Nathan Zamarripa et al.

Patent Trials and Appeals Board

Aug 8, 2019

14670032 - (D) (P.T.A.B. Aug. 8, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
14/670,032 03/26/2015 Nathan ZAMARRIPA C00010846.USU1-21819E-438 1282
89554 7590 08/08/2019
Christopher & Weisberg, P.A.
1232 N. University Drive
Plantation, FL 33322
EXAMINER
OUYANG, BO
ART UNIT PAPER NUMBER
3794
NOTIFICATION DATE DELIVERY MODE
08/08/2019 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):
cwdocketing@cardinal-ip.com
ptomail@cwiplaw.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 NATHAN ZAMARRIPA, BRIAN M. CONLEY,
and TARQUINIO A. BRUNO
____________

Appeal 2019-000496
Application 14/670,032
Technology Center 3700
____________

Before MICHAEL L. HOELTER, WILLIAM A. CAPP, and
MICHAEL L. WOODS, Administrative Patent Judges.

CAPP, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Nathan Zamarripa, Brian M. Conley, and Tarquinio A. Bruno
(hereinafter collectively Appellant)1 seek our review under 35 U.S.C.
§ 134(a) of the final rejection of claims 1, 4–10, 12, and 15–20. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 Appellant identifies Medtronic Advanced Energy, LLC as the Applicant
and real party in interest. Appeal Br. 1.
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Application 14/670,032
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THE INVENTION
Appellant’s invention relates to medical devices for RF ablation
medical procedures. Spec. 1. Claim 1, reproduced below, is illustrative of
the subject matter on appeal.
1. An electrosurgical device, comprising:
an elongate body including a rigid proximal portion, a distal
portion, and defining a lumen there though,
a fluid delivery tube disposed within the lumen;
a first electrode coupled to the distal end of the elongate
body, the first electrode being configured to ablate tissue with
radiofrequency energy;
the distal portion including a plurality of slots in fluid
communication with the lumen, the plurality of slots being
spaced a longitudinal distance proximal from the first electrode,
the plurality of slots being configured to aspirate gas released
from tissue ablated with the first electrode, the plurality of slots
being further configured to provide malleability to the distal
portion;
the distal portion defining an outer diameter and a port
along the outer diameter, the port being disposed distal to the
plurality of slots and proximal to the first electrode, the port
being configured to expel fluid from the fluid delivery tube; and
an electrical insulator disposed between the first electrode
and the plurality of slotted sections, wherein the port is
disposed within the insulator.
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Krause
Sharkey
Tegg
de la Rama
Mitusina
Bloom
US 5,152,744
US 2002/0049438 Al
US 2008/0275428 Al
US 2010/0152731 Al
US 2011/0022069 Al
US 2012/0232553 Al
Oct. 6, 1992
Apr. 25, 2002
Nov. 6, 2008
June 17, 2010
Jan. 27, 2011
Sept. 13, 2012

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The following rejections are before us for review:
1. Claims 1, 4–10, 12, 15, and 16 are rejected under 35 U.S.C. § 103
as being unpatentable over Bloom, Sharkey, de la Rama, and Tegg.
2. Claims 17 and 18 are rejected under 35 U.S.C. § 103 as being
unpatentable over Bloom, Sharkey, de la Rama, Tegg, and Krause.
3. Claim 19 is rejected under 35 U.S.C. § 103 as being unpatentable
over Bloom, Sharkey, de la Rama, Tegg, and Mitusina.
4. Claim 20 is rejected under 35 U.S.C. § 103 as being unpatentable
over Bloom, Sharkey, de la Rama, Tegg, Krause, and Mitusina.

OPINION
Unpatentability of Claims 1, 4–10, 12, 15, and 16
over Bloom, Sharkey, de la Rama, and Tegg
Claim 1
The Examiner finds that Bloom discloses the invention substantially
as claimed except for: (1) aspirating “slots;” (2) malleability; and (3) a fluid
discharge port disposed as claimed. Final Action 3. The Examiner relies on
de la Rama as disclosing an ablation device with slots that provide
flexibility. Id. The Examiner relies on Sharkey as teaching a port proximal
to an ablation electrode and insulator. Id. The Examiner relies on Tegg as
teaching a fluid discharge port. Id. at 4. The Examiner concludes that it
would have been obvious to a person of ordinary skill in the art at the time
of the invention to combine the teachings of Bloom to that of Sharkey, de la
Rama, and Tegg to achieve the claimed invention. Id.
Appellant argues that the prior art fails to disclose disposing a port
“within” an insulator where the insulator is disposed “between” the first
electrode and the aspiration slot. Appeal Br. 4. Appellant further argues
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that the Examiner fails to support the rejection with adequate articulated
reasoning. Id. at 4–5; Reply Br. 2. In particular, Appellant argues that
Sharkey’s aspiration ports are on the electrodes to prevent clogging. Appeal
Br. 5 (citing Sharkey ¶ 14).
In response, the Examiner points out that paragraph 14 of Sharkey is
directed to an alternative embodiment that is not relevant to the instant
rejection as the Examiner relies on the Figure 5 embodiment of Sharkey.
Ans. 3.
In reply, Appellant returns to its previous argument based on
paragraph 14 of Sharkey and that relocating the ports as proposed by the
Examiner would render Sharkey inoperable. Reply Br. 3.
Bloom discloses an electro-surgical device with an RF energy cutting
tip. Bloom ¶ 57, Fig. 2A. Bloom further discloses a plurality of aspiration
holes 211 on the sidewalls of the cutting tip. Id. ¶ 54, Fig. 2B. de la Rama
discloses an electrode with a plurality of channels 120 in communication
with lumen 118 for fluid transport. de la Rama, ¶¶ 31, 32, 60, Fig. 3. The
channels transport irrigation fluid out of tip assembly 108 and are further
configured to allow the electrode tip to flex and deform. Id. ¶¶ 31, 32,
Fig. 4. Sharkey discloses an electrosurgical instrument with a distal tip that
features central electrode 522, aspiration apertures 525, and insulator 528.
Sharkey, ¶¶ 52–53, Fig. 5. Tegg discloses an instrument that is used for
ablation, featuring electrode 14 connected to distal end 20 of a catheter. Id.
¶ 29, Figs. 1–2. Electrode 14 features a tip portion 24 and a base portion 26
that contains a means for irrigating, including irrigation port(s) 28. Id.
Appellant’s argument that moving Sharkey’s ports would render
Sharkey inoperable lacks evidentiary support and is, therefore, not
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persuasive. Sharkey’s ports are for aspiration. Sharkey, ¶¶ 7, 47. In
contrast, the “port” of claim 1, for which the Examiner relies on Tegg,
expels fluid from a delivery tube. Claims App. To the extent that
Appellant’s argument is directed to the aspiration function rather than the
fluid delivery function (which is unclear from Appellant’s briefs), Sharkey is
concerned with clogging caused by aspirating charred and ablated tissue and
coagulated blood. Sharkey, ¶ 7. In contrast, the instant claim is directed to
aspirating “gas.” Claims App. Bloom teaches that aspiration holes may be
spaced apart in the proximal direction from a cutting tip. Bloom, ¶¶ 54, 57,
Figs. 2A, 2B. Thus, there is no reason to believe that the Examiner’s
proposed combination results in an inoperable device. Consequently, we
view Appellant’s argument based on the location of Sharkey’s port as an
individual attack on one reference in a proposed combination. It is well
established non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references. In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986); see also In re Keller, 642 F.2d 413, 425 (CCPA 1981).
In view of the foregoing, the record amply supports the Examiner’s
findings that the proposed combination discloses all of the structural
elements of claim 1. Appellant’s argument, in essence, is that, although the
individual elements may be present in the prior art, the prior art does not
teach the particular claimed configuration in which the individual elements
are juxtaposed relative to each other and to the distal and proximal ends of
the device. In other words, Appellant asserts patentability due to the manner
in which the various elements are arranged. Appellant’s position is not well-
taken.
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In performing an obviousness analysis, a tribunal asks whether the
improvement is more than the predictable use of prior art elements according
to their established functions. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
417 (2007). Contrary to the position advocated by Appellant, the analysis
need not seek out precise teachings directed to the specific subject matter of
the challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ. Id.
at 418. Thus, when a patent “simply arranges old elements with each
performing the same function it had been known to perform” and yields no
more than one would expect from such an arrangement, the combination is
obvious. Id. at 417 (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282
(1976)). When there is a design need or market pressure to solve a problem
and there are a finite number of identified, predictable solutions, a person of
ordinary skill has good reason to pursue the known options within his or her
technical grasp. Id. at 421. If this leads to the anticipated success, it is
likely the product not of innovation but of ordinary skill and common sense.
Id. In that instance, the fact that a combination was obvious to try might
show that it was obvious under § 103. Id.
In the instant case, Appellant’s invention features a fluid delivery port,
an electrode, aspiration slots, and an insulator all disposed in proximity to
the distal tip of an electrosurgical device. Claims App. Each element
performs the same function it had been known to perform in the prior art.
The combination heats tissue and saline fluid and then aspirates the smoke
and steam created by such heating. Such is exactly what one would expect
from the combination. There are only a finite number of ways to arrange an
electrode, a fluid port, an insulator, and aspiration ports/slots near the distal
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tip of an electrosurgical device. Appellant presents neither evidence nor
persuasive technical reasoning that arranging the elements in the manner
claimed requires more than ordinary skill or produces unexpected results. In
short, Appellant’s invention “simply arranges old elements with each
performing the same function it had been known to perform” and yields no
more than one would expect from such an arrangement. KSR at 417. Such a
combination is obvious. Id. There is nothing patentably non-obvious about
Appellant’s particular “arrangement.”
Appellant’s arguments do not apprise us of Examiner error. In view
of the foregoing discussion, we determine the Examiner’s findings of fact
are supported by a preponderance of the evidence and that the Examiner's
legal conclusion of unpatentability is well-founded. Accordingly, we sustain
the Examiner’s unpatentability rejection of claim 1.
Claims 4–10
Claims 4–10 depend, directly or indirectly, from claim 1 and are not
separately argued. Claims App., Appeal Br. 5. They fall with claim 1. See
37 C.F.R. § 41.37(c)(1)(iv) (failure to separately argue claims).
Claims 12, 15, and 16
Claim 12 is an independent claim that is substantially similar in scope
to claim 1. Claims App. Claims 15 and 16 depend from claim 12. Id. In
traversing the rejection of these claims, Appellant relies on the same
arguments that we have previously considered and found unpersuasive with
respect to the rejection of claim 1 and find equally unpersuasive here.
Appeal Br. 4–5. Thus, we are not apprised of error and, accordingly, we
sustain the rejections of claims 12, 15, and 16.
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Unpatentability of Claims 17 and 18
over Bloom, Sharkey, de la Rama, Tegg, and Krause
Claims 17 and 18 depend from claim 12. Claims App. Appellant
does not argue for the separate patentability of claims 17 and 18 apart from
arguments presented with respect to claims 1 and 12, which we have
previously considered. We sustain the Examiner’s rejection of claims 17
and 18. 37 C.F.R. § 41.37(c)(1)(iv).
Unpatentability of Claim 19
over Bloom, Sharkey, de la Rama, Tegg, and Mitusina
Claim 19 depends from claim 12. Claims App. Appellant does not
argue for the separate patentability of claim 19 apart from arguments
presented with respect to claims 1 and 12, which we have previously
considered. We sustain the Examiner’s rejection of claim 19. 37 C.F.R.
§ 41.37(c)(1)(iv).
Unpatentability of Claim 20
over Bloom, Sharkey, de la Rama, Tegg, Krause, and Mitusina
Claim 20 is an independent claim. Claims App. Appellant raises the
same “disposed between” argument that we found unpersuasive with respect
to claims 1 and 12 and find equally unpersuasive here. Appeal Br. 6.
Appellant argues that there is no legally sufficient motivation to combine all
six of the cited references. Id. Appellant argues that Krause and Mitusina
address surgical instruments relying on mechanical forces to move cutting
instrument. Id. at 6–7.
In response, the Examiner states that Krause and Mitusina are
concerned, in part, with the dimensions and shape of slots allowing for
flexibility of the elongate body. Ans. 3–4. We agree with the Examiner that
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the teachings of Krause and Mitusina relied on by the Examiner can be
combined with the teachings of RF ablation references. See In re Etter, 756
F.2d 852, 859 (Fed. Cir. 1985) (en banc) (explaining that the obviousness
inquiry does not ask whether the references could be physically combined
but whether the claimed invention is rendered obvious by the teachings of
the prior art as a whole).
We sustain the rejection of claim 20.
DECISION
The decision of the Examiner to reject claims 1, 4–10, 12, and 15–20
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)(1)(iv).
AFFIRMED