10872097 (B.P.A.I. Jul. 31, 2012)

Ex Parte Patel et al

Board of Patent Appeals and InterferencesJul 31, 2012

10872097 (B.P.A.I. Jul. 31, 2012)

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. 10/872,097 06/17/2004 Mukund Patel 04-0008 US1 2037 41696 7590 07/31/2012 VISTA IP LAW GROUP LLP 12930 Saratoga Avenue Suite D-2 Saratoga, CA 95070 EXAMINER NELSON, CHRISTINE L ART UNIT PAPER NUMBER 3775 MAIL DATE DELIVERY MODE 07/31/2012 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte MUKUND PATEL and HAROLD F. CARRISON ____________ Appeal 2010-007822 Application 10/872,097 Technology Center 3700 ____________ Before LINDA E. HORNER, MICHAEL C. ASTORINO, and JOHN W. MORRISON, Administrative Patent Judges. MORRISON, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Mukund Patel and Harold F. Carrison (Appellants) seek our review under 35 U.S.C. § 134 of the Examiner’s decision rejecting claims 1, 2, 5, 7- 11, 13, 15-19, 21-23, 40 and 46. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Appeal 2010-007822 Application 10/872,097 2 THE INVENTION Appellants’ claimed invention relates to “medical devices and methods for removing tissue, and in particular, vertebral bone and intervertebral disc tissue.” Spec. 1, para. [0001]. Claims 1, 9, and 18 are independent claims. Claim 1 is representative of the claims on appeal and is reproduced below. 1. A tissue removal device, comprising: a tissue probe having a distal end and a proximal end; a drive shaft disposed within probe; a tissue removal element mounted to the drive shaft, wherein the tissue removal element comprises an abrasive burr; and a sheath slidably disposed over the probe, the sheath having a portion that exposes the probe, wherein the probe comprises a window in a side wall that exposes the tissue removal element, and wherein the sheath is configured to be placed between a non-target tissue and the distal end of the probe when the tissue removal element is placed in contact with a target tissue. THE REJECTIONS Appellants seek review of the following rejection: Claims 1, 2, 5, 7-11, 13, 15-19, 21-23, 40 and 46 are rejected under 35 U.S.C. 103(a) as being unpatentable over Rogers et al (US 6,120,515, issued Sep. 19, 2000) in view of Weinstein (US 5,242,418, issued Sep. 7, 1993). Appeal 2010-007822 Application 10/872,097 3 ANALYSIS The Examiner has determined that it “would have been obvious to one having ordinary skill in the art at the time the invention was made to use a bent slidable sheath as taught by Weinstein to provide for a protective covering to the device of Rogers et al to avoid possible harm to the operator.” Ans. 3. The Appellants counter that the Examiner’s analysis “disregards key aspects of the actual disclosures of the references being combined and does not support a prima facie case of obviousness. Further, the teachings of these references are not properly combinable.” App. Br. 6. Addressing the combination of Rogers and Weinstein, the proper inquiry is whether the Examiner has articulated adequate reasoning based on a rational underpinning to explain why a person of ordinary skill in the art would have been led to combine the disclosure of Rogers with the teachings of Weinstein. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (Rejecting the rigid requirement of a teaching, suggestion or motivation to combine known elements in order to show obviousness, but nonetheless making clear that “rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). The Examiner has failed to articulate why someone using an atherectomy catheter device disclosed in Rogers would need to have his hand, located externally to the patient’s body, protected from the cutting tool positioned within a blood vessel of the patient’s body. Furthermore, the protection device proposed, the sheaths disclosed in Weinstein see figures 1- 17, each expand in such a way that could cause grave bodily harm if used on Appeal 2010-007822 Application 10/872,097 4 the catheter of Rogers within a patient’s blood vessel. In addition, the sheaths disclosed in Weinstein could cause grave bodily harm if used percutaneously on a device which targets a patient’s bone tissue of the spine as disclosed in the Specification. It would be irrational, if not dangerous, to combine the references in the manner proposed by the Examiner. As such, the Examiner has not met the burden of establishing a prima facie case of obviousness by failing to provide adequate reasoning based on rational underpinning as to why one skilled in the art would combine the catheter of Rogers with the sheath taught by Weinstein. Therefore, we cannot affirm the rejection of claims 1, 2, 5, 7-11, 13, 15-19, 21-23, 40 and 46. DECISION We REVERSE the decision of the Examiner to reject claims 1, 2, 5, 7- 11, 13, 15-19, 21-23, 40 and 46. REVERSED mls