Ex Parte Toth

Patent Trial and Appeal Board

Jun 28, 2017

13945244 (P.T.A.B. Jun. 28, 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.
13/945,244 07/18/2013 Akos Toth 37646-704.303 6633
21971 7590 06/30/2017
WILSON, SONSINI, GOODRICH & ROSATI
650 PAGE MILL ROAD
PALO ALTO, CA 94304-1050
EXAMINER
HOEKSTRA, JEFFREY GERBEN
ART UNIT PAPER NUMBER
3736
NOTIFICATION DATE DELIVERY MODE
06/30/2017 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):
patentdocket @ wsgr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AKOS TOTH
Appeal 2015-008033
Application 13/945,244
Technology Center 3700
Before JOSEPH A. FISCHETTI, CYNTHIA L. MURPHY, and
AMEE A. SHAH, Administrative Patent Judges.
MURPHY, Administrative Patent Judge.
DECISION ON APPEAL
The Appellant1 appeals under 35 U.S.C. § 134 from the Examiner’
rejection of claims 1—12. We have jurisdiction over this appeal under
35 U.S.C. § 6(b).
We REVERSE.
1 The Appellant identifies the real party in interest as “Minerva Surgical,
Inc.” (Appeal Br. 3.)
Appeal 2015-008033
Application 13/945,244
STATEMENT OF THE CASE
The Appellant’s invention relates to the introducing of “a flow of a
fluid into a uterine cavity of a patient” and the monitoring of the flow “to
characterize the uterine cavity as at least one of perforated or non-perforated
based on a change in a rate of the flow.” (Spec. 17.)
1. A system for performing a procedure in a patient’s
gynecologic tract, comprising:
an ablation device;
first and second expandable members carried by the
device, the expandable members having fluid-tight walls;
a source of a pressurized flow of a fluid;
a passageway in the device, connected to the source, and
configured to deliver the fluid from the source to a region
surrounding an exterior of device when the expandable
members are expanded within or proximate to at least a portion
of the cervical canal and the uterine cavity of a patient;
a flow sensor for measuring a flow rate of the fluid in the
passageway; and
a controller operatively coupled to the flow sensor and to
the source, the controller being configured to (1) initiate a flow
of fluid from the source through the passageway, (2) measure
the flow rate using the flow sensor, and (3) determine if the
measured flow rate drops below a predetermined minimum
level within a predetermined time period ranging from 1 second
to 60 seconds.
Illustrative Claim2
References
Sampson
Payne
Freed
US 2005/0143728 A1 June 30, 2005
US 2008/0167664 A1 July 10, 2008
US 2010/0228239 A1 Sept. 9, 2010
2 This illustrative claim is quoted from the Claims Appendix (“Claims
App.”) set forth on pages 13—14 of the Appeal Brief.
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Appeal 2015-008033
Application 13/945,244
Rejection
The Examiner rejects claims 1—12 under 35 U.S.C. § 103(a) as
unpatentable over Sampson, Payne, and Freed. (Final Action 2.)
ANAFYSIS
Independent claims 1 and 7 recite a controller configured to “initiate a
flow of fluid from [a] source,” “measure” a parameter associated with this
fluid flow, and determine if the measured parameter “drops below a
predetermined minimum level within a predetermined time period.”
(Appeal Br., Claims App.) The Examiner finds that Sampson discloses a
controller that initiates fluid flow, measures a parameter (i.e., pressure)
associated with this fluid flow, and determines whether the measured
parameter (i.e., pressure) drops below a threshold within a predetermined
time period. (See Final Action 2.) In Sampson, “a fluid (liquid or gas) is
delivered into a [uterine] cavity to slightly pressurize the cavity” and “[i]f
cavity pressure is not substantially sustained during the test period, the
physician is alerted to further assess the cavity for perforations before
initiating treatment within the cavity.” (Sampson, Abstract.)
Independent claims 1 and 7 further require the measured parameter of
the fluid flow to be “a flow rate” and, thus, the controller is configured to
“determine if the measured flow rate drops below a predetermined minimum
level within a predetermined time period.” (Appeal Br., Claims App.) The
Examiner finds that Payne teaches making a determination regarding the
presence of a uterine leak based on a measured flow rate. (See Final
Action 4.) Payne teaches charging a uterine cavity with “pressurized
insufflation gas” to a “target” pressure, supplying “additional insufflation
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Application 13/945,244
gas” to the uterine cavity “to maintain the target pressure,” and using “[t]he
flow rate of the additional insufflation gas” to determine “the presence of a
leak.” (Payne 124.) Specifically, “the presence of a leak can be made once
the rate of gas flow (or volume) exceeds a certain threshold value.” (Id.)
The Examiner’s proposed combination of the prior art entails
modifying Sampson’s system in view of Payne’s teachings to arrive at the
claimed controller. (See Final Action 4.) According to the Examiner, the
proposed modification is “a simple substitution of one known element
(pressure sensor as taught by Sampson for leakage detection) for another
(flow sensor as taught by Payne for leakage detections) to obtain predictable
results such as detecting leaks/perforations in uterine cavity.” (Final
Action 4.)
We agree with the Appellant’s sentiment that the proposed substitution
might have been more perfectly portrayed as the substitution of Sampson’s
leak-detection technique (measuring only pressure) for Payne’s leak-detection
technique (measuring both pressure and flow rate). (See Appeal Br. 10.) We
agree with the Appellant that Payne does not teach or suggest a one-for-one
swap of a flow-rate sensor for a pressure sensor in any given uterine-leak
detection system. (See id.) Rather, Payne teaches measuring both pressure
(i.e., the target pressure) and flow-rate (i.e., the flow of the additional
insufflation gas) to determine leakage. (See Payne 124.)
Nonetheless, the Examiner establishes that it would have been
obvious to modify Sampson’s system in view of Payne’s teachings and that
this modification would yield a system that “comprises a flow sensor and
flow rate is monitored to determine [a] condition of the uterine cavity.”
(Answer 4.) Specifically, in Sampson’s modified system, a flow-rate sensor
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Application 13/945,244
would work in conjunction with a pressure sensor (measuring the target
pressure) to detect uterine leakage. Although the Appellant argues that its
system does not require the measurement of a target pressure (see Appeal
Br. 8), we agree with the Examiner that this distinction is not reflected in the
claim limitations (see Answer 6).
We are, however, persuaded by the Appellant’s position that the
Examiner does not sufficiently explain why a controller in Sampson’s
modified system would be configured to determine if the flow rate drops
below a minimum threshold rate as required by the independent claims.
(See Appeal Br. 7—12; see also Reply Br. 2—3.)
As indicated above, Payne teaches that “the presence of a leak can be
made once the rate of gas flow (or volume) exceeds a certain threshold
value.” (Payne 124, emphasis added.) According to the Appellant, this
leak-detection protocol is illustrated in the graph reproduced below.
EP
(Appeal Br. 8.) This graph shows that, in Payne, the measured flow rate
either remains below the predetermined threshold (if there is no leak) or
rises above (i.e., exceeds) the predetermined threshold (if there is a leak). In
either event, in Payne, the measured flow rate does not begin above, and
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Appeal 2015-008033
Application 13/945,244
then drop below, the predetermined threshold. Thus, a controller in
Sampson’s modified system would not be configured to determine if the
flow rate “drops below” a minimum threshold rate as required by the
independent claims.
The Examiner maintains that Payne “does teach detecting if the flow
rate drops below a threshold” and points to published claim 42 in Payne.
(See Answer 7.) However, claim 42 reads “fallopian tube occlusion is
verified when the flow rate of the insufflation gas into the uterine cavity is
below a threshold value.” (Payne, claim 42.) This does not controvert the
Appellant’s above graph of Payne’s protocol which shows that, if there is no
leak, the flow rate of the insufflation gas begins below, and stays below, the
threshold value during the testing period.
The Examiner further maintains that the controller of Sampson’s
modified system “would be capable of performing the recited function” and
therefore “is structurally equivalent” to the claimed controller. (Answer 7.)
However, the Examiner provides us with no findings as to why the prior art
teaches controller structure (e.g., hardware and/or software) that would be
capable of determining if the measured flow rate drops below a
predetermined minimum level within a predetermined time period.
Thus, we do not sustain the Examiner’s rejection of independent
claims 1 and 7, and claims 2—6 and 8—12 depending therefrom, under
35 U.S.C. § 103(a) as unpatentable over Sampson, Payne, and Freed.3
3 The Examiner’s rejection relies upon Freed for teachings unrelated to the
controller and the flow-rate sensor (see Final Action 5); and thus cannot be
relied upon to cure shortcomings in the Examiner’s combination of Sampson
and Payne.
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Appeal 2015-008033
Application 13/945,244
DECISION
We REVERSE the Examiner’s rejection of claims 1—12.
REVERSED
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