EKOS CORPORATION

Patent Trials and Appeals Board

Apr 30, 2020

14774103 - (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.
14/774,103 09/09/2015 Jocelyn Kersten 2001.2133102 9823
11050 7590 04/30/2020
SEAGER, TUFTE & WICKHEM, LLP
100 South 5th Street
Suite 600
Minneapolis, MN 55402
EXAMINER
LALONDE, ALEXANDRA ELIZABETH
ART UNIT PAPER NUMBER
3783
NOTIFICATION DATE DELIVERY MODE
04/30/2020 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):
BSC.USPTO@stwiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOCELYN KERSTEN, CURTIS GENTSLER,
RAYMOND M. WOLNIEWICZ, and DOUGLAS R. HANSMANN
Appeal 2019-005700
Application 14/774,103
Technology Center 3700
Before MURRIEL E. CRAWFORD, PHILIP J. HOFFMANN, and
BRADLEY B. BAYAT, Administrative Patent Judges.
HOFFMANN, 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 11–18. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
According to Appellant, the “invention relates to . . . apparatuses for
increasing the efficacy of therapeutic compounds delivered to tissues

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as EKOS
Corporation. Appeal Br. 3.
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affected by disease, and[,] more specifically, to . . . apparatuses for
increasing the efficacy of therapeutic compounds delivered to targeted
tissue.” Spec. ¶ 2. Claim 11 is the sole independent claim on appeal.
Below, we reproduce claim 11 as representative of the appealed claims.
11. An apparatus for delivering drugs to a target
region, the apparatus comprising:
an ultrasound catheter comprising:
a tubular body comprising a first lumen;
a member disposed over an external surf ace of the
tubular body forming a cavity, wherein the cavity is
configured to reduce a portion of ultrasound energy
transmitted in a direction towards the cavity and increase
a portion of ultrasound energy transmitted in a direction
away from the cavity; and
a first set of a plurality of ultrasound radiating
elements spaced apart longitudinally along a first side of
the ultrasound catheter, and a second set of plurality of
ultrasound radiating elements spaced apart longitudinally
along a second side of the ultrasound catheter, and the
first set and second set of plurality of ultrasound radiating
elements disposed over the member; and
a first passage in fluid communication with the
first lumen; and
a processing unit, the processing unit configured to
selectively activate the first set of the plurality of ultrasound
radiating elements to control the flow of a first fluid
surrounding the ultrasound catheter in a first direction and the
processing unit configured to selectively activate the second set
of plurality of ultrasound radiating elements to control the flow
of a second fluid surrounding the ultrasound catheter in a
second direction, wherein the second direction is different from
the first direction.
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REJECTIONS AND PRIOR ART
The Examiner rejects the claims as follows2:
I. Claims 15 and 163 under 35 U.S.C. § 112(b), as indefinite;
II. Claims 11–18 under 35 U.S.C. § 112(a), as failing to comply
with the written-description requirement; and
III. Claims 11, 12, and 15–18 on the ground of non-statutory
double patenting, as unpatentable over claims 1–5 and 9 of
Kersten et al. (US 9,579,494 B2, issued Feb. 28, 2017)
(“Kersten”), and Bennett et al. (US 6,582,392 B1, issued
June 24, 2003) (“Bennett”).
OPINION
Rejection I—Indefiniteness rejection of claims 15 and 16
The Examiner rejects claims 15 and 16 as indefinite, because each of
the claims has insufficient antecedent basis for the recitation “the two or
more ultrasound radiating elements.” Final Action 11 (emphasis added).
The Examiner did not enter into the record Appellant’s subsequent proposed

2 In the Answer, the Examiner withdraws the rejection of claims 11–18
under 35 U.S.C. § 103(a), from the Final Office Action. Answer 3; Final
Action 11–19.
3 In the Final Office Action, the Examiner rejects claims 12, 15, and 16
under 35 U.S.C. § 112(b), as indefinite. Final Action 10–11. In the
Advisory Action and the Answer, the Examiner indicates that although
Appellant’s proposed amendments to claims 15 and 16 are not entered,
Appellant’s argument with respect to claim 12’s indefiniteness rejection are
persuasive. Advisory Action, Continuation Sheet; Answer 7–8.
Accordingly, we understand that the Examiner withdraws the indefiniteness
rejection of claim 12, and maintains the indefiniteness rejection of claims 15
and 16.
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amendments to these claims, and maintains the indefiniteness rejection. See
generally Advisory Action; see also Answer 7–8.
Appellant does not argue that the Examiner’s indefiniteness rejection
of claims 15 and 16 is in error, in either the Appeal Brief or Reply Brief.
Accordingly, we summarily sustain the indefiniteness rejection of claims 15
and 16.
Rejection II—Written description rejection of claims 11–18
The Examiner rejects claims 11–18 as failing to comply with the
written-description requirement, because the claims “contain subject matter
[that] was not described in . . . [Appellant’s] [S]pecification in such a way as
to reasonably convey to one skilled in the relevant art that . . . the
inventor[s], at the time the application was filed, had possession of the
claimed invention.” Final Action 9. Specifically, the Examiner determines
that
[independent] [c]laim 11 requires the first set of a plurality of
ultrasound radiating elements spaced longitudinally along a first
side of the ultrasound catheter and a second set of plurality of
ultrasound radiating members spaced apart longitudinally along
a second side of the ultrasound catheter, and the first set and
second set of plurality of ultrasound radiating elements
disposed over the member. There is no[] support in the original
disclosure for this claim limitation. Paragraph [0159] [of
Appellant’s Specification] discloses that the cavity can be used
with the other embodiments in the disclosure but does not
describe the orientation of the member relative to the ultrasound
radiating elements of the other embodiments or provide support
for the first set and second set of plurality of ultrasound
radiating elements being disposed over the member.
Id. at 9–10 (emphasis added).
Appellant argues that its “Figures 17A–17D illustrate an example of
potential sequencing and synchronization of ‘activation of ultrasonic
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radiating elements within . . . ultrasound catheter 1700,’ and that its
Specification’s “paragraphs [0153]–[0158] provide detailed descriptions
regarding example positioning and sequencing of ultrasound radiating
elements.” Appeal Br. 6–7; see also Reply Br. 3. Appellant further argues
its “Figures 18A–C illustrate an embodiment of an ultrasound assembly
having [a member with] a cavity that is configured to ‘reduce the portion of
ultrasound energy transmitted in a direction towards . . . [member 1818’s]
cavity 1830 while increasing the portion of ultrasound energy transmitted in
a direction away from . . . cavity 1830,’” and the “application states that the
disclosed ultrasound assembly with . . . ‘cavity 1830 as herein described can
be used for any of the ultrasound catheters and assemblies as herein
described.’” Appeal Br. 7 (citations to Spec. ¶¶ 159–165 omitted); see also
Reply Br. 4 (citations omitted). Restated, according to Appellant, the above
portions of Appellant’s Specification and figures provide support for an
arrangement in which sets of ultrasound radiating elements (shown in
Figures 17A–D) are disposed over member 1818 (shown in Figures 18A–C).
In response, the Examiner states that although “[p]aragraph [0159]
of . . . Appellant[’]s disclosure [that describes Figures 18A–C] states ‘[i]t
should be understood that . . . [member 1818’s] cavity 1830 as herein
described can be used for any of the ultrasound catheters and assemblies as
herein described,’” “[t]here is not enough support in the original disclosure
to implement the member of [F]igure[s] 18A–18C . . . [within] the tubular
body of [F]igure[s] 17A–17D which contains a first lumen and a first
passage in fluid communication with the first lumen without blocking the
passage.” Answer 6–7. According to the Examiner, what is missing, such
as from paragraph 159 of Appellant’s Specification, is
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a) specify[ing] the location of the first set and second set of
plurality of ultrasound radiating elements relative to the
member or b) specify[ing] how the member would be orientated
as to be disposed . . . [within] the tubular body which comprises
a first lumen without blocking the first passage in fluid
communication with the first lumen.
Id. at 7.
Based on our review, we agree with the Examiner. It is true that, as
discussed above, Appellant’s Specification states that member 1818
(illustrated in Appellant’s Figure 18A, for example) may be used with
embodiments shown in Figures 17A–D illustrating sets of ultrasound
radiating elements, and that “cavity 1830 as herein described can be used for
any of the ultrasound catheters and assemblies as herein described.” Spec.
¶ 159. However, there is no clear connection between what is shown in
Appellant’s Figures 17A–D and Figures 18A–C, and insufficient description
in Appellant’s Specification, for one to conclude that member 1818 (as
shown in Figures 18A, for example) is disposed within two sets of
ultrasound radiating elements (as shown in Figure 17A, for example).
Consequently, we sustain the Examiner’s written-description rejection of
claims 11–18.
Rejection III—Double-patenting rejection of claims 11, 12, and 15–18
The Examiner rejects claims 11, 12, and 15–18 on the ground of non-
statutory double patenting, as unpatentable over claims of Kersten, and
Bennett. Appellant does not argue that the Examiner’s double-patenting
rejection is in error, in either the Appeal Brief or Reply Brief. Accordingly,
we summarily sustain the double-patenting rejection of claims 11, 12,
and 15–18.
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CONCLUSION
We AFFIRM the Examiner’s indefiniteness, written-description, and
double-patenting rejections.
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
15, 16 112(b) Indefiniteness 15, 16
11–18 112(a) Written description 11–18
11, 12,
15–18
Non-statutory
double patenting
based on Kersten,
Bennett
11, 12,
15–18

Overall
Outcome
11–18
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