Csaba Truckai et al.

Patent Trials and Appeals Board

Jan 9, 2020

14885854 - (D) (P.T.A.B. Jan. 9, 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.
14/885,854 10/16/2015 Csaba Truckai 37646-714.301 1179
21971 7590 01/09/2020
WILSON, SONSINI, GOODRICH & ROSATI
650 PAGE MILL ROAD
PALO ALTO, CA 94304-1050
EXAMINER
SCHAETZLE, KENNEDY
ART UNIT PAPER NUMBER
3792
NOTIFICATION DATE DELIVERY MODE
01/09/2020 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):
patentdocket@wsgr.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CSABA TRUCKAI and AKOS TOTH
____________

Appeal 2018-007585
Application 14/885,854
Technology Center 3700
____________

Before EDWARD A. BROWN, BENJAMIN D. M. WOOD, and
GEORGE R. HOSKINS, Administrative Patent Judges.

HOSKINS, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–19 and 24–27 in this application.2
The Board has jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Minerva Surgical, Inc., as the real
party in interest. Appeal Br. (filed Jan. 29, 2018) 3.
2 Claims 20–23 are canceled. See Appeal Br. 12 (Claims App.).
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CLAIMED SUBJECT MATTER
Claim 1 illustrates the claimed subject matter on appeal, and it recites,
with our emphasis added:
1. A method for endometrial ablation comprising:
expanding a frame within a compliant energy-delivery
surface to cause the surface to assume a planar triangular shape
having distal apices to engage the walls of a patient’s uterine
cavity;
wherein the frame has flexible outer elements in lateral
contact with the compliant surface and flexible inner elements
not in said lateral contact, wherein the flexible inner elements
and the outer flexible elements have substantially dissimilar
material properties to cause lateral sides of the frame to
become relatively linear and less bowed inward.
Appeal Br. 10 (Claims App.) (emphasis added).
REJECTIONS ON APPEAL
Claims 1–19 and 24–27 are rejected on the ground of nonstatutory
double patenting over claims 1–23 of U.S. Patent No. 9,186,208 B2 (“the
’208 patent”).
Claims 25 and 27 are rejected under 35 U.S.C. § 112(a)3 as lacking
written description in Appellant’s Specification.
Claims 1–19 and 24–27 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Toth (US 2011/0118718 A1, pub. May 19, 2011).

3 This application was filed on October 16, 2015, after the AIA amendments
to § 112 took effect on September 16, 2012. See Leahy-Smith America
Invents Act (“the AIA”), Pub. L. No. 112-29, § 4(e), 125 Stat. 284, 297
(2011); MPEP § 2161(I).
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OPINION
A. Double Patenting (claims 1–19 and 24–27)
The Examiner has rejected claims 1–19 and 24–27 as a nonstatutory
double patenting of claims 1–23 of the ’208 patent. Final Act. (mailed
June 13, 2017) 2–4. In response, Appellant states: “A Terminal Disclaimer
over [the ’208 patent], overcoming the rejection for Double Patenting has
been electronically filed.” Appeal Br. 3, 6 n.1. However, we are unable to
find such a filing in the record, much less an acceptance of such a filing by
the Office. Appellant does not otherwise address the merits of the double
patenting rejection. See Appeal Br. & Reply Br.
We, therefore, summarily sustain the rejection. See 37 C.F.R.
§ 41.37(c)(1)(iv) (2017); In re Baxter Int’l, Inc., 678 F.3d 1357, 1362
(Fed. Cir. 2012) (argument waived when not timely presented in briefing to
the Board, absent exceptional circumstances); In re Berger, 279 F.3d 975,
984–85 (Fed. Cir. 2002) (Board did not err in sustaining a rejection under
35 U.S.C. § 112 ¶ 2 when the Examiner refused to enter an Amendment
filed with Appeal Brief and applicant failed to contest the rejection as to the
non-amended claims on appeal); MPEP § 1215.02 (9th ed., Rev. 08.2017,
eff. Jan. 2018) (“If a ground of rejection stated by the examiner is not
addressed in the appellant’s brief, appellant has waived any challenge to that
ground of rejection and the Board may summarily sustain it, unless the
examiner subsequently withdrew the rejection in the examiner’s answer.”);
id. § 1215.03 (“An appellant may, of course, choose not to present
arguments or rely upon particular evidence as to certain claim rejections;
however, such arguments and evidence are waived for purposes of the
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appeal and the Board may summarily sustain any grounds of rejections not
argued.”).
B. Written Description (claims 25 and 27)
The Examiner has rejected claims 25 and 27 under 35 U.S.C. § 112(a)
as lacking written description in Appellant’s Specification. Final Act. 4–5.
In support, the Examiner determines “[t]he recited range of thickness
(‘0.005” or more’) includes values not originally disclosed due to the ‘or
more’ open-ended limit.” Id. at 5.
In response, Appellant filed an Amendment with the Appeal Brief,
and argued the submitted changes to claims 25 and 27 would overcome the
written description rejection. Appeal Br. 3, 6–7 n.1; Amendment (filed
Jan. 29, 2018) 4–6. However, the Examiner refused to enter the
Amendment, citing 37 C.F.R. § 41.33(b) & (c). Adv. Act. (dated Feb. 15,
2018). Appellant does not otherwise address the merits of the written
description rejection. See Appeal Br. & Reply Br.
We, therefore, summarily sustain the rejection, based on the
authorities cited above in connection with the double patenting rejection.
C. Obviousness over Toth (claims 1–19 and 24–27)
Independent Claim 1 and Dependent Claims 2–11, 24, and 25
The Examiner finds Toth discloses a method for endometrial ablation
comprising expanding a frame (illustrated in Toth’s Figures 5 and 6),
wherein the frame has flexible inner elements (i.e., elements 160a and 160b)
and flexible outer elements (i.e., elements 158a and 158b). Final Act. 6–8
(citing Toth ¶ 48). The Examiner finds these inner and outer elements are
not disclosed in Toth as satisfying claim 1’s requirement to “have
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substantially dissimilar material properties to cause lateral sides of the frame
to become relatively linear and less bowed inward.” Id. at 6–7.
The Examiner firstly determines it would have been obvious to
configure Toth’s inner elements 160a, 160b and outer elements 158a, 158b
to have substantially dissimilar material properties. Final Act. 6–8. In
particular, the Examiner determines it would have been obvious to configure
inner elements 160a, 160b to be “springs,” and to configure outer
elements 158a, 158b to be “flexible without inherent spring characteristics.”
Id.; Ans. 2–12; Toth ¶ 48 (“some elements [158a, 158b, 160a, 160b] of the
frame 155 can be spring elements and some elements can be flexible without
inherent spring characteristics”). Appellant challenges this determination.
Appeal Br. 7–8. We assume, for purposes of this decision, that the
Examiner has the better position here.
The Examiner secondly determines it would also have been obvious to
configure Toth’s frame so that the dissimilar properties of the inner and
outer elements “cause lateral sides of the frame to become relatively linear
and less bowed inward.” Final Act. 7–8. Appellant challenges this
determination. Appeal Br. 8–9. For the following reasons, we agree with
Appellant that the Examiner errs here.
As an initial matter of claim construction, the Examiner determines
the claim phrase “to cause lateral sides of the frame to become relatively
linear and less bowed inward” is merely “a statement of desired result”
rather than a claim limitation. Final Act. 7; Ans. 4. According to the
Examiner, this phrase is “[l]acking a specific step in the [claimed] method.”
Final Act. 7; Ans. 4. Thus, the Examiner “considers any frame with flexible
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inner and outer elements having substantially dissimilar material properties”
to satisfy claim 1. Final Act. 7; Ans. 4.
We must give claim 1 the broadest reasonable construction that is
consistent with Appellant’s Specification. See In re Am. Acad. of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Here, it is significant that
claim 1 is directed to “[a] method for endometrial ablation,” and not a device
for endometrial ablation. Appeal Br. 10 (Claims App.) (emphasis added).
In that context, action steps recited in the claim take on an increased
significance, versus a claim reciting a device that is merely capable of being
used in a specified manner. Cf. In re Schreiber, 128 F.3d 1473, 1478 (Fed.
Cir. 1997) (addressing functional limitations that appear in a device claim).
In this regard, claim 1 pertinently recites “expanding a frame,” “wherein the
flexible inner elements and the outer flexible elements have substantially
dissimilar material properties to cause lateral sides of the frame to become
relatively linear and less bowed inward.” Appeal Br. 10 (Claims App.).
Appellant’s Specification correspondingly describes one embodiment
of an ablation frame, shown in Appellant’s Figure 21, as incorporating
“dissimilar frame materials” that allow “the frame to expand . . . with lateral
sides being relatively linear instead of being deeply bowed inwardly.” Spec.
¶ 90. This “more triangular shape,” in comparison with other embodiments
disclosed in the Specification having “more deeply bowed outer frame
elements,” “allows for an increased total surface area of the dielectric in
contact with tissue.” Id. That is, causing the lateral sides of the frame to
become relatively linear and less bowed inward when the frame is expanded
as shown in Appellant’s Figure 21 versus Appellant’s Figures 5–6 (for
example) is disclosed as achieving a specific functional benefit. Claim 1,
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correspondingly, expressly recites the affirmative action step of “expanding
the frame,” which Appellant’s Specification ties in with the later-recited “to
cause . . . ” phrase at issue here. We therefore determine the Examiner’s
claim construction ignoring the “to cause . . . ” phrase in claim 1 is
unreasonable, and inconsistent with Appellant’s Specification.
The Examiner then determines, if the subject recitation in claim 1 is
given patentable weight as we do here, that it would have been “a matter of
obvious design” to configure Toth’s frame so that elements 158a, 158b,
160a, and 160b expand to cause lateral sides of the frame to become
relatively linear and less bowed inward. Final Act. 7–8. The Examiner
concludes there is only a “limited” number of potential arrangements in this
regard, and determining which arrangement “produced the best results
would have been a matter of routine experimentation.” Id. at 8. The
Examiner’s position is that “[a]n experimenter . . . presented with two
arrangements, one presenting less bowed lateral sides and thus a greater
deployed surface area than the other . . . would reasonably expect the
configuration with the greater surface area to be more effective and thus
obvious to employ,” because “[i]t is axiomatic that energy applicators with
greater surface areas provide greater coverage and are thus more effective in
distributing and applying energy to the body.” Id. (emphasis added).
Appellant objects that “while the office action may speculate on how
Toth might be modified to achieve” a frame having the structural
configuration recited in claim 1, the Examiner “fails to provide any art
which . . . might suggest such modifications and instead [impermissibly
relies] on a recitation of ‘common sense.’” Appeal Br. 7–9 (emphasis
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omitted) (citing Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355 (Fed. Cir.
2016)).
We agree with Appellant. The Examiner’s obviousness rationale
assumes, without evidentiary support, that the prior art includes a first frame
having less bowed lateral sides and thus a greater deployed surface area than
a second frame. The only evidence in the record of such a design
consideration comes from Appellant’s own Specification. See, e.g., Spec.
¶¶ 46–47, 49 (describing Appellant’s Figs. 5–6); id. ¶¶ 90–91 (describing
Appellant’s Figure 21). Therefore, we determine the obviousness rejection
presently before us is tainted by hindsight, and cannot be sustained. See,
e.g., Arendi, 832 F.3d at 1361–63 (while common sense, common wisdom,
and common knowledge may be considered in the obviousness analysis,
they are “typically invoked to provide a known motivation to combine, not to
supply a missing claim limitation,” and they “cannot be used as a wholesale
substitute for reasoned analysis and evidentiary support”) (emphasis in
original). Thus, we do not sustain the rejection of claim 1, and of claims 2–
11, 24, and 25 depending therefrom, as unpatentable over Toth.
Independent Claim 12 and Dependent Claims 13–19, 26, and 27
Independent claim 12, similarly to claim 1, recites a method for
endometrial ablation comprising “expanding the frame,” “wherein the frame
comprises flexible inner elements and outer flexible elements which have
substantially dissimilar material properties to cause lateral sides of the frame
to become relatively linear and less bowed inward.” Appeal Br. 11 (Claims
App.). The Examiner’s consideration of this subject matter in claim 12 is
identical to the similar subject matter recited in claim 1. See Final Act. 6–8
(addressing claim 1, “with related comments applying to similarly worded
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claim 12”), 9. Thus, for the reasons provided in connection with claim 1, we
do not sustain the rejection of claim 12, and of claims 13–19, 26, and 27
depending therefrom, as unpatentable over Toth.
CONCLUSION
In summary:
Claims
Rejected
35
U.S.C. §
Basis / Reference Affirmed Reversed
1–19, 24–27 Obviousness-type,
Double Patenting
1–19, 24–27
25, 27 112(a) Written Description 25, 27
1–19, 24–27 103(a) Toth 1–19, 24–27
Overall
Outcome
1–19, 24–27
TIME PERIOD FOR RESPONSE
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)(1)(iv).
AFFIRMED