2020002798 (P.T.A.B. Dec. 16, 2020)

Cosman Medical Inc.

Patent Trials and Appeals BoardDec 16, 2020

2020002798 (P.T.A.B. Dec. 16, 2020)

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. 15/442,106 02/24/2017 Eric R. Cosman 8150BSC0430CPC1 9533 121974 7590 12/16/2020 Kacvinsky Daisak Bluni PLLC 2601 Weston Parkway, Suite 103 Suite 103 Cary, NC 27513 EXAMINER PIATESKI, ERIN M ART UNIT PAPER NUMBER 3792 NOTIFICATION DATE DELIVERY MODE 12/16/2020 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): bbonneville@kdbfirm.com docketing@kdbfirm.com ehysesani@kdbfirm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ERIC R. COSMAN Appeal 2020-002798 Application 15/442,106 Technology Center 3700 Before BENJAMIN D. M. WOOD, BRETT C. MARTIN, and MICHAEL J. FITZPATRICK, Administrative Patent Judges. WOOD, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 22–24, 26, 29–31, 33, and 42. See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 “Appellant” refers to the applicant as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Cosman Medical, Inc. Appeal Br. 3. Appeal 2020-002798 Application 15/442,106 2 CLAIMED SUBJECT MATTER The claims are directed to a catheter system. Claim 22, reproduced below, is illustrative of the claimed subject matter: 22. A system comprising: a catheter; an injection adaptor for the catheter; and an electrode, the catheter having a proximal end and a distal end and including a catheter lumen, the catheter lumen having a proximal opening at a proximal end of the catheter and a distal opening at a distal end of the catheter, the injection adaptor including an adaptor lumen connecting a distal first port and a proximal second port of the adaptor, the first port forming a first seal with the proximal opening of the catheter lumen, the second port being configured to form a second seal with the electrode when the electrode is inserted through the second port, the first seal being a fluid-tight seal, the second seal being a fluid-tight seal, and the second seal comprising a clamp configured to be actuated to releasably fix the electrode to the injection adaptor, the electrode including an elongated shaft insertable through the second port and into the catheter lumen. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Edwards US 5,935,123 Aug. 10, 1999 Cosman US 7,862,563 B1 Jan. 4, 2011 Westlund US 2002/0077683 A1 June 20, 2002 Sommer US 2004/0147963 A1 July 29, 2004 Omar-Pasha US 2004/0210290 A1 Oct. 21, 2004 Shaughnessy US 2006/0173407 A1 Aug. 3, 2006 Cosman US 2006/0178666 A1 Aug. 10, 2006 Noda US 2012/0185022 A1 July 19, 2012 Appeal 2020-002798 Application 15/442,106 3 REJECTIONS Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis 22, 23, 29, 31, 42 103(a) Shaughnessy, Westlund 24 103(a) Shaughnessy, Westlund, Sommer 26 103(a) Shaughnessy, Westlund, Omar-Pasha 30 103(a) Shaughnessy, Westlund, Noda 33 103(a) Shaughnessy, Westlund, Cosman ‘666, Cosman ‘563, Edwards OPINION Claims 22, 23, 29, 31, and 42: Rejected as Unpatentable over Shaughnessy and Westlund Independent claim 22 recites a system comprising, e.g., a catheter and an electrode. Final Act 14 (Claims App.). Claims 23, 29, 31, and 42 depend from claim 22. Id. at 14–15. The Examiner relies on Shaughnessy’s magnetic field generator 58 as corresponding to the claimed electrode. Final Act. 4 (citing Shaughnessy ¶ 59). According to the Examiner, “magnetic field generator 58 is a form of electrode, because it passes electromagnetic energy from a conductor to tissue.” Id. (citing Shaughnessy, Fig. 14). Appellant disputes that Shaughnessy’s magnetic field generator can be considered an “electrode.” Appeal Br. 7. According to Appellant, [A]n electrode is defined as follows: “A solid electric conductor through which an electric current enters or leaves an electrolytic cell or other medium.” . . . [T]he magnetic field generator is . . . not an electrode because no electrical current enters or leaves the solid electric conductor of the magnetic field generator. Instead, as explained in ¶0066, and with Appeal 2020-002798 Application 15/442,106 4 reference to Fig. 20, it is the transmission of electrical current through wires 202 and 204 in a circular path defined by coils 250 of the magnetic field generator 58 that produces the electromagnetic field 258. Id. The Examiner responds that an electrode is a “conductor by means of which an electric current is made to enter or leave an object, substance, or region” (quoting Oxford English Dictionary, accessed at oed.com), and “[t]he conductor in this case is the wire coil; the creation of a magnetic field induces current in the user’s body.” Ans. 11–12. In its Reply Brief, Appellant counters that “there is no disclosure or suggestion [in Shaughnessy] that the magnetic field induces current in the user’s body.” Reply Br. 10. We agree with Appellant. Based on the respective proffered definitions for “electrode,” (Appeal Br. 8; Ans. 11–12) it appears that Appellant and the Examiner agree that an electrode causes electric current to enter or leave an object. The Examiner thus finds that Shaughnessy’s magnetic field generator is an electrode because the magnetic field it creates “induces current in the user’s body.” But, as Appellant notes, Shaughnessy does not expressly state that its magnetic field generator induces current in a user’s body, or otherwise causes current to pass into the user’s body. Nor does the Examiner provide evidence or persuasive argument that the Appeal 2020-002798 Application 15/442,106 5 magnetic field it creates necessarily induces an electric current.2 Because we are not persuaded that the combination of Shaughnessy and Westlund teaches or suggests all of the limitations of claim 22, we do not sustain this rejection. Remaining Rejections The Examiner’s rejections of claims 24, 26, 30, and 33, which depend from claim 22, rely on the erroneous finding that the combination of Shaughnessy and Westlund teaches or suggests all of the limitations of claim 22. Final Act. 7–10. The additional references cited in these rejections do not cure this deficiency. Therefore, we do not sustain these rejections. CONCLUSION The Examiner’s rejections are reversed. More specifically, 2 In this regard, we note that a magnetic field induces a current in a conductive object only when the magnetic field varies with time. See The Authoritative Dictionary of IEEE Standards Terms 550 (7th ed. IEEE 2000) (defining “induction” as “[t]he process of generating time-varying voltages and/or currents in conductive objects or electric circuits by the influence of the time-varying electric, magnetic, or electromagnetic fields”). Thus, a static magnetic field would not induce an electric current in a conductive object. In addition, even if Shaughnessy’s purported electrode created a varying magnetic field (which Shaughnessy does not disclose), any electric current resulting therefrom would not be entering or leaving the purported electrode. It would be induced external to the purported electrode. Appeal 2020-002798 Application 15/442,106 6 DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 22, 23, 29, 31, 42 103(a) Shaughnessy, Westlund 22, 23, 29, 31, 42 24 103(a) Shaughnessy, Westlund, Sommer 24 26 103(a) Shaughnessy, Westlund, Omar- Pasha 26 30 103(a) Shaughnessy, Westlund, Noda 30 33 103(a) Shaughnessy, Westlund, Cosman’666, Cosman ‘563, Edwards 33 Overall Outcome 22–24, 26, 29–31, 33, 42 REVERSED