Ex Parte Silverstein

Patent Trial and Appeal BoardAug 15, 2017

13887166 (P.T.A.B. Aug. 15, 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. 13/887,166 05/03/2013 Fred E. Silverstein 101672.0167P2 8824 34284 7590 Rutan & Tucker, LLP 611 ANTON BLVD SUITE 1400 COSTA MESA, CA 92626 EXAMINER LAMPRECHT, JOEL ART UNIT PAPER NUMBER 3737 NOTIFICATION DATE DELIVERY MODE 08/17/2017 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): patents @ rutan. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte FRED E. SILVERSTEIN Appeal 2015-008193 Application 13/8 87,1661 Technology Center 3700 Before HUBERT C. LORIN, MICHAEL C. ASTORINO, and PHILIP J. HOFFMANN, Administrative Patent Judges. ASTORINO, Administrative Patent Judge. DECISION ON APPEAL The Appellant appeals under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1—4, 6, and 7. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We REVERSE. 1 According to the Appellant, the real party in interest is “Bard Access Systems, Inc.” Appeal Br. 3. Appeal 2015-008193 Application 13/887,166 STATEMENT OF THE CASE Claimed Subject Matter Claim 1, the sole independent claim, is representative of the subject matter on appeal and is reproduced below. 1. A medical device system, comprising: a needle having a tip including a permanent magnet; and a magnet sensing device including a plurality of sensors configured to detect the magnetic field of the permanent magnet, the magnet sensing device operable to localize a position of the permanent magnet relative to the magnet sensing device and to indicate a path of the needle on a display. Rejections Claims 1, 2, 4, 6, and 7 stand rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Bova et al. (US 6,546,279 Bl, issued Apr. 8, 2003; hereinafter “Bova”) and Haynor et al. (US 6,216,028 Bl, Apr. 10, 2001; hereinafter “Haynor”). Claim 3 stands rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Bova, Haynor, and Golden et al. (US 5,902,238, issued May 11, 1999; hereinafter “Golden”). ANALYSIS The Appellant argues, “the Examiner has not established that the asserted art teaches, ‘a needle having a tip including a permanent magnet’ as required.” Appeal Br. 7. The Appellant contends, “although Haynor discloses placement of guide wires, catheters, and endoscopes using magnets within the devices, and Bova discloses a biopsy needle, neither Haynor nor Bova discloses a needle having a tip including a permanent magnet as 2 Appeal 2015-008193 Application 13/887,166 claimed.” Appeal Br. 7. The Appellant also submits that Haynor’s indwelling medical devices are distinct from a needle. Reply Br. 7; see also Appel Br. 10. The Appellant’s argument is persuasive. In response to the Appellant’s argument, the Examiner correctly explains that Haynor teaches a “permanent magnet is located in the tip (element 12) of the tubular device,” (i.e., “medical tube”). Ans. 5—6; see Haynor, col. 3,1. 53 — col. 4,1. 3, col. 4,11. 36—37. Notably, however, Haynor defines the term “medical tube” as “any type of tube or device which may be inserted into a patient’s body, including (but not limited to) catheters, guide wires, and medical instruments.” Haynor, col. 3,1. 53 — col. 4,1. 3. This definition of medical tube does not include a needle. But see Advisory Act. 2 (the Examiner appears to find that catheters and guidewires necessarily have or are themselves needles). We also note that the Examiner fails to adequately explain on the record, using evidence or technical reasoning, why Haynor’s teaching, which is directed to a magnet in an indwelling medical tube, is applicable to Bova’s biopsy needle at least because of the errant finding that Haynor’s medical tube is or includes a needle. Based on the foregoing, we determine that the Examiner failed to adequately support the finding that the modification of Bova’s system in view of Haynor’s teaching would result in “a needle having a tip including a permanent magnet,” as recited in independent claim 1. Thus, we do not sustain the Examiner’s rejection of claims 1, 2, 4, 6, and 7 as unpatentable over Bova and Haynor. The remaining rejection based on Bova and Haynor in combination with Golden relies on the same errant 3 Appeal 2015-008193 Application 13/887,166 finding discussed above. As such, we do not sustain the rejection under 35 U.S.C. § 103(a) of claim 3 unpatentable over Bova, Haynor, and Golden. DECISION We REVERSE the Examiner’s decision rejecting claims 1—4, 6, and 7. REVERSED 4