparent materials. Appeal Br. 11. In
4
Appeal 2016-002930
Application 13/097,051
response, the Examiner points out, persuasively, that Chouinard’s inner liner
may be made of polyurethane or polyethylene, which are identified in
Kupiecki as UV-transparent materials. Ans. 16.
Next, Appellants argue that Chouinard’s braided layers are not UV-
transparent and/or would not permit coatings to be applied uniformly.
Appeal Br. 12. In response, the Examiner points out that Appellants’
argument is predicated on the assumption that UV curing would not take
place until after the braided layers are added to the catheter tubing. Ans. 17.
According to the Examiner, there is nothing in Kupiecki that requires the
UV-curing step to be completed only after the braided layers are added. Id.
As between the Examiner and Appellants’ competing positions, we deem the
Examiner’s position to be more persuasive as Appellants provide neither
evidence nor persuasive technical reasoning that would have required
postponement of the UV curing until after the braided material is added to
the tubing. To the contrary, Chouinard suggests inner layer 7, which already
possesses a lubricious surface, is formed by wrapping a sheet around a
mandrel before the braiding is added. See Chouinard, 1132-34.
Finally, Appellants argue that the references do not disclose first
coating a sheet that is subsequently formed into a tubular body. Appeal
Br. 12—14. In this regard, Appellants accuse the Examiner of engaging in
improper hindsight. Id.
Appellants’ argument is not persuasive. Chouinard discloses forming
a tubular body with a lubricious inner surface by various methods, including
forming a tube by wrapping sheet material around a mandrel.
[T] he inner tubular layer 7 may be a continuous tubular
structure which forms a polymeric luminal surface which
provides a lubricous surface for allowing the delivery of inner
5
Appeal 2016-002930
Application 13/097,051
material and devices, such as a stent-graft. Inner layer 7
provides a low coefficient of friction surface to reduce the
forces required to deploy the stent-graft 4. The inner layer 7 is
formed by various methods such as by forming a tube with a
sheet, a spirally wrapped strip or extruding a tube. For
example, if a sheet is used, the inner layer 7 can be formed by
wrapping the sheet around a longitudinal axis, such as around a
mandrel (not shown), to form a tubular body with a longitudinal
seam.
Chouinard, 132. The Examiner’s proposed modification merely substitutes
Kupiecki’s coating, which can be applied by spraying or dipping. Kupiecki,
col. 6,11. 1-6, 60-62.
Appellants provide neither evidence nor persuasive technical reasons
demonstrating that Kupieck’s coating may only be applied to tubular, as
opposed to flat structures. Essentially, Appellants’ argument amounts to an
individual attack on the references that are used in the proposed
combination. However, it is well settled that non-obviousness cannot be
established by attacking references individually where the rejection is based
upon the teachings of a combination of references. In re Merck & Co., 800
F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413, 425 (CCPA
1981). Considering that Chouinard teaches forming a lined, tubular body
from sheet material, we reject Appellants’ argument that the Examiner
engages in improper hindsight.
In view of the foregoing discussion, we determine the Examiner’s
findings of fact are supported by a preponderance of the evidence and that
the Examiner’s legal conclusion of unpatentability is well-founded.
Accordingly, we sustain the Examiner’s unpatentability rejection of claims 1
and 3—6.
6
Appeal 2016-002930
Application 13/097,051
Claims 24—26
In view of our decision to sustain the Examiner’s section 112 rejection
of claims 24—26, we do not reach the art rejection of these claims. 37 C.F.R.
§ 41.50(a)(1); In re Steele, 305 F.2d 859, 862 (CCPA 1962).
Unpatentability of 9—16, 19, and 21—23
over Chouinard, Kupiecki, and Iwasaki
The claims subject to this ground of rejection differ from the claims
subject to the ground over Chouinard and Kupiecki primarily in that they
include limitations directed to “relief features,” such as grooves, bumps, or
pits on the inner surface of the catheter tube. Claims App. Appellants’
Specification teaches that such relief features enable ingress of a coating
activating fluid. Spec. 9,11. 4—6.
A coating activating fluid may be introduced into the lumen,
e.g., from the distal end, that may be directed around and/or
past the deployable device, e.g., by the relief features, to
activate the coating. In an exemplary embodiment, the coating
may include a hydrophilic coating and the coating activating
fluid may include water and the like, which may interact with
the coating to increase the lubricity of the liner.
Id. at 12—16.
The Examiner finds that Iwasaki teaches relief features on the inner
surface of an inner liner. Final Action 14. The Examiner concludes that it
would have been obvious to a person of ordinary skill in the art at the time
the invention was made to modify the liner of Chouinard/Kupiecki with
relief features. Id. 15. According to the Examiner, a person of ordinary skill
in the art would have done this to increase the contact area between the
surface of the liner shaft and the coating layer to improve the bonding force.
Id.
7
Appeal 2016-002930
Application 13/097,051
Appellants argue that Iwasaki’s grooves are not provided on an inner
surface of a lumen. Appeal Br. 14. Appellants point out that Iwasaki’s
grooves are provided on an outer surface of a sheath to increase the contact
area between sheath 13 and coating lawyer 14. Id.
In response, the Examiner acknowledges that Iwasaki’s relief features
are provided to facilitate contact between two layers. Ans. 21—22. The
Examiner reiterates that such a feature would improve the bonding force
between layers. Id. at 22.
In reply, Appellants point out that the claimed relief features increase
exposure of the inner surface of the catheter to an activating agent. Reply
Br. 5. According to Appellants, this increases the lubricity of the liner. Id.
Appellants are correct that Iwasaki fails to disclose relief features on
an inner surface of an inner liner as claimed. Instead, Iwasaki discloses
relief features (grooves) between two physical layers. See Iwasaki, Fig 3.
The relief features of Iwasaki facilitate bonding whereas Appellants’ relief
features facilitate lubricity. The concepts of bonding and lubricity are
inconsistent with each other, if not mutually exclusive. The Examiner errs
in finding that Iwasaki discloses relief features on an inner surface of an
inner liner. The Examiner further errs in concluding that a person of
ordinary skill in the art would have found it obvious to modify the liner of
Chouinard/Kupiecki by the teachings of Iwasaki to achieve the claimed
invention.
We do not sustain the Examiner’s unpatentability rejection of
claims 9-16, 19, and 21—23.
8
Appeal 2016-002930
Application 13/097,051
DECISION
The decision of the Examiner to reject claims 1 and 3—6 as
unpatentable under 35 U.S.C. § 103(a) is affirmed.
The decision of the Examiner to reject claims 24—26 under 35 U.S.C.
§112, second paragraph, as indefinite is affirmed.2
The decision of the Examiner to reject claims 9—16, 19, and 21—23 as
unpatentable under 35 U.S.C. § 103(a) 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)(l)(iv).
AFFIRMED-IN-PART
2 For reasons previously stated, we do not reach the art rejection of
claims 24—26,
9