Ex Parte Garabedian et al

Patent Trial and Appeal Board

Mar 30, 2017

12037882 (P.T.A.B. Mar. 30, 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.
12/037,882 02/26/2008 Robert J. Garabedian 03-0254 (US02) 4627
121974 7590 04/03/2017
K AC VINSKY DAISAK BLUNI PLLC
America's Cup Building
50 Doaks Lane
Marblehead, MA 01945
EXAMINER
GIULIANI, THOMAS ANTHONY
ART UNIT PAPER NUMBER
3739
NOTIFICATION DATE DELIVERY MODE
04/03/2017 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):
bbonneville @ kdbfirm .com
docketing @ kdbfrrm. com
ndeane @ kdbfirm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT J. GARABEDIAN, AMY C. KELLY, and
STEVE K. LANDREVILLE
Appeal 2015-001453
Application 12/037,882
Technology Center 3700
Before: CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
ANNETTE R. REIMERS, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
94, 97, 101-105, 108, 112-114, 116, and 117. Claims 1-93, 95, 96, 98-100,
106, 107, 109—111, 115, and 118 have been canceled. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.
Appeal 2015-001453
Application 12/037,882
THE CLAIMED SUBJECT MATTER
The claims are directed to a tissue treatment system and method for
tissue perfusion using feedback control. Claims 94 and 105 are independent,
with claims 97 and 101—104 depending from claim 94, and claims 108,
112—114, 116, and 117 depending from claim 105. Claim 94, reproduced
below, is illustrative of the claimed subject matter:
94. An ablation probe, comprising:
an elongate shaft having a distal end;
an ablative element disposed on the distal
end of the shaft, the ablative element
comprising a needle electrode having a distal
closed-ended point;
a perfusion lumen longitudinally
extending within the shaft;
a plurality of perfusion exit ports disposed
on a side of the elongate shaft and in fluid
communication with the perfusion lumen;
a wicking material disposed in the
perfusion lumen; and
a pump assembly comprising at least one
piezoelectric element for facilitating a flow
of a fluid within the perfusion lumen.
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Appeal 2015-001453
Application 12/037,882
REFERENCES
LaBudde
Magnani
Swanson
Pearson
US 6,607,524 B1 Aug. 19, 2003
US 6,743,015 B2 June 1, 2004
US 6,814,731 B2 Nov. 9, 2004
US 2003/0212394 A1 Nov. 13, 2003
REJECTIONS
Claims 94, 97, 101-103, 105, 108, 112-114, 116, and 117 stand
rejected under 35 U.S.C. § 103(a) as unpatentable over Pearson, Magnani,
and LaBudde. Final Act. 3—8.
Claim 104 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Pearson, Magnani, LaBudde, and Swanson. Final Act. 8—9.
Independent claim 94 is drawn to an ablation probe comprising a
perfusion lumen with “wicking material” disposed therein. App. Br. 13
Claims App. Independent claim 105 is similar. Id. at 14. The Examiner
finds that Pearson discloses most of the limitations of claims 94 and 105, but
acknowledges that Pearson does not teach, inter alia, the claimed wicking
material. Final Act. 4, 6. For the wicking material, the Examiner relies on
Magnani, particularly figure 2. Id. The Examiner contends that Magnani
“teaches ... a similar tissue treatment system [as Pearson] comprising a
shaft with a distally-located conductor and a fluid lumen (136), wherein a
wicking material (135) is disposed within the entire length of the fluid
lumen.” Id. According to the Examiner,
ft is well known in the art that a wicking material can be utilized
to accomplish wicking (reducing fluid flowrate). Therefore, it
would have been obvious to one having ordinary skill in the art
ANALYSIS
Obviousness over Pearson, Magnani, and LaBudde
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Appeal 2015-001453
Application 12/037,882
at the time the invention was made, to have modified the system
of Pearson to comprise a wicking material disposed within the
entire length of the perfusion lumen, . . . since this modification
would have merely comprised a simple substitution of
interchangeable wicking designs in order to produce a similar
result.
Final Act. 4, 6—7 (emphasis added). Appellants dispute the Examiner’s
analysis. App. Br. 6—7.
The Examiner’s analysis is apparently premised on Magnani’s
teaching that wick 135 “reduc[es] fluid flowrate” through solution channel
136, so that a person of ordinary skill would have been motivated to use
Magnani’s wick in Pearson’s device to achieve a similar reduced flow rate in
that device. Final Act. 4, 6—7. But the Examiner has not provided us with
any teaching in Magnani that supports this premise. Nor have we found any
such teaching. Although we agree with the Examiner (Ans. 2) that Magnani
teaches that wick 135 conducts solution 120 through solution channel 136
(e.g., Magnani, 5:66—67), we have found no indication that the purpose of
the wick would have been understood by one skilled in the art to be reducing
the fluid flow rate through channel 136. Wicks may be capable of both
inducing flow, e.g., by capillary action, and inhibiting flow. It is not clear
from the record before us why the Examiner believed one skilled in the art
would understand Magnani’s wick would be suitable for the latter
application in Pearson’s device. Accordingly, because the premise on which
the Examiner’s rejection is based is insufficiently supported, we do not
sustain the Examiner’s rejection of claims 94, 97, 101—103, 105, 108, 112—
114, 116, and 117 as unpatentable over Pearson, Magnani, and LaBudde.
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Appeal 2015-001453
Application 12/037,882
Obviousness over Pearson, Magnani, LaBudde, and Swanson
This rejection relies on the unsupported premise discussed above.
The Examiner does not rely on Swanson to cure this deficiency.
Accordingly, for the reasons discussed above, we do not sustain the
Examiner’s rejection of claim 104 as unpatentable over Pearson, Magnani,
LaBudde, and Swanson.
DECISION
We REVERSE the Examiner’s decision to reject claims 94, 97,
101-105, 108, 112-114, 116, and 117.
REVERSED
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