In re INCEPT LLC

Case: 25-1900 Document: 29 Page: 1 Filed: 09/17/2026

NOTE: This disposition is nonprecedential. United States Court of Appeals for the Federal Circuit

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IN RE INCEPT LLC,

Appellant ______________________ 2025-1900 ______________________

Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. 16/886,099.

______________________ Decided: September 17, 2026 ______________________

PETER S. DARDI, Christensen Fonder Dardi & Herbert, PLLC, Maple Grove, MN, for appellant. Also represented by CASEY ALLEN KNISER, Law Office of Casey A. Kniser LLC, Chicago, IL.

JUSTIN BOVA, Office of the Solicitor, United States Pa- tent and Trademark Office, Alexandria, VA, for appellee John A. Squires. Also represented by SARAH E. CRAVEN, NICHOLAS THEODORE MATICH, IV, ROBERT J. MCMANUS.

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PER CURIAM.

Incept LLC (“Incept”) appeals the Patent Trial and Ap- peal Board’s decision affirming an examiner’s rejection of claim 1 of U.S. Patent Application No. 16/886,099 (“the ’099 application”) as unpatentable under 35 U.S.C.§ 103. Ex parte Bean, No. 2024-003619, 2024 WL 5193610, at *5–8 (P.T.A.B. Dec. 20, 2024) (“Decision”); Ex parte Bean, No. 2024-003619, 2025 WL 1329066 (P.T.A.B. Apr. 30, 2025) (“Decision Denying Rehearing”). For the reasons be- low, we vacate and remand.

I. BACKGROUND

The ’099 application is entitled “Anchoring Strain Re- lief Member.” J.A. 39. Claim 1 recites:

1. A medical catheter having a proximal end and a distal end, the catheter comprising a catheter shaft having a catheter lumen, a catheter inner surface, and a catheter outer surface separated from the catheter inner surface by a catheter wall thickness, a hub attached to the proximal end of the catheter shaft, and an anchoring strain relief member distal to the hub, joined to the catheter outer sur- face, and comprising a sealing portion that comprises a plurality of ridges, each ridge having a ridge tip and a ridge height de- fined by a distance from the ridge tip to a

United States District Court for the Eastern District of New York, sitting by designation. catheter central axis, the distance being measured perpendicular to the central axis, wherein each ridge forms a flow bar- rier between the catheter outer surface along a circumference at the ridge and the top of that ridge and wherein the sealing portion is not tapered, is reverse tapered or has no more than about a 1.5 degree for- ward taper in the proximal to distal direc- tion.

J.A. 604 (emphases added).

On July 1, 2024, the examiner rejected claims 1–3, 5, 11, 15–22, and 32 2 of the ’099 application as obvious over Thomspon Smith 3 alone. J.A. 644, 646. On appeal, Incept 4 challenges only the Board’s rejection of claim 1. Appel- lant’s Br. 10. Specifically, the examiner found that Thomspon Smith discloses every limitation of claim 1 ex- cept for the taper angle of the sealing portion of the claimed medical catheter. J.A. 648–51. Although “it appear[ed]” to the examiner “that Thom[sp]on Smith’s strain relief’s ridges together may be forwardly tapered,” the examiner conceded that Thomspon Smith “does not expressly state that [the strain relief member] is forwardly tapered” nor “state the degree of that forward taper.” J.A. 649.

2 The Board notes that “[i]t is unclear from the rec- ord whether the Examiner intended to include claim 14 in this new ground of rejection,” Decision at *5 n.6. Whether claim 14 is included in this rejection is irrelevant for pur- poses of this appeal.

The examiner also concluded that the language of claim 1 provided two locational limitations for the claimed “flow barrier”—the barrier must be “(1) anywhere ‘between the catheter outer surface . . . and the top of that ridge;’ and (2) the position from (1) is located anywhere ‘along a circumference at the ridge.’” J.A. 653. The examiner sub- sequently found that Thomspon Smith’s strain relief mem- ber with ridges forms a “flow barrier” within the location described by the claim. J.A. 654.

Incept appealed the examiner’s rejections to the Board. Decision at *1. The Board reversed the examiner’s rejec- tion of claims 2, 3, 5, 11, 15–22, and 32, but affirmed the examiner’s rejection of claim 1 as obvious over Thomspon Smith alone. Id. at *8. The Board found that “there [wa]s no dispute that the strain relief member of Thomspon Smith’s medical catheter includes the claimed structure ex- cept for the specific taper angle,” id. at *6, and agreed with the examiner that it would have been obvious to modify Thomspon Smith’s strain relief member to meet the taper angle limitation of claim 1, id. at *6–7. Incept requested rehearing, arguing that the Board overlooked or misunder- stood a dispute regarding the construction of “flow barrier” and that Thomspon Smith additionally does not teach a “flow barrier.” J.A. 730–32. The Board subsequently de- nied Incept’s rehearing request. Decision Denying Rehear- ing at *1. The Board agreed with the examiner’s construction of “flow barrier,” stating that the claim “does not require sealing of the catheter outer surface to the ridges, but rather, recites the position of the flow barrier between the catheter and the top of the ridge.” Id. at *3. According to the Board’s and the examiner’s construction, the “flow barrier” limitation reads on “any solid structure in the prior art device which is positioned within the bounds of the claimed location.” Id. at *4 (emphasis omit- ted). The Board rejected Incept’s construction—“a flow barrier at the interface of the catheter outer surface that extends to the top of the ridge,” id.; see J.A. 730–31, and stated that “the [e]xaminer’s finding that a fluid would not be able to flow through the disclosed solid, annular, end of [the catheter’s] strain relief member is reasonable.” Deci- sion Denying Rehearing at *4. The Board also maintained its position on the taper angle argument. Id. at *5–6.

Incept timely appealed. We have jurisdiction under 28 U.S.C. § 1295(a)(4)(A).

II. STANDARD OF REVIEW

We review de novo the Board’s claim construction. In re NTP, Inc., 654 F.3d 1268, 1273 (Fed. Cir. 2011). “We re- view the Board’s ultimate determination of obviousness de novo and its underlying factual determinations for sub- stantial evidence.” PersonalWeb Techs., LLC v. Apple, Inc., 917 F.3d 1376, 1381 (Fed. Cir. 2019) (internal quotation marks omitted). Substantial evidence is “less than the weight of the evidence but more than a mere scintilla of evidence.” In re Mouttet, 686 F.3d 1322, 1331 (Fed. Cir. 2012) (citation omitted).

III. DISCUSSION

Incept argues that the Board erred in finding claim 1 of the ’099 application unpatentable as obvious over Thomspon Smith because (1) the Board adopted a con- struction of “flow barrier” that was not supported by the intrinsic evidence, Appellant’s Br. 18–24; and (2) the Board and examiner did not make a prima facie case of obvious- ness under Thomspon Smith alone, id. at 24–48. We ad- dress each argument in turn.

6 IN RE INCEPT LLC

A.

Incept argues that the Board’s construction of “flow barrier” is inconsistent with the claim language and the specification. Id. at 19–22. Incept also argues that the Board’s construction would not block all flow paths and would therefore defeat the purpose of the claimed invention of claim 1. Id. at 22–24. The Director of the Patent Office argues that the claim language and specification support the Board’s construction of “flow barrier.” Appellee’s Br. 18–23. We agree with Incept.

During examination, “the [Patent Office] must give claims their broadest reasonable construction consistent with the specification.” In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). The broadest reason- able construction consistent with the specification requires that “the [B]oard must always consider the claims in light of the specification and teachings in the underlying pa- tent.” In re: Power Integrations, Inc., 884 F.3d 1370, 1375 (Fed. Cir. 2018) (internal citation and quotation marks omitted). “[T]he Board cannot construe the claims so broadly that its constructions are unreasonable under gen- eral claim construction principles.” In re: Smith Int’l, Inc., 871 F.3d 1375, 1382 (Fed. Cir. 2017) (citation omitted).

The claim language itself supports an interpretation of “flow barrier” that must block flow from the catheter outer surface to the top of the ridge. Here, claim 1 of the ’099 application claims a medical catheter with three main com- ponents: a catheter shaft, a hub, and an anchoring strain relief member. J.A. 604. In relevant part, the claim re- quires that the anchoring strain relief member is “joined to the catheter outer surface” and contains “a sealing portion that comprises a plurality of ridges . . . wherein each ridge forms a flow barrier between the catheter outer surface along a circumference at the ridge and the top of that ridge.” Id. The claim language explicitly requires that each ridge forms a flow barrier between two points (the catheter outer surface and the top of the ridge). Addition- ally, the claim describes the catheter outer surface as a component of the catheter shaft, and as being “separated from the catheter inner surface by a catheter wall thick- ness.” Id. Under the language of claim 1, the ridges make up the sealing portion of the claimed anchoring strain relief member. J.A. 604. Accordingly, even the broadest reason- able interpretation of the claim language requires flow to be blocked from the catheter outer surface to the top of the ridge.

The specification further supports this interpretation of “flow barrier.” The specification uses the term “flow bar- rier” in a passage that, like the claim language, requires that a ridge “forms a flow barrier between the catheter outer surface and the top of the ridge.” J.A. 41 ll. 23–24. Apart from this use of the term flow barrier, the specifica- tion also repeatedly describes the invention as a medical catheter comprising a strain relief member that is capable of sealing and anchoring with a hemostatic valve or other elastomeric material. See J.A. 39 ll. 26–28 (“[T]he inven- tion pertains to a medical catheter that comprises a strain relief member that provide[s] a gripping surface in a seal- ing area to provide resistance to movement and radial com- pression while promoting a seal when compressed against a deformable material.”); see, e.g., J.A. 48 ll. 3–5 (“In an im- provement adapted from such familiar methods, however, the anchoring strain relief member in the devices described herein may be used as a sealing and gripping surface.”). In sum, the specification requires that the ridges that make up the sealing portion of the strain relief member be capa- ble of sealing and anchoring.

The specification’s description of the structures that form the claimed flow barrier further supports Incept’s pro- posed construction. The specification explicitly describes the nature of the connection between the elastomeric mem- ber and sealing portion of the anchoring strain relief mem- ber as having no “flow of fluid from a distal end to a 8 IN RE INCEPT LLC proximal end of the member when the member is in a seal- ing position,” which is accomplished by the anchoring strain relief member being “part of, or attached to, the cath- eter so that there is a fluid-tight seal between the strain relief member and elastomeric sealing member.” J.A. 53 ll. 8–12. The Board’s construction—“each ridge is a solid structure positioned somewhere between the catheter outer surface and the top of the ridge”—allows for fluid channels between the flow barrier and the catheter outer surface, which is inconsistent with the description of flow barrier set forth in the specification. Appellee’s Br. 19–20 (cleaned up); see In re: Smith Int’l, 871 F.3d at 1382–83 (“The correct inquiry in giving a claim term its broadest reasonable interpretation in light of the specification is not whether the specification proscribes or precludes some broad reading of the claim term adopted by the exam- iner . . . . It is an interpretation that corresponds with what and how the inventor describes his invention in the specification.”). Contrary to the Board’s construction, the specification supports an interpretation of “flow barrier” that must block flow between the catheter outer surface and the top of the ridge.

The Director’s argument that Incept used more specific language in a portion of the specification and in two de- pendent claims, thereby demonstrating that Incept knew how to claim a fluid-tight seal, is similarly unavailing. Ap- pellee’s Br. 20–21. Instead, the dependent claims the Di- rector relies on are more in line with Incept’s construction than with the Board’s construction. The Director cites orig- inal claim 3, which recites “[t]he medical catheter of claim 1 wherein the sealing portion is free of fluid chan- nels,” J.A. 58. The Director also cites amended claim 22, which recites “[t]he method of claim 21 wherein the sealing portion is sealingly engaged against an elastomeric sealing member of a hemostatic valve forming a fluid tight seal,” J.A. 396 (emphasis added). Appellee’s Br. 21. Claim 3 was subsequently amended to add additional language “when the sealing portion is in a sealing position with an elasto- meric member.” J.A. 393 (emphasis added). These depend- ent claims are directed to configurations of the claimed invention in which an elastomeric member is in contact with the plurality of ridges that make up the sealing por- tion of the claimed strain relief member. Accordingly, the dependent claims do not support the Board’s construction.

Finally, the Director’s statement that Incept’s argu- ments are based on the use of the claimed catheter in an unclaimed nested configuration is incorrect. Appellee’s Br. 21–22. According to the Director, construing flow bar- rier to require a solid surface that spans from the catheter outer surface to the top of the ridge along a circumference at the location of the ridge improperly relies on the way the claimed structure will be put to use. Id. (citing first Edge- well Pers. Care Brands, LLC v. Munchkin, Inc., 998 F.3d 917, 922 (Fed. Cir. 2021), then Paragon Sols., LLC v. Timex Corp., 566 F.3d 1075, 1091 (Fed. Cir. 2009)). We disagree. Embodiments of the ’099 application include a sealing portion of the strain relief member, and the junc- tion between the sealing portion and the elastomeric mem- ber is described as fluid-tight regardless of whether the device is explicitly described as being used in a nested con- figuration. J.A. 39–42, 53. Contrary to the Director’s ar- guments, construing “flow barrier” consistent with the teachings of the specification does not require the introduc- tion of functional limitations. Construing flow barrier to mean a solid surface that spans from the catheter outer surface to the top of the ridge along a circumference at the location of the ridge describes the location at which the flow barrier exists, regardless of the specific configuration in which the invention is used. Accordingly, we disagree with the Board’s construction of “flow barrier” and construe a “flow barrier” to be a solid surface that spans from the cath- eter outer surface to the top of the ridge along a circumfer- ence at the location of the ridge.

10 IN RE INCEPT LLC

B.

The Board’s incorrect construction of “flow barrier” im- paired its obviousness analysis. Specifically, the Board found that claim 1 was unpatentable over Thomspon Smith because it would have been obvious to modify Thomspon Smith’s strain relief member to include the taper angle of claim 1. Decision at *5. The Board’s conclusion was based on the understanding that “the only difference between the prior art and the claim[ ] was a recitation of relative dimen- sions of the claimed device.” Id. (emphasis added); see also id. at 6 (“There is no dispute that the strain relief member of Thomspon Smith’s medical catheter includes the claimed structure except for the specific taper angle . . . .”); Decision Denying Rehearing at *8 (“claim 1 does not recite anything structurally distinct from the structure of Thomspon Smith aside from the difference in[ ] the forward taper angle.”). Because the Board reached this predicate assumption un- der an incorrect construction of flow barrier, we do not reach the Board’s obviousness conclusion, vacate the Board’s decision, and remand this case for the Board to con- sider the patentability of claim 1 under the construction provided in this opinion.

III. CONCLUSION

We have considered the parties’ remaining arguments and find them unpersuasive. We vacate the Board’s deci- sion and remand for further proceedings consistent with this opinion.

VACATED AND REMANDED

COSTS

Costs to Incept.