Brian M. Conley et al.

Patent Trials and Appeals Board

Aug 19, 2019

12965495 - (D) (P.T.A.B. Aug. 19, 2019)

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.
12/965,495 12/10/2010 Brian M. Conley C00002713.USU1 6929
89554 7590 08/19/2019
Christopher & Weisberg, P.A.
1232 N. University Drive
Plantation, FL 33322
EXAMINER
GOOD, SAMANTHA M
ART UNIT PAPER NUMBER
3794
NOTIFICATION DATE DELIVERY MODE
08/19/2019 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):
cwdocketing@cardinal-ip.com
ptomail@cwiplaw.com
rs.patents.five@medtronic.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte BRIAN M. CONLEY, CHAD M. GREENLAW,
JOHN W. BERRY, and JOSEPH F. ARMY
____________________

Appeal 2018-0004151
Application 12/965,495
Technology Center 3700
____________________

Before EDWARD A. BROWN, JILL D. HILL, and LEE L. STEPINA,
Administrative Patent Judges.

HILL, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Brian M. Conley et al. (“Appellants”)2 appeals under 35 U.S.C.
§ 134(a) from the Examiner’s final decision rejecting claims 1, 3–5, 10–13,
and 17. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 An oral hearing was conducted on July 31, 2019.
2 Appellants’ identify Medtronic Advanced Energy LLC, as the real party in
interest. Appeal Br. 1.
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BACKGROUND
Independent claims 1 and 15 are pending. Independent claim 1,
reproduced below, illustrates the claimed invention, with certain disputed
limitations emphasized:
1. A bipolar electrosurgical device comprising:
a shaft having a proximal end and a distal end;
an electrode tip coupled to the distal end of the shaft,
wherein at least a portion of the electrode tip extends distally
beyond the distal end of the shaft and includes a substantially
conically-shaped portion,
a necked portion disposed between the proximal end of
electrode tip and the distal end of the shaft, the necked portion
defining a thickness less than the thickness of the proximal end
of the electrode tip and less than the thickness of the distal end
of the shaft;
the substantially conically-shaped portion of the
electrode tip includes at least a portion of a first electrode, a
second electrode, and an insulator disposed between the first
electrode and the second electrode, the first electrode, the
second electrode, and the insulator each defining respective
outer edges, and at least one of the outer edge of the first
electrode and the second electrode being substantially planar
with the outer edge of the insulator;
the first electrode is configured to be an active electrode
and the second electrode is configured to be a return electrode;
and
the distal end of the shaft defining a fluid outlet opening
proximal to an exposed portion of the necked portion, the fluid
outlet opening being configured to be in fluid communication
with a fluid source, the fluid outlet opening being configured to
provide fluid from the fluid source onto an area proximate the
first electrode and the second electrode.

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REJECTIONS
I. Claims 3 and 4 stand rejected under 35 U.S.C. § 112, second
paragraph, as indefinite. Final Act. 2.
II. Claims 1, 3–5, 10, 11, 13, and 17 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Ciarrocca (US 2003/0073993 A1,
pub. Apr. 17, 2003) and Cosmescu (US 2001/0018586 A1, pub. Aug. 30,
2001). Final Act. 3.
III. Claim 12 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Ciarrocca, Cosmescu, and Taimisto (US 2005/0070887
A1, pub. Mar. 31, 2005). Final Act. 6.
ANALYSIS
Rejection I
The Examiner finds that claims 3 and 4 are vague and indefinite
because they are dependent on claim 2, which has been cancelled. Final
Act. 2. Appellants do not refute the rejection, which we summarily sustain.
Rejection II
The Examiner finds that Ciarrocca discloses a bipolar electrosurgical
device comprising, inter alia, “an electrode tip (100/102) coupled to the
distal end of the shaft (18), wherein at least a portion of the electrode tip
extends distally beyond the distal end of the shaft.” Final Act. 3. The
Examiner also finds that Ciarrocca incorporates U.S. Patent No. 5,697,281
by reference, and discloses “that a fluid outlet opening (54) is configured to
provide fluid from the fluid source onto an area proximate the first electrode
and the second electrode (plurality of electrodes 58) (Figure 2A of U.S.
Patent No. 5,697,281).” Id. at 3–4 (emphasis added), 6. The Examiner
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further finds that Ciarrocca discloses a necked portion between “the
proximal end of the electrode tip and the distal end of the shaft,” but that the
thickness of Ciarrocca’s necked portion is not “less than the proximal end of
the electrode tip.” Id. at 4. The Examiner finds, however, that Cosmescu
discloses a “bipolar electrosurgical device comprising a shaft (44/84), an
electrode tip . . . and a necked portion . . . disposed between the proximal
end of the electrode tip and the distal end of the shaft,” and “the necked
portion defining a thickness less than the thickness of the proximal end of
the electrode tip and less than the thickness of the distal end of the shaft.”
Id. (citing Cosmescu ¶ 44, Figs. 2f, 3). The Examiner concludes that it
would have been obvious to a skilled artisan to modify Ciarrocca’s necked
portion to have “a thickness less than the proximal end of the electrode tip,
as taught by Cosmescu, because this is a simple substitution of one known
element for another to obtain predictable results” such as allowing “easier
attachment to the shaft.” Id. The Examiner continues that “Cosmescu
specifically teaches that it is obvious to use a variety of bipolar electrode
tips” (shown in Figs. 2a–2f) in a bipolar electrosurgical device.” Id.
Appellants argue that the Examiner’s finding, that Ciarrocca (via the
’281 Patent) discloses a fluid outlet 54 proximate the electrodes 58, does not
meet claim 1’s recitation of “‘a fluid outlet opening proximal to an exposed
portion of the necked portion.’” Appeal Br. 3–6 (emphasis by Appellants).
According to Appellants, the neck portion is claimed to be between a
proximal end of the electrode tip and the distal end of the shaft, such that
“the claimed fluid outlet is [located] proximal the electrode tip.” Id.
Appellants argue that that the proposed combination of Ciarrocca and
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Cosmescu fail to teach or suggest a fluid outlet proximal the electrode tip.
Id.
In arguing that proximate positioning of the fluid outlet differs from
proximal positioning, Appellants’ argument is premised on the word
proximal being construed to mean “next to or nearest the point of attachment
or origin,” such that the proximal end is opposite the distal end, and not just
“situated close to,” which is another accepted meaning of the term proximal.
See MERRIAM-WEBSTER, https://www.merriam-webster.com/dictionary
/proximal (last visited August 1, 2019).
Appellants’ Specification and Ciarrocca consistently use the term
“proximal” in accordance with Appellants’ proposed construction of
“proximal” being “next to or nearest the point of attachment or origin,” such
that the proximal end is opposite the distal end.” See Ciarrocca ¶¶ 7, 10, 15,
25, 27. Thus, we agree with Appellants, for the purposes of this appeal, that
the proper construction of the term “proximal” should be so limited.
The Examiner maintains that Ciarrocca discloses a necked portion and
“a fluid output opening proximal to an exposed portion of the necked
portion.” Ans. 3 (citing Ciarrocca, Figs. 4a–4d, ¶ 28). According to the
Examiner, Ciarrocca discloses an embodiment in which the fluid tube 233
extends along the outer surface of the shaft 18, and therefore, terminates at
the distal end of shaft 18, proximal to an exposed portion of the necked
portion. Id.
Appellants reply that claim 1 requires a configuration of the device,
extending proximally-to-distally, of (1) the shaft, (2) the fluid outlet, (3) the
exposed necked portion, and (4) the electrode tip. Reply Br. 2–3.
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Appellants refer to their Figure 2 as illustrating this configuration, which we
provide below, annotated, to further clarify Appellants’ position.

Regarding the location of Ciarrocca’s fluid outlet, Ciarrocca discloses
that:
Fluid tube 233 may be coupled to a distal fluid tube that
extends through shaft 18 to an opening at the distal end of the
probe. In alternate embodiments, the fluid tube may extend
along the outer surface of the shaft, may be coupled to a
plurality of lumina that extend through the shaft to a plurality of
openings at the distal end . . . of the shaft.
Ciarrocca ¶ 28 (emphasis added). Ciarrocca discloses that the distal end of
the probe is the distal end of the electrode shown in Figures 4a–4e. See id.
¶ 30, Fig. 4a (“The distal end of the probe . . . has a length 1 and a varying
width w.”).
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Therefore, the disclosure of Ciarrocca includes two possible locations
for the fluid outlet. The first is at a distal end of the probe, which would not
be proximal to an exposed portion of the electrode neck. The second
location is at the distal end of the shaft, which would indeed be proximal to
an exposed portion of the electrode neck. Below, we provide an annotated
version of Ciarrocca’s Figure 2, with its electrode replaced by Cosmescu’s
Figure 4f electrode tip, as proposed by the Examiner, to further clarify our
analysis.

As can be seen from the above annotated figure, if Ciarrocca’s fluid
tube extends to a distal end of the shaft, the fluid tube opening will indeed be
proximal to an exposed portion of the necked portion of the electrode. For
this reason, we are not persuaded by Appellants’ arguments regarding the
fluid opening location.
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Appellants also argue that claim 1 recites providing “‘fluid from the
fluid source onto an area proximate the first electrode and the second
electrode’” and, due to the position of the ’281 Patent’s fluid outlet 54
relative to the return electrode, “fluid egressing the fluid outlet would not
contact the return electrode during use, since gravity would cause the fluid to
egress toward the active electrode, but away from the return electrode.”
Appeal Br. 6.
This argument is not persuasive, because it does not address the
Examiner’s proposed combination that replaces Ciarrocca’s electrode with
Cosmescu’s electrode.
For the above reasons, we sustain Rejection II.
Rejection III
Appellants make no argument that claim 12 would be patentable over
Ciarrocca, Cosmescu, and Taimisto, if claim 1 is not patentable over
Ciarrocca and Cosmescu. For the reasons set forth above regarding
Rejection II, we sustain Rejection III.

DECISION
We AFFIRM the rejection of claims 3 and 4 as indefinite.
We AFFIRM the rejection of claims 1, 3–5, 10, 11, 13, and 17 as
unpatentable over Ciarrocca and Cosmescu.
We AFFIRM the rejection of claim 12 as unpatentable over Ciarrocca,
Cosmescu, and Taimisto.

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See
37 C.F.R. § 41.50(f).

AFFIRMED