Ein-Gal, Moshe

Patent Trials and Appeals Board

Apr 30, 2020

13756556 - (D) (P.T.A.B. Apr. 30, 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.
13/756,556 02/01/2013 Moshe Ein-Gal 2261EIN-US 9249
32964 7590 04/30/2020
DEKEL PATENT LTD., DAVID KLEIN
BEIT HAROF'IM
18 MENUHA VENAHALA STREET, ROOM 27
REHOVOT, 76209
ISRAEL
EXAMINER
DAVIS, AMELIE R
ART UNIT PAPER NUMBER
3793
MAIL DATE DELIVERY MODE
04/30/2020 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MOSHE EIN-GAL

Appeal 2019-005460
Application 13/756,556
Technology Center 3700
____________

Before HUBERT C. LORIN, MICHAEL C. ASTORINO, and
KENNETH G. SCHOPFER, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–16. We have jurisdiction 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. The Appellant identifies the real party in interest as the
inventor. See Appeal Br. 1.
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STATEMENT OF THE CASE
Claimed Subject Matter
Claims 1 and 7 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the claimed subject matter.
1. A method for pressure-assisted irreversible electroporation
of tissue cells, comprising:
placing one or more electrodes near tissue cells to be
treated;
positioning a pressure source configured to apply
pressure pulses to said tissue cells; and
applying to said tissue cells a combination of electrical
pulses through said one or more electrodes and pressure pulses
from said pressure source such that the combination is
sufficient to induce irreversible electroporation of said tissue
cells, and wherein said electrical pulses have a pulse duration
and a pulse voltage gradient that are insufficient to induce
irreversible electroporation of said tissue cells without said
pressure pulses, and wherein the pulse duration is less than
5 μsec and the pulse voltage gradient is less than 100 V/cm.
Appeal Br. 16, Claims App.

References
The prior art relied upon by the Examiner is:
Name Reference Date
Unger et al. (“Unger”) US 6,627,421 B1 Sept. 30, 2003
Ferek-Petric US 2005/0096584 A1 May 5, 2005
Hagio et al. (“Hagio”) US 2006/0188992 A1 Aug. 24, 2006
May et al. (“May”) US 2007/0095648 A1 May 3, 2007
Bonutti et al. (“Bonutti”) US 2007/0141106 A1 June 21, 2007
Hyde et al. (“Hyde”) US 2012/0330284 A1 Dec. 27, 2012
Makin et al. (“Makin”) US 2012/0330223 A1 Dec. 27, 2012
Soikum et al. (“Soikum”) US 2013/0108667 A1 May 2, 2013

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Rejections
The Appellant requests our review of the Examiner’s rejections in the
Final Office Action, mailed October 10, 2018. All of the Examiner’s
rejections are under 35 U.S.C. § 103(a):
claim 1 is rejected as unpatentable over May and Hagio;
claim 2 is rejected as unpatentable over May, Hagio, and Bonutti;
claim 3 is rejected as unpatentable over May, Hagio, and Ferek-Petric;
claim 4 is rejected as unpatentable over May, Hagio, and Soikum;
claims 5 and 6 are rejected as unpatentable over May, Hagio, and
Hyde;
claims 7, 12, 14, and 16 are rejected as unpatentable over May, Unger,
Makin, and Hagio;
claim 8 is rejected as unpatentable over May, Unger, Makin, Hagio,
and Bonutti;
claim 9 is rejected as unpatentable over May, Unger, Makin, Hagio,
and Ferek-Petric;
claim 10 is rejected as unpatentable over May, Unger, Makin, Hagio,
and Soikum;
claims 11 and 15 are rejected as unpatentable over May, Hagio, and
Makin; and
claim 13 is rejected as unpatentable over May, Hagio, and Unger.

ANALYSIS
Independent Claim 1 and Dependent Claims 2, 3, 5, 6, 11, 13, and 15
The Appellant argues that the Examiner’s rejection of claim 1 is in
error because the combined teachings of May and/or Hagio fail to provide
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the incentive or instructions to perform the method of claim 1, and, more
particularly, the “applying” step of claim 1. See Appeal Br. 10–11. The
“applying” step of claim 1 recites:
applying to said tissue cells a combination of electrical
pulses through said one or more electrodes and pressure pulses
from said pressure source such that the combination is
sufficient to induce irreversible electroporation of said tissue
cells, and wherein said electrical pulses have a pulse duration
and a pulse voltage gradient that are insufficient to induce
irreversible electroporation of said tissue cells without said
pressure pulses, and wherein the pulse duration is less than
5 μsec and the pulse voltage gradient is less than 100 V/cm.
Id. at 16, Claims App. (emphasis added). The Appellant supports this
argument with the assertion that “lightweight” electrical and pressure pulse
tools “will not cause irreversible electroporation of tissue cells,” whereas
“heavyweight” tools of the same kind “will cause irreversible
electroporation of tissue cells.” Id. at 10. According to the Appellant,
assuming a skilled artisan desired as a goal “to cause irreversible
electroporation of tissue cells,” then the skilled artisan would have no
incentive to choose electrical and pressure pulse tools that are lightweight.
Id. Rather, the skilled artisan “would naturally choose” the heavyweight
tools. Id. at 11. Moreover, the Appellant asserts that using a combination
of electrical and pressure pulse tools that each are “lightweight” to cause
irreversible electroporation would have been counterintuitive, and not
taught by May and Hagio, either singly or in combination. Id. The
Appellant’s argument is not persuasive of Examiner error.
We determine that the Examiner’s rejection of claim 1 is adequately
supported. See Final Act. 6–9 (citing May ¶¶ 28, 35, 45, 48–49, Fig. 5;
Hagio ¶ 91); In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections
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on obviousness grounds . . . [require] some articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness.”)
(cited with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007)). We also agree with the explanations in the Examiner’s Answer
that respond to the Appellant’s argument and we adopt them as our own.
Ans. 3–11. Of particular note is the Examiner’s explanations that “claim 1
does not recite ‘lightweight’ pressure pulse tools that will not cause
irreversible electroporation of tissue,” that the support for the Appellant’s
argument is based on attorney argument and not evidence, and that May
teaches the emphasized portion of the “applying” step of claim 1 in
paragraphs 48 and 49. See id. at 5–8. Additionally, we note that the
Appellant fails to address: the Examiner’s findings particular to the
individual teachings of May or Hagio; or how the Examiner’s proposed
combination of teachings from May and Hagio lacks some articulated
reasoning with some rational underpinning. Further, the Appellant fails to
address, with any detail, how the combined teachings of May and Hagio fail
to result in the subject matter of the method of claim 1, including the
“applying” step. Thus, we sustain the Examiner’s rejection of claim 1.
The Appellant provides separate headings titled as Issues 2 (claim 2),
3 (claim 3), 5 (claims 5 and 6), 10 (claims 11 and 15), and 11 (claim 13).
Appeal Br. 11–12, 14. However, the Appellant does not provide separate
arguments for the rejections of any of these claims (id.), each of which
depends directly or indirectly from claim 1 (id. at 16, 17, Claims App.).
More specifically, the Appellant relies on the arguments presented for the
rejection of claim 1, as discussed above, for the rejections of claims 2, 3, 5,
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6, 11, 13, and 15. Id. Thus, we sustain the Examiner’s rejections of claims
2, 3, 5, 6, 11, 13, and 15.

Independent Claim 7 and Dependent Claims 8, 9, 12, 14, and 16
The Appellant provides separate headings titled as Issues 6 (claims 7,
12, 14, and 16), 7 (claim 8), and 8 (claim 9). Appeal Br. 13. However, the
Appellant does not provide separate arguments for the rejections of any of
these claims (id.); claims 8, 9, 12, 14, and 16 depend directly from
independent claim 7 (id. at 16–17, Claims App.). For the rejection of
independent claim 7, the Appellant refers back to the argument for the
rejection of claim 1 while acknowledging the additional prior art references,
i.e., Makin and Unger. Id. at 13. As discussed above, the Appellant’s
argument is not persuasive for the rejection of claim 1. For similar reasons,
we determine that the Appellant’s argument for rejection of claim 7 is
likewise not persuasive. Thus, we sustain the Examiner’s rejection of
independent claim 7 as well as the rejections of dependent claims 8, 9, 12,
14, and 16.

Dependent Claims 4 and 10
Claim 4, which depends from claim 1, recites “further comprising
adjusting an angle between an electrical field of said electrical pulses and a
pressure propagation of said pressure pulses.” Appeal Br. 16, Claims App.
The Appellant argues that the Examiner’s rejection of claim 4 is in
error. Id. at 12. Outside of the Appellant’s reliance on the unpersuasive
arguments presented for the rejection of claim 1, the Appellant argues that
May teaches away from the subject matter of claim 4 because “[i]n May it is
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essential not to change this angle because the pressure must be presented as
a force perpendicular to the polar axis of the cell membrane.” Id. The
Appellant’s argument is not persuasive of Examiner error.
Initially, we determine that the Examiner’s rejection of claim 4 as
unpatentable over May, Hagio, and Soikum is adequately supported. See
Final Act. 11–13 (citing May ¶ 49; Soikum ¶¶ 125, 149, 304, 306–308, 331,
385, Figs. 12A–D, 17C–D).
In response to the Appellant’s argument, we note that the Appellant
does not cite to any particular portion of May that describes that “pressure
must be presented as a force perpendicular to the polar axis of the cell
membrane.” Id. at 12. The Examiner appears to understand that the
Appellant’s argument refers to May’s disclosure in paragraph 49. See
Ans. 13. We agree. The Examiner explains, “[a]lthough May discusses the
angle between the polar axis of the cell membrane and the radiation force
vector generated by the pressure pulses, May does not discuss that the angle
‘must be’ perpendicular.” Id. We agree. In this case, the Appellant’s
argument is not persuasive at least because the Appellant does not explain
–– using evidence and/or technical reasoning –– how May teaches that
pressure must be presented as a force perpendicular to the polar axis of the
cell membrane. Further, we note that the Examiner acknowledges that May
describes that “the incident angle between the radiation vector and portions
of the membrane radial to the polar axis progressively decrease” (May
¶ 49), but explains that “the angle of the radiation force vector relative to
the ‘polar axis of the cell membrane’ is not the angle between ‘an electrical
field of said electrical pulses and a pressure propagation of said pressure
pulses.’ May does not discuss such an angle.” Ans. 13. In view of the
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foregoing, the Examiner determines that “May does not disparage,
discredit, or otherwise discourage the proposed modification to adjust the
claimed angle. Consequently, May does not ‘teach away’ from the
proposed modification.” Id. We agree. Thus, we sustain the Examiner’s
rejection of claim 4.
The Appellant argues that the Examiner’s rejection of claim 10, which
depends from claim 7, is in error for substantially the same reason the
rejection of claim 4 is in error. See Appeal Br. 13–14. For the rejection of
independent claim 10, the Appellant refers back to the argument for the
rejection of claims 7 and 4 while acknowledging the additional prior art
references, i.e., Makin and Unger. See id. As discussed above, the
Appellant’s argument is not persuasive for the rejections of claims 7 and 4.
For similar reasons, we determine that the Appellant’s argument for
rejection of claim 10 is likewise not persuasive. Thus, we sustain the
Examiner’s rejection of claim 10.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § References/Basis  Affirmed Reversed
1 103(a) May, Hagio 1

2 103(a) May, Hagio, Bonutti 2
3 103(a) May, Hagio, Ferek-
Petric
3
4 103(a) May, Hagio, Soikum 4
5, 6 103(a) May, Hagio, Hyde 5, 6
7, 12, 14, 16 103(a) May, Unger, Makin,
Hagio
7, 12, 14,
16

8 103(a) May, Unger, Makin,
Hagio, Bonutti
8
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Claims
Rejected
35 U.S.C. § References/Basis  Affirmed Reversed
9 103(a) May, Unger, Makin,
Hagio, Ferek-Petric
9
10 103(a) May, Unger, Makin,
Hagio, Soikum
10
11, 15 103(a) May, Hagio, Makin 11, 15
13 103(a) May, Hagio, Unger 13
Overall
Outcome
1–16

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