Ex Parte FernaldDownload PDFPatent Trial and Appeal BoardJun 21, 201612028329 (P.T.A.B. Jun. 21, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/028,329 02/08/2008 121974 7590 06/23/2016 KACVINSKY DAISAK BLUNI PLLC America's Cup Building 50 Doaks Lane Marblehead, MA 01945 FIRST NAMED INVENTOR Kathleen Fernald 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. 7313922001 6500 EXAMINER GIULIANI, THOMAS ANTHONY ART UNIT PAPER NUMBER 3739 NOTIFICATION DATE DELIVERY MODE 06/23/2016 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): kddocketing@cpaglobal.com bbonneville@kdbfirm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KATHLEEN FERNALD 1 Appeal2014-005785 Application 12/028,329 Technology Center 3700 Before HUBERT C. LORIN, ROBERT L. KINDER, and KENNETH G. SCHOPPER, Administrative Patent Judges. KINDER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. § 134(a) of the Examiner's final rejection of claims 1, 4---6, and 24--28. We have jurisdiction under 35 U.S.C. § 6(b ). We REVERSE. 1 According to Appellant, the real party in interest is Boston Scientific Scimed, Inc. Appeal Br. 2. Appeal2014-005785 Application 12/028,329 Appellant's Invention Appellant's "invention relates generally to the structure and use of medical probes, for example ablation probes, for the treatment of tissue." Spec. i-f 2. The invention also involves increasing the echogenicity of a probe to more efficiently and accurately locate the probe using ultrasound techniques to help ensure accurate contact with the target tissue. Id. i-f 6 Claims on Appeal Claim 1 is the only independent claim on appeal and it is illustrative of the claimed subject matter: 1. A medical probe comprising: a rigid probe shaft; at least one operative medical element associated with the probe shaft; and an electrically insulative sheath disposed over the probe shaft such that substantially all of an inner surface of the electrically insulative sheath is in contact with an outer surface of the probe shaft, the electrically insulative sheath having a thread arrangement disposed thereon, wherein the echogenicity of the probe shaft is increased by the thread arrangement. Appeal Br. 12 (Claims App.). Examiner's Rejections I. The Examiner rejected claims 1, 4---6, 25, 27, and 28 under 35 U.S.C. § 103(a) over Heggeness (US 2001/0047167 Al, pub. Nov. 29, 2001) and Chechelski (US 5,908,385, iss. June 1, 1999). Final Act. 2 (mailed Mar. 5, 2013). II. The Examiner rejected claim 24 under 35 U.S.C. § 103(a) over Heggeness, Chechelski, Parker (US 2001/0034514 Al, pub. Oct. 25, 2001), 2 Appeal2014-005785 Application 12/028,329 and Wojciechowicz (US 5,730,742, iss. Mar. 24, 1998). Final Act. 3. III. The Examiner rejected claim 26 under 35 U.S.C. § 103(a) over Heggeness, Chechelski, and Maguire (US 2006/0084966 Al, pub. Apr. 20, 2006). Final Act. 5. ANALYSIS Claim 1 Claim 1 recites "an electrically insulative sheath disposed over the probe shaft such that substantially all of an inner surface of the electrically insulative sheath is in contact with an outer surface of the probe shaft." Appeal Br. 12 (Claims App.). Appellant challenges whether the combination of Heggeness and Chechelski teaches this contact limitation. Appeal Br. 7-8; Reply Br. 2-3. Specifically, Appellant challenges whether Heggeness teaches substantially all of an inner surface of the electrically insulative sheath is in contact with an outer surface of the probe shaft as found by the Examiner. Final Act. 2-3, Ans. 2-3. In the Final Office Action, the Examiner relies on Figure 8 of Heggeness as teaching substantially all of an inner surface of the electrically insulative sheath is in contact with an outer surface of the probe shaft. Final Act. 3. Figure 8 depicts a rigid probe shaft (23) surrounded by a sheath or sleeve (30). The Examiner reasons "that since this sleeve is described as a 'guide' for the probe, the two elements necessarily contact each other." Ans. 2. Without any further citation, the Examiner further finds that "one having ordinary skill in the art would know that these devices are designed to fit together snugly," because if they did not, the probe "might end up deviating 3 Appeal2014-005785 Application 12/028,329 from the desired path and causing unwanted tissue (and possibly nerve) damage." Id. Appellant agrees that Heggeness teaches that a probe shaft (23) can be inserted into a cavity (35) of the sleeve (30), but Appellant contends "the specification includes no affirmative disclosure that the probe 23 and the sleeve 30 contact one-another, and is entirely silent on the extent of any putative physical contact between the probe shaft 23 and the sleeve 30." Appeal Br. 6-7. Further, according to Appellant, "no implicit disclosure in the specification would lead one of skill in the art to understand that 'substantially all' of an inner surface of the sleeve 30 was in contact the probe shaft 23." Id. at 7. Appellant acknowledges that Heggeness discloses that the sleeve may serve as a guide, but Appellant argues there is no support that such a guide would be a structure which contacts substantially all of an outer surface of a probe. Reply Br. 2. Appellant also contends that the Examiner's finding that the probe and sleeve would be snugly fit is unsupported and it does not "necessarily follow[] that 'substantially all' of the probe and the sleeve are in contact as claim 1 requires." Id. at 3. Although we agree with the Examiner that Heggeness's probe and sleeve would necessarily contact each other whereas the sleeve serves as a guide for the probe, we disagree that the Examiner has persuasively established that this contact would amount to "substantially all" of the inner surface of the sheath in contact with the outer surface of the probe shaft. The Examiner's primary support is Figure 8 of Heggeness, depicted below. 4 Appeal2014-005785 Application 12/028,329 FJG.e Figure 8 of Heggeness is a perspective view of the ablating probe and the sleeve of the intraosseous nerve ablation system. Heggeness ,-r 27. Appellant contends, and we agree, that Figure 8 alone does not sufficiently establish that the sheath (30) is disposed over the probe shaft (23) such that substantially all of an inner surface of the sheath is in contact with an outer surface of the probe shaft. See Appeal Br. 7 ("the relative proportions of features in the drawings are not evidence of actual proportions when the drawings are not to scale"). For example, although the sheath (30) and probe (23) appear to be "snug" at first end (31 ), there appears to be a gap between the sheath (30) and the probe (23) at second end (32). See Heggeness Fig. 8 (unlabeled circular diameter near second end (32)). Prior art drawings must be evaluated for what they reasonably disclose and suggest to one of ordinary skill in the art. See In re Aslanian, 590 F.2d 911, 914 (CCPA 1979). Figure 8, however, does not suggest the degree of contact necessary between the probe and sleeve. As Appellant notes, the drawing is not to scale. It is also unclear where the inner surface of the sleeve and the outer surface of the probe are positioned within Figure 8 whereas only dashed lines of cavity (35) are depicted. Figure 8, along 5 Appeal2014-005785 Application 12/028,329 with Heggeness's disclosure that the sleeve (sheath) serves as a guide for the probe, reasonably suggests that at least portions of the surfaces will be in contact. We do not agree that Heggeness suggests, or it necessarily follows from the teachings of Heggeness, that substantially all of an inner surface of the sheath is in contact with an outer surface of the probe shaft. For the reasons set forth above, we do not sustain the Examiner's rejection of claim 1. See App. Br. 4--9; Reply Br. 2-3. Claims 4---6 and 24--28 Because the remaining dependent claims depend from claim 1, and also because the Examiner does not rely on any of the additional cited prior art references to satisfy the contact limitation allegedly taught by Heggeness, we likewise do not sustain the Examiner's rejection of claims 4---6, and 24-- 28. See App. Br. 9. DECISION We REVERSE the Examiner's rejection of claims 1, 4---6, and 24--28. REVERSED 6 Copy with citationCopy as parenthetical citation