Ex Parte Ein-GalDownload PDFPatent Trial and Appeal BoardSep 22, 201612972669 (P.T.A.B. Sep. 22, 2016) Copy Citation 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. 2 Appeal2014-006651 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." 3 Appeal2014-006651 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. 4 Appeal2014-006651 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"). 5 Appeal2014-006651 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 6 Appeal2014-006651 Application 12/972,669 "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 7 Appeal2014-006651 Application 12/972,669 this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 8 Copy with citationCopy as parenthetical citation