Ex Parte Mahapatra et al

Patent Trial and Appeal Board

Sep 21, 2018

12530938 (P.T.A.B. Sep. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/530,938 09/11/2009
144465 7590 09/25/2018
Tanner IP, PLLC
13057 Champlain Drive
Manassas, VA 20112
FIRST NAMED INVENTOR
Srijoy Mahapatra
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.
503-110 5600
EXAMINER
VAHDAT, KHADIJEHA
ART UNIT PAPER NUMBER
3739
NOTIFICATION DATE DELIVERY MODE
09/25/2018 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):
dan@tannerip.com
james@tannerip.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SRIJOY MAHAPATRA and GEORGE T. GILLIES 1
Appeal2017-006028
Application 12/530,938
Technology Center 3700
Before TA WEN CHANG, JOHN E. SCHNEIDER, and RY ANH. FLAX,
Administrative Patent Judges.
SCHNEIDER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to an
ablation catheter, which have been rejected as obvious and as indefinite. We
have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
STATEMENT OF THE CASE
"Cardiac arrhythmias are frequently treated with electrophysiology
procedures and ablation." Spec. 1. Most cardiac ablations are done
endocardially although the target area is epicardial. Spec. 1-2. Endocardial
1 Appellants identify the Real Party in Interest as University of Virginia
Patent Foundation. Appeal Br. 3.
Appeal2017-006028
Application 12/530,938
ablation to treat tissue on the outside of the heart poses several risks
including strokes. Spec. 2. While epicardial ablation techniques are known,
adoption of these techniques has been limited by the lack of catheters and
sheaths. Id. The Specification describes an epicardial ablation catheter.
Claims 1, 3-8, 13-28, and 31-99 are on appeal. Claim 1 is illustrative
and reads as follows:
1. An ablation catheter system for ablation of epicardial
tissue of a heart of a subject, said ablation catheter system
compnsmg:
an ablation catheter, said ablation catheter comprising a
distal end, a proximal end, and a longitudinal wall there
between;
a plurality of electrodes in communication with said
ablation catheter;
a catheter steering mechanism configured to orient said
ablation catheter about the heart;
a catheter control device, wherein said catheter control
device is configured to manipulate said catheter steering
mechanism;
one or more distal irrigation apertures at said distal end
of said ablation catheter, said distal irrigation apertures in
communication with one or more irrigation lumens extending
longitudinally toward said proximal end of said ablation
catheter;
one or more distal suction apertures at said distal end of
the ablation catheter, said distal suction apertures in
communication with one or more suction lumens extending
longitudinally toward said proximal end of said ablation
catheter;
a sheath, said sheath comprising a distal end, a proximal
end, and a longitudinal wall there between, and wherein said
sheath is adapted for receiving said ablation catheter therein;
a sheath steering mechanism configured to orient said
sheath about the heart; and
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Application 12/530,938
a sheath control device, wherein said sheath control
device is configured to manipulate said sheath steering
mechanism;
wherein, said plurality of electrodes comprise at least one
of:
an anode and a cathode,
a plurality of electrodes arranged in a circumferential
array around said distal end of said ablation catheter, and
a plurality of electrodes longitudinally separated on said
distal end of said ablation catheter, and
wherein, at least one of said one or more distal irrigation
apertures or said one or more distal suction apertures comprises
a plurality of apertures arranged in a circumferential array
around the distal end of the ablation catheter.
The claims stand rejected as follows:
Claims 1, 5-8, 31---68 have been rejected under 35 U.S.C. § 112,
second paragraph as indefinite.
Claims 58 and 59 have been rejected under 35 U.S.C. § 112, fourth
paragraph as being in improper dependent form.
Claims 1, 5-8, 13, 14, 21-24, 31, 32, 43-2, and 65---68 have been
rejected under 35 U.S.C. § I03(a) as unpatentable over Gaiser2 in view of
Jahns. 3
Claims 15-20 have been rejected under 35 U.S.C. § I03(a) as
unpatentable over Gaiser in view of Jahns in further view of Quaichon. 4
2 Gaiser et al., US 6,200,315 Bl, issued Mar. 13, 2001 ("Gaiser").
3 Jahns et al., US 2002/0002372 Al, published Jan 3. 2002 ("Jahns").
4 Quaichon et al., US 5,395,348, issued Mar. 7, 1995 ("Quaichon").
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Application 12/530,938
Claims 25-28 have been rejected under 35 U.S.C. § I03(a) as
unpatentable over Gaiser in view of Jahns in further view of Chin. 5
Claims 33--42, 63, and 64 have been rejected under 35 U.S.C.
§ I03(a) as unpatentable over Gaiser in view of Jahns in further view of
Stewart. 6
THE REJECTIONS UNDER SECTION 112
As a preliminary matter, we must address the issue raised by
Appellants as to whether the rejections under section 112 are properly before
us. As Appellants point out, in the Advisory action the Examiner stated that,
"with respect to the arguments directed to the 112 rejections, the arguments
as found to be persuasive and the 112 rejections have been withdrawn."
Advisory Action mailed May 12, 2016 at 3. Appellants, relying on this
representation, did not address the 112 rejections in their brief. See Appeal
Br. 5. In the Answer, the Examiner revised this statement indicating that the
withdrawal only applied to the rejection relating to a plurality of electrodes
and not the remaining 112 rejections. Ans. 2-3.
Appellants contend that the Examiner's reinstatement of the 112
rejections is improper in that it constitutes a new rejection that requires the
Director's approval. Reply Br. 2-3. Appellants point out that the Examiner
did not seek the Director's approval therefore the 112 rejections are
improper and should not be addressed in this appeal. Id.
5 Chin et al., US 2006/0271032 Al, published Nov. 30, 2006 ("Chin").
6 Stewart et al., US 2005/0273006 Al, published Dec. 8, 2005 ("Stewart").
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Appeal2017-006028
Application 12/530,938
While we appreciate the issue raised by Appellants, whether a new
rejection was improperly included in the Answer is not an issue that we have
jurisdiction to consider. Instead, such matters are properly addressed by a
petition to the Director under 37 C.F.R. § 2.146. On the record before us,
Appellants do not appear to have filed such a petition. We consider the issue
to have been waived by Appellants.
For purposes of judicial economy, we treat the reinstated 112
rejections to be new grounds of rejection under 37 C.F.R. § 41.49 (a)(2).
When the Examiner issues a new rejection in the Examiner's Answer,
Appellants have two options: reopen prosecution or maintain the appeal and
substantively address the new grounds of rejection. 37 C.F.R. §§ 41.39
(b )(1) and (2). In the present appeal, Appellants have maintained the appeal
and have presented substantive arguments relating to the 112 rejections.
Reply Br. 3--4. Therefore, we have jurisdiction to address the rejections
under 35 U.S.C. § 112.
Indefiniteness
Issue
The issue with respect to this rejection is whether the Examiner has
properly found the claims to be indefinite,
The Examiner finds the term "wherein, at least one of said one or
more distal irrigation apertures or said one or more distal suction apertures
comprises a plurality of apertures arranged in a circumferential array around
the distal end of the ablation catheter" to be indefinite in that it is unclear
how many apertures are required to meet the limitation and whether it is the
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Appeal2017-006028
Application 12/530,938
suction of irrigation apertures which must be arranged in a circumferential
pattern. Ans. 3--4.
Appellants contend that the term is not indefinite. Reply Br. 3.
Appellants argue that the term means that when one irrigation aperture is
present, there is a plurality of suction apertures present and vice versa. Id.
Appellants argue that the term also allows for the possibility that there are a
plurality of both types of apertures. Id.
We find that Appellants have the better argument. The plain language
of the claim term requires that when there is a single irrigation aperture,
there must be a plurality of suction apertures and when there in only one
suction aperture, there must be a plurality of irrigation apertures. Thus, the
claim term is not indefinite.
Improper Dependent Claims
The Examiner has rejected claims 58 and 59 as improper dependent
claims in that they do not further limit claim 1. The Examiner finds that,
because claim 1 calls for a plurality of apertures that can be suction or
irrigation apertures, it is unclear how the limitations of claims 58 and 59
further limit claim 1. Ans. 4--5.
Appellants contend that the claims are proper in that they further limit
claim 1. Reply Br. 4. Appellants contend that claim 1 does not require
either a plurality of suction apertures or a plurality of irrigation apertures,
since it encompasses embodiments comprising either a single irrigation
aperture with a plurality of suction apertures or a single suction aperture
with a plurality of irrigation apertures. Id. Appellants argue that claim 58
limits claim 1 to the situation where a plurality of irrigation apertures are
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Appeal2017-006028
Application 12/530,938
present and claim 59 limits claim 1 to a situation where a plurality of suction
apertures are present. Id.
Again, we find that Appellants have the better argument. Claim 1
addresses an endoscope where there can be either a plurality of irrigation
apertures or a plurality of suction apertures. Appeal Br. 13 (Claims App'x).
Claim 5 8 further limits claim 1 to an endoscope that has a plurality of
irrigation apertures and claim 59 further limits claim 1 to an endoscope that
has a plurality of suction apertures. Accordingly, claims 58 and 59 further
limit the scope of claim 1 and are proper dependent claims.
OBVIOUSNESS
Issue
Each of the rejections under 35 U.S.C. § 103(a) are based on the
teachings of Gaiser combined with Jahns. Appellants have only presented
substantive arguments with respect to this combination of references.
Appeal Br. 5-12. With respect to the remaining rejections, Appellants
contend that the additional references do not address the deficiencies of the
combination of Gaiser and Jahns. Id. at 12. Therefore we shall treat all the
rejections under 35 U.S.C. § 103(a) together.
The issue with respect to these rejection is whether a preponderance
of the evidence supports the Examiner's conclusion that the subject matter of
the claims would have been obvious over Gaiser combined with Jahns.
The Examiner finds that Gaiser teaches an epicardial ablation catheter
which includes all of the elements of claim 1 with the exception of one of
more irrigation apertures and one or more suction apertures at the distal end
of the catheter in communication with one or more irrigation or suction
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Appeal2017-006028
Application 12/530,938
lmnens. Final Act. 8-11. The Examiner finds that Jahns teaches an
epicardial ablation catheter having one or more irrigation apertures and one
or more suction apertures at the distal end of the catheter. Id. at 11. The
Examiner concludes:
Id.
It would have been obvious to one having ordinary skill
in the art at the time of the invention to make use of a plurality
of irrigation openings and a plurality of suction apertures at the
distal end of the device arranged in a circumferential array
around the distal end of the ablation catheter (as Jahns shows
the plurality of apertures in Fig. 2 being positioned in a
circumferential arrangement around the distal end if the
catheter) in order to not only hold the device against the tissue
firmly during the cardiac ablation procedure, but also to irrigate
the ablation site to cool the area, create deeper lesions or
prevent the electrodes from sticking to the tissue which would
cause char or bum as Jahns teaches in [0051].
Appellants contend that Jahns does not teach or suggest a plurality of
irrigation or suction apertures arranged in a circumferential array around the
distal end of the ablation catheter. Appeal Br. 8. Appellants argue that
Jahns teaches the use of suction ports arranged linearly. Id.
Principles of Law
[T]he examiner bears the initial burden, on review of the
prior art or on any other ground, of presenting a prima facie
case ofunpatentability. If that burden is met, the burden of
coming forward with evidence or argument shifts to the
applicant.
After evidence or argument is submitted by the applicant
in response, patentability is determined on the totality of the
record, by a preponderance of evidence with due consideration
to persuasiveness of argument.
In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
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Appeal2017-006028
Application 12/530,938
"It is axiomatic that, in proceedings before the PTO, claims in an
application are to be given their broadest reasonable interpretation consistent
with the specification and that claim language should be read in light of the
specification as it would be interpreted by one of ordinary skill in the art."
In re Sneed, 710 F.2d 1544, 1548 (Fed. Cir. 1983) (citation omitted).
"Proper claim construction ... demands interpretation of the entire
claim in context, not a single element in isolation." ACTV, Inc. v. Walt
Disney Co., 346 F.3d 1082, 1088 (Fed. Cir. 2003) (citing Hockerson-
Halberstadt v. Converse, Inc., 183 F.3d at 1369 (Fed. Cir. 1999)).
Analysis
We have considered the parties' arguments and find that Appellants
have the better argument. While Jahns discloses the use of a plurality of
suction apertures at the distal end of the ablation catheter, as shown in
Figure 2 of Jahns, reproduced below, the apertures, 54, are arranged linearly,
not circumferentially.
FIG. 2
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, ,,,.~fl\titt~w·rtttriiM:t:-Jht. . ~
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7
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Figure 2 of Jahns shows a suction assisted ablation device.
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Appeal2017-006028
Application 12/530,938
The Examiner argues that the broadest reasonable interpretation of the
term circuniferential means lying around the edge or periphery of an object.
Ans. 7-8. The Examiner contend that the apertures disclosed in Jahns lie in
a circumferential array around the distal end of the catheter. Ans. 8. We are
not persuaded.
We agree with Appellants that the Examiner's interpretation of the
term circumferential is not supported by the Specification and the wording
of the claim 1 as a whole. Appeal Br. 9-10, Reply Br. 4. As Appellants
point out, the term at issue is circuniferential array around the distal end of
the catheter, not simple the term circumferential. Appeal Br. 9-10. This is
not inconsistent with the Examiner's definition of circumferential, which is
lying around the edge. Id. at 10. In addition, this interpretation is supported
by the drawings ad Specification of the present application. As shown in
Figures 5C and 5D of the instant application, reproduced below, the
apertures are arranged about the tip of the catheter.
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Appeal2017-006028
Application 12/530,938
·l~ :, ..
FIG, 5C
Figures 5C and 5D of the Specification show apertures arranged about the
tip of a catheter.
The Specification's drawings reinforce a claim construction that the
apertures must be arranged around the tip of the catheter. As shown above
in Figure 2 of Jahns, the apertures do not lie around the tip of the catheter,
but lie along one side of the catheter.
The Examiner has not persuasively shown why one skilled in the art
would modify the linear arrangement on one side of the catheter of Jahns to
form a circumferential arrangement around the distal end of the catheter as
required by claim 1.
We conclude that a preponderance of the evidence does not support
the Examiner's conclusion that the subject matter of the claims would have
been obvious over Gaiser combined with Jahns.
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Appeal2017-006028
Application 12/530,938
SUMMARY
We reverse the rejections under 35 U.S.C. § 112.
We reverse the rejections under 35 U.S.C. § 103(a).
REVERSED
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