Ex Parte Abboud et al

Patent Trial and Appeal Board

Jun 16, 2016

11710205 (P.T.A.B. Jun. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111710,205 02/23/2007 Marwan Abboud
89554 7590 06/20/2016
Christopher & Weisberg, P,A,
200 East Las Olas Boulevard
Suite 2040
Fort Lauderdale, FL 33301
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
21819-146CONDIV2 4417
EXAMINER
JENNESS, NATHAN JAY
ART UNIT PAPER NUMBER
3769
NOTIFICATION DATE DELIVERY MODE
06/20/2016 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):
ptomail@cwiplaw.com
medtronic_crdm_docketing@cardinal-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARWAN ABBOUD, RACHID MAHROUCHE,
JEAN PIERRE LALONDE, and DAN WITTENBERGER
Appeal2014-006089
Application 11/710,205
Technology Center 3700
Before MICHAEL W. KIM, WILLIAM A. CAPP, and
ARTHUR M. PESLAK, Administrative Patent Judges.
PESLAK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Marwan Abboud et al ("Appellants") appeal under 35 U.S.C. § 134(a)
from the Examiner's final decision rejecting claims 36-46. 1 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants submit the real party in interest is Medtronic CryoCath, LP.
Appeal Br. 1.
Appeal2014-006089
Application 11/710,205
THE CLAIMED SUBJECT MATTER
Claim 36, reproduced below, is illustrative of the claimed subject
matter.
36. A medical cooling system, comprising:
a coolant supply unit, and a medical device having distal
and proximal ends;
a coolant supply line disposed through the connection
point between the medical device and the coolant supply unit;
a compressor connected to the coolant supply line;
a condenser connected to the coolant supply line located
downstream of the compressor;
a thermo-electric subcooler located downstream of the
condenser and having a first heat exchanging surface and a
second heat exchanging surface, the second heat exchanging
surface being cooler than the first heat exchanging surface, the
thermo-electric subcooler reducing the temperature of coolant
from the coolant supply unit to a temperature of 10 °C or less;
an external cooling source and an external cooling source
conduit in thermal exchange with the thermo-electric subcooler,
the second heat exchanging surface being proximate a portion of
the coolant supply line upstream of the connection point, the first
heat exchanging surface being proximate a portion of the
external cooling source conduit, the thermo-electric subcooler, a
portion of the coolant supply line, and a portion of the external
cooling source conduit being together enclosed by a housing and
the external cooling source being located external to the housing;
a first valve connected to the coolant supply line and a
second valve connected to the external cooling source conduit
upstream of the subcooler; and
a controller, the controller being in communication with
the first and second valves, the controller being programmable
according to a duty cycle that includes opening and closing the
first and second valves.
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Application 11/710,205
REJECTIONS
1) Claims 36, 37, 40, 41, and 46 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Li (WO 01/01049 Al, pub. Jan. 4, 2001), in
view ofNelson (US 6,007,571, iss. Dec. 28, 1999), Wijkamp (US
5,807 ,391, iss. Sept. 15, 1998), Bryup (WO 97 /22486, pub. June
26, 1997), and Little (US 6,306,129 Bl, iss. Oct. 23, 2001).
2) Claims 38 and 39 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Li, Nelson, Wijkamp, Bryup, Little, and
Quisenberry (US 5,097,829, iss. Mar. 24, 1992).
3) Claims 42--45 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Li, Nelson, Wijkamp, Bryup, Little, and Barger
(US 3,782,386, iss. Jan. 1, 1974).
DISCUSSION
Rejection 1: Claims 36, 37, 40, 41, and 46
Appellants argue these claims as a group. Appeal Br. 2, 8. Pursuant
to 37 C.F.R. § 41.37(c)(iv), we select claim 36 to decide this appeal. All
claims stand or fall with claim 36.
Appellants contend that the Examiner's combination of references
fails to disclose the recited "first valve connected to the coolant supply line
and a second valve connected to the external cooling source conduit
upstream of the subcooler; and a controller ... that includes opening and
closing the first and second valves," as recited in independent claim 36
Appeal Br. at 5 (emphasis omitted). In particular, Appellants argue that
Wijkamp does not disclose the recited first and second valves because it
"discloses only one source of coolant." Id. at 6. The Examiner responds to
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Application 11/710,205
Appellants' argument with a comparison between the placement of
Wijkamp's valves in Figure 1 and Appellants' embodiment in Figure 8A of
the specification. Ans. 6.
Wijkamp discloses first valve 29 connected, through tube 27, to
supply line 13 which supplies refrigerant to catheter 1. See Wijkamp, Fig. 1,
col. 4, ll.26-45. Wijkamp discloses second valve 30 connected to cooling
apparatus 25 and through which refrigerant flows to cool the refrigerant
flowing to catheter 1. Id. at col. 4, 11. 46-53. Appellants argue that Wijkamp
does not disclose the recited first and second valves, because it uses only one
coolant source for both catheter 1 and cooling apparatus 25. The argument
is unpersuasive, as it amounts to an attack on Wijkamp individually while
the rejection is based on the combined teachings of, inter alia, Li and
Wijkamp. Final Act. 6; Ans. 5---6. Specifically, Li is relied on for disclosing
two refrigerant sources 12, 14. Final Act. 3--4. One cannot show
nonobviousness by attacking references individually when the rejection is
based on a combination of references. In re Keller, 642 F.2d 413, 425
(CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir.
1986).
Appellants also contend "there is no suggestion, motivation or
rationale" for combining the references because "one of ordinary skill in the
art would not look to the Bryrup[sic], reference for guidance on how to
provide a subcooler that causes cryogenic fluid to reach ablation
temperatures" because it relates to "automobile air conditioning units."
Appeal Br. 3, 4 (emphasis omitted). As part of this contention, Appellants
argue the Examiner engaged in hindsight reconstruction due to the number
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Application 11/710,205
of references, i.e., five, used in the rejection. Id. at 4-5. We address each
contention in tum.
First, Appellants argue that Bryup is non-analogous art. We disagree.
The Examiner finds that Bryup discloses "a heat exchanger device
comprising a thermo-electric subcooler." Final Act. 5. Appellants do not
dispute this finding. The Examiner finds further that Bryup is "in the
appellant's field of endeavor, namely heat exchange using subcoolers, and
reasonably pertinent to the problem of exchanging heat between two
surfaces. Bryup simply teaches a known type of heat exchanger which could
be readily substituted for ... the heat exchanger of Li." Ans. 3. The
Federal Circuit has explained that "[t]wo separate tests define the scope of
analogous prior art: ( 1) whether the art is from the same field of endeavor,
regardless of the problem addressed and, (2) if the reference is not within the
field of the inventor's endeavor, whether the reference still is reasonably
pertinent to the particular problem with which the inventor is involved." In
re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011); see also In re ICON Health
and Fitness, Inc., 496 F.3d 1374, 1379-80 (Fed. Cir. 2007). Appellant
discloses the refrigerant is compressed and then passes "though a first cooler
or condenser." Spec. 12. Appellant utilizes the thermo-electric subcooler to
chill "the refrigerant to a lower temperature than that achieved by the
compressor." Id. Bryup teaches the use of thermoelectric units 45 in
conjunction with heat exchanger elements 30 and 31. See Bryup, Abstract;
Fig. 3, 4. We, thus, determine that Bryup is analogous art because (1) Bryup
is in the same field as the claimed invention, namely, "heat exchangers using
subcoolers," and (2) Bryup's use of thermoelectric elements in connection
with conventional heat exchanger elements is reasonably pertinent to the
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Application 11/710,205
problem facing Appellants of using a subcooler to further cool refrigerant
that is first cooled in a condenser.
Concerning "rationale to combine," the Examiner's rationale for the
rejection is that the combined teaching of the references yields "the
predictable result of controlling the flow rate of the coolant, increasing the
efficiency of the subcooler ... and pre-cooling the subcooler (heat
exchanger) to achieve lower temperatures in the medical device (e.g. minus
100°C or lower)." Final Act. 6. Appellants fail to persuasively apprise us of
error in the Examiner's rationale for the combination which we determine to
be reasonable and supported by the disclosure in the cited references. See
KSR Intern. Co. v Teleflex Inc., 550 US 398, 416 (2007) ("the combination
of familiar elements according to known methods is likely to be obvious
when it does no more than yield predictable results.").
Finally, Appellants' hindsight argument is of no import where the
Examiner has stated a rationale for each modification that we determine are
each supported adequately by sufficient facts. See In re Cree, 818 F.3d 694,
702, n.3 (Fed. Cir. 2016).
For all the foregoing reasons, we sustain the rejection of claims 36, 37,
40, 41, and 46.
Re} ections 2 and 3
Appellants rely on the same arguments as for claim 36 to overcome
these rejections. Appeal Br. 8-9. For the reasons stated above in connection
with claim 36, we sustain the rejections of claims 38, 39, and 42--45.
DECISION
The Examiner's decision rejecting claims 36--46 is AFFIRMED.
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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)(l )(iv).
AFFIRMED
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