Ex Parte VON WEYMARN-SCHÄRLI

Patent Trial and Appeal BoardAug 14, 2017

13532523 (P.T.A.B. Aug. 14, 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. 13/532,523 06/25/2012 Alexander VON WEYMARN-SCHÄRLI A013-5786PCTCA 6404 40627 7590 08/14/2017 ADAMS & WILKS 17 BATTERY PLACE SUITE 1343 NEW YORK, NY 10004 EXAMINER MENSH, ANDREW J ART UNIT PAPER NUMBER 3761 MAIL DATE DELIVERY MODE 08/14/2017 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 ALEXANDER VON WEYMARN-SCHÄRLI ____________________ Appeal 2016-0052381 Application 13/532,5232 Technology Center 3700 ____________________ Before MURRIEL E. CRAWFORD, MICHAEL W. KIM, and PHILIP J. HOFFMANN, Administrative Patent Judges. HOFFMANN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the final rejection of claims 1–6. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 Our decision references Appellant’s Specification (“Spec.,” filed June 25, 2002), Appeal Brief (“Appeal Br.,” filed Apr. 10, 2015), and Reply Brief (“Reply Br.” filed Apr. 14, 2016), as well as the Examiner’s Final Office Action (“Final Action,” mailed June 5, 2014) and Answer (“Answer,” mailed Feb. 11, 2016). 2 According to Appellant, the “real party in interest is the named inventor, Alexander Von Weymarn-Scharli.” Appeal Br. 2. Appeal 2016-005238 Application 13/532,523 2 According to Appellant, “[t]he invention relates to a tube or a catheter, for at least partially introducing into a body passage.” Spec. 1. Claims 1 and 4 are the sole independent claims on appeal. Appeal Br., Claims App. We reproduce claims 1 and 4, below, as illustrative of the appealed claims.3 1. A sheath for at least partial introduction into a body passage, comprising: an envelope body inside of which is an inner body with an annular space between the two bodies, wherein the inner body and the envelope body have polygonal cross sections and are rotationally movable relative to one another to bring the inner body into contact with the envelope body thereby imparting stiffness to the sheath, wherein the inner body and the outer [sic, envelope] body each have plural sidewalls that define the polygonal cross sections, and wherein corners of adjoining sidewalls of the inner body can be brought into contact with sidewalls of the envelope body to impart the stiffness to the sheath, and the sidewalls of the inner body and the envelope body can be situated parallel to each other to impart flexibility to, the sheath. 4. A sheath for at least partial introduction into a body passage, comprising: an envelope body inside of which is an inner body with an annular space between the two bodies, the inner and envelope bodies being movable relative to one another to impart flexibility to the sheath; wherein the envelope body and the inner body are manufactured from magnetizable material for selectively creating magnetic attraction forces of opposite polarity between the inner body and the envelope body at spaced apart locations along the lengths thereof within the body passage to restrain relative movement between the inner and envelope bodies to impart stiffness to the sheath. 3 Square brackets original. Appeal 2016-005238 Application 13/532,523 3 REJECTIONS AND PRIOR ART The Examiner rejects claims 1–3 under 35 U.S.C. § 103(a) as unpatentable over Whayne (US 6,203,525, iss. Mar. 20, 2001) and Bai (US 4,619,643, iss. Oct. 28, 1986). The Examiner rejects claims 4–6 under 35 U.S.C. § 103(a) as unpatentable over Whayne and Avellanet (US 5,542,938, iss. Aug. 6, 1996). ANALYSIS Based on our review of the record, including the Examiner’s Final Office Action and Answer, and Appellant’s Appeal Brief, for the reasons discussed below, we do not sustain the rejections of claims 1–6. Obviousness rejection of claims 1–3 As set forth above, independent claim 1 recites, in part, an envelope body inside of which is an inner body with an annular space between the two bodies, wherein the inner body and the envelope body have polygonal cross sections and are rotationally movable relative to one another to bring the inner body into contact with the envelope body thereby imparting stiffness to the sheath. Appeal Br., Claims App. With respect to claim 1, the Examiner finds that Bai discloses a catheter “where the inner and envelope bodies have a polygonal cross section and the corners are lined up[,] as shown in [Bai’s] Figures 3c[–]3e.” Final Action 4. However, according to Appellant, “Bai discloses various embodiments of a double-lumen catheter of the type shown in Fig. 1, in which the catheter has an arterial lumen 16 and a venous lumen 18 along an intermediate part 17 of the catheter.” Appeal Br. 10. Appellant argues the following, with reference to Bai: Appeal 2016-005238 Application 13/532,523 4 The obturator 31 has the same cross-sectional shape as the lumen 18, and the obturator 32 has the same cross-sectional shape as the lumen 16 (column 7, lines 10[–]19)[,] so that after the two obturators and the guidewire are assembled within the lumens, “there is preferably substantially no empty space in the catheter body A throughout its length and the body A cannot be squashed by pinching or kneading between the thumb and index finger” (column 7, lines 29[–]33). Consequently, in Bai, the obturators 31 and 32 are rotationally rigid with respect to the catheter body A for the purpose of preventing rotational twisting of the obturators and facilitating their insertion into the lumens. Id. Based on our review, we agree with Appellant that Bai discloses a design to prevent rotation of the inner catheters, in contrast to the claimed invention in which the inner body is intended to be rotated with respect to the outer body. In addition, the Examiner finds that Whayne fails to disclose the claimed “polygonal cross sections,” but finds that Bai discloses this feature. Final Action 4. However, in the cited section of Bai describing their invention, Bai teaches that the “cross-sectional shape may be symmetrical, for example, somewhat oval.” Bai col. 3, ll. 11–14. In each drawing in Bai, the cross-sectional shape is oval or curved. See, e.g., Bai Figs. 3a–3f. A polygon is “a closed plane figure bounded by straight lines.” MERRIAM-WEBSTER ONLINE DICTIONARY (last retrieved on Aug. 4, 2017, at https://www.merriam-webster.com/dictionary/polygon). We find that an oval or other curved cross-section, as taught by Bai, is not a polygon, because an oval does not have straight edges. Therefore, we conclude that Bai fails to disclose the claimed “polygonal cross sections.” Thus, based on the foregoing, the Examiner fails to support adequately the determination of obviousness of the claimed invention based on Whayne and Bai. For this reason, we do not sustain the rejection of Appeal 2016-005238 Application 13/532,523 5 either claim 1, or of claims 2 and 3 that depend from claim 1, under 35 U.S.C. § 103(a). Obviousness rejection of claims 4–6 As set forth above, independent claim 4 recites, in part, the envelope body and the inner body are manufactured from magnetizable material for selectively creating magnetic attraction forces of opposite polarity between the inner body and the envelope body at spaced apart locations along the lengths thereof within the body passage to restrain relative movement between the inner and envelope bodies to impart stiffness to the sheath. Appeal Br., Claims App. With respect to independent claim 4, the Examiner finds that “Avellanet discloses a catheter where the inner and envelope body both have a magnetizable material in order to control their relative positioning to one another (Fig 1A[–]5 and [c]ol[.] 3, lines 44[–]54, [c]ol[.] 3, line 66 to [c]ol[.] 4, line 3[,] and [c]ol[.] 4, lines 37[–]40).” Final Action 5–6. Appellant argues that the Examiner’s finding is erroneous, because Avellanet’s “holding attachment 20 is positioned at the proximal end of the guiding catheter 10 outside of the body passage and does not generate magnetic attraction forces of opposite polarity along the lengths of the guiding catheter 10 and the balloon catheter 14 within the body passage, as specified in claim 4.” Appeal Br. 16. Based on our review, we agree with Appellant. Specifically, Avellanet discloses a structure for inhibiting guidewire/catheter relative longitudinal motion includes a first magnetic circuit element longitudinally fixed with respect to the guidewire, a second magnetic circuit element located external to the guidewire, such that, at a particular relative positioning of the guidewire, the two magnetic Appeal 2016-005238 Application 13/532,523 6 circuit elements apply magnetic force tending to inhibit longitudinal sliding motion of the guidewire. Avellanet col. 3, ll. 44–51. Avellanet further discloses magnetic sections along a proximal end (outside the body cavity) of the guidewire inside the catheter (id. at col. 6, ll. 15–19), which is coupled with a short magnet 22 on an outer catheter (id. at col. 5, ll. 53–55; see also id. at col. 6, ll. 60–61). Because Avellanet’s magnet 22, which surrounds the guidewire, is located only at the proximal end of the device, both the guidewire and outer magnet 22 are not “at spaced apart locations along the lengths” of the two elements, as claimed. Additionally, although Avellanet discloses that the magnetic force prevents the guidewire from sliding in and out of the outer tubing (id. at col. 3, ll. 44–51), Avellanet does not disclose that the magnetic force at the proximal end will “impart stiffness to the sheath,” as claimed. To the contrary, Avellanet discloses an embodiment that increases the flexibility of the distal end of the device. Id. at col. 6, ll. 5–8. Thus, based on the foregoing, the Examiner fails to support adequately the determination of obviousness of the claimed invention based on Whayne and Avellanet. Therefore, we do not sustain the rejection of either claim 4, or of claims 5 and 6 that depend from claim 4, under 35 U.S.C. § 103(a). DECISION We REVERSE the Examiner’s obviousness rejections of claims 1–6. REVERSED