Ex Parte Cao et alDownload PDFPatent Trial and Appeal BoardAug 9, 201812893707 (P.T.A.B. Aug. 9, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/893,707 09/29/2010 55962 7590 Wiley Rein LLP Patent Administration 1776 K Street, NW Washington, DC 20006 08/13/2018 FIRST NAMED INVENTOR Hong Cao 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 ATTORNEY DOCKET NO. CONFIRMATION NO. OB-053903US 4621 EXAMINER GOOD, SAMANTHA M ART UNIT PAPER NUMBER 3739 NOTIFICATION DATE DELIVERY MODE 08/13/2018 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): ptodocket@wileyrein.com ASJM_Patents@abbott.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HONG CAO, RIKI THAO, and SA URA VP AUL Appeal2017-008047 1 Application 12/893,707 Technology Center 3700 Before ERIC B. GRIMES, FRANCISCO C. PRATS, and JOHN G. NEW, Administrative Patent Judges. PRATS, Administrative Patent Judge. DECISION ON APPEAL This appeal under 35 U.S.C. § 134(a) involves claims to a catheter system that has an ablation electrode and capacitance sensors for sensing forces applied to the catheter. The Examiner rejected the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b )(1 ). We affirm. 1 Appellants state that the real party in interest is St. Jude Medical, Atrial Fibrillation Division, Inc. Br. 2. Appeal2017-008047 Application 12/893,707 STATEMENT OF THE CASE The sole rejection before us for review is the Examiner's rejection of claims 31-38, under 35 U.S.C. § I03(a) for obviousness over Jain2 and Ein-Gal. 3 Final Act. 2-3. Claim 31 is representative and reads as follows: 31. A catheter system for measuring magnitude and direction of force, said catheter system comprising: a catheter body comprising a proximal portion and a distal portion, wherein the distal portion of the catheter body comprises: at least three capacitance sensors, wherein the sensors are configured to detect forces applied axially and laterally; and at least one electrode located distal to the at least three capacitance sensors, wherein the at least one electrode is operably coupled to the at least three capacitance sensors such [that] lateral or axially forces applied to the electrode are capable of altering the capacitance of the sensors; and an analysis device configured to receive an output signal affected by the at least three capacitance sensors, such that the output signal is indicative of a magnitude and direction of the axial and lateral forces applied to the electrode. Br. 12. DISCUSSION The Examiner's Prima Facie Case The Examiner found that Jain described a device having essentially all of the features recited in representative claim 31, but conceded that Jain's device differs from the device recited in claim 31 in that Jain's device has 2 US 2002/0123749 Al (published Sep. 5, 2002). 3 US 2002/0147446 Al (published Oct. 10, 2002). 2 Appeal2017-008047 Application 12/893,707 pressure sensors, rather than the capacitance sensors recited in the claim. Final Act. 2-3. As evidence that, despite that difference, an ordinary artisan would nonetheless have considered claim 31 's device obvious, the Examiner cited Ein-Gal as teaching "an analogous catheter system comprising a catheter body with a capacitance sensor (paragraph 0070)." Id. at 3. Based on the references' combined teachings, the Examiner reasoned that an ordinary artisan would have considered it obvious to modify the sensors of Jain's device "to be capacitance sensors, as taught by Ein-Gal, in order to sense the electrical capacitance between the electrode and the tissue being ablated (paragraph 0070) ... because it is a simple substitution of one known element for another to obtain predictable results." Id. Analysis As stated in In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992): [T]he examiner bears the initial burden ... of presenting a prima facie case of unpatentability .... After evidence or argument is submitted by the applicant in response, patentability is determined on the totality of the record, by a preponderance of evidence with due consideration to persuasiveness of argument. In the present appeal, having carefully considered the arguments and evidence advanced by Appellants and the Examiner, Appellants do not persuade us that the preponderance of the evidence fails to support the Examiner's conclusion of obviousness as to claim 31. In particular, Appellants do not persuade us that an ordinary artisan "would not have been motivated to modify Jain to incorporate the capacitance sensors of Ein-Gal absent the use of improper hindsight analysis in light of Applicants' own disclosure." Br. 10. 3 Appeal2017-008047 Application 12/893,707 As the Examiner found, and Appellants do not dispute, Jain discloses a catheter that includes at least three pressure sensors 60 and at least one electrode 50 located distal to the sensors, in an arrangement encompassed by Appellants' claim 31. See Jain ,r 51; see also id. at Fig. 3. Jain explains that the pressure data supplied by the sensors is used to ensure sufficient contact between a target tissue and the electrode, thereby ensuring that the electrode delivers the correct amount of ablating energy to the target tissue: Using the pressure data 18 the processor/controller 34 determines if there is adequate contact between the electrode system and the biological site 12. If there is adequate contact the processor/controller 34 proceeds with ablation therapy by controlling the power generator 30 to output power. Based on the monitored power 32, the temperature data 22 and the flow- rate data 20 the processor/ controller 34 adjusts the operation of the power generator 30. Id. ,r 46; see also id. ,r 58 ("[I]n the case of multiple pressure sensors 60, the processor/controller 34 may control the application of energy based on the lowest of all pressures measured or possibly the average pressure."). Ein-Gal discloses that, similar to Jain's pressure sensors, capacitance sensors may be deployed at the distal end of a tissue-ablating electrode to ensure that the electrode delivers the correct amount of ablating energy to the target tissue: [S]ensor 72 may be a capacitance or resistance sensor, which may sense the electrical capacitance or resistance between the electrode and the tissue being ablated. Controller 34 may control RF [ radio frequency] energy levels or movement of the electrode in accordance with the sensed electrical parameters so as to avoid over-ablation or tissue adherence. Ein-Gal ,r 70; see also id. at Fig. 5. 4 Appeal2017-008047 Application 12/893,707 Because the capacitance sensors of Ein-Gal serve the same function as the pressure sensors of Jain----ensuring that a tissue-ablating electrode delivers the correct amount of ablating energy to the target tissue-we agree with the Examiner that an ordinary artisan would have considered Ein-Gal's capacitance sensors to be functional equivalents of Jain's pressure sensors. Given this recognized functional equivalence, we are not persuaded that the Examiner erred in finding that an ordinary artisan would have had a good reason to substitute Ein-Gal's capacitance sensors for the pressure sensors used on Jain's device. Moreover, because this substitution is based on the teachings in the prior art cited by the Examiner, Appellants do not persuade us that the Examiner's rejection is based on improper hindsight. As to Appellants' contention that the "capacitance sensors of Ein-Gal are used to measure different data and provide different information than the pressure sensors disclosed in Jain" (Br. 10), we note the disclosure in Appellants' Specification that capacitance sensors, precisely the type of sensor expressly described in Ein-Gal, are responsive to pressure: A capacitance sensor monitors capacitance which will vary in response to a stimuli such as touch. A force on a capacitance sensor typically reduces the sen[ s ]or's ability to store energy, resulting in a measurable change. With a capacitance sensor, the sensor surface is the electrified plate and when pressure is applied, the resulting change in capacitance can be measured and quantified. Spec. ,r 50. Because Appellants' Specification expressly discloses that capacitance sensors respond to the forces exerted against them, i.e., to pressure, we discern no error in the Examiner's finding that Ein-Gal's capacitance sensors, when deployed in Jain's device, would respond to the 5 Appeal2017-008047 Application 12/893,707 magnitude and direction of the forces applied to the electrode, and generate a signal indicative of the magnitude and direction of the force. In sum, for the reasons discussed, Appellants do not persuade us that the preponderance of the evidence fails to support the Examiner's conclusion of obviousness as to the device of Appellants' claim 31. We, therefore, affirm the Examiner's rejection of claim 31 over Jain and Ein-Gal. Claims 32-38 fall with claim 31. See Br. 8 ("For purposes of this appeal, the claims stand or fall together with respect to each ground of rejection."). SUMMARY We affirm the Examiner's rejection of claims 31-38, under 35 U.S.C. § 103(a) for obviousness over Jain and Ein-Gal. TIME PERIOD No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED 6 Copy with citationCopy as parenthetical citation