Ex Parte Crowe et al

Patent Trial and Appeal Board

Dec 15, 2015

11647295 (P.T.A.B. Dec. 15, 2015)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/647,295 12/29/2006
55962 7590
Wiley Rein LLP
Patent Administration
1776 K Street, NW
Washington, DC 20006
12/17/2015
FIRST NAMED INVENTOR
John E. Crowe
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.
OE-040901US I 82410.0149 1662
EXAMINER
ROANE, AARON F
ART UNIT PAPER NUMBER
3769
NOTIFICATION DATE DELIVERY MODE
12/17/2015 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)
u-NITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN E. CROWE, JONATHAN L. PODMORE, and
MICHAEL C. HOLZBAUR
Appeal2013-008430
Application 11/647,295 1
Technology Center 3700
Before NEALE. ABRAMS, CHARLES N. GREENHUT, and
JASON W. MELVIN, Administrative Patent Judges.
MEL VIN, Administrative Patent Judge.
DECISION ON APPEAL
This appeal arises under 35 U.S.C. § 134(a), from a final rejection of
claims 1, 3-7, 19-25, and 28. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify St. Jude Medical, Atrial Fibrilation Division, Inc., as
the real party in interest. Appeal Br. 2.
Appeal2013-008430
Application 11/647,295
BACKGROUND
The claims are directed to "introducers designed to assist in the
placement of catheters, sensors, treatment devices, and/or other medical
instruments or devices during a surgical procedure." Spec. i-f 2. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A kit for a lateral thoracotomy procedure comprising:
an introducer; and
one or more instruments or treatment devices,
wherein the one or more instruments or treatment devices
further comprises a numerically-indexed sizing device to
measure a circumference of an anatomical region of a
heart,
wherein the introducer has an interior passageway for the
insertion of the one or more instruments or treatment
devices, a proximal end portion with one or more contour
regions adapted to be manually gripped, a distal end
portion including a deformable exit region biased to a
defined curvature, and a substantially straight rigid
region between the proximal end portion and distal end
portion, and
wherein at least one of the one or more instruments or
treatment devices comprises a flexible precurved section
that is partially straightened when inserted into the
introducer.
Appeal Br. 15 (Claims App.).
EVIDENCE
The Examiner relies on the following evidence:
Sharkey
Bednarek
Fredricks
Vaska
us 6,007 ,570
US 6,447,507 Bl
US 6,604,003 B2
US 7 ,052,493 B2
2
Dec. 28, 1999
Sep. 10,2002
Aug. 5,2003
May 30, 2006
Appeal2013-008430
Application 11/647,295
REJECTIONS
Appellants seek our review of the following rejections:
1. Claims 1, 3-7, 21-25, and 28 under 35 U.S.C. § 103(a) as
unpatentable over Bednarek and Vaska. Final Act. 2---6.
2. Claim 19 under 35 U.S.C. § 103(a) as unpatentable over Vaska.
Final Act. 6-7.
3. Claim 20 under 35 U.S.C. § 103(a) as unpatentable over Fredricks
and Sharkey. Final Act. 7-8.
DISCUSSION
Claims 1, 3-7, 21-25, and 28: Bednarek and Vaska
Appellants argue claims 1, 3-5, 21-25, and 28 as a group, thus those
claims stand or fall together. Appeal Br. 9-11. We select claim 1 as
representative.
The Examiner finds that Bednarek teaches the limitations of claim 1
other than "the numerical-indexed sizing device." Final Act. 4. For that
limitation, the Examiner finds that Vaska teaches "a sizing device ... having
numerical indices on the distal end." Id. The Examiner further concludes
that:
Id.
[I]t would have been obvious to one of ordinary skill in the art
to modify the invention of Bednarek et al., as taught by V ask[ a]
et al., to provide the ablation device with a sizing element
having numerical indices in order to identify the appropriate
sized ablation device for that particular anatomical structure and
in further order to identify the appropriate insertion depth of the
device in order to provide the desired ablation length.
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Application 11/647,295
Appellants argue that there was no reason to modify Bednarek by
adding Vaska's numerically indexed sizing device. Appeal Br. 10-11. The
Examiner, however, points out that Vaska expressly teaches that its
"indicators 606 ... may be used to determine the appropriate size of ablation
device 602." Ans. 10 (quoting Vaska 42:26-35). The Examiner further
relies on the benefit that the indicators would provide to Bednarek:
"identify[ing] the appropriate sized ablation device for [the] particular
anatomical structure." Id. (citing Vaska 42:7--48, Figs. 89--103). We
consider these findings, with which we agree, to provide "articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness." In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006).
According to Appellants, "the structural requirements of an epicardial
device that surrounds the circumference of a heart, as disclosed in V aska, are
different from those of an endocardial device, such as disclosed in
Bednarek." Appeal Br. 10; Reply Br. 4. But Appellants provide no
evidence that the combination applied by the Examiner would render the
device taught by Bednarek unsuitable. We therefore do not find the
argument persuasive.
Appellants also appear to challenge the scope of the prior art, arguing
that "[t]he Examiner fails to point to anything in Vaska that discloses using a
numerically-indexed sizing device that specifically measures the
circumference of an anatomical region." Appeal Br. 11. We understand
Appellants' argument as relating to the language in claim 1 that the
"numerically-indexed sizing device" is "to measure a circumference of an
anatomical region of a heart." Appeal Br. 15 (Claims App.). The Examiner
views that language as establishing an intended use for the claimed device,
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Application 11/647,295
but not a structural or functional limitation. Final Act. 3--4. We agree, as
the language indicates a method intended to be performed with the device,
but does not change the structure of the claimed device. See In re Otto, 312
F.2d 937, 940 (CCPA 1973). Thus, because claim 1 reads on the structure
of a device resulting from the combination of Bednarek and Vaska, the
language in claim 1 that the device is "to measure a circumference of an
anatomical region of a heart" does not distinguish the claimed subject matter
from that which would have been obvious in light of the prior art.
As did the Examiner, Appellants separately address claims 6 and 7,
which indirectly depend from claim 1. See Appeal Br. 11-12; Final Act. 4--
6. The Examiner concluded that the additional limitations of claims 6 and 7
represent "an obvious matter of design choice" implemented as "a mere
change in the proportions of components" and thus do not produce an
unexpected result. Final Act. 5-6.
Appellants contend that the Examiner improperly relies on
Appellants' Specification in order to support the rejection. Appeal Br. 11.
Although the Examiner quotes paragraph 22 of the Specification, that
reference is used to demonstrate the lack of criticality concerning the
limitations of claims 6 and 7. Final Act. 5; Ans. 11. The Specification is
among the evidentiary sources relevant to this inquiry. See MPEP §§
2144.05 and 716.02 - § 716.02(g). Appellants do not suggest that the
additional limitations in claims 6 and 7 provide any particular functionality
and thus have not apprised us as to error in the Examiner's conclusion that
the limitations were an obvious design choice. Cf In re Gal, 980 F .2d 717,
719-20 (Fed. Cir. 1992) (reversing a rejection where the claimed invention
provided specific benefits); see also In re Chu, 66 F.3d 292, 298-99 (Fed.
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Application 11/647,295
Cir. 1995) (holding that benefits to the claimed arrangement indicate it is
"not merely a matter of 'design choice"'). Because Appellants have not
shown an error in the Examiner's rejection, we sustain the rejection of
claims 6 and 7.
Claim 19: Vaska alone
The Examiner finds that the embodiment in Figures 89-103 of Vaska
teaches the limitations of independent claim 19 other than "an introducer
having an interior passageway for receiving and deploying the one of the
one or more instruments or treatment devices in the embodiment shown in
figures 89-103." Final Act. 6. Regarding that limitation, the Examiner
states first that "it is extremely well known to provide treatment devices
such as these with a tubular introducer in order to facilitate the placement of
the device" and also that Vaska teaches an alternative embodiment with a
shaft 574 that "may be ... coupled to a retractor, trocar or the like which
fixes the shaft relative to the patient's heart." Final Act. 6-7 (quoting Vaska
41: 14--18). Thus, the Examiner concludes that "it would have been obvious
to one of ordinary skill in the art to modify the invention of Vaska et al., as
taught by Vaska et al. themselves, to provide the device/system with trocar
that receives and deploys the instrument shafts in order secure the shaft with
respect to the patient." Final Act. 7.
Appellants argue that "Vaska does not teach or suggest that shaft 574
receives one or more instruments or treatment devices therethrough" and
that, "[i]nstead, Vaska discloses a shaft 574 that may be coupled to devices
that fix the shaft in place." Appeal Br. 12 (citing Vaska 41:14--18); Reply
Br. 5 (same). Appellants' argument, however, ignores the Examiner's
reliance on the basic function of a trocar---to serve as a "tubular introducer"
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Application 11/647,295
that "receives and deploys the instrument shafts." See Final Act. 6, 7.
While Appellants argue that the trocar taught by V aska would "fix the shaft
in place," such fixing need not prohibit all motion. Stated otherwise, we do
not agree with Appellants that because Vaska teaches a trocar as one of
several devices that fix the shaft relative to a patient, it changes the nature of
the trocar. See Reply Br. 5. Rather, the Examiner reasonably reads Vaska
as teaching a trocar that would prevent certain motions while permitting
others. See Final Act. 6, 7 ("trocar that receives and deploys the instrument
shafts"). We agree with the Examiner that the "introducer" limitation of
claim 19 reads on a trocar and that V aska teaches the use of a trocar with the
shaft of an ablator. In our view, the Examiner reasonably reads the claim on
a combination of two embodiments taught in Vaska. See Boston Scientific
Scimed, Inc. v. Cordis Corp., 554 F.3d 982, 991 (Fed. Cir. 2009)
("Combining two embodiments disclosed adjacent to each other in a prior art
patent does not require a leap of inventiveness.").
Accordingly, Appellants have not shown an error in the Examiner's
rejection of claim 19.
Claim 20: Fredricks and Sharkey
The Examiner finds that Fredricks teaches the limitations of
independent claim 20 other than that "the ablation device includes a plurality
of distinct cells, each of the plurality of distinct cells containing one or more
ablation elements," which the Examiner finds is taught by Sharkey. Final
Act. 7-8. The Examiner explains that the combination "adds to the
versatility" of Fredricks and permits better control over the thermal output of
the ablation device. Ans. 14.
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Appellants contend that a "person of ordinary skill in the art would
not combine the teachings of Sharkey with those of Fredricks, because the
purpose of the Fredricks device would be lost in the process." Appeal
Br. 13. Appellants describe that purpose as coming from an "undulating
groove arrangement[, which] permits the guidable region to 'bend or flex in
opposed radial directions ... while also providing excellent torque
transmission."' Appeal Br. 13 (quoting Fredricks 6:42--47).
We do not agree that the combination applied by the Examiner would
defeat the purpose of Fredricks. Sharkey teaches that "[a] plurality of
resistive heating elements 46 can be used (FIG. 9) in a catheter of the
invention." Sharkey 18:7-9; see Final Act. 8. It may be true that Fredericks
and Sharkey each offer a particular benefit, but there is no requirement that a
reason to combine two references must come from a shared purpose of those
references. See KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398, 402 (2007) ("It
is common sense that familiar items may have obvious uses beyond their
primary purposes .... "). Moreover, Appellants provide no support for the
contention that the benefit of either Fredricks or Sharkey would be lost by
the combination.
In the Reply Brief, Appellants point to another benefit of Fredricks:
"the facilitation of 'uniform lesion formation along the length of the exposed
electrode tip."' Reply Br. 5 (quoting Fredricks 6:64---67). But even
accepting as true that dividing the ablation elements into distinct cells would
lose this benefit, it would amount to trading that benefit for another-
"add[ing] to the versatility" of Fredricks. Ans. 14. In our view, the
Examiner's rejection relies on a sound reason that a person of skill would
have combined the teachings of Fredricks and Sharkey.
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Accordingly, we are not apprised of Examiner err in rejecting claim
20.
DECISION
For the above reasons, the Examiner's rejection of claims 1, 3-7, 19-
25, and 28 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
PS
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