Ex Parte Ein-Gal

Patent Trial and Appeal Board

Sep 22, 2016

12972669 (P.T.A.B. Sep. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/972,669 12/20/2010
7590 09/22/2016
David Klein
DEKEL PATENT LTD.
Beit HaRofim
18 Menuha VeNahala Street, Room 27
REHOVOT,
ISRAEL
FIRST NAMED INVENTOR
Moshe Ein-Gal
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.
2049EIN-US 1369
EXAMINER
MEHTA, PARIKHA SOLANKI
ART UNIT PAPER NUMBER
OPQA
MAILDATE DELIVERY MODE
09/22/2016 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 PATENT TRIAL AND APPEAL BOARD
Ex parte MOSHE EIN-GAL
Appeal2014-006651
Application 12/972,669
Technology Center 3700
Before MICHAEL L. HOELTER, ERIC C. JESCHKE, and
PAUL J. KORNICZKY, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from the
Examiner's final rejection of claims 1-17. Br. 2. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal2014-006651
Application 12/972,669
THE CLAIMED SUBJECT MATTER
The disclosed subject matter "relates to a system and method for
treating tissue with a combination of thermal and pressure wave energy."
Spec. 1. 1 Claims 1 and 12 are independent. Claim 1 is illustrative of the
claims on appeal and is reproduced below:
1. A method comprising:
directing pressure waves at a tissue; and
heating said tissue with thermal energy pulses, said thermal
energy pulses synchronized to arrive at said tissue
simultaneously with said pressure waves within a time
tolerance range, and wherein heat of each thermal energy pulse
is dissipated in an environment that includes said tissue before a
subsequent thermal energy pulse arrives at said tissue.
REFERENCES RELIED ON BY THE EXAMINER
Tu US 5,989,248 Nov. 23, 1999
Rosenberg US 2007/0239075 Al Oct. 11, 2007
THE REJECTIONS ON APPEAL
Claims 12 and 15-17 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which the inventor regards as the
invention.
Claims 1, 3---6, 9-12, 14, and 17 are rejected under 35 U.S.C. § 102(b)
as anticipated by Tu.
1 Appellant's Specification does not provide line or paragraph numbering.
Accordingly, reference to the Specification will only be made via the page
number.
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Application 12/972,669
Claims 1---6 and 9-17 are rejected under 35 U.S.C. § 102(b) as
anticipated by Rosenberg.
Claims 7 and 8 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Tu.
Claims 7 and 8 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Rosenberg.
ANALYSIS
The rejection of claims 12 and 15-17 as being indefinite
Regarding independent claim 12, the Examiner states that, "it is
unclear what structural limitation is established by 'a controller ... such that
heat of each pulse of thermal energy is dissipated ... '." Final Act. 2. The
entire limitation in question is:
a controller for synchronizing said thermal energy pulses to
arrive at said tissue simultaneously with said pressure waves
\'l1ithin a time tolerance range, and such that heat of each pulse
of thermal energy is dissipated in an environment neighboring
said tissue before a subsequent pulse of thermal energy arrives
at said tissue.
The Examiner appears to be mis-characterizing this limitation because
the limitation explicitly recites "a controller for synchronizing said thermal
energy pulses." We find nothing "unclear" about this recitation. Claim 12
explains that the reason for synchronization is so that the thermal energy
pulses "arrive at said tissue simultaneously with said pressure waves." The
desired end result is "such that the heat of each pulse of thermal energy is
dissipated ... before a subsequent pulse of thermal energy arrives."
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Application 12/972,669
Consequently, because the Examiner does not provide a prim a facie
case as to how claim 12 is unclear, we do not sustain the indefiniteness
rejection of claim 12.
Regarding the rejection of claims 15-17, the Examiner only addresses
claims 15 and 16 (and not 17). Final Act. 2. The Examiner states, "[i]n
claims 15 and 16, 'focusing element for focusing' uses the phrase 'means
for' or 'step for"' and as such, "[i]t is unclear whether the recited structure,
material, or acts are sufficient for performing the claimed function." Final
Act. 2. Again, the Examiner seems to be mis-characterizing the recited
limitations. Now here in either claim 15 or 16 is the phrase "means for" or
"step for" employed. Instead, each of claims 15 and 16 recites "a focusing
element for focusing" either the pressure waves (claim 15) or the thermal
energy pulses (claim 16). Appellant's Specification identifies the focusing
element as either "pressure wave focusing elements 26" or as "thermal
energy focusing elements 28." Spec. 4. Focusing element 26 can be "a
focusing parabolic reflector" while focusing element 28 can be "mirrors
and/or lenses." Spec. 4.
Accordingly, we do not agree with the Examiner's characterization of
these claims as having "means for" or "steps for" limitations. Final Act. 2.
Perhaps at best, these two claims include intended use language, but the
Examiner's above characterization is incorrect. We do not sustain the
Examiner's rejection of claims 15 and 16 as being indefinite. We, likewise,
do not sustain the Examiner's rejection of claim 17 for being indefinite
because no reason regarding claim 17 was provided by the Examiner.
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Application 12/972,669
The rejection of claims 1, 3-6, 9-12, 14, and 17 as anticipated by Tu
Appellant argues claims 1, 3-6, 9-12, 14, and 17 together. Br. 6-7.
We select claim 1 for review, with claims 3-6, 9-12, 14, and 17 standing or
falling with claim 1. See 37 C.F.R. 41.37(c)(l)(iv).
Claim 1 includes the limitation of heating tissue via thermal energy
pulses such that "said thermal energy pulses [are] synchronized to arrive at
said tissue simultaneously with said pressure waves" (within a certain
tolerance). This is so that the "heat of each thermal energy pulse is
dissipated in an environment that includes said tissue before a subsequent
thermal energy pulse arrives at said tissue."
The Examiner references Tu, column 3, lines 13-30, for disclosing
this limitation.2 Final Act. 3. The Examiner finds that upon receipt of the
thermal pulse, the heat "would inherently dissipate in the tissue, at least to a
small degree, almost immediately upon exiting the transducer [in contact
therewith], which occurs before the next pulse is applied." Final Act. 3.
Appellant contends, "[t]here is no teaching in Tu of the claimed
feature" relating to the dissipation of the thermal energy pulse. Br. 7. The
Examiner, however, did not rely on Tu for this teaching, but instead on such
thermal energy being "inherently" dissipated "almost immediately upon
2 Tu states, "In particular, the device system comprising the electrode means,
using RF energy as a heat source, in this invention and simultaneously
applying pressure therapy to the tissue, results in a more efficient therapeutic
effect." Tu 3: 13-17. Elsewhere, Tu describes the invention as "comprising
simultaneously applying radiofrequency energy and applying a pressure
therapy to treat the uvula, polyps, or other cellular tissues of a patient." Tu
3:63---65. See also Tu 7:46-48 ("By simultaneously applying RF energy to
the electrode and by applying the pressure therapy, the uvula can be
treated").
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Application 12/972,669
exiting the transducer" "at least to a small degree." Final Act. 3. Appellant
traverses the Examiner's reliance on inherency stating that the claimed
dissipation occurs "before a subsequent thermal energy pulse arrives." Br.
7. However, Appellant does not dispute that Tu teaches delivering the
energy in "pulses" rather than, say, continuously. Ans. 5. As such,
Appellant does not indicate how the Examiner's finding regarding
dissipation "almost immediately upon exiting the transducer" (and into the
tissue) "to some degree" is in error. Ans. 5.
Appellant further contends the Examiner engaged in "impermissible
hindsight" because Tu "never mentions anything about waiting for the heat
to dissipate before a subsequent thermal energy pulse arrives." Br. 7.
However, Appellant does not explain how it is not inherent that heat from a
first pulse begins to dissipate "almost immediately," as stated by the
Examiner, and that this would "occur before the next pulse is applied."
Final Act. 3; see also Ans. 5.
Accordingly, we are not persuaded the Examiner erred in rejecting
claims 1, 3---6, 9-12, 14, and 17 as being anticipated by Tu. We sustain the
Examiner's rejection of these claims.
The rejection of claims 1-6 and 9-17 as anticipated by Rosenberg
Appellant argues claims 1---6 and 9-17 together. Br. 7-9. We select
claim 1 for review with claims 2---6 and 9-17 standing or falling with claim
1.
The Examiner identifies where Rosenberg teaches, "[t]he RF energy
may be applied prior to and/or at least partially simultaneously with the
ultrasound energy." Rosenberg i-f 66; see also Final Act. 3. Regarding the
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"dissipation" limitation, the Examiner again states that the "first such RF
pulse inherently dissipates in tissue as it travels starting from the moment it
exits the transducer." Final Act. 4.
Appellant models the arguments made with respect to this rejection
along the same lines as those presented supra with respect to the above
rejection under Tu. For example, Appellant contends, "[t]here is no teaching
in Rosenberg of the claimed feature" pertaining to "dissipation." Br. 8.
However, the Examiner did not rely on Rosenberg for this limitation, but
instead, the Examiner relied upon an inherency rationale. Final Act. 4.
Appellant also repeats the "before" arguments discussed above (Br. 8) but
these are not persuasive for similar reasons (see Ans. 5). Accordingly,
Appellant is not persuasive the Examiner erred in rejecting claims 1---6 and
9-17 as being anticipated by Rosenberg. We sustain the Examiner's
rejection of these claims.
The rejection of claims 7 and 8 (a) as unpatentable over Tu,
and (b) as unpatentable over Rosenberg
With respect to both rejections, Appellant contends that these
"rejections are respectfully traversed as explained" above. Br. 9. We are
not persuaded of Examiner error above and, consequently, we are not
persuaded the Examiner erred in rejecting claims 7 and 8 as unpatentable
over Tu or Rosenberg. We sustain the Examiner's rejection of these claims.
DECISION
The Examiner's rejection of claims 1-17 are affirmed.
No time period for taking any subsequent action in connection with
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this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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