Ex Parte Moehle et al

Patent Trial and Appeal Board

Apr 26, 2016

11732030 (P.T.A.B. Apr. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111732,030 0410212007 Ryan T. Moehle
34284 7590 04/28/2016
Rutan & Tucker, LLP
611 ANTON BL VD
SUITE 1400
COST A MESA, CA 92626
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.
101672.0062P 1840
EXAMINER
SCHMIDT, EMILY LOUISE
ART UNIT PAPER NUMBER
3763
NOTIFICATION DATE DELIVERY MODE
04/28/2016 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):
patents@rutan.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RYANT. MOEHLE and RYAN C. PATTERSON
Appeal2014-004760
Application 11/732,030
Technology Center 3700
Before JOHN C. KERINS, STEFAN STAICOVICI, and LEE L. STEPINA,
Administrative Patent Judges.
KERINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Ryan T. Moehle and Ryan C. Patterson (Appellants) appeal under 35
U.S.C. § 134(a) from the Examiner's final decision rejecting claims 1, 2, 4-
8, 13-15, 17, 18, and 20-23. Claims 9-12 and 16 are indicated by the
Examiner as containing allowable subject matter. Final Act. 6. We have
jurisdiction over this appeal under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
Appeal2014-004760
Application 11/732,030
THE INVENTION
Appellants' invention relates to a catheter including an arcuate
transition region.
Claims 1, 14, and 18 are independent and are reproduced below:
1. A catheter comprising:
a catheter body extending between a distal end and a
proximal end and defining at least one lumen, the catheter body
including:
a first straight portion, a second straight portion,
and an arcuate transition region extending in a continuous
helical curve for more than a half revolution between the first
straight portion and the second straight portion, the first straight
portion crossing the second straight portion for a given
reference plane, the arcuate transition region positioned at or
near an insertion site into the body of a patient during catheter
use.
14. A catheter comprising:
a catheter body extending between a catheter body first
end and a catheter body second end and defining two lumens in
a Cartesian x-y-z coordinate system, the catheter body
including:
a first portion extending from the catheter body
second end along an x-axis in the positive direction to a first
end of an arcuate transition region and a second portion
extending from a second end of the arcuate transition region in
a negative x and negative y direction to the catheter body first
end, the arcuate transition region connecting the first portion to
the second portion;
wherein, during use, at least a majority of the first
portion is disposed outside the body of a patient and, wherein at
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Application 11/732,030
least a segment of the second portion has a length suitable for
insertion inside the body of the patient; and
wherein an exterior arc angle between a central
axis of the first portion and a central axis of the second portion
is greater than 180° when the arcuate transition region is in a
substantially unstressed state such that the first portion and
second portion have a common (x,y) coordinate point not at the
catheter body first end or catheter body second end when the z
axis of the x-y-z coordinate system is oriented parallel to a
longitudinal axis of the arcuate transition region such that the
arcuate transition region curls around the longitudinal axis.
18. A catheter comprising:
a catheter body extending between a distal end and a
proximal end and defining at least two lumens, the catheter
body including:
a first portion, a second portion, and an arcuate
transition region extending in a continuous helical curve
between the first portion and the second portion, the arcuate
transition region including an exterior arc angle greater than
180° when the arcuate transition region is in a substantially
unstressed state;
at least one transformation region between the first
portion and the second portion within which the position of a
septum dividing the two lumens at least partially changes; and
a separation angle between 0° and 90° formed
between the first portion and the second portion, independent of
the exterior arc angle.
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Appeal2014-004760
Application 11/732,030
THE REJECTIONS
The Examiner has rejected:
(i) claims 18, 20, 21, and 23 under 35 U.S.C. § 102(b) as being
anticipated by Heath (US 2003/0144623 Al, published July 31, 2003);
(ii) claims 1, 2, 4, 5, 7, 8, 13-15, 17, and 22 under 35 U.S.C. § 103(a)
as being unpatentable over Martin (US 5, 156,592, issued Oct. 20, 1992) and
Cruz (US 4,935,004, issued June 19, 1990); and
(iii) claim 6 under 35 U.S.C. § 103(a) as being unpatentable over
Martin, Cruz, Schweikert (US 6,881,211 B2, issued Apr. 19, 2005), and Ash
(US 2005/0245900 Al, published Nov. 3, 2005).
ANALYSIS
Claims 18, 20, 21, and 23-Anticipation-Heath
The Examiner finds that Heath discloses a catheter including, inter
alia, "a separation angle between OQ and 90Q formed between the first portion
and the second portion, independent of the exterior arc angle." Final Act. 2
(citing Heath i-f 29; Figs. 2A and 2B). The Examiner's position is that
"based on the pitch of the corkscrew (of Heath), the separation angle
between the first and second portions in a plane perpendicular to the exterior
arc angle plane can be between 0 and 90." Id. at 2-3.
Appellants assert that "Heath shows and describes a separation angle
greater than 90°." Appeal Br. 16. Appellants argue that in Heath's Fig. 2B,
"the second portion must be pointed 'downward' or away from the first
portion; otherwise, the corkscrew would collide with itself." Id. at 17.
Appellants argue that, therefore, "the separation angle must be greater than
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Appeal2014-004760
Application 11/732,030
90°," and thus, "Heath does not anticipate the recitation of a separation angle
between 0° and 90° as claimed." Id.; Spec., Fig. 3.
In the Answer, the Examiner notes that "when looking at the
corkscrew pattern as provided in Fig. 2A [of Heath], the two portions have a
separation angle of essentially zero as the corkscrew completes a 360 degree
tum [and] the two portions are in line with one another." Ans. 3 (emphasis
added). In reply, Appellants nakedly assert that, based on the Examiner's
response, "the Examiner admits that Heath does not disclose the claimed
separation angle between 0° and 90° formed between the first portion and
the second portion." See Reply Br. 10.
We do not view the Examiner's characterization of Heath's Figure 2A
as an admission that Heath does not disclose a separation angle as recited.
Rather, we understand the Examiner's position to be that even if Heath's
Figure 2B does not disclose the recited separation angle, Heath's Figure 2A
does because it depicts a separation angle of essentially zero. Appellants do
not provide a cogent technical reason why a separation angle of essentially
zero is not between 0° and 90°, nor does Appellants' Specification define the
term "separation angle" in a manner that excludes essentially zero. The
Specification states that "[i]n one embodiment, such a separation angle may
be from approximately 0-90°." Spec. i143 (emphasis added). Appellants
cite to paragraph 29 of the Specification as also addressing the claim
limitation directed to a separation angle. The disclosure there reads, "[i]n
one embodiment, separation angle A may be no more than 90°. More
specifically, separation angle A may be approximately 10° or less." Spec.
i-f29. Neither of these disclosures amounts to an exclusion from claim 18 of
a separation angle that is "essentially zero."
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Appeal2014-004760
Application 11/732,030
The rejection of claim 18 and of claims 20, 21, and 23 depending
therefrom, as being anticipated by Heath is sustained.
Claims 1, 2, 4, 5, 7, 8, 11-15, 17, and 22-0bviousness-Martin/Cruz
Claims 1, 2, 4, 5, 7, 8, and 11-13
Claim 1 recites, in part, "a first straight portion, a second straight
portion, and an arcuate transition region extending in a continuous helical
curve for more than a half revolution between the first straight portion and
the second straight portion, the first straight portion crossing the second
straight portion for a given reference plane." Spec., Figs. 1-2. The
Examiner states that, "Martin does not disclose the arcuate region extending
in a helical curve for more than a half revolution," but notes that "Cruz
teaches the straight portions are non-planar to aid in preventing withdrawal
of the catheter." Final Act. 3 (citing Cruz, col. 2, 11. 51-55).
Appellants argue that "[i]t is unclear how the out of plane orientation
of Cruz leads a person of skill in the art to: (1) modify the Martin curved
section into a helical section, and (2) extend that curved section for more
than half a revolution." Appeal Br. 10. Appellants argue that because the
Examiner has not provided any rationale to modify Martin and Cruz to
achieve the claimed configuration, a prima facie case of obviousness is not
established. Id.
In reply, the Examiner states that because the same angles are being
used as in the claims, a helical curve for more than half a revolution must be
present. According to the Examiner, "this would still allow prevention of
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Application 11/732,030
withdrawal as there is still separation between the interior and exterior
catheter portions which would cause the catheter to catch and prevent
withdrawal." Ans. 2.
We agree with Appellants that the Examiner has not adequately
explained how the angles are the same or why there would be a helical curve
for more than a half revolution so that the first and second portions cross.
Appeal Br. 10; see also Reply Br. 3-5. As noted by Appellants, "when the
arcuate transition region equals a half revolution the terminal ends of the
catheter are parallel, and if the arcuate transition region is greater than a half
revolution, the terminal ends of the catheter cross." Reply Br. 4. Martin
includes an angle "A" between the first and second portions that "is
preferably in the range 0°-20° and certainly less than 90°." Martin, col. 4,
11. 12-13; Fig. 1. As such, the first and second portions of Martin could at
best be parallel to each other, namely, when angle A is 0°, but would never
cross. Figure 3 of Cruz shows first and second portions that are parallel to
each other and, as such, extend for half a revolution, but also do not cross.
The Examiner does not adequately explain what would have prompted one
of ordinary skill to increase the curve of Martin or the helical curve of Cruz
such that Martin's arcuate region, as modified by Cruz, would be more than
a half revolution, thereby resulting in a crossing of the first and second
portions.
We thus conclude that the Examiner's findings as to the angles
disclosed by Martin and Cruz are not supported by rational underpinnings.
The rejection of claim 1 as being unpatentable over Martin and Cruz is not
sustained. The rejection is also not sustained as to claims 2, 4, 5, 7, 8, and
11-13, which depend from claim 1.
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Application 11/732,030
Claims 14, 15, 17, and 22
Claim 14 recites, in part, "an exterior arc angle between a central axis
of the first portion and a central axis of the second portion is greater than
180° when the arcuate transition region is in a substantially unstressed state
such that the first portion and second portion have a common (x,y)
coordinate point."
The Examiner acknowledges that "Martin does not disclose the
exterior arc angle is greater than 180 degrees such that the portions have a
common (x,y) coordinate," but notes that "Cruz teaches the straight portions
are non-planar to aid in preventing withdrawal of the catheter." Final Act.
4-5 (citing Cruz, col. 2, 11. 51-55). The Examiner concludes that "[t]he
curvature is a result of manipulation between the exterior and separation
angles as identified by Applicant," and thus,
Id.
it would have been an obvious matter of design choice to a
person of ordinary skill in the art at the time the invention was
made to use a cuf'1e of about 225 degrees and a separation angle
between 0 and 90 degrees because Applicant has not disclosed
that such an angle provides an advantage, is used for a
particular purpose, or solves a stated problem.
Appellants argue that, based on the Cartesian x-y-z- coordinate system
proposed by the Examiner, "no portion of the first portion (of Martin) would
cross the second portion," and "[ e ]ven if either of the first or second portions
were orient[]ed out of plane as proposed by the Examiner in view of Cruz,
the portions still would not cross." Appeal Br. 14-15. Appellants assert that
"the Examiner does not provide any further clarification from the Office
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Application 11/732,030
Action as to how the Examiner has manipulated the references to achieve
the claimed configuration based on any rational underpinning." Reply Br. 8.
As discussed supra, neither Martin nor Cruz discloses a curve causing
first and second portions to cross. Indeed, Martin's angle A would result in
divergent portions. Moreover, as Appellants correctly note, "even if Martin
is brought out of plane to create the claimed separation angle (as taught by
Cruz), the portions of the catheter do not cross." Reply Br. 8. In view of
this, the Examiner has not presented adequate findings or reasoning as to
why it would have been an obvious design choice to increase either the arc
angle of Martin or Cruz to be more than 180Q and to manipulate Martin, as
modified based on the teachings of Cruz, in such a way that Martin's first
and second portions cross in order to have a common (x,y) coordinate point,
as required to meet claim 14.
The rejection of claims 14, 15, 17, and 22 under 35 U.S.C. § 103 (a)
as being unpatentable over Martin and Cruz is not sustained.
Claim 6-0bviousness-Martin/Cruz/Schweikert/ Ash
The Examiner does not rely on the disclosure of Schweikert1 or Ash in
any manner that remedies the deficiencies of Martin and Cruz noted above.
Accordingly, the rejection of claim 6 is not sustained.
DECISION
1 Although Schweikert is included in the rejection heading, the Examiner
does not explain how Schweikert is being applied. See Final Act. 5-6; see
also Appeal Br. 15, n. 1.
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Appeal2014-004760
Application 11/732,030
The rejection of claims 18, 20, 21, and 23 under 35 U.S.C. § 102(b) as
being anticipated by Heath is affirmed.
The rejection of claims 1, 2, 4, 5, 7, 8, 13-15, 17, and 22 under 35
U.S.C. § 103(a) as being unpatentable over Martin and Cruz; and the
rejection of claim 6 under 35 U.S.C. § 103(a) as being unpatentable over
Martin, Cruz, Schweikert, and Ash are 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
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