Ex Parte Maschke

Patent Trial and Appeal Board

Mar 9, 2016

12381512 (P.T.A.B. Mar. 9, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/381,512 03/12/2009
22116 7590 03/11/2016
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
3501 Quadrangle Blvd Ste 230
Orlando, FL 32817
FIRST NAMED INVENTOR
Michael Maschke
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.
2007Pl4774US 9953
EXAMINER
FISHER, MICHAEL NAPOLEON
ART UNIT PAPER NUMBER
3737
NOTIFICATION DATE DELIVERY MODE
03/11/2016 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):
IPDadmin.us@siemens.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL MASCHKE
Appeal2013-004338
Application 12/3 81,512
Technology Center 3700
Before JOHN C. KERINS, BRANDON J. WARNER, and
LEE L. STEPINA, Administrative Patent Judges.
KERINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Michael Maschke (Appellant) seeks our review under 35 U.S.C.
§ 134(a) of the Examiner's final rejection of claims 14--24 and 30. We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
Appeal2013-004338
Application 12/3 81,512
THE INVENTION
Appellant's invention is directed to a catheter device for a treatment
of a cardiac valve disease, and to a medical examination and treatment
apparatus employing such a catheter device. Independent claim 14,
reproduced below, is illustrative:
14. A catheter device for a treatment of a cardiac valve
disease, comprising:
a catheter cavity;
a flexible catheter sheath that encloses the catheter cavity;
a catheter-specific module disposed at a proximal end
close to a catheter tip, said catheter-specific module configured
to transport and position a cardiac valve implant; and
an image sensor arranged in a region of the catheter tip,
said image sensor configured to record an image of the treatment,
\'I/herein the image sensor is configured to be mounted
longitudinally relative to the catheter sheath so that it can be
moved into an advanced position outside of the catheter sheath.
THE REJECTIONS ON APPEAL
The Examiner has rejected:
(i) claims 14--20, 23, 24, and 30 under 35 U.S.C. § 103(a) as being
unpatentable over Whayne (US 6,047,218, issued Apr. 4, 2000) in view of
Shennib (US 2005/0240202 Al, published Oct. 27, 2005);
(ii) claims 21 and 22 under 35 U.S.C. § 103(a) as being unpatentable
over Whayne in view of Shennib, and further in view of Suorsa (US
6,206,831 B 1, issued Mar. 27, 2001 ).
2
Appeal2013-004338
Application 12/3 81,512
ANALYSIS
Claims 14-20, 23, 24, and 30----Dbviousness-Whayne/Shennib
Appellant argues claims 14--20 and 23 as a group, and presents no
arguments for the separate patentability of claims 15-20 and 23. App. Br.
3-8. Appellant further asserts that independent claim 30 is patentable solely
for the same reasons as presented for claim 14. Id. at 10. Accordingly, we
will take claim 14 as representative, and claims 15-20, 23, and 30 stand or
fall with claim 14. Appellant presents additional arguments directed to the
rejection of independent claim 24, and we take those up separately.
Claims 14-20, 23, and 30
The Examiner finds that Whayne discloses all limitations set forth in
claim 14, with the exception of the catheter-specific module disposed at a
proximal end close to a catheter tip, wherein said module is configured to
transport and position a cardiac valve implant. Final Act. 2-3. The
Examiner relies on Shennib as teaching such a module, and concludes that it
would have been obvious to modify the Whayne catheter such that it would
include the catheter-specific module of Shennib. Id. at 4.
Appellant contends the modification proposed by the Examiner would
require (1) removal of structure 20, spline elements 22, and imaging probe
34 from distal end 16 of catheter 12 in Whayne; (2) attachment of device 50
of Shennib to distal end 16 of modified catheter 12 in Whayne; and (3) use
of device 5 0 attached to distal end 16 of Whayne' s modified catheter 12 to
provide a means for transporting and positioning an intracavity device. App.
Br. 4. According to Appellant, as these efforts result in the removal of
Whayne' s imaging components, the proposed modification would render
Whayne unsatisfactory for its intended purpose of providing a system for
3
Appeal2013-004338
Application 12/3 81,512
visualizing interior regions of the human body and for mapping or ablating
heart tissue. Id. (citing Whayne col. 1, 11. 8-12).
Appellant's argument is not persuasive because it mischaracterizes the
Examiner's rejection. The assertion that "the modification steps would
necessarily require replacing the structure 20, spline elements 22, and
imaging pro[b ]e 34 of Whayne with the device 50 of Shennib" originates in
Appellant's argument and is not present in the rejections of record. App. Br.
4--5; see Final Act. 2--4. In contrast, the Examiner proposes including
Shennib's guide member 22 and fastening means member 24 in Whayne's
system, which results in a catheter tube carrying both Whayne' s imaging
probe and Shennib's guide and fastening means members. Final Act. 4. The
Examiner refers to this as "combining element( s) of one reference with
another ... to be constructive in nature to further enhance the functionality"
of the original device. Id. at 7; see also Ans. 9-10. As imaging probe 34
would remain present in Whayne as modified by Shennib, the system would
remain satisfactory for "visualizing interior regions of the human body" and
for "mapping or ablating heart tissue." Ans. 8. Therefore, we are not
persuaded that the modification proposed by the Examiner would render
Whayne unsatisfactory for its intended purpose.
Appellant further argues that because "the support structure 20 of
Whayne is not configured to transport and position a cardiac valve implant,
the IAE 50 within the support structure would necessarily not be configured
to record an image of such a treatment." App. Br. 7. We are unpersuaded
by this argument because the Examiner's rejection is based not on Whayne
in isolation, but on Whayne as modified by Shennib. One cannot show
nonobviousness by attacking references individually when the rejection is
4
Appeal2013-004338
Application 12/3 81,512
based on a combination of references. Jn re Keller, 642 F.2d 413, 426
(CCP A 1981 ). As noted previously, the Examiner cites Whayne as
disclosing the claimed "image sensor" and proposes to modify Whayne in
view of Shennib to include a module configured to transport and position a
cardiac valve implant. Though Appellant correctly points out "the
monitoring probe 68 of Shennib ... is used to measure blood pressure or
blood flow, not to image the treatment of a cardiac valve disease" (App. Br.
7), the Examiner does not rely on Shennib as disclosing the claimed "image
sensor." Because the modification proposed by the Examiner includes both
Whayne's imaging probe and Shennib's valve implant delivery and
deployment means, we are not persuaded that Whayne as modified by
Shennib does not disclose "an image sensor arranged in a region of the
catheter tip [that is] configured to record an image of the treatment," as
claimed.
Appellant additionally argues that because "the proposed
Wayne/Shennib combination would necessarily involve removal and
replacement of the structure 20/spline elements 22/imaging probe 34/IAE 50
of Whayne," Whayne as modified by Shennib cannot disclose the claimed
"image sensor ... configured to be mounted longitudinally relative to the
catheter sheath so that it can be moved into an advanced position outside of
the catheter sheath." App. Br. 8. Because, as noted above, the proposed
modification does not involve such removal and replacement, we are not
persuaded by this argument.
Further, Appellant argues that IAE 50 in Whayne is not "mounted
longitudinally relative to the catheter sheath so it can be moved into an
advanced position outside of the catheter sheath." Id. In reply, the
5
Appeal2013-004338
Application I 2/3 8 I ,5 I 2
Examiner points to Figure 5A of Whayne showing image acquisition
element (IAE) 50 extended outside of catheter sheath 44. Final Act. 9; see
also Ans. I I. Additionally, Figure 2 of Whayne and its corresponding
description disclose that catheter sheath 44 may be retracted away from
support structure 20 which initially houses IAE 50. Whayne, col. 5, 11. I 9-
35. Because these figures show IAE 50 mounted longitudinally relative to
catheter sheath 44 both retracted inside of the sheath and advanced outside
of the sheath, we are not persuaded by Appellant's argument.
In view of the foregoing, we are not apprised of Examiner error with
respect to the rejection of claim I4 as being unpatentable over Whayne and
Shennib. The rejection of claim I4 is sustained, and claims I5-20, 23, and
30 fall with claim I 4.
Claim 24
Appellant additionally argues, for claim 24, that the Examiner has not
established that Whayne discloses "an image processing and playback
apparatus that is located outside the catheter device and connected with the
image sensor via the signal line," as recited in independent claim 24. App.
Br. 8-9. Appellant alleges various deficiencies in the Examiner's citations
to column I8 lines 4I--43; column I5, line 57; and column 7, lines 43-55 of
Whayne in this regard. Id. at 9. Principally, it appears that Appellant views
Whayne as being limited to detecting, processing, and displaying
information obtained relative to injection of a contrast media into a specified
area. Id.
Appellant, however, does not address the Examiner's citation to and
reliance on Figure 6 ofWhayne. See Final Act. 3; Ans. I2. The
embodiment presented in Figure 6 includes external receiver and processor
6
Appeal2013-004338
Application 12/3 81,512
57 which receive signals from ultrasonic transducer 52 in IAE 50, and which
output images on display 59. Whayne, Fig. 6; col. 7, 1. 10- col. 8, 1. 5.
Appellant's remarks directed to the disclosure at column 7 of Whayne do not
persuade us that the Examiner erred in taking the position that "the image
processor [of Whayne] is not limited to processing contrast media, but may
be utilized to process images from tissues or other anatomical structures."
Ans. 12.
Finally, Appellant contends that Whayne does not disclose "that the
IAE 50 transmits an image along a signal line from a location of the
treatment to the image processing and playback apparatus ... in real time."
App. Br. 10. Appellant alleges that the Examiner's citations to column 10,
lines 51-58; column 16, lines 62-67; and column 17, lines 1-5, are deficient
because the cited portions "merely disclose[] that, for purposes of evaluating
electrical characteristics of the heart chamber, the support structure 20 is
provided with electrodes 30, which can be properly aligned, to ensure that
the electrical characteristics are determined." Id. at 9-10. Appellant again
does not address the Examiner's reliance on Figure 6 as disclosing "an
image processing and playback apparatus that is located outside the catheter
device and connected with the image sensor via the signal line," nor the
Examiner's additional citation to the use of fiber optic imaging illustrated in
Figure 7. Final Act. 3; Ans. 13 (citing Whayne, col. 8, 11. 10-14). As such,
Appellant has not apprised us of error in the Examiner's rejection.
The rejection of claim 24 as being unpatentable over Whayne and
Shennib is sustained.
7
Appeal2013-004338
Application 12/3 81,512
Claims 21and22----0bviousness-Whayne/Shennib/Suorsa
Appellant maintains that claims 21 and 22, which depend from claim
14, are patentable for the same reasons as presented for claim 14. App. Br.
11. As discussed above, we do not find those arguments persuasive.
Accordingly, the rejection of claims 21 and 22 as being unpatentable over
Whayne, Shennib, and Suorsa is sustained.
DECISION
The rejection of claims 14--20, 23, 24, and 30 as being unpatentable
over Whayne and Shennib is affirmed.
The rejection of claims 21 and 22 as being unpatentable over Whayne,
Shennib, and Suorsa, 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).
AFFIRMED
8