THE SPECTRANETICS CORPORATION

Patent Trials and Appeals Board

Aug 13, 2020

2020001427 (P.T.A.B. Aug. 13, 2020)

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.
14/700,556 04/30/2015 Weston Lee 2014P02045US01 2102
24737 7590 08/13/2020
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus Avenue
Suite 340
Valhalla, NY 10595
EXAMINER
TOWA, RENE T
ART UNIT PAPER NUMBER
3791
NOTIFICATION DATE DELIVERY MODE
08/13/2020 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):
katelyn.mulroy@philips.com
marianne.fox@philips.com
patti.demichele@Philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WESTON LEE
Appeal 2020-001427
Application 14/700,556
Technology Center 3700
Before CHARLES N. GREENHUT, LEE L. STEPINA, and
ERIC C. JESCHKE, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–12 and 21–24. See Final Act. 1. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as The Spectranetics
Corporation. Appeal Br. 2.
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Application 14/700,556
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CLAIMED SUBJECT MATTER
The claims are directed to a segmented balloon laser ablation catheter.
Claim 1, reproduced below, with emphasis added, is illustrative of the
claimed subject matter:
1. A laser ablation catheter comprising:
an inner sheath and an outer sheath;
a plurality of optical fibers, wherein the plurality of optical
fibers comprise an area between the inner sheath and the outer
sheath;
an inner lumen, wherein the inner sheath separates the
inner lumen from the plurality of optical fibers;
a segmented balloon assembly comprising at least three
balloons circumferentially aligned around the outer sheath at the
distal end of the catheter;
at least one inflation source coupled to the segmented
balloon assembly; and
a controller comprising a non-transitory computer-
readable medium containing instructions that, when executed,
cause the controller to control the inflation of the at least three
balloons according to a predetermined inflation sequence,
wherein the predetermined sequence comprises (i) inflating the
at least three balloons, (ii) deflating a first of the at least three
balloons, and (iii) inflating the first of the at least three balloons
while deflating a second of the at least three balloons.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Rizik US 5,628,761 May 13, 1997
Baden US 5,658,311 Aug. 19, 1997
Khachi US 2008/0009673 A1 Jan. 10, 2008
Hoem US 2011/0202084 A1 Aug. 18, 2011
Ben Oren US 2014/0031800 A1 Jan. 30, 2014

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Application 14/700,556
3
REJECTIONS
Claims 1–5, 7, 8, 21, and 22 are rejected under 35 U.S.C. § 103 as
being unpatentable over Ben Oren, Hoem, and Khachi. Final Act. 2.
Claim 6 is rejected under 35 U.S.C. § 103 as being unpatentable over
Ben Oren, Hoem, Khachi, and Baden. Final Act. 10.
Claim 6 is rejected under 35 U.S.C. § 103 as being unpatentable over
Ben Oren, Hoem, Khachi, and Rizik. Final Act. 11.
Claims 9, 10, 12, 23, and 24 are rejected under 35 U.S.C. § 103 as
being unpatentable over Khachi and Hoem. Final Act. 11.
Claim 11 is rejected under 35 U.S.C. § 103 as being unpatentable over
Khachi, Hoem, and Baden. Final Act. 16.
Claim 11 is rejected under 35 U.S.C. § 103 as being unpatentable over
Khachi, Hoem, and Rizik. Final Act. 17.
OPINION
The claims subject to the first rejection are argued as a group (Appeal
Br. 4–7) for which claim 1 is representative under 37 C.F.R.
§ 41.37(c)(1)(iv). The arguments presented for claim 9, the only other
independent claim, refer back to those presented with respect to claim 1.
Appeal Br. 7. No dependent claims are separately argued.2
The main point of dispute in this appeal centers around the fact that
Khachi, the reference relied upon by the Examiner with regard to the claim
limitations emphasized above, does not contain any teaching or disclosure of

2 Appellant’s remarks with regard to claims 21 and 22 (Appeal Br. 6–7) do
not comply with the requirements for separate arguments under 37 C.F.R.
§ 41.37(c)(1)(iv) because they are not under a separate subheading and
merely point out what those claims recite. See In re Lovin, 652 F.3d 1349,
1357 (Fed. Cir. 2011).
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Application 14/700,556
4
the precise sequence of steps (i–iii) enumerated in claim 1. Appeal Br. 5–6.
Rather, Khachi contains only a more generic teaching:
As will be readily evident to those skilled in the art, by inflating
and deflating the various balloons 22a, 22b, 22c, 22d, the distal
end 14 of the tubular member 12 of the endoscope shaft 10 can
be moved either left or right, up or down, clockwise or counter-
clockwise, thereby providing the operator with the ability to
finely adjust the position of the distal end 14 of the tubular
member 12 beyond that which is achievable by the angling
controls in the control head of the endoscope.
Khachi para. 36 (discussed at Final Act. 4–5).
We recognize there is a general rule, more often discussed in the
context of, but not limited to, the chemical arts, that generic disclosures do
not necessarily constitute disclosures of all subject matter falling
therewithin, particularly for anticipation purposes.3 However, it is not the
Examiner’s position that Khachi’s disclosure above, without more, actually
satisfies the claim limitations defining the precise sequence of balloon
inflation and deflation. Rather, it is the Examiner’s position that, consistent
with Khachi’s remarks, how to use Khachi’s balloon system to make it move
a particular way “will be readily evident to those skilled in the art” and it is
that knowledge that, when applied to a device having Khachi’s balloons,
would yield the subject matter claimed. Ans. 7 (quoting Khachi para. 36)
(emphasis omitted).
The Examiner has the better position on both the facts and the law
here. The Examiner correctly points out that Appellant’s Specification
describes “that individual balloon [sic] can be inflated and deflated in a
sequential manner to rotate the distal end of the catheter” and “all of balloon

3 See MPEP § 2144.08
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segments 1, 2, 3 can be inflated simultaneously.” Ans. 6 (citing Spec. para.
32) (emphasis omitted). Similarly, Khachi clearly contemplates sequentially
inflating and deflating various balloons (as in enumerated limitations ii and
iii above) for the purpose of locomotion. One skilled in the art would
understand that the nature of that locomotion, whether it be translational or
rotational, would depend on the natural tissue surrounding, and providing
counteracting forces on, the various balloons so as to propel the catheter.
Like Appellant, Khachi also contemplates “inflating all . . . of the balloons”
as enumerated in limitation i above. Khachi para. 20. Khachi does this “to
form a working space between the tissue layers.” Id. So the aspects of the
argued limitations that Khachi does not describe with specificity amount to
the specific order and synchronization of the recited sequence.
It is well-settled that “[an obviousness] analysis need not seek out
precise teachings directed to the specific subject matter of the challenged
claim, for a [decision maker] can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ.” KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 418 (2007). Further, it has long been
understood that the hypothetical artisan of § 103 must be presumed to know
something about the art apart from what the references expressly disclose. In
re Jacoby, 309 F.2d 513, 516 (CCPA 1962). Thus, the fact that Khachi does
not expressly teach or disclose the precise sequence and timing of steps
recited in Appellant’s claim 1 is not the dispositive issue here.
Although discussed in the context of determining when a prior-art
reference disclosing a machine or apparatus anticipates a claim directed to a
process, the principles behind the rule reaffirmed by our reviewing court in
In re King provide some relevant guidance here:
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[T]he law is, and long has been, that “if a previously patented
device, in its normal and usual operation, will perform the
function which an appellant claims in a subsequent application
for process patent, then such application for process patent will
be considered to have been anticipated by the former patented
device.”
801 F.2d 1324, 1326 (Fed. Cir. 1986) (citation omitted). This rule serves an
important purpose. It prevents the fundamentally unfair result that would be
associated with granting a so-called “blocking” patent for a process which
could prohibit an inventor, or the public, from using, in its normal and usual
way, her own patented device, or a device in the public domain,
respectively. See, e.g., Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc.,
289 F.3d 801, 809–10 (Fed. Cir. 2002) (illustrating this principle with a
hypothetical).
Here, the claim limitations in question are not process steps per se.
However, they are similar to process steps in that they are steps recited as
part of a Beauregard-styled4 clause (“a controller comprising a non-
transitory computer-readable medium containing instructions that, when
executed, cause the controller to . . . ”). The instructions within the recited
computer-readable medium contain the instructions that a surgeon or other
medical practitioner will need to have available, be able to provide, or be
able to execute, when using Khachi’s device in its normal and usual way. As
each individual patient will present different requirements, the decision to
inflate all balloons in order to create a working space, and/or how and where
to sequentially inflate and/or deflate balloons in order to propel the catheter,

4 In re Beauregard, 53 F.3d 1583 (Fed. Cir. 1995).
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Application 14/700,556
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are clearly matters best left to the expertise of the surgeon or medical
practitioner in each particular situation.
Indeed, Appellant does not claim to have invented any abnormal or
unusual process or sequence for inflating and/or deflating the various
balloons that achieves some new and nonobvious or unpredictable result. A
determination of the particular sequence of steps to be used to carry out the
functions associated with Khachi’s balloons is different from a “change in
their respective functions” as that term was used by the Court in KSR. See
Reply Br. 4 (emphasis omitted). With Appellant’s sequence the balloons
would still function like Khachi’s to create space in step i and cause motion
in steps ii and iii. It is not a per se difference in function to perform these
steps in a particular order or at a particular time as Appellant argues. Reply
Br. 4.
Overall, Appellant’s arguments essentially amount to pointing out that
Khachi does not expressly disclose the precise sequence of steps enumerated
in claim 1, instead deferring to the skilled artisan to determine the precise
steps or sequence of steps to be undertaken. Above we discussed reasons
why this fact alone may not suffice to demonstrate error even in the context
of an anticipation rejection. For the reasons also discussed above,
Appellant’s argument in this regard also does not apprise us of Examiner
error here, where the question is obviousness.
CONCLUSION
The Examiner’s rejections are AFFIRMED.
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8
DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Basis/Reference(s) Affirmed Reversed
1–5, 7, 8,
21, 22
103 Ben Oren, Hoem,
Khachi
1–5, 7, 8,
21, 22

6 103 Ben Oren, Hoem,
Khachi, Baden
6
6 103 Ben Oren, Hoem,
Khachi, Rizik
6
9–10, 12,
23, 24
103 Khachi, Hoem 9–10, 12,
23, 24

11 103 Khachi, Hoem,
Baden
11
11 103 Khachi, Hoem,
Rizik
11
Overall
Outcome
1–12, 21–24

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED