Ex Parte Turovskiy et alDownload PDFPatent Trial and Appeal BoardDec 31, 201814021838 (P.T.A.B. Dec. 31, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/021,838 09/09/2013 Roman Turovskiy 28390 7590 01/03/2019 MEDTRONIC VASCULAR, INC. IP LEGAL DEPARTMENT 3576 UNOCAL PLACE SANTA ROSA, CA 95403 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. C00005133.USU1 1022 EXAMINER OUYANG,BO ART UNIT PAPER NUMBER 3794 NOTIFICATION DATE DELIVERY MODE 01/03/2019 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): rs.vasciplegal@medtronic.com rs.patents.five@medtronic.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ROMAN TUROVSKIY and MARIA VERONICA LARIOS Appeal 2018-001868 Application 14/021,83 8 Technology Center 3700 Before ANNETTE R. REIMERS, LISA M. GUIJT, and NATHAN A. ENGELS, Administrative Patent Judges. GUIJT, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeals under 35 U.S.C. § 134(a) from the Examiner's rejection2 of claims 16-23 under 35 U.S.C. § 103(a) as unpatentable over Abunassar (US 2014/0276747 Al; published Sept. 18, 2004), Chan (US 2013/0304062 Al; published Nov. 14, 2013), and Hillier (US 2005/0267465 Al; published Dec. 1, 2005). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. STATEMENT OF THE CASE 1 Appellants identify the real party in interest as Medtronic Ardian Luxembourg S.a.r.l., a subsidiary of Medtronic, Inc., a wholly-owned subsidiary of Medtronic plc. Appeal Br. 1. 2 Appeal is taken from the Final Office Action dated April 3, 2017. Appeal 2018-001868 Application 14/021, 83 8 Claim 16, the sole independent claim, reproduced below, is exemplary of the subject matter on appeal. 16. A catheter apparatus, comprising: an elongated tubular shaft in a distal portion of the catheter apparatus, the shaft having a pre-formed spiral shape, and a therapeutic assembly disposed at the distal portion of the catheter apparatus and adapted to be located at a target location within an artery of a human patient, the therapeutic assembly comprising a thermocouple assembly helically wrapped about the shaft, wherein the thermocouple assembly comprises a thermocouple junction at least proximate a distal portion of the shaft, and a first wire and a second wire composed of dissimilar metals, wherein the first wire comprises a plurality of exposed regions separated by insulated regions along the shaft, and further wherein the second wire is insulated along the shaft, wherein the elongated tubular shaft and the therapeutic assembly together define therethrough a guide wire lumen configured to slideably receive a medical guide wire, wherein axial movement of the guide wire relative to the therapeutic assembly transforms the shaft between (a) a low- profile delivery configuration and (b) a deployed configuration tending to assume the pre-formed spiral shape of the shaft, wherein, in the deployed configuration, the exposed regions of the first wire define a plurality of energy delivery portions positioned to deliver energy to target tissue adjacent a wall of the artery. ANALYSIS Regarding independent claim 16, the Examiner finds, inter alia, that Abunassar teaches a catheter apparatus (i.e., intravascular intraluminal device 12) comprising an elongated tubular shaft (i.e., deployment member 68) and a therapeutic assembly (i.e., elongate shaping structure 22, electrodes 24) helically wrapped about the shaft. Final Act. 2-3; see also Abunassar ,r,r 40, 54, Figs. 4A, 4B. The Examiner also finds that Abunassar 2 Appeal 2018-001868 Application 14/021, 83 8 discloses, in an alternate embodiment, a first wire comprising exposed regions separated by insulated regions along a shaft. Id. at 3 ( citing Abunassar ,r 63 ( disclosing that "the electrically conductive shaping structure 22 is insulated at least in part," in that "the conductive shaping structure is partially covered with an electrically insulating material and the uncovered portions of the shaping structure 22 serve as one or more conductive electrodes 24") ). The Examiner reasons that it would have been obvious to modify the embodiment of Abunassar's device 12, as depicted in Figures 4A and 4B, to have an electrode that is partially covered with electrically insulating material, as disclosed in the alternative embodiment of Abunassar, because the alternative embodiment is a known structure "for creating an electrode to treat tissue and would work as well as a discrete electrode for treating tissue." Final Act. 4. The Examiner also determines that Abunassar is silent regarding "a thermocouple assembly," as claimed, and the Examiner relies on Hillier for teaching this limitation. Final Act. 3--4 (citing Hillier ,r 43). The Examiner reasons that it would have been obvious to modify Abunassar's therapeutic assembly with a thermocouple (including a thermocouple junction and first and second wires) as taught by Hillier, while leaving the therapeutic assembly as positioned in Abunassar (i.e., helically wrapped about shaft or deployment member 68). Id. at 4--5; Ans. 3. The Examiner explains that "[g]iven Abunassar teaches temperature sensing with the therapeutic assembly ... including the use of thermocouples, ... one of ordinary skill in the art would see that the Hillier thermocouple would work to allow for this temperature sensing to occur." Ans. 3. 3 Appeal 2018-001868 Application 14/021, 83 8 The Examiner further determines that Abunassar is silent regarding "the shaft having a [preformed] spiral shape," as claimed, and the Examiner relies on Chan for teaching this limitation. Final Act. 3--4 ( citing Chan ,r 58). The Examiner reasons that it would have been obvious to modify Abunassar with a shaft having a preformed spiral shape, as taught by Chan, "[to] allow the shaft to assume a helical position to help brace the therapeutic assembly to treat tissue." Id. at 5. First, Appellants argue that Abunassar discloses, with reference to Figure 5C, that the therapeutic assembly itself is a helical shaft wire, rather than being helically wrapped about the shaft, as claimed, and that leads 19 connect shaping structure 22 to energy generator 26 rather than using a thermocouple assembly, as claimed. Appeal Br. 8-9. Appellants' argument, however, fails to address the rejection as articulated by the Examiner, which modifies Abunassar's shaping structure 22, as depicted in Figures 4A and 4B (which is helically wrapped about a shaft), to have exposed and insulated sections of a first wire, as taught by Abunassar's alternate embodiment, and further, modifies Abunassar's therapeutic assembly to include a thermocouple assembly (a second wire and junction), as taught by Hillier, as set forth supra. Thus, Appellants' argument does not apprise us of error in the Examiner's findings and reasomng. Second, Appellants argues that "Hillier expressly teaches that in each embodiment of his apparatus 102, there are [Jone or more thermocouple wires running in the lumen of shaft 114 and insulated from conductive shaft 114." Appeal Br. 9 (citing Hillier ,r 43). Again, however, Appellants' argument does not address the rejection as articulated by the Examiner, 4 Appeal 2018-001868 Application 14/021, 83 8 which relies on Abunassar for disclosing the positioning of the therapeutic assembly (i.e., helically wrapped about a shaft), as claimed. In other words, the Examiner does not rely on Hillier for the positioning of the thermocouple (i.e., within a shaft). Third, Appellants argue that [the Examiner] fails to offer an apparent reason as to why and/or how Abunassar's catheter apparatus including a helical shaping structure 22 with electrodes 24 disposed thereon and wrapped around an elongated generally straight deployment member 68 would be modified to include the thermocouple arrangement of Hillier or the deployment mechanism of Chan. Appeal Br. 11. Appellants submit that the Examiner's proposed modification "would contradict the express teachings of Abunassar regarding the arrangement and deployment of his electrically conductive shaping structure 22 having its own separate wire leads 19, and the express teachings of Hillier including wires running through the lumen of the shaft." Id. Appellants further submit that "Abunassar's device already is tailored to assume a helical shape via proximal/distal movement of deployment member 68 ... to place electrodes 24 into stable contact with the vessel wall, and thus the Examiner's proposed modifications in view of Chan's deployment mechanism are superfluous." Id. (citing Abunassar ,r 56). Appellants' arguments, however, again do not address the reasoning as articulated by the Examiner, as set forth supra: (i) modifying Abunassar's therapeutic assembly to include a thermocouple, as disclosed in Hillier, to incorporate the functions of a sensor and an electrode into a single assembly; and (ii) modifying Abunassar's straight deployment shaft 68 to deform helically, as taught by Chan, to provide greater support to the thermocouple wrapped helically around the shaft. 5 Appeal 2018-001868 Application 14/021, 83 8 Finally, Appellants argue that the Examiner relied on impermissible hindsight, for example, by "selectively pick[ing] elements of each of these individual references while ignoring other elements." Appeal Br. 12; Reply Br. 2-3. In support, Appellants submit that while the [Examiner] acknowledges the many deficiencies of Abunassar with respect to the features of claim 15, the Examiner proceeds to selectively choose various elements form the teachings of Hillier and Chan to fill the gaps of Abunassar without regard for the interoperability of such features or the contradictory teachings within these individual references relative to the teachings in Abunassar. Appeal Br. 13. Appellants also submit that contrary to the Examiner, the applied references fail to teach or suggest (a) removing Hillier's thermocouple wires (part of the temperature sensors 602) from the inner lumen of shaft 114, (b) removing the shaping structure 22 and discrete electrodes 24 from Abunassar' s treatment assembly 21, ( c) replacing Abunassar's treatment assembly 21 with Hillier's thermocouple wires such that the wires "are in the position of (22/24) of Abunassar, a helical shape outside of shaft ( 68)"; and ( d) replacing Abunassar's deployment member 68 with Chan's distal assembly 17. The proposed modifications, in essence, call for removing the entire treatment assembly 21 at the distal portion of Abunassar's device and piecing together disparate components/parts from Hillier and Chan in its place in an attempt to come up with the claimed invention. Reply Br. 4 ( citation omitted). \Ve are not persuaded by Appellants' argument that the Examiner's determination of obviousness is based on impermissible hindsight reconstruction. For example, Appellants do not identify any knowledge that the Examiner relied upon that was gleaned only from Appellants' disclosure and that was not disclosed in the references or otherwise within the level of 6 Appeal 2018-001868 Application 14/021, 83 8 ordinary skill at the time of the invention. See In re McLaughlin, 443 F.2d 1392 (CCPA 1971); see also KSR Int'! Co. v. Teleflex inc., 550 U.S. 398, 417 (2007) ("[l ]fa technique has been used to improve one device, and a person of ordinmy skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill."). Further, the Examiner does not rely on the references for explicitly suggesting the Examiner's proposed modifications, nor does .Appellants' argument apprise us of error in the reasoning that the Examiner has relied upon. Accordingly, we sustain the Examiner's rejection of independent claim 16. Appellants chose not to present separate arguments for the patentability of claims 17-23, and therefore, for essentially the same reasons as set forth supra, we sustain the Exarniner's rejection of claims 17-23. Appeal Br. 13. DECISION The Examiner's decisions rejecting claims 16-23 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). See 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 7 Copy with citationCopy as parenthetical citation