Ex Parte Dabney et al

Patent Trial and Appeal Board

Apr 14, 2017

11703861 (P.T.A.B. Apr. 14, 2017)

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.
11/703,861 02/08/2007 James Huntington Dabney 297-PDD-10-115 US DIV 2 1420
96000 7590
C. R. Bard, Inc./BBS
Intellectual Property Department
1415 W. 3rd St.
Tempe, AZ 85281
EXAMINER
GOOD, SAMANTHA M
ART UNIT PAPER NUMBER
3739
NOTIFICATION DATE DELIVERY MODE
04/18/2017 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):
raust@ austiplaw.com
B B S IP. Docket @ crbard .com
Charles .Runyan @ crbard. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES HUNTINGTON DABNEY, RICHARD L. QUICK,
CONRAD SAWICZ, PAUL LUBOCK, and DAN KUSSMAN
Appeal 2015-0036171
Application 11/703,861
Technology Center 3700
Before ANTON W. FETTING, PHILIP J. HOFFMANN, and
AMEE A. SHAH, Administrative Patent Judges.
SHAH, Administrative Patent Judge.
DECISION ON APPEAL2
The Appellants3 appeal under 35 U.S.C. § 134(a) from the Examiner’s
final decision rejecting claims 79—81 and 84—87. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
1 We note related Appeal 2014-003326, application no. 12/229,764.
2 Throughout this opinion, we refer to the Appellants’ Appeal Brief
(“Appeal Br.,” filed Aug. 25, 2014), Reply Brief (“Reply Br.,” filed Jan. 23,
2015), and Specification (“Spec.,” filed Feb. 8, 2007), and to the Examiner’s
Answer (“Ans.,” mailed Dec. 3, 2014) and Final Office Action (“Final Act.,”
mailed Mar. 31, 2014).
3 According to the Appellants, the real party in interest is SenoRx, Inc.
Appeal Br. 3.
Appeal 2015-003617
Application 11/703,861
STATEMENT OF THE CASE
The Appellants’ “invention is directed to a high frequency electrical
power generator particularly suitable for use in electrosurgery.” Spec. 4.
Claims 79, 86, and 87 are the independent claims on appeal. Claim 79
is illustrative of the subject matter on appeal, and is reproduced below:
79. A method for controlling electrosurgical tissue cutting
at a patient’s site, comprising:
a. providing an electrosurgical cutting tool having a
tissue cutting electrode with a distal tip and an exposed
conductive length proximal to the distal tip that is configured to
contact tissue;
b. providing a return electrode in contact with the
patient’s tissue remote from the patient’s site;
c. providing an electrosurgical RF power generator in
an electrical conductive relationship with the tissue cutting
electrode and the return electrode;
d. contacting tissue with the exposed conductive
length of the tissue cutting electrode;
e. generating RF energy as a waveform within the
electrosurgical RF power generator and gating the RF energy to
generate gated RF energy having a duty cycle of less than 100%;
f. delivering the gated RF energy from the
electrosurgical RF power generator to the tissue cutting electrode
so as to pass an electrical current from the exposed conductive
length of the tissue cutting electrode to tissue in contact with the
exposed conductive length of the tissue cutting electrode to form
a steam layer between the tissue cutting electrode and the tissue
by tissue desiccation and generate a conductive plasma along the
exposed conductive length, and with the onset of the steam layer
continued desiccation and cutting of the tissue is effected; and
g. regulating the electrosurgical RF power generator to
maintain a voltage present at the tissue cutting electrode above a
level needed to maintain formation of the steam layer by
adjusting a gain of a voltage controlled amplifier in the
2
Appeal 2015-003617
Application 11/703,861
electro surgical RF power generator based at least in part on a
voltage present at the electrosurgical cutting tool as well as a DC
potential generated across a tool/tissue boundary of the
electrosurgical cutting tool and the tissue.
Appeal Br. 36—37 (Claims App.).
REJECTIONS
Claims 79—81, 86, and 87 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Lindenmeier (US 5,749,869, iss. May 12, 1998),
Underwood (US 6,461,350 Bl, iss. Oct. 8, 2002), and Estes (US 3,601,126,
iss. Aug, 24, 1971). Final Act. 2.
Claims 84 and 85 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lindenmeier, Underwood, Estes, and Eggers
(US 6,514,248 Bl, iss. Feb. 4, 2003). Id. at 8.
ANALYSIS
The Appellants contend that the Examiner’s rejection of independent
claim 79 is in error because the prior art does not disclose limitations f and g
of delivering gated energy to pass an electric current to form a steam layer
between the tissue cutting electrode and the tissue by tissue desiccation, and
regulating the generator to maintain a voltage present above a level needed
to maintain formation of the steam layer by adjusting a gain of voltage based
in part on a voltage and a DC potential generated across a tool/tissue
boundary. See Appeal Br. 17—19. After careful consideration and review of
the Examiner’s findings and reasoning (see Ans. 2^4; Final Act. 2-4), we
agree that the Examiner does not show by a preponderance of the evidence
that Lindenmeier and Estes, upon which the Examiner relies, discloses
3
Appeal 2015-003617
Application 11/703,861
regulating the generator by adjusting a gain of voltage based in past on
voltage and a DC potential, as recited in limitation g.
The Examiner finds, in relevant part, that Lindenmeier discloses
delivering the gated RF energy to pass a current to form a conductive steam
layer, as recited in limitation f, and regulating the electrosurgical RF power
generator to maintain a voltage to maintain formation of the steam layer
based at least in part on a voltage present, as partially recited in limitation g.
Final Act. 3^4; Ans. 2-4. The Examiner acknowledges Findenmeier does
not teach regulating the generator by adjusting a gain of a voltage controlled
amplifier, as partially recited in limitation g, and relies on Estes to cure that
deficiency. Final Act. 4; Ans. 2. The Examiner determines it would have
been obvious to modify Findenmeier’s method of regulating the RF power
generator to include Estes’s adjusting a gain “in order to regulate the
electrosurgical RF power generator using a feedback loop to shift its
operational voltage accordingly.” Final Act. 4; Ans. 2—3.
We find supported the Examiner’s findings that Findenmeier discloses
generating a steam layer, as recited in limitation f, and regulating the
generator to maintain a voltage above a level needed to maintain formation
of the steam layer, as partially recited in limitation g. Findenmeier discloses
that upon activating a high-frequency generator having an electric value
output adjustment device, a transmitter provides a desired value for the
generator setting best suited for the initial incision into tissue. Findenmeier,
Abstract, col. 5,11. 11—21. The best-suited generator setting depends on the
impedance condition at the operation site, and the setting may be greater
voltage, current, or power. Id. at col. 5,11. 21—26. As soon as the
commencement of cutting is determined, the transmitter provides to the
4
Appeal 2015-003617
Application 11/703,861
generator a lower desired value, such as voltage, so as to avoid undesired
tissue coagulation when making the incision. Id. at col. 5,11. 27—37. A sign
of the commencement of cutting is the measured rise in impedance between
the probe and tissue, “especially marked when cutting tissue in the stomach
and intestines” where the highly conductive fluid and mucous surface layer
must be vaporized, resulting in a vapor layer (i.e., a steam layer), before
cutting the tissue layers underneath. Id. at col. 5,11. 62—col. 6,11. 1, 37—38.
Before cutting, the tissue impedance is low because of the conductive fluid.
Id. at col. 11,11. 2—3. After the vaporization of the layer, the impedance
rises, after which an incision can be made. Id. at col. 11,11. 3—6. To reduce
delay prior to the initial incision, the generator output power should be as
high as possible at the start of the incision, and thereafter “lowered to a value
usually sufficient for cutting.” Id. at col. 11,11. 6—14.
However, the Examiner has not adequately explained how the prior
art discloses regulating the generator by adjusting a gain of an amplifier
based at least in part on voltage and a DC potential generated across a
tool/tissue boundary, as recited in limitation g. The Examiner cites to
Lindenmeier at column 6, lines 54—65 and finds that Lindenmeier’s use of a
characteristic spectral distribution of power based on spectral evaluation
measuring the asymmetry of current flow that sets in at different times
depending on polarity “demonstrates that DC potential, a polarity, is present
in order for the cutting procedure of Lindenmeier to work as intended.”
Ans. 3. The Examiner further finds that Lindenmeier discloses, at column 6,
lines 26—32,
having “an indicator device which compares the spectrum of the
power at the output of the generator influenced by the electric arc
or a value dependent on it such as current or voltage in at least
5
Appeal 2015-003617
Application 11/703,861
two different frequency ranges. A desired value that influences
the generator power is transmitted according to the results of this
comparison.”
Id. at 4. But this teaches that the regulating of the generator can be based on
current or voltage. It is further not clear whether Lindenmeier’s current is
alternating, i.e., AC, or constant, i.e., DC. See Appeal Br. 22. We do not
see, and the Examiner has not adequately explained, where or how
Lindenmeier discloses regulating the generator to maintain a voltage based
at least in part on a voltage present and (“as well as”) a DC current or
polarity (“a DC potential generated across a tool/tissue boundary”). The
Examiner has also not adequately explained how Estes’s regulating of a
generator by adjusting a gain of a voltage controlled amplifier is based at
least in part on the voltage and DC potential. And, the Examiner has not
adequately explained how the combination of Lindenmeier and Estes teaches
regulating the generator by adjusting a gain of a voltage controlled amplifier
in the generator based at least in part on a voltage present and the DC
potential generated.
Thus, we are persuaded of error on the part of the Examiner, and we
do not sustain the Examiner’s rejection of independent claim 79 and
dependent claims 80 and 81. We also do not sustain the rejection of claims
84 and 85, each of which ultimately depends from independent claim 79.
Cf. In re Fritch, 972 F.2d. 1260, 1266 (Fed. Cir. 1992) (“dependent claims
are nonobvious if the independent claims from which they depend are
nonob vious”).
Each of the independent claims 86 and 87 recites limitations
substantially similar to limitations f and g of claim 79 (Appeal Br. 37—39
(Claims App.)), and the Examiner relies on the same findings (see Final
6
Appeal 2015-003617
Application 11/703,861
Act. 5—8). Thus, for the same reasons we do not sustain the rejection of
claim 79, we also do not sustain the rejection of claims 86 and 87.
DECISION
The Examiner’s decision to reject of claims 79—81 and 84—87 under
35 U.S.C. § 103(a) is REVERSED.
REVERSED
7