Ex Parte Werneth et al

Patent Trial and Appeal Board

Feb 12, 2018

14162934 (P.T.A.B. Feb. 12, 2018)

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.
14/162,934 01/24/2014 Randell L. WERNETH 21819B-271CON 1568
89554 7590 02/14/2018
Christopher & Weisberg, P.A.
1232 N. University Drive
Plantation, EL 33322
EXAMINER
FOWLER, DANIEL WAYNE
ART UNIT PAPER NUMBER
3739
NOTIFICATION DATE DELIVERY MODE
02/14/2018 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):
ptomail @ c wiplaw. com
medtronic_crdm_docketing @ c ardinal-ip .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RANDELL L. WERNETH, CHRISTOPHER G. KUNIS, HAKAN
ORAL, FRED MORADY, and J. CHRISTOPER FLAHERTY
Appeal 2017-002413
Application 14/162,9341
Technology Center 3700
Before DONALD E. ADAMS, RICHARD M. LEBOVITZ, and
DAVID COTTA, Administrative Patent Judges.
LEBOVITZ, Administrative Patent Judge.
DECISION ON APPEAL
This appeal involves claims directed to a method of treating cardiac
arrhythmia. The Examiner rejected the claims as unpatentable under
35 U.S.C. § 103 and under the judicially created doctrine of obviousness-
type double patenting under § 101. We have jurisdiction under 35 U.S.C. §
6(b). The §§103 and 101 rejections are affirmed.
1 The Appeal Brief (“Appeal Br.”) 3 lists Medtronic Ablation Frontiers LLC
as the real-party-in-interest.
Appeal 2017-002413
Application 14/162,934
STATEMENT OF THE CASE
Claims 1—20 stand finally rejected by the Examiner as follows
(Examiner’s Answer (“Ans.”) 2):
Claims 1—8, 10, and 12—15 under pre-AIA 35 U.S.C. § 103(a) as
obvious in view of Skarda (US Pat. Appl. Publ. 2003/0009095 Al,
published Jan. 9, 2003), Haissaguerre (US Pat. 5,916,213, issued June 29,
1999), and Swartz (US 5,575,766, issued Nov. 19, 1996).
Claim 9 under pre-AIA 35 U.S.C. § 103(a) as obvious in view of
Skarda, Haissaguerre, and Swartz, further in view of Wemeth (US Pat. Appl.
Publ. 2006/0089637 Al, published Apr. 27, 2006).
Claim 11 under pre-AIA 35 U.S.C. § 103(a) as obvious in view of
Skarda, Haissaguerre, and Swartz, further in view of Koblish (US Pat. Appl.
Publ. 2002/0087208 Al, published July 4, 2002).
Claims 16—18 under pre-AIA 35 U.S.C. § 103(a) as obvious in view
of Skarda, Haissaguerre, and Swartz, further in view of Belef (US Pat.
6,475,226 Bl, issued Nov. 5, 2002).
Claims 19 and 20 under pre-AIA 35 U.S.C. § 103(a) as obvious in
view of Skarda, Haissaguerre, and Swartz, further in view of Burnside (US
6,071,281, issued June 6, 2000).
Claims 1—20 under 35 U.S.C. under § 101 on the ground of non-
statutory obviousness-type double patenting over claims 1—80 of US Patent
No. 8,642,704.2 Appellants do not address the Examiner’s double patenting
rejection. We therefore summarily affirm the obviousness-type double
2 The double-patenting rejection appears in the Final Action by the
Examiner, but was not repeated in the Examiner’s Answer. However, the
Examiner did not indicate the rejection was withdrawn.
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Application 14/162,934
patenting rejection. See Manual of Patent Examining Procedure § 1205.02
(“If a ground of rejection stated by the examiner is not addressed in the
appellant’s brief, that ground of rejection will be summarily sustained by the
Board.”).
Claim 1, the only independent claim on appeal, is reproduced below.
1. A systemic method of treating cardiac arrhythmia, the
method comprising:
(a) accessing a left atrium of a heart of a patient;
(b) ablating tissue surrounding one or more pulmonary veins;
(c) ablating septal tissue; and
(d) ablating left atrial wall tissue,
(a), (b), and (c) being performed before (d).
DISCUSSION
The Examiner found that Skarda describes a method of treating
cardiac arrhythmia comprising steps (a), (b), and (d) of clam 1. Final Act. 2.
The Examiner found that Skarda does not describe ablating septal tissue as
in step (c) of the claim or the recited order of steps. Id. at 3. However, the
Examiner found that Haissaguerre discloses “ablating arrhythmogenic sites
which can include atrial wall tissue, tissue around the pulmonary vein
orifices and septal tissue.” Id. The Examiner further found that Swartz
describes a method of treating cardiac arrhythmia and that any order of
ablation/treatment steps maybe used:
Swartz discloses a method of treating cardiac arrhythmia in the
left atrium and teaches the steps of ablating the septal wall
(track 8, fig. 2), the atrial wall (track 1) and around the
pulmonary vein orifices for separating all the pulmonary veins
(tracks 2-4). Swartz teaches that the order of the procedure is
determined by the individual medical practitioner (col. 10 lines
44-47). Therefore, at the time of the invention, it would have
been obvious to one of ordinary skill in the art to treat any area
identified by Skarda-Haissaguerre to be an arrhythmogenic site
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Application 14/162,934
in any order, as taught by Swartz, to produce the predictable
result of treating a cardiac arrhythmia.
Final Act. 3.
Appellants contend that the “the field of cardiac ablation involves
infinite combinations of techniques, equipment, and operating conditions
that can produce very different results in different patients” and thus
“motivation to optimize cannot be established by the cited references.”
Appeal Br. 11. Appellants further contend that “the claimed sequence has
been found to have unexpected results where it was previously believed that
no particular sequence produced beneficial results whatsoever, not even an
additive effect.” Id. at 12. Appellants also contend that “the combination of
references fails to provide any kind of motivation to experiment to find an
optimized order of steps, such as the order the steps as claimed” because the
order of ablation steps was not recognized as a result-effective variable. Id.
at 13.
We are not persuaded by Appellants’ arguments that the Examiner
erred in rejecting the claims.
First, Swartz provides a reason to have utilized the steps in the
claimed order because Swartz teaches that any order of steps can be used as
determined by the medical practitioner. Swartz, col. 10,11. 42—47.
Appellants did not provide persuasive arguments or evidence that the
claimed order of steps is not suggested by the combination of Skarda,
Haissaguerre, and Swartz as stated by the Examiner.
Second, Appellants have not directed us to objective evidence to
substantiate their assertion of unexpected results.
An applicant cannot prove unexpected results with attorney
argument and bare statements without objective evidentiary
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Application 14/162,934
support. See In re Lindner, 59 C.C.P.A. 920, 457 F.2d 506, 508
(CCPA 1972); In re Geisler, 116 F.3d 1465 (Fed. Cir. 1997)
(“attorney argument [is] not the kind of factual evidence that is
required to rebut a prima facie case of obviousness”); In re
Soni, 54 F.3d 746, 750 (Fed. Cir. 1995) (“It is well settled that
unexpected results must be established by factual evidence.
Mere argument or conclusory statements ... [do] not suffice.”)
(quoting In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984)).
CFMT, Inc. v. Yieldup Intern. Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003).
Appellants contend there was no reason to change the order of the
steps because the steps were not recognized as result-effective. Appeal Br.
12—13. However, the Examiner found that Swartz teaches that the order of
steps in the ablation procedure is determined by the medical practitioner:
This [ablation] procedure is then continued until there has been
a full and completion ablation of all preselected ablation tracks
in the heart. The choice of which shaped catheter to use first
and in what order is, of course, determined by the individual
medical practitioner.
Swartz, col. 10,11. 42-47
Appellants did not dispute this finding. Appellants argue that the
steps were not recognized as result-effective, implying that the order of the
steps would have an effect on the result. However, Appellants have not
directed us to evidence that varying the order of steps changed the result.
Geisler, 116 F.3d 1465. Consequently, because Swartz teaches that the any
order may be used, absent evidence that the claimed order produces an
unexpected result or otherwise affects the ablation procedure in a way which
would not be predicted by one of ordinary skill in the art, we conclude that
that Appellants’ argument is insufficient to establish patentability for the
claimed method.
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For the foregoing reasons, we affirm the rejection of independent
claim 1 as unpatentable in view of Skarda, Haissaguerre, and Swartz.
Appellants did not provide separate arguments for the remaining rejections
or any of the dependent claims, other than to indicate that the dependent
claims recite additional limitations. Appeal Br. 13—14. However, pointing
out that a dependent claim contains a limitation not found in the independent
is not explanation of how that limitation makes the claim patentable in view
of the cited prior art. See 37 C.F.R. § 41.37(c)(l)(iv). Consequently, the
rejections of claims 2—20 are fall with claim 1.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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