Ex Parte Segner et al

Patent Trial and Appeal BoardAug 10, 2016

13117259 (P.T.A.B. Aug. 10, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/117,259 05/27/2011 77218 7590 08/12/2016 Medtronic Vascular - APV Division c/o IP Legal Department 3576 Unocal Place Santa Rosa, CA 95403 FIRST NAMED INVENTOR Garland L. Segner 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. HKN-02049(1)(1847-202CON) 7261 EXAMINER DOUGHERTY, SEAN PATRICK ART UNIT PAPER NUMBER 3736 NOTIFICATION DATE DELIVERY MODE 08/12/2016 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): rs. docketingapv@medtronic.com medtronic _apv _docketing@ cardinal-ip. com PTOL-90A (Rev. 04/07) U-NITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GARLAND L. SEGNER, KENT D. ANDERSON, DOUGLAS B. P. MOLLAND, THOMAS L. CLUBB, and MICHAEL J. URICK Appeal2014-008428 Application 13/117,259 1 Technology Center 3700 Before LINDA E. HORNER, ERIC C. JESCHKE, and JASON W. MELVIN, Administrative Patent Judges. MELVIN, Administrative Patent Judge. DECISION ON APPEAL This appeal arises under 35 U.S.C. Â§ 134(a), from a final rejection of claims 1--4, 6-10, 12, 14-20, and 25-27. We have jurisdiction under 35 U.S.C. Â§ 6(b). We reverse. 1 Appellants identify Covidien LP as the real party in interest. Br. 1. Appeal2014-008428 Application 13/117,259 BACKGROUND The claims are directed to a guide wire with stranded tip. Spec. 1. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A guide wire comprising: an elongate, flexible core having a proximal region, a proximal end, a distal region, and a distal end; a single coil comprising 3 to 24 wire strands, each of the 3 to 24 wire strands being formed in a single helix and wrapped helically parallel to one another to thereby form the single coil, the single coil having a longitudinal central axis and an interior, and at least a portion of the distal region of the core being disposed within the interior of the single coil; and a crimp band configured to connect the single coil to the core, wherein an angle between the wire strands and the longitudinal central axis is from 10 to 45 degrees. Br. 13 (Claims App.). REJECTIONS Appellants seek our review of the following rejections: 2 1. Claims 1--4, 6, 7, 9, 12, 14-17, 19, 20 and 25-27 stand rejected under 35 U.S.C. Â§ 102(b) as anticipated by Klint '676 (US 6,805,676 B2, iss. Oct. 19, 2004). Final Act. 3-5. 2. Claim 8 stands rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Klint '676 and Jafari (US 2003/0013993 Al, pub. Jan. 16, 2003). Final Act. 6-7. 2 The Examiner withdrew the rejection made underÂ§ 112. Adv. Act. 2. The rejections apply the pre-AIA versions of the applicable code. Final Act. 2. 2 Appeal2014-008428 Application 13/117,259 3. Claim 18 stands rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Klint '676. Final Act. 7. 4. Claim 10 stands rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Klint '676 and Klint '051 (US 2002/0074051 Al, pub. June 20, 2002). Final Act. 7-8. DISCUSSION Claims 1-4, 6-10, 12, and 14-20 The Examiner finds that Klint '67 6 discloses the claimed "crimp band configured to connect the single coil to the core" as tapered section, 10, of tubular member, 1. Final Act. 4. Appellants challenge this finding, arguing that Klint '67 6 does not teach crimping to create the tapered section but instead teaches "using wires of different dimensions or grinding the outside of the tubular member to create a reduced diameter to create the tapered section." Br. 6. Thus, Appellants argue, "[t]here is no discussion of using a crimp band as recited in claim 1." Id. We agree with Appellants. The Specification does not provide an unconventional definition for the crimp band and instead uses that term according to its conventional meaning as a ring compressed to hold the strands to the central core. See Spec. Fig. 3B, 12 ("a tubular band (not shown) can be used to crimp the strands to the central core"; "Crimp band 29 is shown [in Fig. 3B] and is optional, and can be made of stainless steel, platinum, platinum/iridium, titanium, or other materials that are malleable and strong."). That conventional usage of crimp band contrasts with the structure taught by Klint '676-a tapered section of a wound spiral made by "grinding the outside of the tubular member" or by "using wires of different 3 Appeal2014-008428 Application 13/117,259 diameter." Klint '676 5:25-37; see Br. 6. Nor does Klint '676 even suggest that the tapered section be made by crimping. Moreover, claim 1 recites the band as a structure separate from the single coil of wire strands, whereas Klint '67 6 teaches that the tapered section is a portion of the tubular member. See Klint '6765:1--4, 5:25-26, 5:29-31. For both of the foregoing reasons, we do not agree with the Examiner that "[t]he dips and grooves located in element 10 may fairly and reasonably be considered to be at least a 'crimp' structure and the overall length and round shape of element 10 may fairly and reasonably be considered to be at least a 'band' structure." See Ans. 7-8. Thus, we do not sustain the rejection of independent claim 1, or the rejections of claims 2--4, 6-10, 12, or 14-20, all of which depend from claim 1.3 Claims 25-27 Independent claim 25 does not recite a "crimp band" but instead recites "the proximal end of the single coil being disposed distal of the distal end of the core." Br. 16-17 (Claims App.). Because the Examiner views the tubular member of Klint '67 6 as comprising three distinct sections, the Examiner finds that Klint '67 6 teaches the "disposed distal" limitation. Final Act. 4 (finding that element 9 of Klint '676 is the single coil and element 2 is the core). The coil 1 of Klint '67 6 includes a first segment 5, a 3 The Examiner did not rely on Jafari in the rejection of claim 8 or Klint '051 in the rejection of claim 10 to cure the above-noted deficiency in Klint '676. Final Act. 7-8 (relying on Jafari to show "a tip of a guidewire may be formed of a polymer material" and relying on Klint '051 to show "attaching a group of wire strands to a core member by the way of soldering or welding"). 4 Appeal2014-008428 Application 13/117,259 tapered segment 10, and a second segment 9. Klint '676, 5:24-30. As the core taught by Klint '67 6 extends only through the first two sections, 5 and 10, of the coil and does not extend into the distal section 9 (which Klint '676 refers to as "second segment 9"), the Examiner concludes that the second segment 9 corresponds to the claimed "single coil." See Ans. 9-10. Appellants dispute the Examiner's finding, arguing that the "tubular member" in Klint '67 6 cannot be divided into distinct parts such that one ignores portions that overlap with the core and considers only the distal portion, which does not overlap with the core. Br. 9. As Appellants state, "element 9 is not a single coil, but rather it is the distal most part of the tubular member 1 (i.e., a coil)." Id. We agree with Appellants. As with the rejection of claim 1, the Examiner improperly divides the tubular member taught by Klint '67 6 into distinct structures, when Klint '67 6 teaches the tubular member as a single structure with sections that have distinct properties. In light of claim language that requires no overlap between the single coil and the core, the Examiner's finding of anticipation is not supported by a preponderance of the evidence. Thus, we do not sustain the rejection of claim 25, or of claims 26 or 27, which depend from claim 25. DECISION For the above reasons, the Examiner's rejections of claims 1--4, 6-10, 12, 14-20, and 25-27 are reversed. 5 Appeal2014-008428 Application 13/117,259 REVERSED 6