Ex Parte LI et al

Patent Trial and Appeal Board

May 30, 2017

13826323 (P.T.A.B. May. 30, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/826,323 03/14/2013 WenjengLi M190.530.101/C00003736.US 1106
63496 7590 06/01/2017
DICKE, BILLIG & CZAJA, PLLC
ATTN: MDT SURGICAL TECHNOLOGIES MATTERS
FIFTH STREET TOWERS, SUITE 2250
100 SOUTH FIFTH STREET
MINNEAPOLIS, MN 55402
EXAMINER
COHEN, LEE S
ART UNIT PAPER NUMBER
3739
NOTIFICATION DATE DELIVERY MODE
06/01/2017 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):
USPTO.PATENTS @dbclaw.com
DBCLAW-Docket@dbclaw.com
medtronic_ent_docketing @ cardinal-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WENJENG LI and DWAYNE S. YAMASAKI1
Appeal 2016-002905
Application 13/826,323
Technology Center 3700
Before JEFFREY N. FREDMAN, JOHN G. NEW, and TAWEN CHANG,
Administrative Patent Judges.
CHANG, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to
apparatus for monitoring EMG signals and methods of operating the
apparatus, which have been rejected as anticipated. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellants identify the Real Party in Interest as Medtronic Xomed, Inc.
(Appeal Br. 3.)
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Application 13/826,323
STATEMENT OF THE CASE
According to the Specification, “[e]ndotracheal tubes include
electrodes that are designed to make contact with a patient’s vocal cords to
facilitate electromyographic (EMG) monitoring of the vocal cords during
surgery when connected to an EMG monitoring device.”2 (Spec. 11.) The
Specification describes “an apparatus for monitoring EMG signals of a
patient’s laryngeal muscles,” which includes an endotracheal tube, a conduit
extending along the endotracheal tube, two cuffs or balloons “fluidly
coupled” to the conduit, and electrodes formed on the exterior surface of the
first cuff. (Id. at 12.) The Specification describes embodiments in which
the two cuffs have the same compliance, as well as diameters and/or shapes
that result in the first cuff exhibiting less wall tension than the second cuff
when pressurized fluid in the conduit inflates the cuffs. (Id. at || 2, 16.)
The Specification states that:
[d]ue to relative compliance of the cuffs ..., [the second cuff] is
configured to fluidly seal the trachea of a patient when
positioned, whereas [the first cuff] inflates to contact the vocal
folds of the patients so as to prevent trauma from occurring due
to contact between the cuff. . . and the vocal folds.
(Id. atl 17.)
Claims 1—7, 9, 11—17, and 19 are on appeal.3 Claims 1 is illustrative
and reproduced below with key limitations emphasized:
2 An EMG detects and translates the electrical signals transmitted by motor
neurons that cause muscles to contract. See Tests and Procedures:
Electromyography (EMG), Mayo Clinic, http://www.mayoclinic.org/tests-
procedures/emg/basics/defmition/prc-20014183 (last visited May 22, 2017).
3 The Examiner withdrew the rejection of claims 10, 20, and 21 under 35
U.S.C. § 103(a) as obvious over Li and Stanislaus. (Ans. 3.)
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Appeal 2016-002905
Application 13/826,323
1 An apparatus for monitoring EMG signals of a patient,
comprising:
an endotracheal tube;
a conduit extending along the endotracheal tube;
a first cuff having an exterior surface defining a first diameter
and fluidly coupled to the conduit, the first cuff
exhibiting a first compliance such that the first diameter
expands to a first distance when pressurized fluid is
within the interior conduit;
a second cuff having an exterior surface defining a second
diameter, positioned distal the first cuff and fluidly
coupled to the conduit, the second cuff exhibiting a
second compliance equal to the first compliance and
defined such that the second diameter expands to a
second distance greater than the first distance when
pressurized fluid is within the conduit, wherein upon
inflation of the first cuff and the second cuff from fluid
provided in the conduit, the first cuff exhibits a first wall
tension on the exterior surface thereof and the second
cuff exhibits a second wall tension on the exterior surface
thereof, the first tension being less than the second
tension-, and
conductive ink electrodes formed on the exterior surface
of the first cuff.
(Appeal Br. 12 (Claims App’x) (emphases added).)
The Examiner rejects claims 1—7, 9, 11—17, and 19 under 35 U.S.C.
§ 102(e) as anticipated by Li.4 (Final Act. 2.)
4 Li, US 2014/0148672 Al, published May 29, 2014.
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Application 13/826,323
DISCUSSION
Issue
The Examiner finds that the embodiment disclosed in Figure 3 of Li,
excerpted below, anticipates claims 1—7, 9, 11—17, and 19 (Final Act. 2):
(Li Fig. 3.) Li’s Figure 3 depicts “a partial side view of an endobronchial
tube having an electrode cuff.” (Li | 6.) The Examiner finds that Li
discloses “use of a four electrode structure” in an endobronchial tube. (Final
Act. 2.) The Examiner finds that Li discloses that “[t]he compliance [of the
second cuff 122 in its structure] can be equal or greater [than the compliance
of the first cuff 170].” (Id.) The Examiner further finds that Li discloses the
“tension limitation,” i.e., that the wall tension exhibited by the first cuff 170
on the exterior wall surface is less than the wall tension exhibited by the
second cuff 122, because the Specification teaches that “different diameters
[of the cuffs] result in different wall tensions.” (Id.)
Appellants argue that Li does not teach or suggest that “the cuffs 122
and 170 have an equal compliance and exhibit different wall tensions.”
(Appeal Br. 6.)
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Appeal 2016-002905
Application 13/826,323
The issue with respect to this rejection is whether Li teaches or
suggests two cuffs having equal compliance but exhibit different wall
tensions on the exterior surface.
Analysis
We find Appellants to have the better argument. Examiner first
argues that paragraph 19 of Li discloses an embodiment in which “cuff 170
has a greater compliance than cuff 122 which infers an embodiment of equal
compliance.” (Ans. 3.) In essence, the Examiner appears to argue that Li’s
disclosure of an embodiment in which the first cuff has a greater compliance
than the second cuff renders obvious an embodiment in which the two cuffs
have equal compliance. Assuming this to be the case, reliance on this type
of inference is nevertheless improper in an anticipation rejection, which
requires “a [prior art] reference [to] disclose [] within the four comers of the
document... all of the limitations arranged or combined in the same way as
recited in the claim.” Net Money IN, Inc. v. VeriSign, Inc., 545 F.3d 1359,
1371 (Fed. Cir. 2008).
The Examiner next argues that in paragraph 19 of Li “both cuff 170
and 122 are stated to have an equal compliance allowing them to increase in
diameter from 20 to 200 percent,” i.e., “both cuffs have a compliance
allowing them to increase the same percentage.” (Ans. 3.)
We are not persuaded. Paragraph 19 of Li states in full:
Furthermore, a compliance for cuff 170 is selected so as to
prevent trauma due to cuff 170 contacting the vocal folds of the
patient. In one embodiment, the cuff 170 is formed of a semi-
compliant balloon. The semi-compliant balloon will increase in
diameter about 10 to 20 percent from a nominal pressure to a rated
burst pressure for the balloon. In a further embodiment, cuff 170 is
formed of a compliant balloon such that the balloon will increase in
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Application 13/826,323
diameter from 20 to 200 percent from a nominal pressure to a rated
burst pressure of the balloon. In a further embodiment, the cuff 170 is
formed of a compliant material that has a greater compliance than a
material selected for cuff 122. In one embodiment, cuff 122 has a
compliance defined as increasing in diameter about 20 to 200 percent
from a nominal pressure to a rated burst pressure for the cuff 122.
(Li 119.) In short, Li discloses an embodiment in which the compliance of
the first cuff (cuff 170) is such that the cuff will increase in diameter from 20
to 200 percent from a nominal pressure to a rated burst pressure, and another
embodiment in which the second cuff (cuff 122) has a compliance defined in
the same manner (i.e., “increasing in diameter about 20 to 200 percent from
a nominal pressure to a rated burst pressure”).
The Examiner’s argument that Li discloses two cuffs having equal
compliance is thus based on the combination of two separate embodiments.
Our reviewing court has stated, however, that to anticipate “it is not enough
that the prior art reference . . . includes multiple, distinct teachings that the
artisan might somehow combine to achieve the claimed invention.” Net
Money IN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008).
Similarly, the predecessor to our reviewing court has explained that, for an
anticipation rejection to be proper,
the . . . reference must clearly and unequivocally disclose the claimed
[invention] or direct those skilled in the art to the [invention] without
any need for picking, choosing, and combining various disclosures not
directly related to each other by the teachings of the cited reference.
Such picking and choosing may be entirely proper in the making of a
103, obviousness rejection, where the applicant must be afforded an
opportunity to rebut with objective evidence any inference of
obviousness . . . but it has no place in the making of a 102,
anticipation rejection.
In reArkley, 455 F.2d 586, 587-588 (CCPA 1972)
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Application 13/826,323
Accordingly, we reverse the Examiner’s rejection of claim 1 and its
dependent claims 2—7 and 9 as anticipated by Li. Claim 11, which is the
only other independent claim and recites “[a] method of operating an
apparatus used in monitoring EMG signals of a patient,” contains a similar
limitation of “the anchoring cuff compliance being equal to the electrode
cuff compliance.” (Appeal Br. 13 (Claims App’x).) We therefore reverse
the Examiner’s rejection of claim 11 and its dependent claims 12—17 and 19
as anticipated by Li, for the same reasons discussed above.
REVERSED
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