Ex Parte Rottenberg et al

Patent Trial and Appeal Board

May 30, 2017

13390146 (P.T.A.B. May. 30, 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.
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:
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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”).
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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.,
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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.
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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
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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
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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
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