BOSTON SCIENTIFIC SCIMED

Patent Trials and Appeals Board

May 25, 2021

2020006396 (P.T.A.B. May. 25, 2021)

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.
14/738,863 06/13/2015 Gregory Piskun 8150BSC0473D1 8209
121974 7590 05/25/2021
Kacvinsky Daisak Bluni PLLC (8150)
2601 Weston Parkway, Suite 103
Cary, NC 27513
EXAMINER
WOODALL, NICHOLAS W
ART UNIT PAPER NUMBER
3775
NOTIFICATION DATE DELIVERY MODE
05/25/2021 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):
docketing@kdbfirm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GREGORY PISKUN, DAN ROTTENBERG,
BOAZ MANASH, and DIMA PINHASOV
Appeal 2020-006396
Application 14/738,863
Technology Center 3700
Before MICHAEL L. HOELTER, WILLIAM A. CAPP, and
JEREMY M. PLENZLER, Administrative Patent Judges.
PLENZLER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 34–36, 38–48, and 50–52. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Boston Scientific
Scimed, Inc. Appeal Br. 2.
Appeal 2020-006396
Application 14/738,863

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CLAIMED SUBJECT MATTER
The claims are directed to an endoscopic system. Claim 34,
reproduced below, is illustrative of the claimed subject matter:
34. An endoscopic system, comprising:
a device having:
a first lumen and a second lumen extending along a
longitudinal axis of the device;
a chamber associated with a distal portion of the
device, at least a portion of the chamber extending beyond a
distal end of the device, wherein the chamber is movable from a
collapsed position to an expanded position, the chamber in the
expanded position configured to atraumatically contact a side
wall of a body lumen and form an altered working space within
the body lumen, and wherein the first lumen includes a first
opening into the chamber and the second lumen includes a
second opening into the chamber; and
a first balloon and a second balloon positioned on
opposite ends of the chamber;
a first instrument movable within the first lumen, wherein
a distal portion of the first instrument is extendable into the
chamber; and
a second instrument movable within the second lumen,
wherein a distal portion of the second instrument is extendable
into the chamber.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Dickhudt US 4,519,403 May 28, 1985
Gritter US 4,590,413 May 20, 1986
Edwards US 6,009,877 Jan. 4, 2000
Kalloo US 2005/0107664 A1 May 19, 2005
Milsom US 2011/0245858 A1 Oct. 6, 2011

Appeal 2020-006396
Application 14/738,863

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REJECTIONS
Claims 34–36, 38–41, 45–48, 50, and 52 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Edwards and Milsom.
Claims 42, 43, and 51 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Edwards, Milsom, and Kalloo.
Claim 44 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Edwards, Milsom, and Dickhudt.
OPINION
Related Appeals
Our rules require Appellant to
identify[] . . . all other prior and pending appeals . . . before the
Board . . . which . . . involve an application or patent owned by
the appellant or assignee, are known to appellant, the appellant’s
legal representative, or assignee, and may be related to, directly
affect or be directly affected by or have a bearing on the Board’s
decision in the pending appeal.
37 C.F.R. § 41.37(c)(1)(ii).
Appellant fails to meet its duty in the instant appeal. To the contrary,
Appellant affirmatively states: “There are no prior or pending appeals,
interferences, or judicial proceedings that are related to, directly affect, are
directly affected by, or otherwise bear upon the Board’s decision in this
Appeal.” Appeal Br. 3.
The application at issue in this appeal is a divisional of application
number 13/726,147. Application number 15/173,455 (“the related
application”) was addressed in Appeal Number 2020-004030 (“the related
appeal”), resulting in a decision affirming the Examiner (“the related
decision”). Ex parte Piskun, Appeal No. 2020-004030 (PTAB January 29,
Appeal 2020-006396
Application 14/738,863

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2021). The related application is also divisional of application number
13/726,147.
The Notice of Appeal for the related appeal was filed September 27,
2019, which is almost five months before that in the instant appeal.2 The
related application and the instant application have the same assignee,
inventors, and legal representative. The briefs and rejections in the related
appeal, as well as the related decision, address issues similar to those raised
in the instant appeal.
Appellant is reminded of its duty under 37 C.F.R. § 41.37(c)(1)(ii).
Rejection
Appellant argues claims 34–36, 38–41, 45–48, 50, and 52 as a group.
Appeal Br. 8–12. We select claim 34 as representative. Claims 35, 36,
38–41, 45–48, 50, and 52 stand or fall with claim 34. See 37 C.F.R.
§ 41.37(c)(1)(iv). Appellant relies on the arguments presented with respect
to claim 34 for the patentability of claims 42–44 and 51. Appeal Br. 12–13.
Appellant does not dispute the Examiner’s findings or rationale, other
than contending that cooling fluid is required in the system of Edwards. See
Appeal Br. 8–12. As Appellant notes (Appeal Br. 10), the Examiner finds
that the cooling system is optional in Edwards (Final Act. 6).
Appellant contends that “modifying Edwards’ devices to include
Milsom’s occlusion members would undesirably prevent cooling fluid from
draining away from the treatment site by creating a sealed working space,
and thus one of ordinary skill would not be motivated to make such a
combination.” Appeal Br. 10. Appellant further contends that “employing

2 The Notice of Appeal for 2020-006369 was filed February 18, 2020.
Appeal 2020-006396
Application 14/738,863

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Milsom’s occlusion members to create a sealed working space, as proposed
by the Office Action, would result in the collection of cooling fluid within
the space defined by the occlusion members and the body lumen.” Id.
As in the related appeal, we agree with the Examiner that, based on
the preponderance of the evidence, Edwards does not require a cooling
system. There is no dispute that Edwards does not discuss use of a cooling
fluid as a requirement in each of its embodiments. See, e.g., Appeal Br. 11
(acknowledging that “Edwards prefaces the importance of cooling by stating
that it ‘may be desirable’ to use a cooling arrangement”).
To the extent there is ambiguity as to whether the Detailed
Description in Edwards supports the Examiner’s position, we also note that
there is no cooling fluid, or any other cooling feature, recited in any claim of
Edwards. This evidence supports the Examiner’s position that cooling fluid
delivery is a non-essential feature and, therefore, optional. The Examiner’s
finding of fact that the cooling fluid feature of Edwards is optional is
supported by a preponderance of the evidence.
Accordingly, we are not apprised of error in the Examiner’s
rejections.
CONCLUSION
The Examiner’s rejections are affirmed.
Appeal 2020-006396
Application 14/738,863

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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
34–36,
38–41,
45–48, 50,
52
103 Edwards, Milsom 34–36,
38–41,
45–48, 50,
52

42, 43, 51 103 Edwards, Milsom,
Kalloo
42, 43, 51
44 103 Edwards, Milsom,
Dickhudt
44
Overall
Outcome
34–36,
38–48,
50–52

TIME PERIOD FOR RESPONSE
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