Ex Parte Cao et al

Patent Trial and Appeal Board

Aug 9, 2018

12893707 (P.T.A.B. Aug. 9, 2018)

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).
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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.
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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.
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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
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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
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