Ex Parte Levendusky et al

Patent Trial and Appeal Board

Nov 14, 2012

11120436 (P.T.A.B. Nov. 14, 2012)

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.
11/120,436 05/02/2005 Joseph A. Levendusky 04-0133US02 (4010/382) 9859
27774 7590 11/14/2012
MAYER & WILLIAMS PC
251 NORTH AVENUE WEST
Suite 201
WESTFIELD, NJ 07090
EXAMINER
SZMAL, BRIAN SCOTT
ART UNIT PAPER NUMBER
3736
MAIL DATE DELIVERY MODE
11/14/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOSEPH A. LEVENDUSKY, ROBERT F. RIOUX,
KURT A.E. GEITZ, SCOTT A. DODSON, and ROBERT M. RAUKER
____________

Appeal 2011-006700
Application 11/120,436
Technology Center 3700
____________

Before DONALD E. ADAMS, MELANIE L. McCOLLUM, and
JOHN A. EVANS, Administrative Patent Judges.

EVANS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-006700
Application 11/120,436

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SUMMARY
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejections of claims 12-15 and 17-32. We have jurisdiction under 35 U.S.C.
§ 6(b).
Claims 12-15, 17, 20, 22-25, and 27-31 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Dalamagas (US 5,271,413, issued Dec. 21,
1993) in view of Silverman (US 2002/0193851 A1, pub. Dec. 19, 2002) and
Masuo (US 2004/0059242 A1, pub. Mar. 25, 2004). (Ans. 4).1
Claim 18 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Dalamagas, Silverman, Masuo, and Al-Tameem (US 5,643,305, issued
Jul. 1, 1997). (Ans. 6).
Claim 19 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Dalamagas, Silverman, Masuo, and Ichikawa (US 2004/0249288 A1,
pub. Dec. 9, 2004, filed Dec. 4, 2003). (Ans. 7).
Claims 21, 26, and 32 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Dalamagas, Silverman, Masuo, and Schachar (US
4,452,600, issued Jun. 5, 1984). (Ans. 8).
We AFFIRM.

1 Rather than repeat the Examiner’s positions and Appellants’ arguments in
their entirety, we refer to the following documents for their respective
details: the Appeal Brief (App. Br.) filed August 20, 2010, the Examiner’s
Answer (Ans.) mailed November 17, 2010, and the Reply Brief (Reply) filed
January 13, 2011.
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Application 11/120,436

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STATEMENT OF THE CASE
Background
The Application relates to an apparatus for use with a radio frequency
generator and an indifferent electrode to treat tissue in a mammalian body
that includes a needle having a distal portion and being adapted for coupling
to the radio frequency generator and a layer of insulating material extending
around the needle but exposing a part of the distal portion of the needle. The
exposed part of the needle is sized as a function of the thicknesses of the
plurality of layers of tissue to facilitate placement of the distal portion of the
needle in the plurality of layers by measuring impedance between the needle
and the indifferent electrode. (See Abstract).

The Claimed Invention
Claims 12, 23, and 27 are the only independent claims on appeal.
(App. Br. 2). We will focus on claim 12, which is reproduced below with
disputed limitations emphasized and paragraphing added:
12. A method for treating a layer of tissue having a thickness in
a wall of a cavity of a mammalian body comprising
providing a needle having a distal portion and a layer of
insulating material forming a coating adhered to the needle and
extending around the distal portion but exposing part of the
distal portion, the exposed part being less than the thickness of
the layer of tissue,
coupling a return electrode to the mammalian body,
extending the exposed part of the distal portion of the
needle into the tissue,
supplying radio frequency energy to the needle at a level
only sufficient to detect the type of the tissue,
measuring the impedance between the exposed part of
the distal portion of the needle and the return electrode to
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Application 11/120,436

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determine if the exposed part of the distal portion of the needle
is in the layer of tissue and
introducing a material through the needle into the layer of
tissue to form an implant in the layer of tissue if the exposed
part of the distal portion of the needle is in the layer of tissue.

CONTENTIONS
CLAIMS 12-15, 17, 20, 22-25, AND 27-31
Appellants argue allegations of error with respect to independent
claims 12, 23, and 27, but do not separately argue the associated dependent
claims (App. Br. 2-11). In particular, Appellants contend that:
Dalamagas doesn’t teach or suggest using an insulting layer for
any purpose whatsoever, much less a layer of insulating
material forming a coating adhered to the needle and extending
around the distal portion but exposing a part of the distal
portion that is less than the thickness of the layer of tissue, as
claimed.
(App. Br. 5). The Examiner answers that:
Dalamagas et al is not relied upon to teach the use of an
insulating layer. The rejection relies upon the teachings of
Silverman et al to teach the use of an insulating layer on a
needle that is used for measuring impedance. The teachings of
Dalamagas et al, however, does provide a means for one of
ordinary skill in the art at the time the invention was made to
modify the needle to provide an insulating layer to accurately
measure the location of the distal tip of the needle.
(Ans. 9). The Examiner further finds:
Based on Figures 4A and 4B in Dalamagas et al showing the
preferred current path emanating from the distal tip of the
needle, and the disclosure in Silverman et al of a needle with an
insulating layer with an exposed distal tip for providing the
ability to measure impedance, one of ordinary skill in the art at
the time the invention was made would have been motivated to
combine the prior art of Dalamagas et al and Silverman et al to
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Application 11/120,436

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provide a means of accurately locating the distal tip of a needle
in tissue in order to provide a treatment to the tissue.
(Ans. 12-13). Appellants argue:
Dalamagas . . . does not teach or suggest using an
insulting layer for any purpose. Silverman, on the other hand,
does [not] employ the insulating layer for purposes that pertain
to impedance measurement. Rather, Silverman uses the
insulting layer to protect the opening in the mucosa created by
the needle such that it is more easily healed. Thus there is no
reason to modify the teachings of Dalamagas with an insulating
layer as taught by Silverman.
(App. Br. 11).
With regard to the level of radio frequency energy, Appellants simply
argue: “Masuo, which is cited for its alleged teachings regarding the use of
radio frequency energy at an intensity only sufficient to detect the type of
tissue, does not make up for the deficiencies in the combination of
Dalamagas and Silverman.” (App. Br. 11).

ISSUE
Does the cited art suggest determination of needle penetration into a
specific tissue by measuring the impedance of an insulated needle?

ANALYSIS
Appellants concede that columns 3-4 of Dalamagas teaches how to
measure impedance with a needle and then use computer modeling to
determine a depth of penetration. (See App. Br. 5). Appellants concede that
Silverman teaches a needle partially coated with an insulating layer. (See
App. Br. 8). Dalamagas and Silverman both teach the use of radio-frequency
charged needles to measure impedance in a medical setting. (See Ans. 6).
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We are not persuaded by Appellants’ arguments that a person of
ordinary skill in the art would not be motivated to insulate the needle of
Dalamagas according to the teachings of Silverman. The Examiner finds
Silverman teaches the use of an insulated needle to measure impedance.
(Ans. 9). Therefore, we find no error in Examiner’s conclusion that, at the
time of Appellants’ claimed invention, it would have been prima facie
obvious to a person of ordinary skill in this art to utilize Silverman’s
insulated needle in Dalamagas’ method of measuring impedance. (See
generally Ans. 5-6).
Appellants allege the cited art does not contain an explicit statement
of motivation to apply Silverman’s insulating layer to Dalamagas’ needle
while leaving a region of the tip exposed less than the thickness of the layer
to be treated. (App. Br. 5). We are not persuaded. A fact-finder “need not
seek out precise teachings directed to the specific subject matter of the
challenged claim [in an analysis of obviousness], for a court can take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ.” KSR Int’l v. Teleflex Inc., 550 U.S. 398, 418 (2007).
See also id. at 421 (“A person of ordinary skill is also a person of ordinary
creativity, not an automaton.”).
On this record, Appellants concede that Dalamagas Figures 4 and 5
teach that the impedance circuit comprises current flowing from the tip of
the needle, representing the impedance of the muscle tissue that is desired to
be measured, and a contribution from current emanating from the side of the
needle, which may be in a layer of tissue such as adipose that is not desired
to be measured. (See App. Br. 5-7). A person of skill in the art desiring a
method to determine the transition of a hypodermic needle from
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subcutaneous adipose to muscle or from muscle to vasculature, as taught by
Dalamagas (see Dalamagas, Abstr.), would have found it prima facie
obvious to limit the exposed region of the needle tip to less than the
thickness of treated tissue layer in order to improve the accuracy by which
the transition may be determined. (See Ans. 5-6). As the Supreme Court has
recently stated:
When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp. If this leads
to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense. In that
instance the fact that a combination was obvious to try might
show that it was obvious under § 103.
KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 421 (2007).
With respect to the limitation requiring the radio frequency energy be
limited to a level only sufficient to detect the type of current, Appellants do
not present specific arguments in rebuttal. Appellants simply argue that
Masuo “does not make up for the deficiencies in the combination of
Dalamagas and Silverman.” (App. Br. 11). As discussed above, we are not
persuaded that the Examiner’s case is deficient. Moreover, Dalamagas
discloses limiting the current to safe levels:
The current limiter 42 is a means for limiting the current of the
electrical signals to a universally safe level.
(Dalamagas, 2:62-64). Therefore, we are not persuaded that the Examiner
erred in rejecting claims 12-15, 17, 20, 22-25, and 27-31.
CLAIMS 18, 19, 21, 26, AND 32
Appellants do not separately argue the patentability of these claims
beyond contending that Al-Tameem, Ichikawa, or Schachar fail to “make up
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Application 11/120,436

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for the deficiencies in Dalamagas, Silverman and Masuo” (App. Br. 11-12;
Reply Br. 7). Having found no deficiency in the combination of Dalamagas,
Silverman, and Masuo, we do not find Appellants’ arguments persuasive
that the Examiner has erred in rejecting these claims.

CONCLUSIONS OF LAW
The Examiner has established that the cited art suggests the
determination of needle penetration into a specific tissue by measuring the
impedance of an insulated needle.
The rejection of claim 12 under 35 U.S.C. § 103(a) as unpatentable
over Dalamagas in view of Silverman and Masuo is affirmed. Claims 13-15,
17, 20, 22-25, and 27-31 are not separately argued and fall together with
claim 12. 37 C.F.R. § 41.37(c)(1)(vii).
The rejection of claim 18 under 35 U.S.C. § 103(a) as unpatentable
over Dalamagas, Silverman, Masuo, and Al-Tameem is affirmed.
The rejection of claim 19 under 35 U.S.C. § 103(a) as unpatentable
over Dalamagas, Silverman, Masuo, and Ichikawa is affirmed.
The rejection of claim 21 under 35 U.S.C. § 103(a) as unpatentable
over Dalamagas, Silverman, Masuo, and Schachar is affirmed. Claims 26
and 32 are not separately argued and fall together with claim 21. 37 C.F.R.
§ 41.37(c)(1)(vii).

AFFIRMED

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