Ex Parte Dickinson et al

Patent Trial and Appeal Board

Feb 15, 2019

14141913 (P.T.A.B. Feb. 15, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/141,913 12/27/2013
20995 7590 02/20/2019
KNOBBE MARTENS OLSON & BEAR LLP
2040 MAIN STREET
FOURTEENTH FLOOR
IRVINE, CA 92614
FIRST NAMED INVENTOR
Robert Julian Dickinson
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.
LIMF.OOlCl 3789
EXAMINER
SIRIPURAPU, RAJEEV P
ART UNIT PAPER NUMBER
3793
NOTIFICATION DATE DELIVERY MODE
02/20/2019 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):
j ayna.cartee@knobbe.com
efiling@knobbe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT WLIAN DICKINSON,
ANDREW ROBERT PACEY,
MARTIN TERRY ROTHMAN, and
AJAY KUMAR JAIN
Appeal2017-002409
Application 14/141,913 1
Technology Center 3700
Before PHILIP J. HOFFMANN, BRADLEY B. BAY AT, and
AMEE A. SHAH, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellants appeal from the
Examiner's final rejection of claims 49---68. We have jurisdiction under
35 U.S.C. § 6(b). Appellants argued before the Board on February 11, 2019.
We REVERSE.
According to Appellants, "[t]he invention relates to ... methods for
performing percutaneous catheter-based interventional surgery. In
particular, the invention relates to ... techniques for transvascular interstitial
1 Appellants identify "LimFlow GmbH" as the real party in interest. Appeal
Br. 2.
Appeal2017-002409
Application 14/141,913
surgery." Spec. 1, 11. 5-7. Claims 49, 55, and 66 are the independent claims
on appeal. Below, we reproduce claim 49 as illustrative of the appealed
claims.
49. A method for treating vasculature, the method
compnsmg:
inserting a first catheter into a first anatomical cavity, the
first anatomical cavity comprising a stenosed artery, the first
catheter having a longitudinal axis, the first catheter comprising:
an ultrasound signal transducer mounted at a non-
parallel angle relative to the longitudinal axis of the first
catheter, the ultrasound signal transducer configured to
transmit an ultrasound signal at the non-parallel angle and
along a directional path in a cone having position
uncertainty less than 5 mm, the ultrasound signal
configured to penetrate tissue outside the first anatomical
cavity,
an outer sheath,
a lumen within the outer sheath,
an aperture in the outer sheath, the aperture
proximal to the ultrasound signal transducer, the aperture
in communication with the lumen, and
a needle deployable from inside the lumen to
outside the lumen along a deployment path that is aligned
with the directional path of the ultrasound signal, the
needle comprising:
a needle lumen and
a sensor configured to detect a change in at
least one of the group consisting of: hydrostatic
pressure, temperature, oxygenation, and color;
inserting a second catheter into a second anatomical
cavity, the second anatomical cavity comprising a vein, the
second catheter comprising:
an omnidirectional ultrasound signal receiving
transducer, and
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Application 14/141,913
a reflecting cone configured to direct the ultrasound
signal onto the omnidirectional ultrasound signal
receiving transducer;
using the ultrasound signal transducer to transmit the
ultrasound signal along the directional path;
moving the first catheter longitudinally and moving the
second catheter longitudinally until receipt of the ultrasound
signal by the omnidirectional ultrasound signal, wherein upon
receipt of the ultrasound signal by the omnidirectional ultrasound
signal receiving transducer receiving the ultrasound signal a
receipt signal is sent to a signal detector and wherein upon receipt
of the receipt signal by the signal detector a user receives an
output;
after receiving the output, deploying the needle from
inside the lumen to outside the lumen along the deployment path,
wherein deploying in needle comprises:
penetrating out of the first anatomical cavity,
traversing tissue between the first anatomical cavity
and the second anatomical cavity,
penetrating into the second anatomical cavity,
thereby creating a fistula between the first anatomical
cavity and the second anatomical cavity, and
detecting the change using the sensor;
inserting a guidewire through the needle lumen, the
guidewire having a place that extends from the first anatomical
cavity, through the tissue between the first anatomical cavity and
the second anatomical cavity, and into the second anatomical
cavity;
retracting the needle into the lumen;
leaving the guidewire in the place;
advancing a therapeutic catheter over the guidewire; and
deploying a stent in the fistula, wherein after deploying the
stent in the fistula blood can flow from the first anatomical cavity
into the second anatomical cavity.
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Application 14/141,913
REJECTIONS AND PRIOR ART
The Examiner rejects the claims as follows:
I. Claims 49--542 under 35 U.S.C. § 112, second paragraph, as
indefinite for failing to particularly point out and distinctly
claim the subject matter that Appellants regard as the invention;
II. Claims 49, 50, 52, and 54 under 35 U.S.C. § I03(a) as
unpatentable over Flaherty et al. (US 6,726,677 Bl, iss.
Apr. 27, 2004) (hereinafter "Flaherty '677"), Makower et al.
(US 6,302,875 Bl, iss. Oct. 16, 2001) (hereinafter
"Makower '875"), Makower et al. (US 6,190,353 Bl, iss.
Feb. 20, 2001) (hereinafter "Makower '353"), Aida et al.
(US 5,897,495, iss. Apr. 27, 1999) (hereinafter "Aida"), and
Snyder (US 4,757,821, iss. July 19, 1988), without or with
Belef et al. (US 6,475,226 Bl, iss. Nov. 5, 2002) (hereinafter
"Belef');
III. Claims 51 and 53 under 35 U.S.C. § I03(a) as unpatentable
over Flaherty '677, Makower '875, Makower '353, Aida,
Snyder, Belef, and Flaherty et al. (US 6,508,824 Bl, iss.
Jan. 21, 2003) (hereinafter "Flaherty '824");
2 We correct an obvious typographical error, changing the Examiner's
statement referring to claims "49---65" to claims "49--54," because
independent claim 55 and its dependent claims 56---65 do not recite "position
uncertainty." See Final Action 2.
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Application 14/141,913
IV. Claims 55, 56, 58, 59, 61, 62, and 64---68 under 35 U.S.C.
§ I03(a) as unpatentable over Flaherty '677 3, Makower '875,
and Makower '3 5 3;
V. Claim 57 under 35 U.S.C. § I03(a) as unpatentable over
Flaherty '677, Makower '875, Makower '353, and
Flaherty '824;
VI. Claim 60 under 35 U.S.C. § I03(a) as unpatentable over
Flaherty '677, Makower '875, Makower '353, and Sliwa, Jr., et
al. (US 2002/0173784 Al, pub. Nov. 21, 2002) (hereinafter
"Sliwa"); and
VII. Claim 63 under 35 U.S.C. § I03(a) as unpatentable over
Flaherty '677, Makower '875, Makower '353, and Belef.
ANALYSIS
Reiection I
The Examiner rejects independent "[ c ]laim 49 [as] indefinite because
it is unclear how a cone can have a position uncertainty." Final Action 2.
Based on our review of the record, we determine that the Examiner errs.
Specifically, we agree with Appellants that, consistent with the
broadest reasonable interpretation of the claims in view of Appellants'
Specification, "[ t ]he plain language of ... claim [ 49] is that the ultrasound
signal is (1) at a non-parallel angle; (2) along a directional path; (3) in a
cone; and ( 4) as a result of those features has a positional uncertainty less
3 Although the Examiner rejects these claims, as well as claims 57, 60,
and 63, based on "Flaherty," without identifying whether it is Flaherty '677
or Flaherty '824, it is clear that the Examiner's reference to "Flaherty" refers
to Flaherty '677. See, e.g., Non-Final Action 17.
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Application 14/141,913
than 5 mm." Reply Br. 16; see also id. at 16-17; see also Appeal Br. 32-33;
see also Spec. 8, 1. 22-9, 1. 4. Thus, based on the foregoing, we do not
sustain the Examiner's indefiniteness rejection of claim 49, or of its
dependent claims 50-54.
Rei ection II
As set forth above, independent claim 49 recites, in relevant part, "an
ultrasound signal transducer mounted at a non-parallel angle relative to the
longitudinal axis of the first catheter, the ultrasound signal transducer
configured to transmit an ultrasound signal at the non-parallel angle ... , the
ultrasound signal configured to penetrate tissue outside the first anatomical
cavity." Appeal Br., Claims App. The Examiner relies on Makower '875's
"teaching of an ultrasound signal transducer mounted at a non-parallel angle
relative to the longitudinal axis of the first catheter" as the basis for finding
that it would have been obvious to "simply modif-1y] the orientation of the
transducer already taught in" Flaherty '677. Answer 2, 3.
More specifically, in response to Appellants' argument that the
Examiner errs because Makower '875's Figure 5 shows that distal
portion 508 of wire 504, which transmits an ultrasound signal that penetrates
blood vessel BV2, is neither mounted at a non-parallel angle nor transmits
an ultrasound signal at the non-parallel angle (Appeal Br. 21-22), the
Examiner finds that "Fig[ ure] 5 is merely a generic depiction of [a]
catheter," and "a skilled artisan would recognize that the catheter of
Fig[ure] 5b," which includes an ultrasound signal transducer mounted as
claimed, "is preferentially useful in the method depicted in Fig[ ure] 5"
(Answer 5). As Appellants point out, however, Makower '875's Figure 5b
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Application 14/141,913
illustrates "an intravascular ultrasound ... device in which imaging
ultrasound is used to visually identify tissue T inside that same vessel where
an extended needle will touch." Reply Br. 3 (underlining added). Thus,
there is no disclosure in Makower '87 5 of an ultrasound transducer that is
configured to transmit an ultrasound signal to penetrate tissue outside a first
anatomical cavity which is mounted at the claimed non-parallel angle.
Based on the foregoing, it is not clear to us that modifying the
mounting angle of Flaherty '677's ultrasound transducer would, in fact,
"improve aim of the transducer"-which is the Examiner's reason for the
modification-in Flaherty '677's arrangement. Answer 8. Rather, it is
speculation on the Examiner's part that, with reference to Makower '875's
Figure 5, location or aim of catheter 1 OOa or components thereof would
improve if signal emitting apparatus 500 's distal portion 508 was somehow
mounted, and transmitted an ultrasonic signal, at a non-parallel angle.
We also disagree with the Examiner's alternative basis for the
rejection-that the proposed "modification ... would have been obvious as
a mere change in location of a part." Answer 3 ( citing In re Japikse, 181
F.2d 1019 (CCPA 1950)). We note, for example, that the Examiner's
proposed modification requires more than relocating wire 504 's distal
portion 508 within signal emitting apparatus 500.
For the above reasons, we do not sustain the Examiner's obviousness
rejection of independent claim 49. We also do not sustain the rejection of
claims 50, 52, and 54 that depend from, and which the Examiner rejects
with, claim 49.
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Application 14/141,913
Rejection III
Claims 51 and 53 depend from claim 49. Inasmuch as the Examiner
does not rely on any reference, including Flaherty '824, to remedy the
above-discussed deficiency in claim 49's rejection, we do not sustain the
rejection of claims 51 and 53.
Rejection IV
Independent claim 55 and its dependent claims 56, 58, 59, 61,
62, 64, and 65
The Examiner rejects independent claim 55 based on a similar
erroneous finding regarding Makower '875 as discussed above for claim 49.
Thus, we do not sustain the Examiner's obviousness rejection of claim 55
for reasons that are similar to the reasons we do not sustain claim 49 's
rejection. Further, we do not sustain the rejection of claim 55's dependent
claims 56, 58, 59, 61, 62, 64, and 65.
Independent claim 66 and its dependent claims 67 and 68
The Examiner rejects independent claim 66 based on a similar
erroneous finding regarding Makower '875 as discussed above for claim 49.
Thus, we do not sustain the Examiner's obviousness rejection of claim 66
for reasons that are similar to the reasons we do not sustain claim 49 's
rejection. We also do not sustain the rejection of claims 67 and 68
depending from claim 66.
Rejections V-VII
Claims 57, 60, and 63 depend from claim 55. Inasmuch as the
Examiner does not rely on any reference, including Flaherty '824, Sliwa,
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and Belef, to remedy the above-discussed deficiency in claim 55's rejection,
we do not sustain the rejections of dependent claims 57, 60, and 63.
DECISION
We REVERSE the Examiner's indefiniteness and obviousness
rejections of claims 49---68.
REVERSED
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