Ex Parte Avitall et al

Board of Patent Appeals and Interferences

Jun 21, 2012

10983072 (B.P.A.I. Jun. 21, 2012)

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.
10/983,072 11/04/2004 Boaz Avitall 04-297-(US01) 9878
23410 7590 06/22/2012
Vista IP Law Group LLP
2040 MAIN STREET, Suite 710
IRVINE, CA 92614
EXAMINER
PEFFLEY, MICHAEL F
ART UNIT PAPER NUMBER
3739
MAIL DATE DELIVERY MODE
06/22/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte BOAZ AVITALL and JOE KOBLISH
__________

Appeal 2011-001928
Application 10/983,072
Technology Center 3700
__________

Before DEMETRA J. MILLS, STEPHEN WALSH, and
ERICA A. FRANKLIN, Administrative Patent Judges.

MILLS, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134. The Examiner has rejected
the claims as anticipated and obvious. We have jurisdiction under 35 U.S.C.
§ 6(b).
Appeal 2011-001928
Application 10/983,072

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STATEMENT OF CASE
1. A catheter, comprising:
an elongated flexible integrated catheter body including:
a proximal shaft portion having a longitudinal axis,
a distal shaft portion having a proximal section configured to be
internally actuated to form a simple curve that bends more than 70 degrees,
an intermediate section pre-shaped to form a complex curve, and a distal
section, wherein the simple curve lies in a single plane, and the complex
curve can be projected onto the single plane and another plane orthogonal to
the single plane, the complex curve, when projected onto the single plane,
bending in a direction opposite to the direction that the simple curve bends;
and at least one operative element carried by the distal section.

26. A catheter, comprising:
an elongated flexible integrated catheter body including:
a proximal shaft portion having a longitudinal axis,
a distal shaft portion having a proximal section configured to be
internally actuated to form a simple curve with an apex that can be inserted
into an ostium of an anatomical vessel, an intermediate section pre-shaped to
form a curve that bends opposite the simple curve, and a distal section
configured to be placed into a non-radial relationship with the vessel ostium
merely by the insertion of the apex of the simple curve into the vessel
ostium; and at least one operative element carried by the distal section, and
configured to be placed firmly in contact with tissue adjacent the vessel
ostium when the apex of the simple curve is inserted into the vessel ostium.

31. The catheter of claim 26, wherein the proximal section is pre-
shaped to form the simple curve in the absence of an external force.

Cited References

Kuck et al. US 5,823,955 Oct. 20, 1998
Falwell et al. US 2006/0241366 A1 Oct. 26, 2006,
filed Oct. 31, 2003
Grounds of Rejection
Claims 26-30, 32-37 and 39 are rejected under 35 U.S.C. § 102(b) as
being anticipated by Kuck et al.
Appeal 2011-001928
Application 10/983,072

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Claims 31 and 38 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kuck et al.
Claims 1-25 and 59 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kuck et al in view of the teaching of Falwell et al.

FINDINGS OF FACT
The Examiner’s findings of fact are set forth in the Answer at pages 3-
6. The following facts are highlighted.
1. Figure 8 of the Specification is reproduced below.

Figure 8 shows the distal projected curve C3 serves to place the distal
section 44 into a non-radial relationship (i.e., oblique or tangential) with the
vessel ostium. (Spec. 6 and 17.)
2. Figure 2 of Kuck is reproduced below.
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Application 10/983,072

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Figure 2 of Kuck shows “distal segment 66 aligned with annulus 92 so that
ablation-capable electrodes 46, 70 lie generally on either side of annulus
92.” (Col. 5, ll. 44-46.)
3. The Examiner finds that Figure 2 of Kuck shows a non-radial
relationship. “The simple curve is inserted into the ostium (90),
and the distal section (70) clearly extends out of the ostium in a
non-radial relationship.” (Ans. 6-7.)
4. Figure 2 of Falwell is reproduced below.

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Figure 2 of Falwell shows “[a]ttached to a distal end 112 of the shaft 110 is a
distal end tip assembly 140 having a proximal end 142 that is attached to the
distal end 112 of the shaft 110, and a distal end 144 having one or more
electrodes 146.” (Page 6, ¶ [0106].)

Discussion
Claims 26-30, 32-37 and 39 are rejected under 35 U.S.C. § 102(b) as
being anticipated by Kuck et al.
Claims 31 and 38 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kuck et al.

ISSUE
The Examiner concludes that Kuck teaches each element of claim 26.
Appellants argue that Kuck does not teach “an intermediate section
pre-shaped to form a curve that bends opposite the simple curve, and a distal
section configured to be placed into a non-radial relationship with the vessel
ostium,” as claimed.
The issue is: Does the cited prior art teach “an intermediate section
pre-shaped to form a curve that bends opposite the simple curve, and a distal
section configured to be placed into a non-radial relationship with the vessel
ostium,” as claimed?

PRINCIPLES OF LAW
In order for a prior art reference to serve as an anticipatory reference,
it must disclose every limitation of the claimed invention, either explicitly or
inherently. See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). To
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Application 10/983,072

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anticipate, every element and limitation of the claimed invention must be
found in a single prior art reference, arranged as in the claim. Karsten Mfg.
Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001).
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness. Only if that
burden is met, does the burden of coming forward with evidence or
argument shift to the applicant.” In re Rijckaert, 9 F.3d 1531, 1532 (Fed.
Cir. 1993) (citations omitted). In order to determine whether a prima facie
case of obviousness has been established, we consider the factors set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966): (1) the scope and content
of the prior art; (2) the differences between the prior art and the claims at
issue; (3) the level of ordinary skill in the relevant art; and (4) objective
evidence of nonobviousness, if present.
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
Moreover, “obviousness requires a suggestion of all limitations in a
claim.” CFMT, Inc. v. Yieldup Intern. Corp., 349 F.3d 1333, 1342 (Fed. Cir.
2003) (citing In re Royka, 490 F.2d 981, 985 (CCPA 1974)).

ANALYSIS
Appellants argue that Kuck does not teach “an intermediate section
pre-shaped to form a curve that bends opposite the simple curve, and a distal
section configured to be placed into a non-radial relationship with the vessel
ostium,” as claimed. We are persuaded by Appellants’ argument.
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Appellants define the term “non-radial” in the Specification to mean oblique
(for example, the non-radial relationship is an oblique relationship that falls
within the range of -30° and 30° from the tangent (claim 35)) or tangential
with the vessel ostium. (FF1.)
We do not agree with the Examiner that Figure 2 of Kuck shows a
distal section configured to be placed into a non-radial relationship (oblique
or tangential) with the vessel ostium, for example, as disclosed in Figure 8 of
the Specification. Figure 2 of Kuck shows electrode orientation 70 as a
projection in a radial direction, i.e., having a radial relationship with the
vessel ostium. Thus, Fig. 2 of Kuck does not evidence a non-radial
relationship, as claimed.
The obviousness rejection over Kuck fails for the same reason as the
anticipation rejection. Both rejections are reversed.

Claims 1-25 and 59 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kuck et al in view of the teaching of Falwell et al.

ISSUE
The Examiner argues that Kuck teaches each element claimed except
“an intermediate section forming a complex curve which can be projected
onto a plane orthogonal to the plane of the simple curve.” (Ans. 5-6.) The
Examiner relies on Falwell, Fig. 2, to make up for this deficiency of Kuck.
Appellants argue that
to the extent that Falwell suggests incorporating a complex
curve into the distal end of the Kuck catheter, such suggestion
would entail replacing the segment 66 of the Kuck catheter with
the curved distal end 144 of the Falwell catheter, and that such
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a combination would not result in the claim invention, which
requires that the complex curve bend in a direction opposite to
the simple curve—a feature not found in the curved distal end
144 of the Falwell catheter.

(App. Br. 10.)

Appellants further argue that

Fig. 2 [of Falwell] shows the curve 140 (the curve that the
Examiner characterizes as the claimed simple curve) in a plane
of the drawing sheet. As shown in Fig. 2, only the curves 142
and 146 are projected onto the plane of the drawing sheet. As
can be clearly seen, the curves 142 and 146 bend in the same
direction—not in the opposite direction, as required by claim 1.
Although the Examiner concluded that the bend 148 curves
opposite to the curve 142, Appellant does not see how this can
be, since the bend 148 does not form a curve when projected
onto the plane of the drawing sheet, as clearly shown in Fig. 2.

(Id. at 11.)
We are persuaded by Appellants’ arguments, and do not find that the
Examiner has adequately addressed them. (See Answer, page 9.)
The obviousness rejection of claim 1 and its dependent claims is
reversed.

CONCLUSION OF LAW
The cited references do not support the Examiner’s anticipation and
obviousness rejections. The rejections are reversed.

REVERSED
cdc