Biosense Webster (Israel ) LTD.

Patent Trials and Appeals Board

Nov 16, 2020

2020003005 (P.T.A.B. Nov. 16, 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.
15/246,434 08/24/2016 Vishav Manak Singh Aujla 400528-20059 9323
144837 7590 11/16/2020
Roberts Calderon Safran & Cole P.C.
7918 Jones Branch Drive
Suite 500
Mclean, VA 22102
EXAMINER
COHEN, LEE S
ART UNIT PAPER NUMBER
3794
NOTIFICATION DATE DELIVERY MODE
11/16/2020 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):
info@rcsc-ip.com
mail@rcsc-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte VISHAV MANAK SINGH AUJLA
____________________

Appeal 2020-003005
Application 15/246,434
Technology Center 3700
____________________

Before PHILIP J. HOFFMANN, KENNETH G. SCHOPFER, and
AMEE A. SHAH, Administrative Patent Judges.

HOFFMANN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s rejection of claims 1–11. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.
According to Appellant, the “invention relates to an electrophysiology
catheter, in particular, a cardiac electrophysiology catheter.” Spec. ¶ 1.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. According to Appellant, “[t]he real party in interest is
BIOSENSE WEBSTER (ISRAEL) LTD., . . . which is a subsidiary of
Johnson & Johnson.” Appeal Br. 2.
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Claims 1 and 7 are the independent claims on appeal. Below, we reproduce
independent claim 1 as illustrative of the appealed claims.
1. An electrophysiology catheter comprising:
an elongated body;
a distal section distal of the elongated body; and
an electrode sleeve mounted on the distal section, the
electrode sleeve comprising:
a band extending circumferentially around the
distal section, the band constructed of an electrically-
nonconductive material;
a plurality of discrete electrodes affixed to the
band, each occupying a different radial position around
the band.
REJECTIONS AND PRIOR ART
The Examiner rejects the claims as follows:
I. Claims 1, 3, 6, 7,2 and 9 under 35 U.S.C. § 103 as unpatentable
over McGovern3 and Babkin;4
II. Claims 1, 3–7, and 9–11 under 35 U.S.C. § 103 as unpatentable
over Schultheis5 and Babkin;
III. Claims 2 and 8 under 35 U.S.C. § 103 as unpatentable over
McGovern, Babkin, and Harris;6 and
IV. Claims 2 and 8 under 35 U.S.C. § 103 as unpatentable over
Schultheis, Babkin, and Harris.

2 Based on our review, it appears that the Examiner intends to reject
independent claim 7.
3 McGovern et al., US 6,447,505 B2, issued Sept. 10, 2002.
4 Babkin et al., WO 2017 /048965 A1, published March 23, 2017.
5 Schultheis, US 2017 /0042613 A1, published Feb. 16, 2017.
6 Harris et al., US 7,699,829 B2, issued Apr. 20, 2010.
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ANALYSIS
Rejection I—Obviousness rejection of claims 1, 3, 6, 7, and 9 based
on McGovern and Babkin
As set forth above, independent claim 1 recites, in relevant part,
1. An electrophysiology catheter comprising:
. . .
an electrode sleeve mounted on . . . [an elongated body’s]
distal section, the electrode sleeve comprising:
a band extending circumferentially around the
distal section, the band constructed of an electrically-
nonconductive material;
a plurality of discrete electrodes affixed to the
band, each occupying a different radial position around
the band.
Appeal Br., Claims App. (emphasis added). According to the Examiner,
“[t]he basic catheter is disclosed by McGovern . . . as shown in Figures 1
and 2. As disclosed in [McGovern’s] Figure 6, [and] as detailed at
column 15, line 40 [et sequitur] . . . , two electrodes can be radially displaced
about the catheter. . . . [However, McGovern] fails to show a band for
positioning the electrodes on the catheter.” Final Action 2.
Nonetheless, the Examiner relies on Babkin to remedy the deficiency
in McGovern. Specifically, according to the Examiner, “Babkin . . .
discloses a catheter structure which includes electrodes 42 . . . attached to
the catheter by nonconductive epoxy bands 44.” Id. at 3. “Given this
teaching, it would have been an obvious design expedient to the skilled
artisan to employ a nonconductive band to attach the electrodes of
McGovern . . . to the catheter[,] since a predictable result would ensue.” Id.
In the Appeal Brief, Appellant argues that the Examiner errs because
“the [Examiner’s] . . . ‘predictable result’ justification does not constitute the
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requisite articulated reasoning with rational underpinning concerning a
motivation to combine McGovern and Babkin,” as “the [Examiner] . . . has
apparently alleged that one of ordinary skill in the art could have made the
claimed invention, but has not established that one of ordinary skill in the art
would have been motivated to make the claimed invention.” Appeal
Br. 8–9. Based on our review, the Examiner does not explain why one of
ordinary skill would modify McGovern based on Babkin. We agree with
Appellant that the Examiner “did not explain why ‘a predictable result
would ensue’ or how any such predictable result might inform one of
ordinary skill in the art of an ‘obvious design expedient.’” Id. at 11.
In reply to Appellant’s argument in the Appeal Brief, the Examiner
states that
[t]he modification of . . . [McGovern] is merely a
common sense arrangement of attaching electrodes to a catheter
body with the use of a well-known design feature for such
attachment, the attachment of electrodes to catheters with
nonconductive bands. Therefore, the modification of . . .
[McGovern] by the addition of such a band would clearly have
been an obvious design feature to a skilled artisan to effect
electrode attachment. Regardless of any direct suggestion to
effect the combination, the predictability of the claimed
combination should be determinative in the establishing of
patentability. Well known features in the art which are
combined, absent some unexpected result of such combination
which is[]n[o]t the case here, should not be the basis upon
which patentability is established.
Answer 5–6. Again, however, the Examiner does not explain adequately
why one of ordinary skill would modify McGovern based on Babkin. To the
extent the Examiner determines that one of ordinary skill in the art would
make the modification as a matter of design choice, “[m]erely stating that a
particular placement of an element is a design choice does not make it
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Application 15/246,434

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obvious.” Cutsforth, Inc. v. MotivePower, Inc., 636 F. App’x. 575, 578
(Fed. Cir. 2016). The Examiner must explain why a person of ordinary skill
in the art “would have selected these components for combination in the
manner claimed.” In re Kotzab, 217 F.3d 1365, 1371 (Fed. Cir. 2000).
Accordingly, we do not sustain the Examiner’s obviousness rejection
of independent claim 1, and of claims 3 and 6 that depend from, and the
Examiner rejects with, claim 1. Further, we do not sustain the Examiner’s
obviousness rejection of independent claim 7 and its dependent claim 9,
which the Examiner rejects with claim 1.
Rejection II—Obviousness rejection of claims 1, 3–7, and 9–11 based
on Schultheis and Babkin
The Examiner relies on Schultheis to disclose much of the claimed
catheter, and on Babkin to remedy the deficiency in Schultheis’s disclosure.
Specifically, the Examiner determines that
[t]he basic catheter is disclosed by Schultheis . . . as
shown in Figure[] 1. As disclosed in Figure 5, [and] as detailed
at paragraphs [0252]–[0254], two or more electrodes can be
radially displaced about the catheter. . . . [Schultheis] fails to
show a band for positioning the electrodes on the catheter.
. . . Babkin . . . discloses a catheter structure which
includes electrodes 42 which are attached to the catheter by
nonconductive epoxy bands 44. Given this teaching, it would
have been an obvious design expedient to the skilled artisan to
employ a nonconductive band to attach the electrodes of
Schultheis . . . to the catheter[,] since a predictable result would
ensue.
Final Action 3. Based on our review, however, in neither the Final Office
Action nor the Answer does the Examiner explain why one of ordinary skill
would modify Schultheis based on Babkin. Specifically, for the reasons
discussed above with respect to the rejection over McGovern and Babkin,
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the Examiner does not explain “why a predictable result would ensue, . . .
how any such predictable result might inform one of ordinary skill in the art
of an obvious design expedient,” or why one would have “selected these
components for combination in the manner claimed.’” Appeal Br. 11,
Kotzab, 217 F.3d at 1371.
Accordingly, we do not sustain the Examiner’s obviousness rejection
of independent claims 1 and 7, and of claims 3–6 and 9–11 that depend
from, and the Examiner rejects with, the independent claims.
Rejection III—Obviousness rejection of claims 2 and 8 based on
McGovern, Babkin, and Harris
Claims 2 and 8 depend from independent claims 1 and 7. The
Examiner does not rely on Harris to disclose anything that would remedy the
above deficiency in Rejection I. Thus, we do not sustain this rejection of
claims 2 and 8.
Rejection IV—Obviousness rejection of claims 2 and 8 based on
Schultheis, Babkin, and Harris
As we state above, claims 2 and 8 depend from independent claims 1
and 7. The Examiner does not rely on Harris to disclose anything that would
remedy the above deficiency in Rejection II. Thus, we do not sustain this
rejection of claims 2 and 8.

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CONCLUSION
We REVERSE the Examiner’s obviousness rejections of claims 1–11.
In summary:
REVERSED

Claims
Rejected
35 U.S.C. § Basis/Reference(s) Affirmed Reversed
1, 3, 6, 7, 9 103 McGovern, Babkin 1, 3, 6, 7, 9
1, 3–7, 9–11 103 Schultheis, Babkin 1, 3–7, 9–11
2, 8 103 McGovern, Babkin,
Harris
2, 8
2, 8 103 Schultheis, Babkin,
Harris
2, 8
Overall
Outcome
1–11