Ex Parte McCullagh et al

Board of Patent Appeals and Interferences

Feb 14, 2012

11030229 (B.P.A.I. Feb. 14, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/030,229 01/06/2005 Oria McCullagh 04-328 (US01) 1308
23410 7590 02/15/2012
Vista IP Law Group LLP
2040 MAIN STREET, Suite 710
IRVINE, CA 92614
EXAMINER
HENDERSON, RYAN N
ART UNIT PAPER NUMBER
3779
MAIL DATE DELIVERY MODE
02/15/2012 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 ORIA McCULLAGH,
JOHN C. SPIRIDIGLIOZZI, and DAVID J. SAUVAGEAU
__________

Appeal 2010-007773
Application 11/030,229
Technology Center 3700
__________

Before DEMETRA J. MILLS, ERIC GRIMES, and LORA M. GREEN,
Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a medical
probe kit, which the Examiner has rejected as obvious. We have jurisdiction
under 35 U.S.C. § 6(b). We reverse.
STATEMENT OF THE CASE
Claims 1-5, 7, 9-11, 14-18, 21, 22, 24, 25, and 29-31 are on appeal.
Claim 1 is representative and reads as follows:
Appeal 2010-007773
Application 11/030,229

2
1. A medical probe kit, comprising:
a delivery cannula having a shaft terminating at a male connector at a
proximal end, the male connector having a key disposed on a surface
thereof, a lumen extending through the cannula shaft and terminating at an
axial opening disposed at a distal end of the cannula shaft, and a plurality of
windows formed through a wall of the shaft in communication with the
lumen, the plurality of windows comprising a self-sealing pliable membrane
configured to isolate the lumen of the shaft from an external environment;
an ablation probe configured to be removably disposed within the
cannula lumen, the ablation probe having a shaft, a proximal handle, a distal
handle comprising a distally facing female connector having a key slot
configured to mate with the key of the male connector, and proximal and
distal arrays of electrodes operatively coupled to the proximal handle and
deployable from the probe shaft, wherein the electrodes of the proximal
array are configured to be deployed out from the respective windows of the
cannula when the ablation probe is disposed within the cannula lumen and
the electrodes of the distal array are configured to be deployed out the axial
opening disposed at the distal end of the cannula shaft when the ablation
probe is disposed within the cannula lumen; and
a biopsy stylet configured to be removably disposed within the
cannula lumen.

The Examiner has rejected claims 1-5, 9-11, 14-18, 21, 22, 24, 25, and
29-31 under 35 U.S.C. § 103(a) as obvious based on Young,1 Moorman,2
Gates,3 and Bee4 (Answer 3). The Examiner has also rejected claim 7 based
on Young, Moorman, Gates, Bee, and McGuckin5 (Answer 8). Because the
same issue is dispositive with respect to both rejections, we will address
them together.

1 Young et al., US 7,416,549 B2, issued Aug. 26, 2008
2 Moorman et al., US 6,652,520 B2, issued Nov. 25, 2003
3 Gates et al., US 5,522,875, issued June 4, 1996
4 Bee et al., US 2005/0010210 A1, published Jan. 13, 2005.
5 McGuckin et al., US 6,425,887 B1, issued July 30, 2002
Appeal 2010-007773
Application 11/030,229

3
The Examiner finds that Young discloses a delivery cannula and
ablation probe that meet most of the limitations of claim 1, but Young does
not disclose a biopsy stylet, a self-sealing pliable membrane, or the key/key
slot limitations of the claimed kit (Answer 4). The Examiner finds that
Moorman discloses a medical probe kit that includes a delivery cannula,
ablation probe, and biopsy stylet (id. at 5); Gates discloses a surgical device
having a needle that is deployed through a window with a self-sealing
pliable membrane (id.); and Bee discloses an electrosurgical treatment
system having the key/key slot elements recited in claim 1 (id. at 5-6). The
Examiner concludes that it would have been obvious to combine these
elements as recited in the claims on appeal (id. at 5, 6).
Appellants argue that the cited references do not support the
Examiner’s rejection because, among other things,
modifying the device taught by Young et al. to include a
removably disposed ablation probe and biopsy stylet would
require a substantial reconstruction and redesign of the elements
shown in Young et al. because removing the ablation probe 110
from the cannula 108 taught by Young et al. (i.e., to be
exchanged with a biopsy stylet) would cause the electrode
arrays 124 to expand. Because Young et al. does not teach a
mechanism for keeping the electrode arrays 124 in the retracted
configuration when the ablation probe 110 is disposed outside
of the cannula 108, the ablation probe 110 taught by Young et
al. cannot be easily exchanged with a biopsy stylet.
(Appeal Br. 7.)
We agree with Appellants that the Examiner has not adequately
explained why it would have been obvious to combine Moorman’s biopsy
stylet with the ablation probe assembly disclosed by Young. The Examiner
reasoned that it would have been obvious “to have a removably disposed
App
App

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Howeve
rences bet
oses a “mo
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duced bel
Figure 1
s a modul
ery needle
le 35 form
l. 6, ll. 18-
By contr
rode pairs
g’s Figur
07773
/030,229
and biopsy
delivery d
a single pr
the punc
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ween the a
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ow:
c shows a
ar needle
(id. at co
s a microw
20).
ast, Young
, rather tha
es 5 and 6
stylet as
evice that
otected pu
ture site du
iner’s rat
blation pr
sy and mi
situ assem
, ll. 54-56
side view
apparatus w
l. 5, ll. 8-1
ave anten
’s system
n a microw
are reprod
4
taught by
can facilit
ncture site
ring biops
ionale doe
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crowave a
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). Moorm
of an ablat
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3); “the di
na 40 for
for ablatin
ave ablat
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Moorman
ate the bio
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and ablat
an’s Figur
ion needle
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performing
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ion needle
:
in order to
psy and ab
he need to
ablation” (
into accou
d Young.
edle and d
ion of tum
es 1c and
and Figu
dle connec
tion of the
tissue ab
omprises b
(Young,
provide a
lation of
withdraw
Answer 5)
nt the
Moorman
elivery
ors in
1d are
re 1d
ted to the
ablation
lation” (id
ipolar
abstract).

a

.

.
App
App

and F
5, ll.
prob
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are d
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ll. 55
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67).
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and p
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lication 11
Figure 5
igure 6 sh
4-10). Th
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rode array
trating nee
eployed th
re 5 or 6] t
-57). The
e within th
rodes 126
As Appe
e from its
revent ea
07773
/030,229
shows Yo
ows the s
e probe as
in it (id. a
s mounted
dle electro
rough “cir
hat extend
“distal en
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from the p
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delivery c
sily exchan
ung’s abla
ame probe
sembly in
t col. 6, ll.
to it that a
des 126”
cumferen
through t
ds of the n
9 in order
orts 139 d
t out (App
annula wo
ging the a
5
tion probe
assembly
cludes a ca
8-10). Th
re made u
(id. at col.
tially dispo
he wall of
eedle elec
to facilita
uring depl
eal Br. 7)
uld cause t
blation pr
assembly
in its depl
nnula 108
e inner pro
p of “a plu
6, ll. 28-3
sed ports
the cannu
trodes 126
te moveme
oyment” (
, removing
he electro
obe with a

in its retr
oyed state
having an
be includ
rality of t
1). The el
139 [not l
la 108” (id
, when ret
nt of the n
id. at col.
Young’s
de arrays t
biopsy sty
acted state
(id. at col
inner
es
issue
ectrodes
abeled in
. at col. 6,
racted,
eedle
6, ll. 64-
ablation
o expand
let. Of

.

Appeal 2010-007773
Application 11/030,229

6
course, the “fact that the motivating benefit comes at the expense of another
benefit . . . should not nullify its use as a basis to modify the disclosure of
one reference with the teachings of another. Instead, the benefits, both lost
and gained, should be weighed against one another.” Winner Int’l Royalty
Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000).
Here, the Examiner has identified a potential benefit to be gained from
adding a biopsy stylet to Young’s system, and making its ablation probe
removable; specifically, to “facilitate the biopsy and ablation of a tumor
through a single protected puncture site without the need to withdraw the
device” (Answer 5). But the Examiner has not shown that the benefit gained
by the proposed modification would have been expected to outweigh the loss
in ease of use; specifically, the need – every time the ablation probe was
removed from the delivery cannula – to re-register the needle electrodes of
Young’s device with the ports through which they are deployed.
Although the Examiner argues that “since the ablation probe and
electrode array had to be inserted into the cannula at some point during
construction of the device in a way that registered the electrodes and the
windows of the cannula, it would not be outside of one of ordinary skill to
modify the ablation probe as taught by Young to be inserted and withdrawn
as desired” (Answer 9), we are not persuaded that the proposed modification
would have been an obvious one. See In re Fritch, 972 F.2d 1260, 1266
(Fed. Cir. 1992) (“The mere fact that the prior art may be modified in the
manner suggested by the Examiner does not make the modification obvious
unless the prior art suggested the desirability of the modification.”).
Appeal 2010-007773
Application 11/030,229

7
SUMMARY
We reverse the rejection of claims 1-5, 9-11, 14-18, 21, 22, 24, 25,
and 29-31 based on Young, Moorman, Gates, and Bee. We reverse the
rejection of claim 7 based on Young, Moorman, Gates, Bee, and McGuckin.

REVERSED

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