Ex Parte Fernald et al

Patent Trial and Appeal Board

Jun 7, 2017

11379537 (P.T.A.B. Jun. 7, 2017)

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.
11/379,537 04/20/2006 Kathleen Fernald 7315652001 1000
121974 7590 06/09/2017
K AC VINSKY DAISAK BLUNI PLLC
America's Cup Building
50 Doaks Lane
Marblehead, MA 01945
EXAMINER
HUPCZEY, JR, RONALD JAMES
ART UNIT PAPER NUMBER
3739
NOTIFICATION DATE DELIVERY MODE
06/09/2017 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):
bbonneville @ kdbfirm .com
docketing @ kdbfrrm. com
ndeane @ kdbfirm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KATHLEEN FERNALD and ROBERT F. RIOUX
Appeal 2015-006626
Application 11/379,537
Technology Center 3700
Before JILL D. HILL, LISA M. GUIJT, and JEFFREY A. STEPHENS,
Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants1 seek our review under 35 U.S.C. § 134 of the Examiner’
decision2 rejecting claims 24-36.3 We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.
1 Appellants identify the real party in interest as Boston Scientific Scimed,
Inc. Appeal Br. 2.
2 Appeal is taken from the Final Office Action dated October 10, 2014
(“Final Act.”).
3 Claims 1—23 have been cancelled. Appeal Br. 4.
Appeal 2015-006626
Application 11/379,537
CLAIMED SUBJECT MATTER
Claim 24 is the sole independent claim on appeal. Claim 24,
reproduced below, is illustrative of the subject matter on appeal.
24. A tissue ablation probe, comprising
an elongated cannula having a lumen extending
proximally from a distal tip;
an electrically conductive probe shaft slidably
disposed within the lumen of the elongated cannula, an
array of electrode tines carried by a distal end of the inner
probe shaft; and
an electrically insulative outer sheath disposed on
an exterior surface of the probe shaft, wherein the sheath
has thickened regions forming alternating shearable ribs
and depressions that longitudinally extend along the probe
shaft, the shearable ribs configured to shear off as the
probe shaft is introduced through a deliver device, wherein
a sheared off rib leaves no portion of the underlying probe
shaft exposed.
REJECTIONS
I. Claims 24, 26, and 28—36 stand rejected under 35 U.S.C. §
103(a) as unpatentable over Gough ’517 (US 5,980,517; issued Nov. 9,
1999), Danek (US 2007/0093802 Al; published Apr. 26, 2007), and Gough
’173 (US 5,672,173; issued Sept. 30, 1997).
II. Claims 25 and 27 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Gough ’517, Danek, Gough ’173, and Smith (US
6,743,206 Bl; issued June 1, 2004).
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Appeal 2015-006626
Application 11/379,537
ANALYSIS
Rejection I
The Examiner finds, inter alia, that Gough ’517’s insulation sleeve 18
corresponds to the claimed elongated cannula, and that Gough ’517’s
introducer 14 corresponds to the claimed electrically conductive probe shaft.
Final Act. 3.4 The Examiner relies on Gough ’517’s teaching that
“insulation sleeves 18 may be adjustably positioned so that the length of an
energy delivery device can be varied” as support for the Examiner’s finding
that Gough ’517’s insulation sleeve 18 is “slidably disposed within the
lumen of’ Gough ’517’s introducer 14.” Id.', see Ans. 2-4. In addition, the
Examiner finds that Danek’s corrugated surface 130 corresponds to the
claimed electrically insulative outer sheath. Final Act. 3. The Examiner
reasons that it would have been obvious
to utilize an electrically insulative outer sheath as in Danek on
the outer surface of the probe shaft of Gough [’173] to achieve
the claimed probe. As taught by Danek, the provision of the
shaped outer sheath on the shaft of the device effectively reduces
resistance (friction) between the outer sheath and the cannula
through which it is inserted due to the sheath being both
lubricious and causing a reduced surface area of contact between
the sheath and the cannula with such features thereby decreasing
the amount of force required to be applied to the shaft to advance
the device into tissue.
4 With respect to the Examiner’s finding that Gough ’517 does not disclose
that introducer 14 is formed from conductive material, we note that Gough
’517 discloses that introducer 14 may be an electrode. Gough ’517 8:1—2;
see Appeal Br. 15 (Claims App.) (claim 1: “an electrically conductive
probe.”).
3
Appeal 2015-006626
Application 11/379,537
Id. at 4—5.
Appellants argue, inter alia, that to the extent “adjustably positioned”
discloses “slidably disposed,” the disclosure relied on by the Examiner from
Gough ’517 relates to adjustability between insulation sleeve 18 and energy
devices 16, 17, and not adjustability between insulation sleeve 18 and
introducer 14. Appeal Br. 10; Reply Br. 3—5.
Gough ’517 discloses that
[a]n insulation sleeve 18 may be positioned around an exterior of
introducer 14 and/or energy delivery devices 16 and 17. All or
some of insulation sleeves 18 may be adjustably positioned so
that the length of an energy delivery device electromagnetic
energy delivery surface can be varied. Each insulation sleeve 18
surrounding an introducer 14 can include one or more apertures.
This permits the introduction of an energy delivery device 16
through introducer 14 and insulation sleeve 18.
Gough ’517 5:10—18 (emphasis added). Thus, although Gough ’517
discloses that insulation sleeve 18 is positioned around an exterior of
introducer 14, a preponderance of the evidence supports Appellants’
argument that Gough ’517 discloses adjustability with respect to insulation
sleeve 18 and energy delivery devices (or the electromagnetic energy
delivery surface of energy delivery devices), but not between insulation
sleeve 18 and introducer 14.
Appellants further argue that the Examiner’s reason to modify Gough
’517’s probe shaft (or introducer 14) to include Danek’s sheath 102 lacks
rational reasoning, because Gough ’517’s introducer 14 is “surrounded by
[an] insulation sleeve 18” and therefore, “is not in need of further
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Appeal 2015-006626
Application 11/379,537
insulation.” Appeal Br. 12—13. The Examiner responds that Danek
“provides for an electrically insulative outer sheath (corrugated surface 130)
between a probe shaft (shaft 104) and another electrically insulative shaft
(. . . shaft 102 . . .),” and therefore, “Danek . . . contemplates that it is
known to place an insulative sheath between a probe shaft and another
insulative shaft.” Ans. 8—9. The Examiner also responds that the
Examiner’s modification “effectively reduces resistance (friction) between
the outer sheath and the cannula.” Id. at 9.
We are persuaded by Appellants’ argument. The Examiner’s reasons
for including Danek’s sheath in Danek’s device does not sufficiently explain
why one skilled in the art would modify Gough ’517’s device, especially in
view of Gough ’517’s device already having an insulation sleeve 18.
Additionally, there is insufficient support in Gough ’517 for determining that
there is any movement between introducer 14 and insulation sleeve 18 that
would require less friction. “[Rejections on obviousness grounds cannot be
sustained by mere conclusory statements; instead there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)
(quoted in KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)).
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Appeal 2015-006626
Application 11/379,537
Accordingly, we do not sustain the Examiner’s rejection of
independent claim 24 and claims 25—36 depending therefrom.
DECISION
The Examiner’s decision to reject claims 24-36 is reversed.
REVERSED
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