Ex Parte Corvi et al

Patent Trial and Appeal Board

Feb 15, 2018

13281761 (P.T.A.B. Feb. 15, 2018)

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.
13/281,761 10/26/2011 Timothy J. CORVI 21819B-339U-P0039580.USU1 8761
89554 7590 02/20/2018
Christopher & Weisberg, P.A.
1232 N. University Drive
Plantation, EL 33322
EXAMINER
FLORY, CHRISTOPHER A
ART UNIT PAPER NUMBER
3762
NOTIFICATION DATE DELIVERY MODE
02/20/2018 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):
ptomail @ c wiplaw. com
medtronic_crdm_docketing @ c ardinal-ip .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TIMOTHY J. CORVI and RICARDO D. ROMAN
Appeal 2017-003082
Application 13/281,7611
Technology Center 3700
Before RICHARD M. LEBOVITZ, JOHN G. NEW, and
DEVON ZASTROW NEWMAN, Administrative Patent Judges.
LEBOVITZ, Administrative Patent Judge.
DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims directed to a
catheter having a plurality of electrodes. The Examiner rejected the claims
as unpatentable under 35 U.S.C. § 102. We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.
1 The Appeal Brief (“Appeal Br.”) 3 lists Medtronic Ablation Frontiers LLC
as the real party in interest.
Appeal 2017-003082
Application 13/281,761
STATEMENT OF THE CASE
Claims 1 and 3—11 stand rejected by the Examiner as follows:
1. Claims 1 and 3—11 under pre-AIA 35 U.S.C. § 102(b) as
anticipated by Swanson et al. (U.S. Pat. No. 6,142,994, issued Nov. 7, 2000)
(“Swanson”).
2. Claims 1 and 3—11 under pre-AIA 35 U.S.C. § 102(b) as
anticipated by Taimisto et al. (U.S. Pat. Application Pub. No. 2009/0018534
Al, pub. Jan. 15, 2009) (“Taimisto”).
Claim 1, the only independent claim on appeal, is reproduced below
(indentations added for clarity) (emphasis added to highlight the disputed
limitations):
1. A medical device, comprising:
a handle assembly;
an elongate catheter body coupled to the handle assembly
and having a proximal portion, a distal portion, and a
longitudinal axis, the elongate catheter body defining a guide
wire lumen therethrough; and
a distal assembly defined by the distal portion of the
elongate catheter body, the distal assembly having a plurality of
electrodes and being transitionable between a substantially
linear configuration and an expanded configuration,
the distal assembly being wound in a substantially
semi-circular configuration around the longitudinal axis
of the elongate catheter body when the electrode array is
in the expanded configuration,
all of the plurality of electrodes in the expanded
configuration being coplanar in a plane that is
substantially orthogonal to the longitudinal axis of the
elongate catheter body.
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Application 13/281,761
CLAIM INTERPRETATION
The claimed catheter comprises a “distal assembly having a plurality
of electrodes and being transitionable between a substantially linear
configuration and an expanded configuration.” The claim requires that “all
of the plurality of electrodes in the expanded configuration being coplanar in
a plane that is substantially orthogonal to the longitudinal axis of the
elongate catheter body.” The Examiner found that the claimed “plurality of
electrodes” is not a “reference to all electrodes present” in the claimed
catheter device. Final Act. 3. The Examiner stated:
the recitation of “all of the plurality of electrodes” does not
equate to or necessitate each and every electrode included in the
invention to be “in the expanded configuration being coplanar
in a plane that is substantially orthogonal to the longitudinal
axis of the elongate catheter body.” All that is required by the
limitation is that those electrodes being considered to read on
the claimed plurality of electrodes be so coplanar in the
expanded configuration in order for anticipation to exist. It is
within the metes and bounds of BRI [(broadest reasonable
interpretation of the claim)] for any two or more electrodes to
be regarded as the claimed “plurality” and so long as those
electrodes relied upon meet the limitation, then the art reads on
the claim.
Ans. 4—5.
We do not agree that the Examiner’s interpretation is the broadest
reasonable interpretation of the claim.2 The claim recites the distal assembly
2 “The correct inquiry in giving a claim term its broadest reasonable
interpretation in light of the specification is not whether the specification
proscribes or precludes some broad reading of the claim term adopted by the
examiner. And it is not simply an interpretation that is not inconsistent with the
specification. It is an interpretation that corresponds with what and how the
inventor describes his invention in the specification, i.e., an interpretation that is
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Application 13/281,761
as “having a plurality of electrodes.” The Examiner interpreted “having” as
open-ended and, thus, as not excluding the addition of other components,
including other electrodes. Ans. 4. Based on this interpretation, the
Examiner concluded that additional electrodes are not excluded and that,
therefore, the subsequent reference to “all of the plurality of electrodes” does
not mean all the electrodes in the distal assembly. Id.
The Examiner’s interpretation that, in addition to the “plurality of
electrodes” in the distal assembly, there are other electrodes present is not
consistent with the plain language of the claim. The electrodes are claimed
as a “plurality,” meaning more than one in number; thus, reading the claim
to comprise electrodes in addition to the “plurality” ignores the most
reasonable interpretation of “plurality of electrodes” as an identifier of those
electrodes that are present in the distal assembly. In other words, the term
“plurality” indicates the number of electrodes in the distal assembly and,
therefore, all the electrodes present in the assembly.
The subsequent language in the claim requires “all of the plurality of
electrodes” (emphasis added) are coplanar and orthogonal to the catheter’s
longitudinal axis when in the expanded configuration. The term “the” refers
to the previously recited “a plurality of electrodes” in the distal assembly.
“All” of these electrodes in the distal assembly must be coplanar and
orthogonal. The Examiner’s interpretation that the “plurality of electrodes”
only includes some of the electrodes in the distal assembly and, therefore,
some of the electrodes in the distal assembly do not have to be coplanar and
‘consistent with the specification.’ In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
1997).” In re Smith Int’l, Inc., 871 F.3d 1375, 1382-83 (Fed. Cir. 2017).
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Application 13/281,761
orthogonal in the expanded configuration is not reasonable because the only
electrodes in the distal assembly are those comprising the “plurality” and the
claim requires all of them to have this configuration when expanded.
The meaning of the term “longitudinal axis of the elongate catheter
body” is also in dispute. The term “longitudinal axis” is not defined in the
Specification. Accordingly, we give the term its ordinary meaning to mean
running in the direction of the length of the body through its center of
gravity.3 Since the longitudinal axis is defined with respect to the body and
through its center of gravity, we interpret longitudinal axis to require that
the axis is within the catheter body.
Figures 2 and 3 of the Specification (as annotated herein, reproduced
below, are consistent with this interpretation,
3 English Oxford Living Dictionary, https://en.oxforddictionaries
.com/defmition/longitudinal_axis (last visited Feb. 10, 2018).
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Application 13/281,761
Figure 2 of the Specification shows the display assembly below and
parallel to the longitudinal axis and Figure 3 shows the assembly wrapped
around and through the longitudinal axis.
Original dependent claim 4 narrows the distal assembly (“carrier
arm”) to one “wherein at least a portion of the carrier arm is coaxial with the
guide wire lumen,” indicating that the original claims covered a coaxial
configuration, i.e., one in which the carrier arm is “being wound in a
substantially semi-circular configuration around the longitudinal axis of the
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Application 13/281,761
elongate catheter” as shown in Figure 3, and one in which the carrier arm is
not wound around the longitudinal axis, but is located below it as shown in
Figure 2.
SWANSON REJECTION
The Examiner found that Swanson describe an apparatus comprising
all the features of the claimed medical device. Final Act. 2—3. For the distal
assembly, the Examiner relied upon loop 92 comprising electrode elements
28. Id. ail. The Examiner cited Figure 24 of Swanson as showing coplanar
and orthogonal electrodes. Id. at 3. The Examiner acknowledged that not
all the electrodes had the claimed configuration, but, based on the
Examiner’s interpretation of “plurality of electrodes” to not include all the
electrodes in the distal assembly, the Examiner found that “it is reasonable to
consider the distal or top-most electrodes seen in Fig 20 as ‘the plurality’,
and once bent as seen in Fig 24 to be perpendicular.” Id. at 3.
There is no factual dispute between the Examiner and Appellants that
the apparatus described by Swanson only shows the distal most electrodes in
a substantially orthogonal configuration. Figure 24 (annotated with the
dotted arrow along the longitudinal axis) is reproduced below:
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Application 13/281,761
Figure 24 shows the distal assembly 92 with electrodes 28. The
Figure shows that not all of the electrodes 28 are bent orthogonally in the
expanded configuration, but only those in the topmost part, while the
remainder are directed along the longitudinal axis of the assembly as
indicated by the arrow. We have interpreted the claim to require all the
electrodes in the distal assembly to be coplanar and orthogonal, and clearly,
in the Swanson’s apparatus, they are not. The Examiner did not provide
additional evidence that Swanson discloses an embodiment in which all the
electrodes in the assembly would be orthogonal when in the expanded
configuration, but rather relied upon a claim interpretation (Ans. 3—5), which
we have determined is not the broadest reasonable interpretation of the
claim. Consequently, the anticipation rejection based on Swanson of
independent claim 1 and dependent claims 3—11 is reversed.
REJECTION BASED ON TAIMISTO
The Examiner found that Taimisto’s catheter assembly comprises all
the elements of the claimed medical device. Final Act. 5. Appellants
contend that the catheter disclosed in Taimisto does not have “the distal
assembly being wound in a substantially semi-circular configuration around
the longitudinal axis of the elongate catheter body when the electrode array
is in the expanded configuration” as recited in the claims. Appeal Br. 7.
The Examiner cited Figures 7—11 of Taimisto as teaching the distal
assembly. Figure 8 of Taimisto is reproduced below (annotated to indicate
the locations of the electrodes and longitudinal axis):
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Application 13/281,761
Figure 8 shows “an ablation catheter 116 comprises a flexible
elongate catheter body 124 having a distal member 126 that forms a loop­
shaped ablative structure 132.” Taimisto 1 65. The drawing has been
annotated by labeling the ablation electrodes. The loop 132 (in side view so
loop is not visible), when elongated, is substantially orthogonal and coplanar
to the longitudinal axis (the dotted arrow) of the catheter body 124. The
issue is whether the structure 132 is wrapped “around the longitudinal axis
of the elongate catheter” as required by the claims.
Appellants contend that the loop structure 132 is oriented below the
device’s longitudinal axis along an axis that is parallel to, but not, the
longitudinal axis. Appeal Br. 8. The Examiner contends that Appellants’
assertion “is a misrepresentation of the common accepted meaning and
scope of ‘around the longitudinal axis’ and that a proper BRI analysis does
not imply, suggest or require ‘around the longitudinal axis’ to mean
specifically a co-radial, coaxial or concentric configuration.” Ans. 6.
However, the Examiner did not provide evidence of the “common[ly]
accepted meaning” of longitudinal axis nor evidence that a longitudinal axis
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of the elongate catheter body would include area completely outside the
elongate body. As explained above, we interpret longitudinal axis to mean
the axis running along the length of the catheter body, and because the axis
is defined with respect to the catheter body, we also interpret the phrase to
mean the axis within the catheter body and not below the body and parallel
to it as shown in Figure 8 of Taimisto. Consequently, we are compelled to
reverse the rejection of claim 1 and dependent claims 3—11 as anticipated by
Taimisto.
DECISION
The rejections of claims 1 and 3—11 under pre-AIA 35 U.S.C. §
102(b) are reversed.
REVERSED
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