Ex Parte Moberg et al

Patent Trial and Appeal BoardMay 8, 2013

11224416 (P.T.A.B. May. 8, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JOHN R. MOBERG, MICHAEL GERDTS, and LEAH TILSTRA ____________ Appeal 2011-001244 Application 11/224,416 Technology Center 3700 ____________ Before TONI R. SCHEINER, DONALD E. ADAMS, and SHERIDAN K. SNEDDEN, Administrative Patent Judges. ADAMS, Administrative Patent Judge. DECISION ON APPEAL 1 This appeal under 35 U.S.C. § 134 involves claims 1-21 (App. Br. 5; Reply Br. 1; Ans. 2). The Examiner entered a rejection under 35 U.S.C. § 103(a). We have jurisdiction under 35 U.S.C. § 6(b). We reverse. STATEMENT OF THE CASE The claims are directed to a catheter tip assembly (claims 1-11), a catheter assembly (claims 12-20), and a method of assembling a catheter 1 The Real Party in Interest is Boston Scientific Scimed, Inc. (App. Br. 3). Appeal 2011-001244 Application 11/224,416 2 (claim 21). Claims 1, 8, 12, and 21 are representative and are reproduced in the Claims Appendix of Appellants’ Brief. Claims 1-21 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Schwab 2 and Wallace. 3 ISSUE Does the preponderance of evidence on this record support a conclusion of obviousness? FACTUAL FINDINGS (FF) FF 1. Schwab’s invention “relates to angioplasty catheters, and more particularly, to a catheter balloon bond at the balloon proximal or distal end” (Schwab 1: 3-5). FF 2. Schwab’s Figures 1 and 2 are reproduced below: “FIG. 1 is a longitudinal cross section of the proximal end of the balloon of the present invention; and FIG. 2 is a longitudinal cross-section of the distal end of the balloon” (id. at 2: 44-47). 2 Schwab et al., US 5,876,376, issued March 2, 1999. 3 Wallace et al., US 6,447,462 B1, issued September 10, 2002. Appeal 2011-001244 Application 11/224,416 3 FF 3. The device, illustrated in Schwab’s Fig. 1 comprises shaft tubing 80 …, a coaxial inner guidewire shaft 70 … defining a guidewire lumen 65 and a balloon 35…. To prevent adhesive leakage into the balloon 35 a proximal bond stopper 30 and/or a distal bond stopper 50 may be used. The stoppers 30, 50 form a slight interference fit with the balloon 35. (Id. at 3: 19-24 (emphasis added).) FF 4. Examiner finds that Schwab’s “catheter tip [85] is disposed about and engaged to a catheter shaft 70[, wherein] [t]he outer surface of the catheter shaft form[s] an interference fit with the inner surface of the catheter tip” (Ans. 3). FF 5. Examiner relies on Wallace to make up for Schwab’s failure to suggest “a fill port passing through the inner and outer surfaces of the catheter tip to fill … at least one cavity” (id. at 4). ANALYSIS Based on the combination of Schwab and Wallace, Examiner concludes that, at the time Appellants’ invention was made, it would have been prima facie obvious to “modif[y] the device of Schwab with the fill port … [suggested] by Wallace for injecting a curable radiopaque adhesive without having to create stoppers as in Schwab” (Ans. 4 (emphasis added)). Examiner, however, fails to articulate how one of ordinary skill in this art would modify Schwab’s device with Wallace’s fill port to obtain an assembly, wherein the outer surface of the catheter shaft forms an interference fit with the inner surface of the catheter tip, as required by Appellants’ independent claims 1, without utilizing Schwab’s stoppers (see Appellants’ Claim 1; see also Appellants’ Claim 21 (the inner surface of the Appeal 2011-001244 Application 11/224,416 4 catheter tip forms an interference fit with the catheter shaft outer surface) and Claim 12 (the outer surface of the second tubular member forms an interference fit with the inner surface of at least one tubular member); FF 3 (“The stoppers 30, 50 form a slight interference fit with the balloon 35”); Cf. FF 4). In this regard, we note that in response to Appellants’ arguments Examiner steps away from the foregoing rationale for combining references, suggesting instead that “[E]xaminer is not suggesting removal of the stopper for the interference fit” (Ans. 4-5 (emphasis added)). However, as Appellants explain, because Schwab’s stoppers are located “between the catheter shaft tubing 80 and the proximal balloon end 75,” as illustrated in Schwab’s Fig. 1, the stoppers “preclude an interference fit between the catheter shaft tubing … and the proximal balloon end” (App. Br. 13). The same would be true of Appellants’ claimed invention. For example, if a stopper was inserted between the outer surface of the catheter shaft and the inner surface of the catheter tip, the outer surface of the catheter shaft would not be able to form an interference fit with the inner surface of the catheter tip as required by Appellants’ Claim 1 (see also Appellants’ Claims 12 and 21, which require similar interference fittings between outer and inner surfaces of the elements set forth in the claims). Therefore, we are not persuaded by Examiner’s interpretation of Appellants’ claims as “not preclud[ing] an intervening piece such as the stoppers” between the specific elements that are required by the claims to engage via an interference fitting (Ans. 4). As Appellants’ explain “an interference fit, by definition, does require … contact [between the specific elements of the fitting] because it is the friction between the parts that holds the parts together” (Reply Br. 3). Appeal 2011-001244 Application 11/224,416 5 CONCLUSION OF LAW The preponderance of evidence on this record fails to support a conclusion of obviousness. The rejection of claims 1-21 under 35 U.S.C. § 103(a) as unpatentable over the combination of Schwab and Wallace is reversed. REVERSED cdc