Ex Parte Tucker

Patent Trial and Appeal Board

Sep 18, 2012

11012826 (P.T.A.B. Sep. 18, 2012)

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.
11/012,826 12/16/2004 David Jason Tucker 0100/0185 9661
21395 7590 09/19/2012
LOUIS WOO
LAW OFFICE OF LOUIS WOO
717 NORTH FAYETTE STREET
ALEXANDRIA, VA 22314
EXAMINER
VU, QUYNH-NHU HOANG
ART UNIT PAPER NUMBER
3763
MAIL DATE DELIVERY MODE
09/19/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________
Ex parte DAVID JASON TUCKER
____________________

Appeal 2010-006205
Application 11/012,826
Technology Center 3700
____________________

Before: JENNIFER D. BAHR, MICHAEL L. HOELTER, and
JOHN W. MORRISON, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-006205
Application 11/012,826
2
STATEMENT OF THE CASE
David Jason Tucker (Appellant) appeals under 35 U.S.C. § 134 from
the Examiner’s decision rejecting claims 25-27, 31-34, and 37-39. The
Examiner withdrew claims 28-30, 35, 36, 40, and 41 from consideration.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
The Claimed Subject Matter
Claim 25, reproduced below, is illustrative of the claimed subject
matter.
25. Apparatus comprising a needle cannula, an anesthesia
catheter having a distal end and a proximal end, said catheter
movably fitted to said cannula with its distal end being inserted
first into a first end of said cannula so that said catheter is
movable along said cannula, said catheter having a circular
cross section along its entire length except for at least one
portion proximate to its distal end, said one portion having a
non-circular cross section configured to cause the distal end of
said catheter to move in a direction predefined by the
configuration of said one portion when the distal end and then
said one portion of said catheter exit outside said cannula
through a second end of said cannula.
Evidence
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Jonkman
Daum
Davey
Ishii
US 6,530,902 B1
US 6,572,593 B1
US 6,595,966 B2
US 7,163,524 B2
Mar. 11, 2003
Jun. 3, 2003
Jul. 22, 2003
Jan. 16, 2007

Appeal 2010-006205
Application 11/012,826
3
Rejections
Appellant requests our review of the following rejections:
(1) claims 25-27, 32-34, 38, and 39 under 35 U.S.C. § 102(e) as
anticipated by Ishii;
(2) claims 31 and 37 under 35 U.S.C. § 103(a) as unpatentable
over Ishii and either Jonkman or Davey;
(3) claim 38 under 35 U.S.C. § 103(a) as unpatentable by Ishii;
(4) claim 38 under 35 U.S.C. § 102(b) as anticipated by Daum;
and
(5) claim 32 under 35 U.S.C § 103(a) as unpatentable over
Daum.
OPINION
Rejection (1)
Claim 25
The issue presented in the appeal of the rejection of claim 25 as
anticipated by Ishii is whether the portion of Ishii’s catheter comprising a
grooved cross section has a “cross section configured to cause the distal end
of said catheter to move in a direction predefined by the configuration of
said one portion when the distal end and then said one portion of said
catheter exit outside said cannula through a second end of said cannula.”
Appellant argues that the groove 21 formed in Ishii’s catheter 2 “is
there to allow the catheter to have the ‘followability’ so that it can follow the
guidewire along a meandering blood vessel.” App. Br. 15. Thus, according
to Appellant, Ishii’s groove 21 “does not cause the distal end of the catheter
to move in a predetermined direction when the distal end and then the one
portion of the catheter exit a cannula.” Id.
Appeal 2010-006205
Application 11/012,826
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Claim 25 requires that the catheter have one portion having “a
non-circular cross section configured to cause the distal end of said catheter
to move in a direction predefined by the configuration of said one portion
when the distal end and then said one portion of said catheter exit outside
said cannula through a second end of said cannula” (emphasis added).
Ishii discloses a catheter 2 comprising a distal end portion having a
non-circular cross section, in that it has a groove 21 formed therein, much
like the non-circular cross section of Appellant’s catheter illustrated in figure
4. Col. 7, ll. 19-21; figs. 1-5. Moreover, Ishii explicitly discloses that the
grooved cross section causes that portion of the catheter body to be
“selectively readily bent in the direction shown by A” in figure 3. Col. 6, ll.
20-22. Appellant describes the similar cross sectional shape of the figure 4
embodiment of the present invention as performing the same function.
Spec., para. [0030].
In light of the above findings, the Examiner correctly found that the
cross section of the grooved portion of Ishii’s catheter is configured to cause
the distal end of said catheter to move in a direction predefined by the
configuration of said one portion when the distal end and then said one
portion of said catheter exit outside said cannula through a second end of
said cannula.
As correctly noted by the Examiner (Ans. 3), the language “to cause
the distal end of said catheter to move in a direction predefined by the
configuration of said one portion . . .” is functional language. Appellant’s
argument that “Ishii does not perform the claimed function as set forth in
claim 25” (Reply Br. 2) appears to be predicated on a misapprehension of
the import of that functional language.
Appeal 2010-006205
Application 11/012,826
5
“[A]pparatus claims cover what a device is, not what a device does.”
Hewlett-Packard Co. v. Bausch & Lomb, Inc., 909 F.2d 1464, 1468 (Fed.
Cir. 1990). Once the Examiner establishes a reasonable basis that the prior
art is capable of performing the claimed function, the burden shifts to the
applicant to show that the prior art structure is not capable of performing the
claimed function. In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997).
Appellant’s argument that Ishii’s catheter will follow the guidewire
does not show that Ishii’s grooved cross section lacks the capability to
perform the claimed function. We reject Appellant’s suggestion that the
functional language of claim 25 implies some structure, such as a predefined
or built-in curvature, other than the cross section itself, that causes the distal
portion of the catheter to bend even in the absence of external forces being
applied. See App. Br. 14-15; Reply Br. 1-2. The functional language of the
claim clearly modifies the claimed “non-circular cross section.” Moreover,
claim 25 does not even specify whether the movement in the “direction”
involves any bending, much less define conditions (e.g., with or without
external forces being applied) under which such bending would occur.
In light of the above, the Examiner did not err in finding that the
portion of Ishii’s catheter comprising a grooved cross section has a “cross
section configured to cause the distal end of said catheter to move in a
direction predefined by the configuration of said one portion when the distal
end and then said one portion of said catheter exit outside said cannula
through a second end of said cannula,” as called for in claim 25.
We sustain the rejection of claim 25 as anticipated by Ishii.

Appeal 2010-006205
Application 11/012,826
6
Claims 26 and 27
Independent claim 26 calls for the catheter to have a cross sectional
profile along a given length of the tubing “configured to predispose said
catheter to bend or curve in a given direction when said cross sectional
profile of said catheter is not confined within said guide.” Appellant’s
arguments as to why Ishii lacks this feature are essentially the same as those
asserted for claim 26. See App. Br. 15-16; Reply Br. 2-3.
Ishii’s disclosure of a grooved cross section that causes that portion of
the catheter body to be “selectively readily bent in the direction shown by
A” in figure 3 (col. 6, ll. 20-22) describes a cross sectional profile
configured to predispose the catheter to bend or curve in a given direction
when not confined within a guide. Claim 26 does not require that this
function of bending or curving be performed, much less that it be performed
under all circumstances when the cross sectional profile is not confined
within a guide. Ishii’s grooved distal portion is predisposed to bend or curve
in direction A when subjected to a bending force when not confined within a
guide. The fact that Ishii’s figure 3 illustrates three other directions B-D in
which the catheter is also capable of bending, albeit less readily than in
direction A (see col. 6, ll. 9-20), does not negate the fact that the grooved
cross section predisposes that portion of the catheter to bend preferentially in
a given direction A. Claim 26 does not exclude the capability of the catheter
to bend or curve in other directions.
We sustain the rejection of claim 26, and of dependent claim 27 for
which Appellant does not present any separate arguments and which thus
falls with claim 26, as anticipated by Ishii.

Appeal 2010-006205
Application 11/012,826
7
Claims 32-34
Appellant argues that Ishii’s catheter does not have a section having a
“flexibility characteristic that is different from the other sections of said
catheter,” as called for in claim 32, because Ishii discloses that the thickness
of the tubular wall of the catheter body remains almost constant along the
entire circumference of the catheter. App. Br. 17; see Ishii, col. 5, ll. 64-67
(stating “the thickness of the tubular wall of the catheter body 2 is almost
constant along the entire circumference of the tube including the groove 21
formed portion).
Appellant’s argument is not convincing. Ishii discloses that as a result
of the almost constant thickness, the strength of the groove formed portion is
not reduced, and even with a relatively small thickness, the deformation or
like damage to the groove is prevented. Col. 5, l. 67 – col. 6, l. 4. The
grooved portion of Ishii’s catheter is different from the non-grooved portion
of the catheter in that “it has a property (characteristic) that its flexural
rigidity differs according to its bending direction.” Col. 6, ll. 10-11. Thus,
Ishii supports the Examiner’s finding that a flexibility characteristic of this
grooved portion “is different from the other sections of the catheter” (Ans.
4).
Appellant also argues that Ishii’s illustration in figure 3 of four
directions A-D in which the catheter can be bent evidences that there is no
“predefined direction” for the catheter. Reply Br. 3. We do not agree. First,
claim 32 does not define the “predefined direction” relative to any claimed
structure of the apparatus. Moreover, claim 32 does not exclude capability
of movement in other directions distinct from a “predefined direction.”
Further, Ishii clearly identifies direction A as a direction in which the
Appeal 2010-006205
Application 11/012,826
8
grooved portion of the catheter “is selectively readily bent.” Thus, direction
A can reasonably be characterized as a “predefined direction.”
Appellant’s reliance on Ishii’s figure 4 embodiment of a progressively
reduced groove depth is unavailing to show a distinction from the claimed
catheter in which one section has a flexibility characteristic that is different
from the other sections of the catheter. See App. Br. 17-18. First, claim 32
does not require that the “flexibility characteristic” be a constant flexibility
along the entire “at least one section.” Second, a section of this grooved
portion having a first depth has a flexibility that is different from other
sections having different depths. See Ishii, col. 9, ll. 6-14. Further, in any
event, Ishii discloses that the depth of the groove 21 may be partially
constant in a longitudinal direction, that the groove may be null in part of the
body, or that there may be no groove in part of the body. Col. 9, ll. 21-25.
We sustain the rejection of claim 32 and of dependent claims 33 and
34, for which Appellant has not asserted any separate arguments and which
thus fall with claim 32, as anticipated by Ishii.
Claims 38 and 39
Claim 38 recites a catheter comprising a “plastic” tubing. The
Examiner acknowledges that Ishii does not comprise a tubing made of
plastic. Ans. 5. The Examiner’s finding that “it is very well-known in the
catheter art to form catheters of plastic material” (Ans. 8) does not make up
for the deficiency in Ishii vis-à-vis the anticipation rejection.
We do not sustain the rejection of claim 38 and its dependent claim 39
as anticipated by Ishii.
Rejection (2)
Claims 31 and 37 depend from claims 26 and 32, respectively, and
further require that the at least one section have a wall thickness less than
Appeal 2010-006205
Application 11/012,826
9
that of the rest of the catheter. The Examiner found that Ishii lacks this
feature, but determined it would have been obvious to modify Ishii’s
catheter such that one section “has a wall thickness less than the rest of the
catheter, as taught by Jonkman or Davey, in order to increase the flexibility
and kinking resistan[ce].” Ans. 5.
In contesting the combined teachings of Ishii and Davey, Appellant
argues that Davey teaches a wall thickness that increases from the distal end
to the proximal end. App. Br. 22. Thus, according to Appellant, there is no
one section along the length of Davey’s catheter that has a wall thickness
less than the rest of the catheter. Id.
We reject Appellant’s argument. As pointed out by the Examiner, a
length of catheter having a wall thickness that increases from the distal end
to the proximal end comprises a portion at the distal end having a wall
thickness that is less than the rest of the catheter. See Ans. 9. Claims 31 and
37 do not require that the “at least one section” have a constant wall
thickness along its entire length.
Inasmuch as Appellant does not otherwise contest the Examiner’s
combination of Ishii and Davey, we sustain the rejection of claims 31 and 37
as unpatentable over Ishii and either Jonkman or Davey on the basis of the
combined teachings of Ishii and Davey.
Rejection (3)
In rejecting claim 38 under 35 U.S.C. § 103(a) as unpatentable over
Ishii, the Examiner conceded that Ishii does not disclose the catheter tubing
being made of plastic, but found that one of ordinary skill in the art would
recognize that the plastic material has “flexibility characteristic,” and thus
determined it would have been obvious “to provide a plastic tube, since it
Appeal 2010-006205
Application 11/012,826
10
has been held to be within the general skill of a worker in the art to select a
known material on the basis of its suitability for the intended use as a matter
of obvious design choice.” Ans. 5. The Examiner noted that Ishii discloses
a catheter made of pseudoelastic alloy, and explained that a person of
ordinary skill in the art would recognize plastic material as being a suitable
material for Ishii’s catheter because “the plastic material has good flexibility
characteristics and is able to bend in different directions.” Ans. 10.
The Examiner’s reliance on Ishii’s disclosure of pseudoelastic alloy as
a suitable catheter tubing material as an underpinning for the proposed
modification to make the catheter of plastic is misplaced. Ishii does not
suggest that pseudoelastic alloys are suitable materials for Ishii’s catheter
because they are flexible or have flexibility characteristics similar to those of
plastic materials. Rather, Ishii characterizes pseudoelastic alloys as suitable
because of their ability to be readily returned to their original form by
removal of stress. Col. 5, ll. 19-24. In fact, Ishii suggests that a relatively
thin, small diameter catheter of the type disclosed by Ishii may have a low
stiffness or be readily kinked, rendering it incapable of achieving the
required torque transmissibility and pushability, if made from a synthetic
resin material. Col. 1, ll. 32-37. Thus, Ishii discloses making the relatively
narrow catheter of a “metal tube having bending elasticity,” preferably a
pseudoelastic alloy. Col. 1, ll. 37-39; col. 5, ll. 19-22. Ishii teaches that
making the catheter body of a metal material gives it “higher rigidity
(flexural rigidity and torsional rigidity) than a catheter body made from a
synthetic resin material (plastic).” Col. 4, ll. 61-64.
In light of the above, the Examiner’s articulated reason for modifying
Ishii’s catheter to make it of a plastic material lacks rational underpinnings.
Appeal 2010-006205
Application 11/012,826
11
See App. Br. 23-24. We do not sustain the rejection of claim 38 as
unpatentable over Ishii.
Rejection (4)
Claim 38 requires a catheter made of plastic tubing having “a cross-
sectional profile that causes said tubing to have a naturally biased orientation
when not constrained by said guide so that when any portion of said tubing
extends out of said guide, said tubing is routed in a predefined direction in
accordance to its biased orientation.” We agree with the Examiner that
Daum’s catheter has a naturally biased orientation. See Ans. 5, 9. However,
Appellant argues that “Daum fails to disclose that it is the cross-sectional
profile that causes his catheter to have a naturally biased orientation, and in
fact teaches that the biased orientation of his catheter is due to the type of
material used” (App. Br. 21),1 and the Examiner has not offered any
explanation to establish a sound basis for the finding that Daum satisfies this
limitation (Ans. 5).
Thus, we do not sustain the rejection of claim 38 as anticipated by
Daum.
Rejection (5)
Claim 32 requires a catheter having one section having a “flexibility
characteristic that is different from the other sections of said catheter”
(emphasis added). As pointed out by Appellant, Daum utilizes materials
having shape memory to cause the catheter to assume a pre-existing curved
shape after being forcibly straightened. See App. Br. 24; Daum, col. 1, ll.
59-63; col. 3, ll. 15-18; col. 5, ll. 30-37; col. 6, ll. 10-19.

1 See Daum, col. 1, ll. 59-63; col. 3, ll. 15-18; col. 5, ll. 30-37; col. 6, ll. 10-
19.
Appeal 2010-006205
Application 11/012,826
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The Examiner does not point to, nor do we find, any disclosure in
Daum directed to providing any section of Daum’s catheter with a flexibility
characteristic that is different from the other sections of the catheter. Rather,
the Examiner alludes to the curve at the distal end 4 of Daum’s catheter, and
states that “[t]herefore, it is very common knowledge that the cross section
at location 4 having a flexibility characteristic that is different than other
section of the catheter 12.” Ans. 6. This statement raises a question as to
whether the Examiner considers the different “flexibility characteristic”
feature to be lacking in Daum. However, in any event, the Examiner does
not propose any modification to Daum to provide a section having a
different flexibility characteristic.2
In responding to Appellant’s argument, the Examiner appears to make
a finding that Daum’s disclosure of a curved distal end that can be forcibly
straightened but will return to its curved shape upon removal of the force
evidences that the distal end of the catheter is more flexible than other
sections of the catheter. Ans. 10. We do not agree with the Examiner. The
capability of Daum’s catheter to return to its curved shape upon removal of
the force is not a flexibility characteristic, and does not evidence that the
distal end is more flexible than other sections of the catheter. Indeed, this
description of the catheter indicates nothing about how much force is
required to forcibly straighten the distal end.
Further, the Examiner states “if the proximal end having flexibility
characteristic same as the distal end, it is very hard to manipulate or hold the
catheter and kinking happened during insertion and placement of the distal

2 Although the rejection is based on obviousness, not anticipation, the
Examiner does not explicitly point out which claimed feature, if any, might
be lacking in Daum, much less propose a modification to make up for such
deficiency.
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end at a target site, such as vessel.” Ans. 10-11. This statement is
unavailing, as it is not clear whether it constitutes a finding that Daum’s
distal end has a different flexibility than the proximal portion or an
articulation of a reason to modify Daum’s catheter to provide a distal end
having a different flexibility. Moreover, the Examiner does not point to any
evidence to support this statement, and, in any event, does not propose any
modification of Daum’s catheter.
In light of the above, the Examiner failed to establish that Daum
renders obvious the subject matter of claim 32. We do not sustain the
rejection.
DECISION
The Examiner’s decision rejecting claims 25-27, 31-34, and 37-39 is
affirmed as to claims 25-27, 31-34, and 37, and is reversed as to claims 38
and 39.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED-IN-PART

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