AtheroMed, Inc.

Patent Trials and Appeals Board

Nov 23, 2020

2020001138 (P.T.A.B. Nov. 23, 2020)

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.
15/048,042 02/19/2016 Paul Quentin Escudero 2015P01169US01 4488
24737 7590 11/23/2020
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus Avenue
Suite 340
Valhalla, NY 10595
EXAMINER
TON, MARTIN TRUYEN
ART UNIT PAPER NUMBER
3771
NOTIFICATION DATE DELIVERY MODE
11/23/2020 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):
katelyn.mulroy@philips.com
marianne.fox@philips.com
patti.demichele@Philips.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PAUL QUENTIN ESCUDERO,
AUGUST CHRISTOPHER POMBO, TORREY P. SMITH, and DOUGLAS
E. ROWE

Appeal 2020-001138
Application 15/048,042
Technology Center 3700
____________

Before DANIEL S. SONG, CHARLES N. GREENHUT, and
MICHAEL J. FITZPATRICK, Administrative Patent Judges.

FITZPATRICK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final decision rejecting claims 1, 3–15, and 17–26. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.

1 “Appellant” refers to the applicant as defined in 37 C.F.R. § 1.42.
Appellant identifies THE SPECTRANETICS CORPORATION and its
parent corporation, KONINKLIJKE PHILIPS N.V., as the real parties in
interest. Appeal Br. 2.
Appeal 2020-001138
Application 15/048,042

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STATEMENT OF THE CASE
The Specification
The Specification “relates to the treatment of occluded body lumens,
including the removal of occlusive material from a blood vessel.” Spec. 1.
The Claims
Claims 1, 3–15, and 17–26 are rejected. Final Act. 1. No other
claims are pending. Id. at 2; Appeal Br. 10–13. Claims 1, 15, and 26 are
independent. Appeal Br. 10–13. Claim 1 is illustrative and reproduced
below.
1. An apparatus for cutting and removing occlusive
material, the apparatus comprising:
a catheter body defining a first lumen and comprising a
distal housing that defines an opening;
a rotatable shaft disposed within the first lumen of the
catheter body, wherein the rotatable shaft comprises a conveying
component and a cutting element that is at least partially
surrounded by the distal housing, wherein the cutting element
comprises a distal end; and
an imaging element located on the distal housing, wherein
the imaging element circumscribes the distal housing, and
wherein the imaging element is disposed proximally of the distal
end of the cutting element.
Appeal Br. 10.
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Application 15/048,042

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The Examiner’s Rejections
The Examiner’s rejections, all pursuant to 35 U.S.C. § 103, are as
follows:
1. claims 1, 3–8, 10–20, and 22–25 as unpatentable over
Escudero2 and Sheehan3 (Final Act. 4);
2. claims 9 and 21 as unpatentable over Escudero, Sheehan, and
Smith4 (id. at 8); and
3. claim 26 as unpatentable over Smith and Sheehan (id.).
DISCUSSION
Rejection 1
Appellant argues the rejection of claims 1, 3–8, 10–20, and 22–25
together. Appeal Br. 5–8. We choose claim 1 as representative. See 37
C.F.R. § 41.37(c)(1)(iv).
The Examiner found that Escudero teaches the subject matter of
claim 1, as well as claims 3–5, except that “it does not specifically teach the
imaging element circumscribing the distal housing nor does it specifically
teach the specific type of ultrasound transducer used.”5 Final Act. 4–5
(citing Escudero ¶308, Figs. 1A, 1B, 19A, and 42). Rather, as shown in the
relied-upon embodiment of Figure 42, Escudero teaches optical coherence

2 US 2009/0018567 A1, published Jan. 15, 2009 (“Escudero”). Escudero
names as inventors three of the four named inventors of the instant
Application. Escudero, at [75].
3 US 2014/0276059 A1, published Sept. 18, 2014 (“Sheehan”).
4 US 2013/0096587 A1, published Apr. 18, 2013 (“Smith”). Smith names as
inventors all four of the named inventors of the instant Application. Smith,
at [72].
5 Dependent claims 3–5 recite limitations directed to particular types of
ultrasound transducers. Appeal Br. 10.
Appeal 2020-001138
Application 15/048,042

4
tomography (“OCT”) device 146 on distal housing 104 but does not describe
or show the OCT device as circumscribing the housing. Escudero Fig. 42
(ref. 146), ¶308.
The Examiner next found that Sheehan teaches:
an elongate catheter for introduction into a vessel for imaging an
occlusion (Figure 4; 85), wherein the catheter includes an
imaging element which circumscribes a distal housing of the
catheter, wherein the imaging element is disposed proximally of
the distal end of the catheter tip (Figure 4; 100), wherein the
reference states that the imaging element may be an ultrasound
transducer such as a phased array transducer ([¶ 0062]), or may
also be a transducer used for forward-looking intravascular
ultrasound ([¶ 0047]), which would have the transducer be
configured to image in a plane distal to the ultrasound transducer.
Final Act. 5.
The Examiner concluded:
Therefore, it would have been obvious to a person having
ordinary skill in the art before the effective filing date of the
claimed invention to have the imaging element of the Escudero
reference circumscribe the distal housing of the catheter body,
the distal housing being proximal the distal end of the cutting
element, as in the Sheehan reference and to further have the
transducer be a phased array transducer for forward looking
intravascular ultrasound given that these transducer types are
identified as commercially available imaging techniques for
obtaining internal characteristics of a patient’s vasculature
(Sheehan; [¶ 0030, 0047, 0062]).
Id.
In response to the Examiner’s rejection, Appellant argues, “[a]lthough
paragraph [0047] of Sheehan generally discusses a forward-looking IVUS[6]
as an exemplary imaging device, the specific imaging element 100

6 IVUS refers to intravascular ultrasound. See Spec. 9; Sheehan ¶47.
Appeal 2020-001138
Application 15/048,042

5
illustrated in Fig. 4 of Sheehan is not described as forward looking.” Appeal
Br. 6. Appellant does not develop this argument or explain the legal
significance it attaches to its argument. As such, and for the reasons below,
Appellant’s argument fails to apprise us of Examiner error.
The Examiner has established, and Appellant does not dispute, that
Sheehan teaches (1) an imaging device that circumscribes a distal housing of
a catheter (i.e., Sheehan Fig. 4 (ref. 100)) and (2) “[e]xemplary imaging
devices include optical coherence tomography (OCT) [, such as in Escudero,
as well as] Forward-Looking IVUS” (Sheehan ¶47). Giving due
consideration to both of these teachings, we find that Sheehan implicitly
teaches or, at a minimum, suggests a forward-looking IVUS that
circumscribes a distal housing of a catheter. See, e.g., Application of
Burckel, 592 F.2d 1175, 1179 (CCPA 1979) (“Under 35 U.S.C. § 103, a
reference must be considered not only for what it expressly teaches, but also
for what it fairly suggests.”). Just as a one prior art reference “must be read,
not in isolation, but for what it fairly teaches in combination with the prior
art as a whole,” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986),
the same logic applies to teachings within the same reference. This is
particularly true here, where the relied-upon teachings from Sheehan are
highly inter-related, as they both relate to features of a medical imaging
device positioned on a distal housing of a catheter.
Appellant next argues that, even if Sheehan teaches an imaging
element that is both circumscribing and forward looking, “one of skill in the
art would not be motivated to look to Sheehan to modify Escudero because,
as mentioned above, [Escudero’s] OCT device 146 is already forward
viewing.” Appeal Br. 6; see also id. (“Sheehan’s imaging element 100
Appeal 2020-001138
Application 15/048,042

6
would be superfluous to Escudero’s forward viewing OCT device.”). But
the Examiner did not assert that Escudero’s OCT lacks forward looking
capability, let alone rely on such an assertion, as the motivation for the
proposed modification. As the Examiner best explains in the Answer:
[T]he Examiner is not solving a problem that does not
exist with the proposed modification. The primary and
modifying references themselves teach that a person having
ordinary skill in the art would find it obvious to utilize different
types of imaging means for the devices. Each of these imaging
devices has their own benefits and drawbacks to be considered,
as is previously discussed in the Advisory Action filed on June
13, 2019. Although the Appellant argues that the Examiner has
not articulated the potential benefits of using one transducer over
the other, this is irrelevant given the claims merely claim “an
imaging element”, therein not requiring particulars to the
imaging element. It has been established that these imaging
elements are interchangeable as commercially available imaging
techniques for obtaining internal characteristics of a patient’s
vasculature.
Ans. 4 (citing Sheehan ¶¶30, 47, 62); see also id. at 3–4 (“The Sheehan
reference clearly shows these two types of imaging elements (OCT and
phased array) being alternative types of imaging means for an imaging
catheter (Sheehan; [¶ 0062]), while the Escudero reference teaches
embodiments where ultrasound transducers are used as an imaging means
(Escudero; [¶ 0308]) or wherein OCT is used as an imaging means
(Escudero; [¶ 0309]).”).
“[W]hen a patent claims a structure already known in the prior art that
is altered by the mere substitution of one element for another known in the
field, the combination must do more than yield a predictable result.” KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007), discussing United States
v. Adams, 383 U.S. 39, 50–51 (1966). Such is the scenario before us.
Appeal 2020-001138
Application 15/048,042

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None of Appellant’s arguments apprises us of error in the Examiner’s
rejection of claim 1. Accordingly, we affirm that rejection, as well as that of
claims 3–8, 10–20, and 22–25, which fall therewith. 37 C.F.R.
§ 41.37(c)(1)(iv). In sum, Rejection 1 is affirmed as to all claims.
Rejection 2
Appellant argues against this rejection of dependent claims 9 and 21
solely on the basis that the additional reference cited by Examiner—Smith—
“fails to cure the deficiencies of Escudero and Sheehan.” Appeal Br. 8.
Because Appellant fails to apprise us of any such deficiency in Rejection 1,
we likewise affirm Rejection 2.
Rejection 3
Appellant argues against this rejection of independent claim 26 as
follows: “The Examiner proposed modifying Smith in view of Sheehan for
similar reasons as modifying Escudero in view of Sheehan as described
above with reference to claims 1 and 15. As explained above, such reasons
cannot be used to support a conclusion of obviousness.” Id. at 9. This
argument does not apprise us of error. We affirm Rejection 3.

Appeal 2020-001138
Application 15/048,042

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SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3–8, 10–
20, 22–25
103 Escudero, Sheehan 1, 3–8,
10–20,
22–25

9, 21 103 Escudero, Sheehan,
Smith
9, 21
26 103 Sheehan, Smith 26
Overall
Outcome
1, 3–15,
17–26

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