Ex Parte Wang et al

Patent Trial and Appeal Board

Mar 30, 2018

12346634 (P.T.A.B. Mar. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/346,634 12/30/2008
67337 7590 04/03/2018
DYKEMA GOSSETT PLLC (STJ)
4000 Wells Fargo Center
90 South Seventh Street
Minneapolis, MN 55402
FIRST NAMED INVENTOR
HuisunWANG
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.
OB-051602US/065513-000140 9793
EXAMINER
MEDWAY,SCOTTJ
ART UNIT PAPER NUMBER
3763
NOTIFICATION DATE DELIVERY MODE
04/03/2018 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):
MN_IPMail@dykema.com
ASJM_Patents@abbott.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HUISUN WANG and SACHA HALL
Appeal2017-006020
Application 12/346,634 1
Technology Center 3700
Before MURRIEL E. CRAWFORD, MICHAEL W. KIM, and
PHILIP J. HOFFMANN, 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 rejection of claims 1--4, 6-18, 20, 21, 24, and 25. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
According to Appellants, the invention "relates to ablation electrodes
and assemblies, including electrode assemblies having distal irrigation fluid
1 According to Appellants, the real party in interest is St. Jude Medical,
Atrial Fibrillation Division, Inc. Appeal Br. 1.
Appeal2017-006020
Application 12/346,634
flow." Spec. i-f 2. Claims 1, 4, 6, 17, and 21 are the independent claims on
appeal. We reproduce claim 1, below, as illustrative of the appealed claims.
1. An irrigated ablation electrode assembly comprising:
an inner lumen;
a proximal member;
a distal member configured for connection to the proximal
member, the distal member comprising an electrically
conductive material and having a distal end and an outer surface
configured for the delivery of ablative energy; and
a passageway extending from the inner lumen to the outer
surface, wherein the conjunction of the passageway and the outer
surface is rounded or chamfered and is configured to reduce
energy intensity concentration at the conjunction.
REJECTIONS AND PRIOR ART
The Examiner rejects claims 1--4, 6-14, 21, 24, and 25 under
35 U.S.C. § 103(a) as unpatentable over Wittkampf (WO 2005/048858 Al,
pub. June 2, 2005) and Williams (US 4,904,238, iss. Feb. 27, 1990).
The Examiner rejects claim 15 under 35 U.S.C. § 103(a) as
unpatentable over Wittkampf, Williams, and Mooney (US 6,383,144 Bl, iss.
May 7, 2002).
The Examiner rejects claim 16 under 35 U.S.C. § 103(a) as
unpatentable over Wittkampf, Williams, and Littmann (US 6,141,576, iss.
Oct. 31, 2000).
The Examiner rejects claims 17, 18, and 20 under 35 U.S.C. § 103(a)
as unpatentable over Gibson et al. (WO 2005/112814 A2, pub. Dec. 1,
2005), Wittkampf, and Williams.
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ANALYSIS
Obviousness rejection of claims 1-4. 6-14. 21. 24. and 25
With respect to independent claims 1, 4, 6, and 21, the Examiner finds
that although Wittkampf discloses an irrigated ablation electrode
substantially similar to the claimed assembly, Wittkampf fails to disclose
that a conjunction of an interior passageway and an outer surface is rounded
or chamfered, as claimed. Final Action 2-3, 12-13. The Examiner finds
that "Williams discloses a device for the delivery of fluid in a medical
procedure, having a distal member and a passageway for the delivery of
fluid, wherein the conjunction of the passageway and the outer surface of the
device has both a rounded surface and a chamfered surface." Id. at 3 (citing
Williams Fig. 6c ). The Examiner determines that it would have been
obvious to modify Wittkampf' s conjunction of the passageway and outer
surface to include the rounding and chamfering on Williams' s
irrigation/aspiration handpiece, because "Williams expressly teaches that
doing so would be useful for preventing catching or tearing of tissue
fragments at the surgical site." Id. at 3--4.
Appellants argue that the Examiner's determination is erroneous,
because "the vast differences in the overall design, function and purposes
between the ablation catheter[] of Wittkampf ... and the cannula of
Williams would discourage one of ordinary skill in the art to combine the
teachings for any purpose." Appeal Br. 10. Appellants also argue that
"Williams would have no relevance to the disclosure in Wittkampf nor to the
specific problem faced by the inventors," and that the only reason to modify
the Wittkampfs conjunction with Williams's rounding is based on
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Application 12/346,634
impermissible hindsight. Reply Br. 4. Based on our review of the record,
for the below reasons, we agree with Appellants.
Appellants' Specification describes that a problem with ablation
electrodes is "the problem of undesirable tissue charring during RF
ablation," and that "careful observation from the inventors led them to
believe that the rough edges of the irrigation holes were partly responsible
for tissue char, wherein the rough edges were responsible for a concentration
of energy intensity ('edge effects')." Spec. i-f 30. The Examiner does not
demonstrate that any of the applied references recognizes the problem of
tissue char from RF concentration around irrigation holes.
Instead, as stated above, the Examiner finds that Williams' s reason for
rounding is to "prevent[ ] catching or tearing of tissue fragments at the
surgical site." Final Action 4. This is consistent with the explanation in
Williams that the irrigation/ aspiration hand piece "provides for simultaneous
irrigation and aspiration at a surgical site. The surgical tip is unitary, and
has uninterrupted surfaces. The edges of the irrigation/[ ]aspiration ports
can be rounded to reduce any chance for catching or tearing at the surgical
site." Williams col. 2, 11. 42--47.
But, the Examiner does not support adequately the determination that
because catching or tearing tissue is a concern when using Williams' s
irrigation/aspiration handpiece, catching or tearing tissue is a concern when
using Wittkampf s irrigated ablation electrode. Apparently the devices
disclosed in Wittkampf and Williams are used for difference purposes in
different contexts (see, e.g., Wittkampf col. 1, 11. 1-3 ("The invention relates
in particular to a catheter for ablation in body cavities such as blood vessels
or organs such as a heart."), Williams col. 1, 11. 9-10 ("Some surgical
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Application 12/346,634
procedures require simultaneous irrigation and aspiration at the surgical
site.")). Furthermore, the geometry of Wittkampf is such that we are unclear
as to how any tissue would catch or tear at the point of conjunction between
bore 26 and the outer surface of first end 4. While we observe that the
portion of Figure 6C of Williams, labeled by the Examiner as "rounded
surface," appears to be positioned to contact tissue when inserted distally
into a body cavity, as the portions distal to that "rounded surface" narrow in
diameter as they approach rounded closed end 90, in Wittkampf we observe
that any contact with tissue would most likely be limited to the outer surface
of first end 4 radially outward from even the most radially-outermost portion
of bore 26. It is well settled that "[r]ejections 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." See KSR Int 'l Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007). In this case, because it is not clear, from either their
functions or geometries, that Wittkampf and Williams are susceptible to the
same problems, the Examiner's reason for modifying Wittkampf to solve a
problem described in Williams is insufficient to support adequately the
rejection.
Thus, based on the foregoing, we do not sustain the rejection of
independent claims 1, 4, 6, and 21. We also do not sustain the rejection of
claims 2, 3, 7-14, 24, and 25 that depend from claim 1.
Obviousness rejections ofclaims 15 and 16
Claims 15 and 16 depend from claim 1. Inasmuch as the Examiner
does not demonstrate that either Mooney or Littmann remedies the
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deficiency discussed above in claim l's rejection, we do not sustain either of
the rejections of claims 15 and 16.
Obviousness rejection of claims 17. 18. and 20
With respect to independent claim 1 7, the Examiner makes findings
and conclusions with respect to Wittkampf and Williams which are similar
to those discussed above for claim 1. See Final Action 9--10. Therefore, we
do not sustain the rejection of claim 17 for reasons similar to the reasons that
we do not sustain claim l's rejection. Further, we do not sustain the
rejection of claims 18 and 20 that depend from claim 17.
DECISION
We REVERSE the Examiner's obviousness rejections of claims 1--4,
6-18, 20, 21, 24, and 25.
REVERSED
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