Eric R. Cosman et al.

Patent Trials and Appeals Board

Aug 1, 2019

14685548 - (D) (P.T.A.B. Aug. 1, 2019)

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.
14/685,548 04/13/2015 Eric R. Cosman 8150BSC0433C1 4192
121974 7590 08/01/2019
KACVINSKY DAISAK BLUNI PLLC
America's Cup Building
50 Doaks Lane
Marblehead, MA 01945
EXAMINER
AVIGAN, ADAM JOSEPH
ART UNIT PAPER NUMBER
3794
NOTIFICATION DATE DELIVERY MODE
08/01/2019 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):
bbonneville@kdbfirm.com
docketing@kdbfirm.com
ehysesani@kdbfirm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ERIC R. COSMAN
____________

Appeal 2018-008124
Application 14/685,548
Technology Center 3700
____________

Before WILLIAM A. CAPP, NATHAN A. ENGELS, and
BRENT M. DOUGAL, Administrative Patent Judges.

Opinion for the Board by CAPP, Administrative Patent Judge
Opinion concurring by DOUGAL, Administrative Patent Judge
CAPP, Administrative Patent Judge.
DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the final
rejection of claims 1, 11, and 12 as unpatentable under 35 U.S.C. § 103(a)
over Rittman (US 7,574,257 B2, iss. Aug. 11, 2009) and Panescu
(US 5,769,847, iss. June 23, 1998) under the doctrine of nonstatutory double
patenting in view of Cosman (US 9,008,793 B1, iss. Apr. 14, 2015). We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 Cosman Medical, Inc. is the Applicant and real party in interest. Appeal
Br. 3.
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Application 14/685,548
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THE INVENTION
Appellant’s invention relates to radiofrequency (RF) medical therapy.
Spec. 1. Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. An apparatus for performing tissue modification
procedures on a patient's body, comprising:
a device connected to at least two electrodes, wherein
temperature sensors are incorporated into tip portions of said
electrodes;
a high frequency generator operatively associated with said
device, wherein said generator is programmed to deliver non-
simultaneously a high frequency signal output to each of said
electrodes in a repeated, cyclical sequence so that no two
electrodes have said high frequency signal output applied to
them at the same time; and
a feedback control circuit configured to regulate the signal
output delivery to each of said electrodes so as to maintain a
user settable set temperature at a tip portion of said electrodes
when the electrodes are in contact with the patient's body based
on temperature measurements from said temperature sensors.
OPINION
Unpatentability of Claims 1, 11, and 12
over Rittman and Panescu
Appellants argue claims 1, 11, and 12 as a group. Appeal Br. 6–10.
We select claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner finds that Rittman teaches the invention substantially as
claimed except for delivering signals in a non-simultaneous manner, for
which the Examiner relies on Panescu. Final Action 2–4. The Examiner
concludes that it would have been obvious to a person of ordinary skill in the
art at the time the invention was made to modify Rittman to deliver energy
in a non-simultaneous manner. Id. at 4. According to the Examiner, a
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person of ordinary skill in the art would have done this as it merely entails
substituting one known method of control for another to achieve the
predictable result of controlling multiple electrodes. Id.
Appellant argues that Rittman delivers energy to electrodes
simultaneously, a point already conceded by the Examiner. Appeal Br. 6–7.
Appellant argues that modifying Rittman as proposed would render Rittman
unsatisfactory for its intended purpose. Id. at 7, citing In re Gordon, 733
F.2d 900 (Fed. Cir. 1984). In response, the Examiner notes that Rittman,
when modified, would still control electrodes to deliver energy to multiple
tissue locations. Ans. 3. In reply, Appellant merely repeats, verbatim, the
arguments asserted in the Appeal Brief. Reply Br. 7 (second full
paragraph), 12 (second full paragraph).2
Appellant’s “unsatisfactory for its intended purpose” argument is
unpersuasive. Rittman is directed to a device that delivers therapeutic
energy to more than one electrode. Rittman, Abstract. Nothing in the prior
art suggests that the proposed modification would have resulted in an
inoperable device that is incapable of delivering therapeutic energy. See In
re Urbanski, 809 F.3d 1237, 1241–44 (Fed. Cir. 2016) (distinguishing
Gordon and affirming Examiner/PTAB determination of obviousness over
argument that proposed modification would render prior art reference

2 Compare to Appeal Brief 7 (second full paragraph), 12 (second full
paragraph). We further note that approximately three-quarters of
Appellant’s Reply Brief is nothing more than verbatim repetition of identical
paragraphs from the Appeal Brief, presented essentially in the same order.
Such repetition can hardly be characterized as a “reply.” Appellant’s
arguments do not become more persuasive upon verbatim repetition. See
generally Appeal Br., Reply Br.
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Application 14/685,548
4
unsatisfactory for its intended purpose). The proposed modification still
delivers therapeutic electrical energy to more than one electrode. Final
Action 4. Thus, Rittman’s intended purpose, delivering therapeutic energy,
is maintained.
Next Appellant argues that Panescu applies energy to adjacent
electrode segments simultaneously. Appeal Br. 8–9. Appellant argues that
simultaneous application of energy “teaches away” from non-simultaneous
application. Id. Appellant argues that Panescu’s teaching regarding periods
of interruption between successive electrode regions should be considered as
criticizing, discrediting, or otherwise discouraging of the claimed solution.
Id. (“clearly an undesirable result and a criticism of non-overlapping
pulses”).
In response, the Examiner finds that Panescu impliedly discloses that
non-overlapping pulses are within the scope of Panescu. Ans. 5. The
Examiner finds that a person of ordinary skill in the art, upon reading
Panescu, would understand that providing overlapping pulses is only a
possibility and not a requirement of Panescu. Id. at 6. The Examiner cites
Buysse (US 2006/0079887 Al, pub. Apr. 13, 2016) as an example of
applying non-overlapping pulses to a plurality of electrodes. Id. at 7.
In reply, Appellant argues that Buysse is contrary to the teaching of
Panescu. Reply Br. 11.
Panescu is directed to a system for ablating body tissue using multiple
emitters of ablating energy. Panescu, col. 1, l. 66 – col. 2, l. 1. Panescu’s
system conveys ablating energy individually to each emitter in a sequence of
power pulses. Id. at col. 2, ll. 1–3. The application of successive RF pulses
may be timed to overlap so that the source applies power continuously to the
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Application 14/685,548
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electrode regions. Id. at col. 18, ll. 37–40. Panescu’s microcontroller “may”
sequence successive power pulses to adjacent electrodes so that the end of
the duty cycle for the preceding pulse overlaps “slightly” with the beginning
of the duty cycle for the next pulse. Id. at col. 17, ll. 5–8.
We need not and do not decide whether Panescu’s use of the word
“may” at column 17, line 5, implies the existence of an alternative
embodiment in which the duty cycles do not overlap at all, instead of
overlapping “slightly.” The Examiner’s rejection is one of obviousness
under 35 U.S.C. § 103(a) (pre-AIA). Final Action 2. Section 103 expressly
contemplates that there may be differences between the prior art and the
claimed invention. The issue, therefore, is not whether there are differences,
but whether the differences between the subject matter sought to be patented
and the prior art are such that the subject matter as a whole would have been
obvious at the time the invention was made to a person having ordinary skill
in the art to which said subject matter pertains. Id. In that regard, the
obviousness analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a tribunal can take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007) at 418. Therefore, a claim can be obvious even where all of the
claimed features are not found in specific prior art references, where there is
a showing of a reason to modify the teachings of the prior art to achieve the
claimed invention. See Randall Mfg. v. Rea, 733 F.3d 1355, 1361-62 (Fed.
Cir. 2013); see also Broadcom Corp. v. Emulex Corp. 732 F.3d 1325, 1334
(Fed. Cir. 2013). For this reason, “we do not ignore the modifications that
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Application 14/685,548
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one skilled in the art would make to a device borrowed from the prior art.”
In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1382 (Fed. Cir. 2007).
In the instant case, Buysse demonstrates that it was known to deliver
RF ablation energy to a plurality of electrodes sequentially, rather than
simultaneously. Buysse ¶¶ 15, 17, 20, 22, 25, 37, 59, 63, Abstract, and
claim 1. Although Buysse is not applied art in the Examiner’s ground of
rejection, it is nevertheless instructive as evidence of the background
knowledge of a person of ordinary skill in the art that can be brought to bear
in modifying the teachings of the applied references. See Randall v. Rea,
733 F.3d 1355, 1361–1363 (Fed. Cir. 2013) (explaining that non-applied
references may serve as evidence of background knowledge of a person of
ordinary skill in the art). In that regard, we note that Appellant presents
neither evidence nor persuasive technical reasoning that designing circuitry
to deliver RF energy sequentially rather than simultaneously requires more
ordinary skill. We further note that Appellant’s “Background” section
admits that the use of RF generators and electrodes for treatment of pain is
“well known.” Spec. 1. Appellant further admits that it was known, in the
prior art, to deliver RF energy to a plurality of positions in bodily tissue
sequentially, albeit with the use of a single electrode. Id. at 2–3. Appellant
merely advocates the sequential application of RF energy through a plurality
of electrodes to “save time.” Id. at 3.
As explained by the Federal Circuit in the case of DyStar Textilfarben
GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356 (Fed. Cir.
2006):
[W]e have repeatedly held that an implicit motivation to
combine exists not only when a suggestion may be gleaned
from the prior art as a whole, but when the “improvement” is
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technology-independent and the combination of references
results in a product or process that is more desirable, for
example because it is stronger, cheaper, cleaner, faster, lighter,
smaller, more durable, or more efficient. Because the desire to
enhance commercial opportunities by improving a product or
process is universal—and even common-sensical—we have
held that there exists in these situations a motivation to combine
prior art references even absent any hint of suggestion in the
references themselves. In such situations, the proper question
is whether the ordinary artisan possesses knowledge and skills
rendering him capable of combining the prior art references.
Id. at 1368 (emphasis added). Here, Buysse amply demonstrates that a
person of ordinary skill in the art possesses the knowledge and skills to
modify Rittman and Panescu to apply RF energy sequentially.
Moreover, we disagree with Appellant’s position that Panescu teaches
away from the claimed invention. The “mere disclosure of alternative
designs does not teach away.” In re Mouttet, 686 F.3d 1322, 1334 (Fed.Cir.
2012). Rather, teaching away requires “clear discouragement” from
implementing a technical feature. In re Ethicon, Inc., 844 F.3d 1344, 1351
(Fed. Cir. 2017). We view Panescu’s “periods of interruption” technique as
merely an alternative design to the sequential delivery technique of Buysse.
Panescu teaches sequential application of RF energy to a plurality of
electrodes with merely a “slight overlap” in the sequential signals. Panescu
col. 17, ll. 5–10. It stops far short of a “clear discouragement” of applying
RF energy in a non-overlapping, sequential manner.
Finally, Appellant argues that the Examiner is guilty of engaging in
improper hindsight. Appeal Br. 9–10. However, the combination of
Rittman and Panescu, when viewed in light of the background knowledge
evidenced by Buysse, teaches each and every limitation of claim 1. The
Examiner has provided a cogent and logical rationale for making the
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combination, namely, it merely substitutes one known method of
temperature control for another to achieve a predictable result. Final
Action 11. It is well settled that when a patent claims a structure already
known in the prior art that is altered by the mere substitution of one known
element for another, the combination must do more than yield a predictable
result. KSR, 550 U.S. at 416. Appellant provides neither evidence nor
persuasive technical reasoning that the combination entails more than a
simple substitution of one known element for another or that the results
achieved are anything but predictable. Appellant’s hindsight argument is of
no moment where, as here, the Examiner provides a sufficient, non-hindsight
reason to combine the references. In re Cree, Inc., 818 F.3d 694, 702 n.3
(Fed. Cir. 2016).
In view of the foregoing discussion, we sustain the Examiner's
unpatentability rejection of claims 1, 11, and 12 over Rittman and Panescu.
Non-Statutory Double Patenting of Claims 1, 11, and 12
In view of Cosman
Appellant does not challenge the Examiner’s double patenting
rejection on the merits. Appeal Br. 11, Reply Br. 13.3 Such rejection is
hereby summarily sustained. See Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed.
Cir. 2008) (explaining that when an appellant fails to contest a ground of
rejection, the Board may treat any argument with respect to that ground of
rejection as waived).

3 The instant application is a continuation of Cosman. See Spec.
Amendment dated April 13, 2015).
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DECISION
The decision of the Examiner to reject claims 1, 11, and 12 as
unpatentable over Rittman and Panescu is affirmed.
The decision of the Examiner to reject claims 1, 11, and 12 under the
doctrine of nonstatutory double patenting in view of Cosman is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ERIC R. COSMAN
____________

Appeal 2018-008124
Application 14/685,548
Technology Center 3700
____________

DOUGAL, Administrative Patent Judge, concurring.

While I concur in the majority’s judgement sustaining the Examiner’s
rejection of claims 1, 11, and 12, I disagree with the analysis. Thus, I write
separately to address Appellant’s argument that modifying Rittman to
deliver energy in a non-simultaneous manner would render Rittman
unsatisfactory for its intended purpose. Appeal Br. 7.
Appellant argues that the proposed modification of Rittman would
render Rittman unsatisfactory for its intended purpose because it “would not
permit temperature regulation of the three electrodes simultaneously.” Id.
(citing Rittman Abstract, 3:1–4). In response, the Examiner essentially
agrees with Appellant’s statement of Rittman’s intended purpose, finding
that “[t]he intended purpose of Rittman is a device that is capable of
maintaining and controlling multiple electrodes to user set temperatures to
treat multiple tissue location[s] simultaneously.” Ans. 3. However, the
Examiner concludes that Rittman, when modified, would still
simultaneously control the temperature of multiple electrodes through the
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2
delivery of energy to multiple tissue locations as this does not require
simultaneous energy delivery. Ans. 3–4.
Appellant then replies with a new position on the intended purpose of
Rittman: “the intended purpose of Rittman is greatly reduced treatment time,
which is made possible, at least in part, by delivering energy to more than
one treatment electrode simultaneously.” Reply Br. 8.
Appellant provides no evidence concerning how controlling the
temperature with non-simultaneous energy delivery rather than simultaneous
energy delivery would impact treatment time. See generally id. Further, I
am not convinced that the intended purpose of Rittman “is greatly reduced
treatment time.” Other than to reproduce part of a paragraph from Rittman
and to highlight that greatly reduced treatment time is a benefit, Appellant
does not explain why one benefit amounts to the intend purpose of Rittman.
There is nothing in the record to show that a change in treatment time would
render Rittman inoperable. Further, Appellant does not explain why its
initial position and the concurring Examiner’s position concerning Rittman’s
intended purpose were incorrect. Id. For these reasons, Appellant does not
inform me of why the Examiner’s rejection of claims 1, 11, and 12 as
unpatentable is incorrect.