Ex Parte Cao et al

Patent Trial and Appeal Board

Aug 24, 2016

11647279 (P.T.A.B. Aug. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/647,279 12/29/2006
55962 7590
Wiley Rein LLP
Patent Administration
1776 K Street, NW
Washington, DC 20006
08/26/2016
FIRST NAMED INVENTOR
Hong Cao
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.
OB-053900US/82410.0164 1512
EXAMINER
GOOD, SAMANTHA M
ART UNIT PAPER NUMBER
3739
NOTIFICATION DATE DELIVERY MODE
08/26/2016 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):
ptodocket@wileyrein.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HONG CAO, CHOU THAO, and SA URA VP AUL
Appeal2014-003792
Application 11/647,279
Technology Center 3700
Before JILL D. HILL, LISA M. GUIJT, and PAUL J. KORNICZKY,
Administrative Patent Judges.
HILL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Hom Cao et al. ("Appellants") appeal under 35 U.S.C. § 134(a) from
the Examiner's decision to reject claims 1, 2, 4, 5, 8, 11, 13, 15-17, 19, and
20. 1 We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Claims 21-27 are withdrawn from consideration, and claims 3, 6-7, 9-10,
12, 14, and 18 are cancelled. Appeal Br. 4.
Appeal2014-003792
Application 11/647,279
CLAIMED SUBJECT MATTER
Independent claims 1, 8, and 15 are pending. Claim 1, reproduced
below, illustrates the subject matter on appeal.
1. An electrode assembly having a distal end adapted
for accessing a vessel or a chamber of a heart, comprising:
a thin elongate catheter shaft having a distal tip and a
proximal portion;
at least one tactile sensor contained entirely within a
portion of the catheter shaft and proximal of the distal tip; and
a cardiac ablation electrode disposed at the distal end of
the electrode assembly;
wherein the at least one tactile sensor is located between
the distal tip of the catheter shaft and the cardiac ablation
electrode, such that the at least one tactile sensor detects forces
that are applied to the ablation electrode due to surface contact
with a portion of one of a myocardial surface and an interior
surface of a blood vessel, and
wherein the at least one tactile sensor comprises a pressure
sensitive conductive composite material.
REJECTIONS
I. Claims 4, 5, 13, 15-17, 19 and 20 stand rejected under 35
U.S.C. § 112, second paragraph, as indefinite. Final Act. 2.
II. Claims 1, 2, 4, 5, 8, 11, 13, 15-17, 19, and 20 stand rejected on
the ground of non-statutory obviousness-type double patenting as being
unpatentable over the claims of U.S. Patent No. 7,883,508 (the '508 Patent).
Final Act. 4.
III. Claims 1, 2, 4, 5, 8, 11, 13, 15-17, 19, and 20 stand
provisionally rejected on the ground of non-statutory obviousness-type
double patenting as being unpatentable over co-pending U.S. Patent
Application No. 11/647,316. Final Act. 4.
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Appeal2014-003792
Application 11/647,279
IV. Claims 1, 2, 4, 5, 8, 13, 15-17, and 20 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Jain (US 2002/0123749 Al; pub. Sept.
5, 2002) and Lussey (US 6,646,540 Bl; iss. Nov. 11, 2003). Final Act. 5.
V. Claims 11 and 19 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Jain, Lussey, and Baudendistel (US 2006/0137464 Al;
pub. June 29, 2006). Final Act. 14.
ANALYSIS
Rejection I - Definiteness
The Examiner finds that claims 4, 13, and 15 recite limitations within
the body of the claim that are "broader than the preamble" and therefore
"vague and indefinite." Final Act. 2. Appellants refute the rejection,
arguing that "there is nothing vague or indefinite about the subject matter
claimed," and that one skilled in the art "would readily comprehend the
scope of the claims in view of their basic skill level and what is disclosed in
the [S]pecification." Appeal Br. 10.
Even if the Examiner is correct in determining that claims 4, 13, and
15 recite limitations that are broader than their respective preambles, we are
unaware of any rule making such breadth indefinite. Lacking an explanation
by the Examiner of why one skilled in the art would not understand what is
claimed when the claims are read in light of the Specification, we agree with
Appellants, and we do not sustain the indefiniteness rejection.2
2 Although we do not agree with the Examiner's indefinite reasoning, we
note that the drawings are required to show every feature of the invention
specified in the claims, and Appellants' drawings do not show an analysis
device, an output device, or a controller.
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Appeal2014-003792
Application 11/647,279
Rejections II and III - Double Patenting
Appellants do not refute Rejection II or Rejection III, and we,
therefore, summarily sustain these rejections.
Rejection IV - Claims 1, 2, 4, 5, 8, 13, 15-17, and 20
Appellants argue claims 1, 2, 4, 5, 8, 13, 15-17, and 20 as a group.
Appeal Br. 11-12. We select independent claim 1 as representative of the
group. See 37 C.F.R. § 41.37(c)(l)(iv) (2015). Claims 2, 4, 5, 8, 13, 15-17,
and 20 stand or fall with claim 1.
Appellants do not challenge the Examiner's findings in Rejection IV.
Rather, they argue that only impermissible hindsight based on their own
Specification makes it obvious to use Lussey's pressure sensitive conductive
composite material in Jain's electrode assembly. Appeal Br. 11-12. We
therefore consider whether the Examiner's conclusion of obviousness
includes a reasoning based on a rational underpinning, or whether it relies on
impermissible hindsight. The Examiner appears to consider Jain to be from
the same field of endeavor, and Lussey to be reasonably pertinent to the
problem faced by Appellants, making the references analogous art. Final
Act. 5---6. Appellants do not refute this determination. The Examiner's
stated reason for employing Lussey' s pressure sensitive conductive
composite material in place of the tactile sensors of Jain's electrode
assembly is "to provide changes in electrical resistance with movement and
changes in pressure." Final Act. 6 (citing Lussey 1: 5-8). This quoted
reasoning comes directly from Lussey. Lussey 1 :5-8. Absent an
explanation from Appellants regarding why this reasoning lacks a rational
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Appeal2014-003792
Application 11/647,279
basis, we are not persuaded that the Examiner's conclusion of obviousness is
in error. We sustain the Examiner's rejection of claim 1, and claims 2, 4, 5,
8, 13, 15-17, and 20 fall with claim 1.
Rejection V - Claims 11 and 19
Appellants do not challenge the Examiner's findings regarding
Rejection V. Rather, Appellants argue against the obviousness of employing
Baudendistel's quantum tunneling conductive composite sensor in place of
Jain's existing tactile sensor. Appeal Br. 13-14. According to Appellants,
Baudendistel' s quantum tunneling conductive composite sensor indicates
force by measuring the inductance of the coil, and only measures the
temperature of its quantum tunneling composite material, such that
Baudendistel fails to disclose using resistance for force sensors. Id. at 13;
Reply Br. 5.
The Examiner responds that, even if Baudendistel' s sensor measures
force via the inductance of the coil and the temperature of the quantum
tunneling composite, the final product of both of these steps is the
measurement of force. Ans. 3--4. In addition, although Appellants'
Specification discloses an exemplary quantum tunneling composite having
variable resistance (Spec. i-f 44 ), claims 11 and 19 are not limited to using
resistance for force sensors.
Appellants also argue that it is questionable whether the combination
of Jain and Baudendistel would yield a predictable result, because "the
technologies being used by Baudendistal and Jain are very different."
Appeal Br. 13. According to Appellants,
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Appeal2014-003792
Application 11/647,279
[t]o combine Baudendistel's quantum tunneling composite for
use with Jain, one would also have to incorporate a magnetic
coil for each of the plurality of pressure sensors included on
Jain's catheter. It appears unlikely that a single magnetic coil
(which as disclosed is analog component technology), much
less a plurality of magnetic coils, could be incorporated into
Jain's device while preserving the small size necessary to be
used as a catheter. Put simply, there is no suggestion that these
two very different technologies could be successfully combined
with a predictable result.
Id. at 14.
The Examiner responds that Appellants provide no factual evidence
that Baudendistel's sensor would render Jain's electrode assembly
inoperable, and contends that, because Appellants' own device is operable, it
follows that quantum tunneling conductive composite sensors could
similarly be incorporated into Jain's catheter device while maintaining the
size of a catheter for surgical use. Id. at 4.
Lacking an explanation of why Baudendistel' s sensor could not be
employed in Jain despite Appellants' ability to employ quantum tunneling
conductive composite material in their catheter, the Examiner has the better
argument.
In addition, we disagree with Appellants' argument that Baudendistel
teaches away from using resistance for force sensors. Appeal Br. 13; Reply
Br. 5. Disclosing an alternative does not teach away from another
alternative, because such disclosure "does not criticize, discredit, or
otherwise discourage the solution claimed .... " In re Fulton, 391 F.3d
1195, 1201 (Fed. Cir. 2004). For these reasons, we sustain the rejections of
claims 11 and 19.
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Application 11/647,279
DECISION
WeREVERSEtheExaminer'srejectionofclaims4, 5, 13, 15-17, 19,
and 20 under 35 U.S.C. § 112, second paragraph.
We AFFIRM the Examiner's rejection of claims 1, 2, 4, 5, 8, 11, 13,
15-17, 19, and 20 on the ground of non-statutory obviousness-type double
patenting over the '508 Patent.
We AFFIRM the Examiner's provisional rejection of claims 1, 2, 4, 5,
8, 11, 13, 15-17, 19, and 20 on the ground of non-statutory obviousness-
type double patenting over co-pending U.S. Patent Application No.
11/647,316.
We AFFIRM the Examiner's rejection of claims 1, 2, 4, 5, 8, 13, 15-
17, and 20 under 35 U.S.C. § 103(a) as unpatentable over Jain and Lussey.
We AFFIRM the Examiner's rejection of claims 11 and 19 under 3 5
U.S.C. § 103(a) as unpatentable over Jain, Lussey, and Baudendistel.
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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