Ex Parte Smith et al

Patent Trial and Appeal BoardMar 10, 2017

11628251 (P.T.A.B. Mar. 10, 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. 11/628,251 12/01/2006 Leif Smith 030481-0268 5393 22428 7590 03/14 Foley & Lardner LLP 3000 K STREET N.W. SUITE 600 WASHINGTON, DC 20007-5109 EXAMINER EISEMAN, ADAM JARED ART UNIT PAPER NUMBER 3736 NOTIFICATION DATE DELIVERY MODE 03/14/2017 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): ipdocketing @ foley. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte LEIF SMITH, OLA HAMMARSTROM, PER EGNELOV, and DAN AKERFELDT Appeal 2014-003257 Application 11/628,251 Technology Center 3700 Before SCOTT C. MOORE, TARA L. HUTCHINGS, and AMEE A. SHAH, Administrative Patent Judges. MOORE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from the final rejection of claims 1—7 and 9-20, which are all of the pending claims.1 We have jurisdiction under 35 U.S.C. § 6. We affirm. 1 Appellants state that the real party in interest is “Radi Medical Systems AB of Sweden.” Appeal Br. 1. Appeal 2014-003257 Application 11/628,251 Claimed Subject Matter The claims are directed to a sensor and guide wire assembly. Claim 1, reproduced below with bracketed references added, is illustrative of the claimed subject matter: 1. A sensor and guide wire assembly for intravascular measurement of at least one physiological variable in a living body, comprising: [la] a core wire, wherein the core wire includes an enlarged middle portion, [lb] a first coil, and [lc] a jacket adapted to enclose at least a section of the enlarged middle portion of the core wire and adapted to accommodate at least a portion of a sensor chip, [ld] wherein the jacket comprises a first end portion, which is crimped onto the core wire and over which a portion of the first coil is threaded, and [le] wherein the jacket is provided as a separate piece from the enlarged middle portion of the core wire. References and Rejection The Examiner relies on the following references in rejecting the claims on appeal: Tenerz US 6,167,763 B1 Jan. 2,2001 Muni US 6,190,332 B1 Feb. 20,2001 Hammarstrom US 6,336,906 B1 Jan. 8,2002 Claims 1—7 and 9-20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Hammarstrom, Tenerz, and Muni. Ans. 3. 2 Appeal 2014-003257 Application 11/628,251 ANALYSIS Independent Claim 1 Hammarstrom relates to “a sensor and guide wire assembly for intravascular pressure measurements.” Hammarstrom, 1:8—10. The Examiner finds that Hammarstrom discloses the preamble of claim 1, as well as a core wire for housing a sensor that satisfies element la, and a coil that satisfies element lb. Ans. 3^4. The Examiner also finds that Hammarstrom discloses the use of threading to attach a coil to the enlarged middle portion of a coil wire. Id. at 4. With respect to claim elements lc and Id, the Examiner finds that Tenerz teaches a jacket (element 15) that is separate from and encloses an enlarged portion of a core wire, and that is adapted to accommodate a sensor chip located within an enlarged portion of a core wire. Id. at 3 (citing Tenerz, 4:19—29). The Examiner finds that this jacket functions as a soft membrane to seal a pressure sensor against surrounding blood pressure. Id. With respect to claim element le, the Examiner finds that Muni teaches mechanically crimping a tube onto a core wire to secure the wire in place. Id. (citing Muni, 2:26-42). Muni teaches that crimping may increase the strength of the bond between a core wire and a catheter tube. Muni, 2:26-42. The Examiner determines that it would have been obvious to modify Hammarstrom’s enlarged portion and sensor with a soft membrane jacket as taught by Tenerz in order to seal the sensor from surrounding blood pressure. Ans. 4. The Examiner also determines that it would have been obvious to attach the jacket of Tenerz to the core wire of Hammarstrom by the crimping method of Muni in order to increase the strength of the bond between the core wire and jacket. Id. The Examiner further determines that 3 Appeal 2014-003257 Application 11/628,251 it would have been obvious to “threadably engage” Hammarstrdm’s coils with the jacket of the Hammarstrdm/Tenerz/Muni combination because this method of attachment is taught by Hammarstrdm. See id. Appellants argue that one of ordinary skill in the art would not have combined the teachings of Hammarstrdm and Tenerz because “Hammarstrdm expressly teaches away from the tube segment 15 of Tenerz.” Appeal Br. 13. In support of this argument, Appellants cite column 1, lines 31—55 of Hammarstrdm, which describes several “drawbacks” of using a protective tube as part of a sensor and guide wire assembly. See Appeal Br. 6. We are not persuaded on this record by Appellants’ teaching away argument. Hammarstrdm teaches that using a protective tube to enclose a pressure sensor is a prior art technique that has both advantages and disadvantages. See Hammarstrdm, 1:12—62. Hammarstrdm teaches that where “the sensor is a pressure sensor, it is preferable to provide some sort of stiffening member for the sensor in order to avoid mechanical artifacts due to, for example, bending,” and that “[i]t is known to provide a short, protective tube segment enclosing the sensor to stiffen and protect the sensor region of the guide wire.” Id. at 1:23—30 (emphasis added). Hammarstrdm then goes on to list the “drawbacks” cited by Appellants. See id. at 1:31—55. Our reviewing court has held: “obviousness must be determined in light of all the facts, and there is no rule that a single reference that teaches away will mandate a finding of nonobviousness.” Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006). In addition, “[a] known or obvious composition does not become patentable simply because it has been 4 Appeal 2014-003257 Application 11/628,251 described as somewhat inferior to some other product for the same use.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). On this record, we find that that the Examiner has set forth adequate reasoning having a rational underpinning in support the determination that one of ordinary skill would have had reason to combine the jacket of Tenerz with Hammarstrom’s coil, core wire, and sensor. We are not persuaded that the stated “drawbacks” of this approach would have rendered it nonobvious. See Medichem, 437 F.3d at 1165 (“a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine.”). Appellants also argue that one of ordinary skill in the art would not have had reason to use crimping to attach the soft membrane jacket of Tenerz to the enlarged portion of Hammarstrom’s core wire because “Muni discloses crimping of the core wire to the proximal tube, not a jacket (that encloses an enlarged middle portion of the core wire) to the core wire.” Appeal Br. 11. This argument is not persuasive because the soft membrane jacket of Tenerz is also tubular in shape. See, e.g., Tenerz, 4:24—25 (describing the jacket as a “hose”). Appellants do not provide any persuasive evidence that one of ordinary skill in the art would not have had reason to use crimping (as taught by Muni) to attach the tubular jacket of Tenerz to Hammarstrom’s core wire. Appellants further argue that one of ordinary skill in the art would not have had reason to thread the coils of Hammarstrom over the jacket of the Hammarstrom/Tenerz/Muni combination because Hammarstrom does not disclose threadably engaging a coil to a jacket or a crimped connection. Appeal Br. 11. This argument is not persuasive because Appellants do not 5 Appeal 2014-003257 Application 11/628,251 present any persuasive evidence that one of ordinary skill in the art would not have had reason to pursue using threading (as taught by Hammarstrom), to attach coils to the enlarged middle portion of a jacketed core wire. In particular, Appellants do not provide any persuasive explanation of why the existence of a jacket crimped to the enlarged middle portion of a core wire would have rendered it nonobvious to use threading to attach coils to the ends of the enlarged middle portion of the coil wire. For the foregoing reasons, we are not persuaded that the Examiner erred in rejecting claim 1. Independent Claims 7, 13, and 16 Appellants argue that claims 7, 13, and 16 are patentable for the same reasons discussed above with respect to claim 1; Appellants do not raise any separate, substantive patentability arguments regarding these claims. See Appeal Br. 13—17. For the same reasons discussed above with respect to claim 1, we are not persuaded that the Examiner erred in rejecting claims 7, 13, and 16. Dependent Claims 2—6, 9-12, 14, 15, and 17—20 Appellants do not present any separate, substantive patentability arguments regarding claims 2—6, 9—12, 14, 15, and 17—20. Appeal Br. 17. Instead, Appellants rely solely on their arguments with respect to independent claims 1,7, 13, and 16. Id. For the reasons discussed above, we are not persuaded that the Examiner erred in rejecting claims 2—6, 9-12, 14, 15, and 17—20. 6 Appeal 2014-003257 Application 11/628,251 DECISION For the foregoing reasons, we affirm the Examiner’s decision rejecting claims 1—7 and 9—20. 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 7