Ex Parte Chu

Patent Trial and Appeal Board

Jul 11, 2016

12729872 (P.T.A.B. Jul. 11, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
121729,872 03/23/2010 Michael S. H. Chu
30636 7590 07111/2016
FAY KAPLUN & MARCIN, LLP
150 BROADWAY, SUITE 702
NEW YORK, NY 10038
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.
10124/08202 8034
EXAMINER
VAHDAT, KHADIJEHA
ART UNIT PAPER NUMBER
3739
MAILDATE DELIVERY MODE
07/11/2016 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 MICHAEL S. H. CHU
Appeal2014-005524
Application 12/729,872
Technology Center 3700
Before JENNIFER D. BAHR, GEORGE R. HOSKINS, and
AMANDA F. WIEKER, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Michael Chu (Appellant) appeals under 35 U.S.C. § 134(a) from the
Examiner's decision rejecting claims 1-11. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
Appeal2014-005524
Application 12/729,872
THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. An ablation device, comprising:
an elongated introducer sized for insertion into a hollow
organ via a natural opening, the introducer extending to a distal
end which, when in an operative position, is within the hollow
organ, the introducer including:
a delivery lumen extending from a proximal end
connectable to a source of ablation fluid to a distal delivery
opening at the distal end; and
a working channel extending to a working channel
distal opening at the distal end, the working channel being
sized and shaped so that, when a flexible instrument to be
inserted into the hollow organ is received therein, a space
between an outer surface of the flexible instrument and an
inner wall of the working channel forms a return lumen
extending from the working channel distal opening to a
proximal return port; and
a fluid supply unit coupled to the introducer supplying
ablation fluid to the delivery lumen.
REJECTIONS
I. Claims 1, 4---6, 10, and 11 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Petrie (US 2008/0097563 Al, pub. Apr. 24, 2008).
II. Claims 2 and 3 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Petrie and Hibler (US 2007/0032814 Al, pub. Feb.
8, 2007).
III. Claims 7-9 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Petrie and Rioux (US 2006/0015132 Al, pub. Jan. 19, 2006).
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Application 12/729,872
IV. Claims 1and4---6 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Eum (US 2006/0015093 Al, pub. Jan. 19, 2006).
V. Claims 2 and 3 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Eum and Hibler.
VI. Claims 7-9 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Eum and Rioux.
DISCUSSION
Re} ections I and II
Appellant's claim 1 requires, inter alia,
a working channel . . . being sized and shaped so that, when a
flexible instrument to be inserted into the hollow organ is
received therein, a space between an outer surface of the flexible
instrument and an inner wall of the working channel forms a
return lumen extending from the working channel distal opening
to a proximal return port.
Appeal Br. 16 (Claims App.).
The Examiner finds that Petrie discloses every limitation of claim 1,
including, in pertinent part, a working channel formed by passages 504 and
506 and inner lumen 509, wherein the working channel is "SIZED AND
SHAPED to receive a flexible instrument through lumen 509, while a space
(lumen 506 creating a space) between the outer surface of the instrument and
inner wall of the working channel forms a return lumen for fluid to pass
through." Ans. 5---6; see also Final Act. 3 ("different interpretation"). 1
1 The Examiner also proffers a "first interpretation" of Petrie in which the
Examiner reads the claimed working channel on lumen 509. See Final Act.
3; Ans. 3. We address the "different interpretation" of Petrie and need not
discuss further the "first interpretation" of Petrie.
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Application 12/729,872
Appellant contends that Petrie does not anticipate the subject matter of
claim 1 because "insertion of an instrument into the inner lumen 509 does
not define the return lumen 506 in any way" and "a diameter of the
instrument inserted through the lumen 509 is irrelevant as the return lumen
will always be defined by the exterior wall of the lumen 509 and the interior
wall of the return lumen 506." Appeal Br. 7-8. Appellant submits that "the
claim language clearly requires that the return lumen be formed by the space
between the outer surface of the instrument and the inner wall of the
working channel." Reply Br. 5.
In responding to Appellant's arguments, the Examiner points out,
"[t]he claim language does not require the space to be formed by the outer
surface of the instrument and inner wall of the working channel as argued by
[Appellant]." Ans. 6. The Examiner is correct. Appellant's claim 1 recites
that "a space between an outer surface of the flexible instrument and an
inner wall of the working channel forms a return lumen" (Appeal Br. 16,
Claims App.), but does not exclude additional structure (such as a tube
defining inner lumen 509) between the outer surface of the flexible
instrument and the inner wall of the working channel, as long as a space
exists between the outer surface of the flexible instrument and the inner wall
of the working channel and forms a return lumen as required by claim 1.
We discern no error in the Examiner's reading of the claimed "working
channel" on the combination of lumen 509 and passages 504 and 506, and
the claimed "space" on lumen 506, which forms a return lumen for passage
of fluid.
For the above reasons, Appellant fails to apprise us of error in the
rejection of claim 1. Appellant does not present any separate arguments for
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Application 12/729,872
patentability of claims 2-6, 10 and 11, apart from their dependence from
claim 1. See Appeal Br. 8, 10. Accordingly, we sustain the rejection of
claims 1, 4---6, 10, and 11under35 U.S.C. § 102(b) as anticipated by Petrie
and the rejection of claims 2 and 3 under 35 U.S.C. § 103(a) as unpatentable
over Petrie and Hibler.
Rejection III
The Examiner determines that it would have been obvious, in view of
Rioux, to modify Petrie to include a valve sealing the proximal end of the
device to allow passage of an instrument therethrough while preventing flow
of excess air through the channel. Final Act. 9-10. Appellant does not
directly challenge this determination. See Appeal Br. 11-13; Reply Br. 9-
10.
Appellant contends, "Rioux does not show or suggest an instrument
connector including a valve sealing a proximal end of a working channel, as
recited in claim 7" and "Rioux does not show or suggest that the cannula
lumen 116 is in any way configured to both accommodate a probe therein
and permit the return of fluid therethrough, via a space surrounding the
probe, to a separate return port." Appeal Br. 12. Appellant adds that
"neither Rioux nor Petrie, as discussed above in regard to claim 1, show or
suggest a separate return port via which fluid may be returned when a
proximal end of an instrument receiving working channel is sealed." Id.
Appellant's arguments are not persuasive because they attack the
references individually, rather than as combined by the Examiner. "Non-
obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references." In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986)
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Application 12/729,872
(citing Jn re Keller, 642 F.2d 413, 425 (CCPA 1981)). Appellant may be
correct that Rioux does not disclose a separate return port or a working
channel configured to both accommodate a probe therein and permit return
of fluid therethrough. However, the Examiner does not rely on Rioux for
these features; as discussed above, the Examiner finds that Petrie' s device
comprises a return lumen 506 extending to a proximal return port and a
working channel (passages 504 and 506 and inner lumen 509) configured for
accommodating an instrument in inner lumen 509 and permitting return of
fluid through return lumen 506. Ans. 5---6; Final Act. 3; see Petrie, Fig. 8
(depicting supply and return ports terminating in sharp ends 610), i-f 62
(describing passage 506 for conveying saline from the patient), i-f 64
(describing sharp ends that connect to fluid passages 504, 506). The
Examiner relies on Rioux for its teachings regarding the provision of a valve
at the proximal end of a probe introducer to allow passage of an instrument
while preventing flow of excess air. Final Act. 10.
For the above reasons, Appellant fails to apprise us of error in the
rejection of claim 7. Appellant does not present any separate arguments for
patentability of claims 8 and 9, apart from their dependence from claim 7,
and, thus, also fails to apprise us of error in the rejection of these claims.
See Appeal Br. 11-13. Accordingly, we sustain the rejection of claims 7-9
under 35 U.S.C. § 103(a) as unpatentable over Petrie and Rioux.
Rejections IV-VI
The Examiner finds that Eum discloses every limitation of claim 1,
including, in pertinent part, "a working channel 36 extending to a working
channel distal opening at the distal end (Fig. 2)." Final Act. 5. The
Examiner finds that "as seen in Fig. 3, the inner lumen is sized and shaped to
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Application 12/729,872
receive an endoscope within," and "the working channel 36 of Fig. 2 is also
sized and shaped to receive a flexible endoscope or other instruments within
its lumen and by inserting a smaller instrument than the lumen size, it is
configured to provide a gap between the instrument and the inner walls of
the channel permitting the fluid to return." Id. at 6.
Appellant emphasizes that Eum's Figure 3 depicts an entirely separate
embodiment from that shown in Figure 2. Appeal Br. 9. Further, Appellant
submits that when an endoscope is retained in inner coaxial tube 50 of the
Figure 3 embodiment, "no fluid may pass proximally therepast to a proximal
port." Id. Appellant contends that, thus, "Eum does not show or suggest
that the inner tube 36 of Fig. 2 is in any way sized and shaped to both
receive an instrument and return fluid therethrough" and that "Eum does not
describe the inner tube 36 as being capable of receiving any instrument
therein." Id.
Eum describes Figure 2 as a "view of a second embodiment of the
heat exchange catheter in which a coaxial portion allows [use of the
catheter] as both an inlet and an outlet for heat exchange fluid" and Figure 3
as a "view of a third embodiment of the heat exchange catheter in which a
coaxial portion provides for the introduction of an endoscope, the heat
exchange catheter being utilized with a suprapubic suction tube."
Eum i-fi-f 17, 18. Thus, Appellant is correct that Figure 3 depicts a different
embodiment from that depicted in Figure 2. Further, Eum fails to disclose
an instrument inserted into coaxial tube 36 of the Figure 2 embodiment.
Eum i-fi-125-26; Fig. 2. Eum fails to disclose "a space" in inner coaxial tube
50 of the Figure 3 embodiment that forms "a return lumen" when endoscope
58 is inserted into inner coaxial tube 50. Eum i-fi-127-28; Fig. 3. Rather,
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Application 12/729,872
according to Eum, "[t]he outer coaxial tube 52 is in fluid communication
with the inlet 46 and discharges warming fluid into the bladder. However,
the inner coaxial tube 50 does not introduce bladder fluid from the bladder."
Eum i-f 27. Consequently, even viewing together the disclosures ofEum's
Figure 2 and Figure 3 embodiments, Eum does not evidence that Eum's
coaxial tube 3 6 is sized and shaped to accommodate an instrument inserted
therein with a space between an outer surface of the instrument and the inner
wall of tube 36. The Examiner asserts, in essence, that Eum's coaxial tube
3 6 is sized and shaped so that when "a smaller instrument than the lumen
size" is inserted into coaxial tube 36, there would be "a gap between the
instrument and the inner walls of the channel permitting the fluid to return."
Final Act. 6. However, the Examiner fails to provide evidence that the
lumen defined by Eum' s coaxial tube 3 6 is sized to be larger than an
instrument that might be inserted therein so as to leave a sufficiently large
gap for passage of return fluid when the instrument is inserted therein.
Therefore, the Examiner fails to establish by a preponderance of the
evidence that Eum's coaxial tube is inherently "sized and shaped so that,
when a flexible instrument ... is received therein, a space between an outer
surface of the flexible instrument and an inner wall of the working channel
forms a return lumen extending from the working channel distal opening to a
proximal return port," as required in claim 1. Thus, we do not sustain the
rejection of claims 1 and 4---6 under 35 U.S.C. § 102(b) as anticipated by
Eum.
Claims 2, 3, and 7-9 depend, either directly or indirectly, from claim
1, and, thus, also incorporate the limitation of claim 1 discussed above. See
Appeal Br. 16-18 (Claims App.). In rejecting these claims, the Examiner
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Application 12/729,872
does not articulate any findings or reasoning, or rely on any teachings in
Hibler or Rioux, that would remedy the aforementioned deficiency in the
Examiner's findings with respect to Eum. Thus, we do not sustain the
rejection of claims 2 and 3 under 35 U.S.C. § 103(a) as unpatentable over
Eum and Hibler or the rejection of claims 7-9 under 35 U.S.C. § 103(a) as
unpatentable over Eum and Rioux.
DECISION
The Examiner's decision rejecting claims 1, 4--6, 10, and 11 under
35 U.S.C. § 102(b) as anticipated by Petrie is AFFIRMED.
The Examiner's decision rejecting claims 2 and 3 under 35 U.S.C.
§ 103(a) as unpatentable over Petrie and Hibler is AFFIRMED.
The Examiner's decision rejecting claims 7-9 under 35 U.S.C.
§ 103(a) as unpatentable over Petrie and Rioux is AFFIRMED.
The Examiner's decision rejecting claims 1 and 4--6 under 35 U.S.C.
§ 102(b) as anticipated by Eum is REVERSED.
The Examiner's decision rejecting claims 2 and 3 under 35 U.S.C.
§ 103(a) as unpatentable over Eum and Hibler is REVERSED.
The Examiner's decision rejecting claims 7-9 under 35 U.S.C.
§ 103(a) as unpatentable over Eum and Rioux is REVERSED.
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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