Ex Parte Kidd et al

Patent Trial and Appeal BoardJan 11, 2019

12954648 (P.T.A.B. Jan. 11, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/954,648 11/25/2010 Brian L. Kidd 28997 7590 01/15/2019 Harness Dickey (St. Louis) 7700 Bonhomme, Suite 400 ST. LOUIS, MO 63105 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. 5236-001041/US/CPB 5840 EXAMINER COLELLO, ERIN L ART UNIT PAPER NUMBER 3771 NOTIFICATION DATE DELIVERY MODE 01/15/2019 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): stldocket@hdp.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BRIAN L. KIDD and NATHAN KASTELEIN Appeal 2018-002659 Application 12/954,648 1 Technology Center 3700 Before LINDA E. HORNER, MICHAEL J. FITZPATRICK, and WILLIAM A. CAPP, Administrative Patent Judges. HORNER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. Â§ 134(a) of the Examiner's rejections of claims 21-23. Final Office Action (September 15, 2016) ("Final Act."). 2 We have jurisdiction under 35 U.S.C. Â§ 6(b). The Examiner rejected the independent claims as anticipated by the prior art and rejected the dependent claims as unpatentable over a combination of the prior art. Appellants seek reversal of the rejections 1 Appellants identify Stereotaxis, Inc. as the real party in interest. Appeal Brief (July 17, 2017) ("Appeal Br."), at 2. 2 Claims 1-20 are canceled. Final Act. 2; Appeal Br. 21 (Claims Appendix). Appeal2018-002659 Application 12/954,648 because the Examiner relied on an unreasonably broad interpretation of the claim language in order to find the claimed features in the prior art. For the reasons explained below, we agree with Appellants that the Examiner's claim interpretation is unreasonably broad, and that under the correct interpretation, the Examiner has not shown that the prior art discloses the claimed subject matter. Thus, we REVERSE. CLAIMED SUBJECT MATTER Claims 21 and 23 are the independent claims. Claim 21, which is reproduced below with one of the disputed limitations shown in italics for emphasis, is illustrative of the subject matter on appeal. 21. A system for operating a delivery sheath for a medical device and a medical device delivered through the delivery sheath, the delivery sheath having a distal end adapted to be navigated in the body, and a proximal end having a handle with a translatable control and a rotatable control for acting on the distal end of the delivery sheath, and a lumen extending through the delivery sheath and the handle for the passage of a medical device therethrough, and the medical device being adapted to extend through the lumen in the delivery sheath and out the distal end, the system comprising: a releasable clamp for engaging the handle of the delivery sheath; a socket for receiving and engaging the releasable clamp on the handle of the delivery sheath; a translation mechanism for advancing and retracting the socket to advance and retract the delivery sheath whose handle is received in the clamp engaged in the socket; a rotation mechanism for rotating the socket to rotate the delivery sheath whose handle is received in the clamp engaged by the socket; a translation operator for engaging the translatable control on the handle of the delivery sheath whose handle is 2 Appeal2018-002659 Application 12/954,648 received in the clamp and operating the translatable control relative to the handle to act on the distal end of the delivery sheath; a rotation operator for engaging the rotatable control of the delivery sheath whose handle is received in the clamp and operating the rotatable control relative to the handle to act on the distal end of the delivery sheath; and a medical device advancer for engaging and advancing the medical device at least partly disposed in the lumen of delivery sheath. Appeal Br. 21-22 (Claims Appendix). REJECTIONS The Final Office Action includes the following rejections: 1. Claims 21 and 23 are rejected under 35 U.S.C. Â§ I02(a) or 35 U.S.C. Â§ I02(e) as anticipated by Stahler (US 2008/0243064 Al, published October 2, 2008). 2. Claim 22 is rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Stahler and Ferry (US 2008/0045892 Al, published February 21, 2008). ANALYSIS The Examiner found that Stahler discloses a delivery sheath having a handle and "a releasable clamp for engaging the handle of the delivery sheath." Final Act. 3 (citing Stahler ,r 101 (splayers 101 as the handle of the delivery sheath)). The Examiner based this finding on a "broadest reasonable interpretation of clamp to be a device that supports, joins or holds pieces together." Id. The Examiner explained, "the handle Ref 101 of the delivery sheath can include a housing that supports/joins parts together and therefore the housing over the handle is interpreted as the clamp that 3 Appeal2018-002659 Application 12/954,648 engages the handle of the delivery sheath." Id.; see also id. at 6 (same finding for claim 23); see also id. at 14 ( explaining that "the housing over the [Stahler' s] handle [ ( splayer 101)] is interpreted as the clamp that engages the handle of the delivery sheath"); see also Ans. 4-5 (same finding). Appellants argue that Stahler does not disclose a clamp for engaging a handle, i.e., the splayer, of the sheath. Appeal Br. 12. Appellants assert that the Examiner's construction of "clamp" to encompass the housing of Stahler's splayer 101 is "an unreasonably broad construction." Reply Br. 3. We look to Appellants' Specification to discern the broadest reasonable interpretation of "clamp" as that term would be understood by one of ordinary skill in the art in light of the Specification. See Phillips v. AWHCorp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en bane) (The Office "determines the scope of claims ... not solely on the basis of the claim language, but upon giving claims their broadest reasonable construction 'in light of the specification as it would be interpreted by one of ordinary skill in the art."') (Quoting In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)). Appellants' Specification describes that device interface 54 has one or more clamps 17 4 "for engaging and operating the handle of an elongate medical device." Spec. ,r 67. Each clamp 174 has a base 260, a generally arcuate cover 264 hingedly attached to base 260 to form a generally circular opening 268 through the clamp and a releasable latch 270 to secure the cover to the base in the closed configuration. Id. ,r 70, Figs. 27-36. Each clamp 174 includes a split adapter ring 290 comprised of semi- circular halves 292, 294. Id. ,r 72. Split adapter ring 290 can be secured around, and specially adapted to receive, a portion of the handle of the medical device. Id. Alternatively, clamp 174 is adapted to engage and 4 Appeal2018-002659 Application 12/954,648 rotate the sheath. Id. ,r 78. Thus, the "clamp" described in the Specification does more than simply house a handle; it binds and acts on the handle. Our understanding of "clamp" is bolstered by the claim language itself, which recites that the clamp is "for engaging the handle." Turning to the prior art, paragraph 101 of Stahler describes various embodiments of a flexible catheter assembly 3 as shown in Figures 6A through 6E. Stahler ,r 100. Stahler describes that both sheath 39 and catheter 37 of assembly 3 can each include splayer portion 101. Id. Stahler describes that splayers 101 are mounted to respective mounting plates on instrument driver 15. Id. ,r 101. Each splayer 101 includes four control knobs 107, which may be exposed for manual manipulation or covered by a housing. Id. Based on this disclosure, we understand that the housing of each of Stahler' s splayers 101 simply covers splayer 101 and knobs 107. The housing does not bind or act on or otherwise engage splayer 101 or knobs 107. Thus, the Examiner's determination that the housing covering Stahler's splayer 101 is a "clamp" is based on an unreasonably broad interpretation of clamp when that term is interpreted in light of Appellants' Specification. For this reason, we do not sustain the anticipation rejection of claims 21 and 23 and the obviousness rejection of claim 22. DECISION The decision of the Examiner rejecting claims 21-23 is reversed. REVERSED 5