Ex Parte Rottenberg et alDownload PDFPatent Trial and Appeal BoardMay 30, 201713390146 (P.T.A.B. May. 30, 2017) Copy Citation 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. 13/390,146 02/13/2012 Dan Rottenberg 487145.000117 6853 122473 7590 06/01/2017 Faegre Baker Daniels LLP (487145) Patent Docketing - Intellectual Property 2200 Wells Fargo Center, 90 South Seventh Street EXAMINER SCHWIKER, KATHERINE H Minneapolis, MN 55402-3901 ART UNIT PAPER NUMBER 3731 NOTIFICATION DATE DELIVERY MODE 06/01/2017 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): patentdocketing@faegrebd.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DAN ROTTENBERG and RON SACHER1 Appeal 2016-007489 Application 13/390,146 Technology Center 3700 Before DONALD E. ADAMS, JOHN E. SCHNEIDER And DEVON ZASTROW. NEWMAN, Administrative Patent Judges. SCHNEIDER, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35U.S.C. § 134 involving claims to devices and methods for retrieving guidewires used in angioplasty, which have been rejected as anticipated and as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. STATEMENT OF THE CASE “A chronic total occlusion (CTO) is an arterial vessel blockage that prevents blood flow beyond the obstruction. CTO[]s typically occur in 1 Appellants identify the Real Party in Interest as Spectranetics Corporation. Br. 2. Appeal 2106-007489 Application 13/390,146 coronary, peripheral, pediatric, and other small arteries.” Spec. 1. One technique for removing the obstruction involves passing a guidewire through the plaque causing the obstruction. Id. Recovery of the guidewire after it has passed through the plaque can be difficult. Spec. 1—2. The Specification describes a technique and device to improve guidewire retrieval. Spec. 2. Claims 1—14 and 16—20 are on appeal. Claims 1 and 12 are the only independent claims and read as follows: 1. A guidewire retrieval device comprising: a tube including a distal end; a flexible funnel including a proximal end coupled to said distal end of said tube, said funnel being conical with an open mouth facing distally of said tube; and a balloon positioned proximal to said funnel. 12. A method for guidewire retrieval comprising: inserting a guidewire retrieval device in a blood vessel from a first direction, said guide wire retrieval device comprising: tubes, a flexible, elastomeric funnel disposed at a distal end of one of said tubes, said funnel being conical with an open mouth facing distally of said one of said tubes, and a balloon carried by one of said tubes proximally of said funnel; inflating said balloon at a position proximal to said funnel to block blood flow and centering said funnel in a lumen of said blood vessel; manipulating a guidewire in the blood vessel from a second direction opposite to the first direction, until said guide wire moves into said funnel; and continuing to move said guide wire through said funnel and said tube until capturing a distal end of said guide wire. The claims stand rejected as follows: 2 Appeal 2106-007489 Application 13/390,146 Claims 1—4, 11, 14, and 16 have been rejected under 35 U.S.C. § 102(b) as anticipated by Cryer.2 Clam 5 has been rejected under 35 U.S.C. § 103(a) as unpatentable over Cryer in view of Nobuyoshi.3 Claims 6—8 and 17—19 have been rejected under 35 U.S.C. § 103(a) as unpatentable over Cryer in view of Miller.4 Claims 9 and 20 have been rejected under 35 U.S.C. § 103(a) as unpatentable over Cryer in view of Leanna.5 Claim 10 has been rejected under 35 U.S.C. § 103(a) as unpatentable over Cryer in view of Johnson.6 Claims 12 and 13 have been rejected under 35 U.S.C. § 103(a) as unpatentable over Katoh7 in view of Johnson in further view of Krolik.8 ANTICIPATION Issue Then issue with respect to this rejection is whether a preponderance of the evidence supports the Examiner’s conclusion that the rejected claims are anticipated by Cryer. 2 Cryer et al., US 6,290,710 Bl, issued Sept. 18, 2001 (“Cryer”). 3 Nobuyoshi et al. US 5,250,069, issued Oct. 5, 1993 (“Nobuyoshi”). 4 Miller et al., US 2004/0079429 Al, published Apr. 29, 2004 (“Miller”). 5 Leanna et al., US 2007/0270931 Al, published Nov. 22, 2007 (“Leanna”). 6 Johnson et al., US 2002/0188313 Al, published Dec. 12, 2002 (“Johnson”). 7 Katoh et al., US 2008/0306499 Al, published Dec. 11, 2008 (“Katoh”). 8 Krolik et al., US 2010/0137892 Al, published June 3, 2010 (“Krolik”). 3 Appeal 2106-007489 Application 13/390,146 The Examiner finds that Cryer discloses a guidewire retrieval device comprising a tube with an end distal to the balloon and a flexible funnel proximate to the balloon and coupled to the distal end of the tube as shown in the annotated Figure 7 of Cryer, shown below. Final Act. 3. The Examiner concludes that Cryer discloses all the elements of the claims. Final Act. 6. Appellants contend that Cryer does not disclose a flexible funnel coupled to the distal end of the tube. Appeal Br. 4. Pointing to Figure 7 of Cryer, Appellants contend that the Examiner incorrectly identified the distal end of the tube shown in Cryer. Id. Principles of Law [UJnless a [prior art] reference discloses within the four comers of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim, it cannot be said to prove prior invention of the thing claimed and, thus, cannot anticipate under 35 U.S.C. § 102. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). Claims should not be constmed so broadly as to vitiate an express claim limitation. See Warner-Jenkins on Co. v. Hilton Davis Chemical Co., 4 Appeal 2106-007489 Application 13/390,146 520 U.S. 17, 29 (1997) (each element in a claim is material to defining the scope of the invention.). Analysis We find that Appellants have the better argument. Looking at Figure 7 of Cryer, it is clear that the distal end of the tube extends into the funnel 58. Thus, the funnel is not coupled to the distal end of the tube. We have considered the Examiner’s argument that the term distal end is not limited to the terminal end of the tube (Ans. 3 4) and find it unpersuasive. While claims terms should be given the broadest reasonable construction during prosecution, the Examiner’s interpretation would improperly read out the term “end” from the phrase “distal end.” Conclusion of Law We conclude that a preponderance of the evidence fails to support the Examiner conclusion that claims 1—4, 11, 14, and 16 are anticipated by Cryer. OBVIOUSNESS Rejections based on Cryer With respect to the obviousness rejections based on Cryer combined with other references, Appellants stand on their argument that Cryer does not teach coupling the funnel at the distal end of the tube. Appeal Br. 6—7. 5 Appeal 2106-007489 Application 13/390,146 Appellants contend that the secondary references do not remedy the deficiency of Cryer. Id. The Examiner maintains that Cryer teaches the limitation of the funnel coupled to the distal end of the tube and does not point to any teaching in the secondary references for that limitation. Ans. 4—5. For the reasons stated above, we conclude that a preponderance of the evidence does not support the Examiner’s conclusion of obviousness based on Cryer alone, or combined with any of the other proposed combinations. Katoh combined with Johnson and Krolik Issue The issue with respect to this rejection is whether a preponderance of the evidence supports the Examiner’s conclusion that claims 12 and 13 would have been obvious over Katoh combined with Johnson and Krolik. The Examiner finds that Katoh teaches all the limitations of claim 12 with the exception of the funnel being elastomeric, carrying a balloon to a position proximate to the funnel, inflating the balloon to block blood flow, and centering the funnel in a lumen of a blood vessel. Final Act. 12—14. The Examiner finds that Johnson teaches a funnel that is elastomeric. Final Act. 13. The Examiner also finds that Krolik teaches inflating a balloon proximate to the funnel such that the balloon blocks blood flow and centers the funnel in the lumen of the vessel. Final Act. 14. The Examiner concludes that it would have been obvious to one of ordinary skill in the art, at the time the invention was made, to modify Katoh in view of Johnson to have the balloon positioned on one 6 Appeal 2106-007489 Application 13/390,146 of the tubes proximally of the funnel and to have the balloon block blood flow and center the funnel as taught by Krolik, for the purpose of being able to prevent movement of [the] tube within the body [of the] lumen during the procedure to be able to more accurately perform the procedure (see paragraphs 0040 and 0041). Id. Appellants contend that Krolik does not teach centering the funnel in the lumen of a blood vessel. Appeal Br. 9. Appellants contend that the portion of Krolik cited by the Examiner is silent with respect the using the balloon to center the funnel. Id. Analysis Again we find that Appellants have the better position. We have reviewed the portions of Krolik cited by the Examiner and do not agree with the Examiner’s conclusion that Krolik teaches or renders obvious using the balloon to center the funnel. The Examiner finds that paragraph 47 teaches using the balloon to center the funnel. Ans. 6. However, a careful reading of paragraph 47, which refers to Figures 1 and 3 of Krolik, discusses deployment of a cage of the funnel and is completely silent as to deployment or positioning of a balloon within a blood vessel. Krolik 147. The Examiner also points to Figure 8 of Krolik to support the finding that Krolik teaches using a balloon to center the funnel. Ans. 6. We are unpersuaded. Paragraph 68 discusses the configuration found in Figure 8 and is again silent as to using a balloon to center the funnel. Krolik 168. Finally, Figure 6 of Krolik teaches a configuration where the cage of the funnel is off-center. Even if Krolik were to teach using a balloon to center the cage of the funnel, the Examiner has not explained why one skilled in the 7 Appeal 2106-007489 Application 13/390,146 art would adopt that configuration over the off-center configuration, and be moti9vatied to use a balloon to effect the repositioning. We conclude that a preponderance of the evidence does not support the Examiner’s conclusion that claims 12 and 13 would have been obvious over Katoh combined with Johnson and Krolik. SUMMARY We reverse the rejection under 35 U.S.C. § 102(b) and reverse the rejections under 35 U.S.C. § 103(a). REVERSED 8 Copy with citationCopy as parenthetical citation