Ex Parte Dinsmoor et alDownload PDFPatent Trial and Appeal BoardFeb 10, 201611835290 (P.T.A.B. Feb. 10, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111835,290 08/07/2007 71996 7590 02/12/2016 SHUMAKER & SIEFFERT, P,A 1625 RADIO DRIVE, SUITE 300 WOODBURY, MN 55125 FIRST NAMED INVENTOR David A. Dinsmoor 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 1023-568US01 1198 EXAMINER LUONG, PETER ART UNIT PAPER NUMBER 3777 NOTIFICATION DATE DELIVERY MODE 02/12/2016 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): pairdocketing@ssiplaw.com medtronic _neuro _ docketing@cardinal-ip .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DAVID A. DINSMOOR and ERIC H. BONDE Appeal2013-005764 Application 11/835,290 Technology Center 3700 Before MICHELLE R. OSINSKI, JILL D. HILL, and JASON W. MEL VIN, Administrative Patent Judges. OSINSKI, Administrative Patent Judge. DECISION ON APPEAL STATEivIENT OF THE CASE David A. Dinsmoor and Eric H. Bonde (Appellants) appeal under 35 U.S.C. § 134 from the Examiner's final decision rejecting claims 1-35. 1 We have jurisdiction under 35 U.S.C. § 6(b ). We REVERSE. 1 According to Appellants, the real party in interest is Medtronic, Inc. App. Br. 3. Appeal2013-005764 Application 11/835,290 THE CLAIMED SUBJECT MATTER Claims 1, 21, 29, and 32 are the independent claims on appeal. Claim 1, reproduced below, is illustrative of the claimed subject matter on appeal. 1. A system comprising: a locating guide that frames an area of interest upon placement over skin of a patient; an electrode patch defining an aperture and including two or more electrodes, wherein the electrode patch is configured for placement within the area of interest while the locating guide is placed over skin of the patient and framing the area of interest; and a medical imaging device that indicates a location of a target tissue site within the patient based on electrical signals generated by one or more of the electrodes. EVIDENCE The Examiner relied on the following evidence in rejecting the claims on appeal: Marshall Gerber Jersey-Willuhn us 2,245,350 US 6,360,750 Bl US 2003/0216662 Al REJECTIONS June 10, 1941 iviar. 26, 2002 Nov. 20, 2003 I. Claim 5 stands rejected under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which Appellants regard as the invention. Final Act. 2. II. Claims 1-18 and 20-35 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Jersey-Willuhn and Marshall. Id. at 3-5. III. Claim 19 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Jersey-Willuhn, Marshall, and Gerber. Id. at 5. 2 Appeal2013-005764 Application 11/835,290 OPfNION Rejection I The Examiner rejects claim 5 under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which Appellants regard as the invention. Final Act. 2. More particularly, the Examiner states that the recitation of an open-ended range for the size of the aperture defined by the electrode patch, i.e., "a width of at least approximately 5 mm wide and a length of at least approximately 5 mm" without an upper limit, renders the scope of the claim unclear. Id. Appellants argue that an open-ended range is not per se indefinite and that "the size of the electrode patch inherently provides an upper limit to the size of the aperture defined by the electrode patch" where the electrode patch is described as being "configured for placement within the area of interest while the location guide is placed over skin of the patient and framing the area of interest." App. Br. 4---6. The test for definiteness under§ 112, second paragraph, is whether "those skilled in the art would understand what is claimed when the claim is read in light of the specification." Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations omitted). We note that the indefiniteness requirement of 35 U.S.C. § 112 "is essentially a requirement for precision and definiteness of claim language so that the claims make clear what subject matter they encompass and thus what the patent precludes others from doing." In re Spiller, 500 F .2d 1170, 1180 (CCPA 1974) (citing In re Conley, 490 F.2d 972, 975 (CCPA 1974)). 3 Appeal2013-005764 Application 11/835,290 The requirement of claim 5 is clear-that the aperture defined by the electrode patch has a width of at least approximately 5 millimeters and a length of at least approximately 5 millimeters. We determine that the claim makes clear what subject matter it encompasses and reasonably apprises those skilled in the art of the scope of the invention. An open-ended range limitation is broad, but it is not, without more, indefinite. In re Miller, 441 F.2d 689, 693 (CCPA 1971) ("[B]readth is not to be equated with indefiniteness."). Accordingly, we do not sustain the Examiner's rejection of claim 5 under 34 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which Appellants regard as the invention. Rejection II The Examiner finds, inter alia, that Jersey-Willuhn discloses a system comprising (i) "an electrode patch[] defining an aperture []and including two or more electrodes (330)," (ii) "a medical imaging device that indicates a location of a target tissue site within the patient based on electrical signals generated by one or more of the electrodes," and (iii) "fluid delivery device (110) and catheter (116) configured to deliver a fluid (e.g., anesthetic[])." Final Act. 3 (citing Jersey-Willuhn i-fi-187, 143, 181-182, Fig. 3). The Examiner acknowledges that Jersey-Willuhn fails to disclose "a locating guide that defines an area of interest upon placement over skin of a patient." Id. The Examiner finds that Marshall teaches "a locating guide for locating the sacral foramen for administration of a needle (i.e., for administration of anesthesia)." Id. 4 Appeal2013-005764 Application 11/835,290 The Examiner concludes that it would have been obvious to a person of ordinary skill "to have provided Jersey-Willuhn ... with the locating guide as taught by Marshall in order to provide Jersey-Willuhn ... with the location of the sacral foramen" and "to deliver anesthetic to the sacral foramen." Id. at 3, 7. The Examiner states that (i) Jersey-Willuhn "discloses an electrode patch for tracking needles," (ii) it is known in the art that the use of needles is not limited to intravascular infusion, and (iii) Marshall discloses a locating guide for locating the sacral foramen for administration of anesthetic via a needle. Id. at 7. The Examiner further states that Marshall's locating guide would not interfere or render Jersey-Willuhn's patch inoperable, and it would be obvious to "mark the location [of the sacral foramen] before applying the patch or to check the position of the patch with the locating guide." Id. at 7-8. Appellants argue that "there would not have been any apparent reason to modify Jersey-Willuhn in view of Marshall in the manner proposed by the Examiner." App. Br. 7. More particularly, Appellants argue that "the Examiner failed to provide any reason why one having ordinary skill in the art would have even initially sought to modify Jersey-Willuhn to determine the location of the sacral foramen" and "the Examiner is relying on the features of Appellant's claims to construct a reason for modifying Jersey- Willuhn in view of Marshall." Id. at 11. Appellants further argue that given the lack of disclosure in Jersey-Willuhn regarding delivery of anesthetic to the sacral foramen, it is apparent that this reason for modification proposed by the Examiner was only contrived after reading Appellant's disclosure and determining that modification to the Jersey-Willuhn system to include a "locating guide" is desirable in order to establish obviousness of Appellant's claim 1. The Examiner failed to establish that one 5 Appeal2013-005764 Application 11/835,290 having ordinary skill in the art in possession of the Jersey- Willuhn reference would have had an apparent reason to modify the Jersey-Willuhn system to deliver anesthetic to the sacral foramen in the first place, much less further modify the Jersey- Willuhn system to include the sacral foramina finder disclosed by Marshall. Reply Br. 8. We agree with Appellants. "A rejection based on section 103 clearly must rest on a factual basis, and these facts must be interpreted without hindsight reconstruction of the invention from the prior art." In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). Further, "rejections on obviousness grounds ... [require] some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006) (citation omitted), cited with approval in KSR Int 'l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007). The Examiner fails to provide an articulated reason supported by rational underpinning as to why a person of ordinary skill in the art would add Marshall's guide for locating the sacral foramina for administration of anesthesia into the spinal canal to Jersey-Willuhn's film barrier dressing incorporating a system for monitoring tissue conditions during intravascular infusion. Jersey Willuhn' s film barrier is generally concerned with insertion of a needle or cannula into a vascular pathway (along with accompanying monitoring of surrounding tissue so as to detect infiltration, 2 or 2 "Infiltration is the inadvertent administration of solution into surrounding tissue." Jersey-Willuhn i-f 11. 6 Appeal2013-005764 Application 11/835,290 extravasation, 3 during intra vascular infusion), not the administration of anesthetic into the spinal canal. J ersey-Willuhn i-f 161. 4 Even acknowledging that the use of needles is not limited to intra vascular infusion (Final Act. 7), the Examiner has not sufficiently explained what would have prompted a person of ordinary skill in the art to deviate from Jersey- Willuhn's disclosed use of needles for intravascular infusion (Jersey- Willuhn i-f 25-26), so as to instead use needles to administer anesthesia, such that the location of the sacral foramen would be of any interest to a person of ordinary skill using Jersey-Willuhn's film barrier dressing and needle. Even if Marshall's locating guide would not interfere with, or render inoperable, Jersey-Willuhn's film barrier dressing (Final Act. 8), the Examiner has not sufficiently explained why one of ordinary skill in the art would either mark the location of the sacral foramen before applying Jersey-Willuhn's device for intravascular infusion and associated tissue monitoring, or check the location of Jersey-Willuhn's device relative to the sacral foramen after applying Jersey-Willuhn's device for intravascular infusion and associated tissue monitoring. For the foregoing reasons, the Examiner's articulated reason to combine Jersey-Willuhn and Marshall lacks rational underpinning and we do 3 "Extravasation is the inadvertent administration of a solution that is capable of causing tissue necrosis when the material escapes or is infused outside the desired vascular pathway." Jersey-Willuhn i-f 11. 4 We note that the reference in Jersey-Willuhn to the administration of anesthesia relates to the use of conductive inks used to deliver anesthetic through the skin using iontophoresis, which is a technique that introduces ionic medical compounds into the body through the skin by applying a local electric current (Jersey-Willuhn, i-f 143), not the administration of anesthetic through the use of a needle or cannula as outlined by the Examiner in connection with the articulated rationale (Final Act. 3; see also Ans. 7). 7 Appeal2013-005764 Application 11/835,290 not sustain the Examiner's rejection of independent claims 1, 21, 29, and 32, and claims 2-18, 20, 22-28, 30, 31, and 33-35 which depend therefrom, under 35 U.S.C. § 103(a) as unpatentable over Jersey-Willuhn and Marshall. Re} ection III Claim 19 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Jersey-Willuhn, Marshall, and Gerber. Final Act. 5. The rejection of this claim relies on the Examiner's erroneous conclusion that Jersey-Willuhn and Marshall render obvious the system of independent claim 1. The Examiner does not explain how Gerber cures this underlying deficiency. Accordingly, for the reasons discussed supra, we do not sustain the Examiner's rejection of claim 9 under 35 U.S.C. § 103(a) as unpatentable over Jersey-Willuhn, Marshall, and Gerber. DECISION The Examiner's decision to reject claim 5 under 35 U.S.C. § 112, second paragraph is reversed. The Examiner's decision to reject claims 1-35 under 35 U.S.C. § 103(a) is reversed. REVERSED 8 Copy with citationCopy as parenthetical citation