AtheroMed, Inc.Download PDFPatent Trials and Appeals BoardNov 23, 20202020001138 (P.T.A.B. Nov. 23, 2020) Copy Citation 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. 15/048,042 02/19/2016 Paul Quentin Escudero 2015P01169US01 4488 24737 7590 11/23/2020 PHILIPS INTELLECTUAL PROPERTY & STANDARDS 465 Columbus Avenue Suite 340 Valhalla, NY 10595 EXAMINER TON, MARTIN TRUYEN ART UNIT PAPER NUMBER 3771 NOTIFICATION DATE DELIVERY MODE 11/23/2020 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 PAUL QUENTIN ESCUDERO, AUGUST CHRISTOPHER POMBO, TORREY P. SMITH, and DOUGLAS E. ROWE Appeal 2020-001138 Application 15/048,042 Technology Center 3700 ____________ Before DANIEL S. SONG, CHARLES N. GREENHUT, and MICHAEL J. FITZPATRICK, Administrative Patent Judges. FITZPATRICK, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s final decision rejecting claims 1, 3–15, and 17–26. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 “Appellant” refers to the applicant as defined in 37 C.F.R. § 1.42. Appellant identifies THE SPECTRANETICS CORPORATION and its parent corporation, KONINKLIJKE PHILIPS N.V., as the real parties in interest. Appeal Br. 2. Appeal 2020-001138 Application 15/048,042 2 STATEMENT OF THE CASE The Specification The Specification “relates to the treatment of occluded body lumens, including the removal of occlusive material from a blood vessel.” Spec. 1. The Claims Claims 1, 3–15, and 17–26 are rejected. Final Act. 1. No other claims are pending. Id. at 2; Appeal Br. 10–13. Claims 1, 15, and 26 are independent. Appeal Br. 10–13. Claim 1 is illustrative and reproduced below. 1. An apparatus for cutting and removing occlusive material, the apparatus comprising: a catheter body defining a first lumen and comprising a distal housing that defines an opening; a rotatable shaft disposed within the first lumen of the catheter body, wherein the rotatable shaft comprises a conveying component and a cutting element that is at least partially surrounded by the distal housing, wherein the cutting element comprises a distal end; and an imaging element located on the distal housing, wherein the imaging element circumscribes the distal housing, and wherein the imaging element is disposed proximally of the distal end of the cutting element. Appeal Br. 10. Appeal 2020-001138 Application 15/048,042 3 The Examiner’s Rejections The Examiner’s rejections, all pursuant to 35 U.S.C. § 103, are as follows: 1. claims 1, 3–8, 10–20, and 22–25 as unpatentable over Escudero2 and Sheehan3 (Final Act. 4); 2. claims 9 and 21 as unpatentable over Escudero, Sheehan, and Smith4 (id. at 8); and 3. claim 26 as unpatentable over Smith and Sheehan (id.). DISCUSSION Rejection 1 Appellant argues the rejection of claims 1, 3–8, 10–20, and 22–25 together. Appeal Br. 5–8. We choose claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(iv). The Examiner found that Escudero teaches the subject matter of claim 1, as well as claims 3–5, except that “it does not specifically teach the imaging element circumscribing the distal housing nor does it specifically teach the specific type of ultrasound transducer used.”5 Final Act. 4–5 (citing Escudero ¶308, Figs. 1A, 1B, 19A, and 42). Rather, as shown in the relied-upon embodiment of Figure 42, Escudero teaches optical coherence 2 US 2009/0018567 A1, published Jan. 15, 2009 (“Escudero”). Escudero names as inventors three of the four named inventors of the instant Application. Escudero, at [75]. 3 US 2014/0276059 A1, published Sept. 18, 2014 (“Sheehan”). 4 US 2013/0096587 A1, published Apr. 18, 2013 (“Smith”). Smith names as inventors all four of the named inventors of the instant Application. Smith, at [72]. 5 Dependent claims 3–5 recite limitations directed to particular types of ultrasound transducers. Appeal Br. 10. Appeal 2020-001138 Application 15/048,042 4 tomography (“OCT”) device 146 on distal housing 104 but does not describe or show the OCT device as circumscribing the housing. Escudero Fig. 42 (ref. 146), ¶308. The Examiner next found that Sheehan teaches: an elongate catheter for introduction into a vessel for imaging an occlusion (Figure 4; 85), wherein the catheter includes an imaging element which circumscribes a distal housing of the catheter, wherein the imaging element is disposed proximally of the distal end of the catheter tip (Figure 4; 100), wherein the reference states that the imaging element may be an ultrasound transducer such as a phased array transducer ([¶ 0062]), or may also be a transducer used for forward-looking intravascular ultrasound ([¶ 0047]), which would have the transducer be configured to image in a plane distal to the ultrasound transducer. Final Act. 5. The Examiner concluded: Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have the imaging element of the Escudero reference circumscribe the distal housing of the catheter body, the distal housing being proximal the distal end of the cutting element, as in the Sheehan reference and to further have the transducer be a phased array transducer for forward looking intravascular ultrasound given that these transducer types are identified as commercially available imaging techniques for obtaining internal characteristics of a patient’s vasculature (Sheehan; [¶ 0030, 0047, 0062]). Id. In response to the Examiner’s rejection, Appellant argues, “[a]lthough paragraph [0047] of Sheehan generally discusses a forward-looking IVUS[6] as an exemplary imaging device, the specific imaging element 100 6 IVUS refers to intravascular ultrasound. See Spec. 9; Sheehan ¶47. Appeal 2020-001138 Application 15/048,042 5 illustrated in Fig. 4 of Sheehan is not described as forward looking.” Appeal Br. 6. Appellant does not develop this argument or explain the legal significance it attaches to its argument. As such, and for the reasons below, Appellant’s argument fails to apprise us of Examiner error. The Examiner has established, and Appellant does not dispute, that Sheehan teaches (1) an imaging device that circumscribes a distal housing of a catheter (i.e., Sheehan Fig. 4 (ref. 100)) and (2) “[e]xemplary imaging devices include optical coherence tomography (OCT) [, such as in Escudero, as well as] Forward-Looking IVUS” (Sheehan ¶47). Giving due consideration to both of these teachings, we find that Sheehan implicitly teaches or, at a minimum, suggests a forward-looking IVUS that circumscribes a distal housing of a catheter. See, e.g., Application of Burckel, 592 F.2d 1175, 1179 (CCPA 1979) (“Under 35 U.S.C. § 103, a reference must be considered not only for what it expressly teaches, but also for what it fairly suggests.”). Just as a one prior art reference “must be read, not in isolation, but for what it fairly teaches in combination with the prior art as a whole,” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986), the same logic applies to teachings within the same reference. This is particularly true here, where the relied-upon teachings from Sheehan are highly inter-related, as they both relate to features of a medical imaging device positioned on a distal housing of a catheter. Appellant next argues that, even if Sheehan teaches an imaging element that is both circumscribing and forward looking, “one of skill in the art would not be motivated to look to Sheehan to modify Escudero because, as mentioned above, [Escudero’s] OCT device 146 is already forward viewing.” Appeal Br. 6; see also id. (“Sheehan’s imaging element 100 Appeal 2020-001138 Application 15/048,042 6 would be superfluous to Escudero’s forward viewing OCT device.”). But the Examiner did not assert that Escudero’s OCT lacks forward looking capability, let alone rely on such an assertion, as the motivation for the proposed modification. As the Examiner best explains in the Answer: [T]he Examiner is not solving a problem that does not exist with the proposed modification. The primary and modifying references themselves teach that a person having ordinary skill in the art would find it obvious to utilize different types of imaging means for the devices. Each of these imaging devices has their own benefits and drawbacks to be considered, as is previously discussed in the Advisory Action filed on June 13, 2019. Although the Appellant argues that the Examiner has not articulated the potential benefits of using one transducer over the other, this is irrelevant given the claims merely claim “an imaging element”, therein not requiring particulars to the imaging element. It has been established that these imaging elements are interchangeable as commercially available imaging techniques for obtaining internal characteristics of a patient’s vasculature. Ans. 4 (citing Sheehan ¶¶30, 47, 62); see also id. at 3–4 (“The Sheehan reference clearly shows these two types of imaging elements (OCT and phased array) being alternative types of imaging means for an imaging catheter (Sheehan; [¶ 0062]), while the Escudero reference teaches embodiments where ultrasound transducers are used as an imaging means (Escudero; [¶ 0308]) or wherein OCT is used as an imaging means (Escudero; [¶ 0309]).”). “[W]hen a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007), discussing United States v. Adams, 383 U.S. 39, 50–51 (1966). Such is the scenario before us. Appeal 2020-001138 Application 15/048,042 7 None of Appellant’s arguments apprises us of error in the Examiner’s rejection of claim 1. Accordingly, we affirm that rejection, as well as that of claims 3–8, 10–20, and 22–25, which fall therewith. 37 C.F.R. § 41.37(c)(1)(iv). In sum, Rejection 1 is affirmed as to all claims. Rejection 2 Appellant argues against this rejection of dependent claims 9 and 21 solely on the basis that the additional reference cited by Examiner—Smith— “fails to cure the deficiencies of Escudero and Sheehan.” Appeal Br. 8. Because Appellant fails to apprise us of any such deficiency in Rejection 1, we likewise affirm Rejection 2. Rejection 3 Appellant argues against this rejection of independent claim 26 as follows: “The Examiner proposed modifying Smith in view of Sheehan for similar reasons as modifying Escudero in view of Sheehan as described above with reference to claims 1 and 15. As explained above, such reasons cannot be used to support a conclusion of obviousness.” Id. at 9. This argument does not apprise us of error. We affirm Rejection 3. Appeal 2020-001138 Application 15/048,042 8 SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3–8, 10– 20, 22–25 103 Escudero, Sheehan 1, 3–8, 10–20, 22–25 9, 21 103 Escudero, Sheehan, Smith 9, 21 26 103 Sheehan, Smith 26 Overall Outcome 1, 3–15, 17–26 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 Copy with citationCopy as parenthetical citation