Ex Parte Francischelli

Patent Trial and Appeal Board

Feb 28, 2013

11881443 (P.T.A.B. Feb. 28, 2013)

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.
11/881,443 07/27/2007 David E. Francischelli P-9912.10 9689
7590 03/01/2013
James R. Keogh
Medtronic, Inc.
710 Medtronic Parkway
Minneapolis, MN 55432
EXAMINER
ROANE, AARON F
ART UNIT PAPER NUMBER
3769
MAIL DATE DELIVERY MODE
03/01/2013 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 DAVID E. FRANCISCHELLI
____________

Appeal 2011-004270
Application 11/881,443
Technology Center 3700
____________

Before EDWARD A. BROWN, ANNETTE R. REIMERS and
RICHARD E. RICE, Administrative Patent Judges.

REIMERS, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/881,443

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STATEMENT OF THE CASE
David E. Francischelli (Appellant) appeals under 35 U.S.C. § 134
from the Examiner’s decision to reject claims 1-5 and 8-12 under 35 U.S.C.
§ 102(e) as anticipated by Wang (US 6,527,767 B2; issued Mar. 4, 2003).
Claims 6 and 7 have been withdrawn from consideration. We have
jurisdiction over this appeal under 35 U.S.C. § 6(b).
We REVERSE.
THE INVENTION
Appellant’s invention relates to methods of tissue ablation to treat
atrial fibrillation and other disorders. Spec.1, ll. 17-18; fig. 1.
Claim 1 is illustrative of the claimed invention and reads as follows:
1. A method of ablating tissue comprising:
selecting a first elongated ablation component
carrying a longitudinally extending first means for
delivery of ablation energy and a second elongated
ablation component and movable relative to the first
ablation component, wherein the first and second
components are provided with means mounted to and
extending along the first and second components for
magnetically attracting the first and second ablation
components toward one another along the length of the
first means for delivery of ablation energy;
placing selected one of the first and second
components along a first portion of tissue of the atrium
on an external portion of the heart adjacent one or more
pulmonary veins;
placing the other of the first and second
components along a second portion of tissue of the
atrium on an external portion of the heart adjacent the
one or more pulmonary veins to allow the magnetically
attracting means to draw the first and second components
toward one another to compress the first and second
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portions of tissue therebetween, along the length of the
first and second components; and
applying ablation energy.

ANALYSIS
Both independent claims 1 and 2 require a first “ablation component”
and a second “ablation component.” App. Br., Claims Appendix.
Independent claim 1 further requires “a first elongated ablation component
carrying a longitudinally extending first means for delivery of ablation
energy.” Id. The Examiner finds that Wang teaches first and second
ablation components 108, 110, respectively. Ans. 4; Wang, fig. 21. In
addition, the Examiner takes the position that Wang teaches “an ‘ablator’ 68
on the ‘endocardial catheter’ 108, wherein the first means for delivery of
ablation energy on the first ablation component is interpreted as the ‘ablator’
68 located on the ‘endocardial catheter’ 108.” Ans. 4-5. The Examiner
further takes the position that “[t]he claims do not recite a second elongated
ablation component carrying a longitudinally extending second means for
delivery of ablation energy and so only a single ablator is required.” Ans. 6.
In other words, the Examiner takes the position that the claims only require
one of the first and second ablation components to have the ability to
perform ablation, and that the endocardial catheter 108 of Wang meets this
requirement.
Appellant argues that the Examiner’s interpretation of the term
“ablation component” “is overly broad and thus unreasonable in light of the
specification.” App. Br. 11. Specifically, Appellant argues that
None of the proffered claim constructions in
the Examiner’s Answer that the ablation
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component does not require ablation is supported
by proper claim construction principles. Rather,
each one of the claim constructions in the
Examiner’s Answer is inconsistent with the
principle that the claims are to be given their
broadest reasonable interpretation consistent with
the specification, which requires the ablation
component to perform ablation. Thus any
interpretation of the feature “ablation component”
that does not require it to perform ablation is
unreasonable.
Reply Br. 5.
Appellant further argues that Wang does not teach a system that
includes two ablation components for performing abalation, as required by
independent claims 1 and 2. App. Br. 8, 10. According to Appellant, Wang
teaches “an endocardial catheter [108] having an ablator [68] and an
epicardial probe [110] that is magnetically attracted to the catheter but does
not include an ablator. Thus, the Wang patent teaches only one ablator.”
Reply Br. 2. Appellant concludes that “[b]ecause the claims set forth first
and second ablation components that each provide ablation, the Wang patent
cannot anticipate the claims as it teaches only one ablator.” Reply Br. 5.
Regarding Appellant’s first argument, claims are to be given their
broadest reasonable interpretation consistent with the specification, reading
claim language in light of the specification as it would be interpreted by one
of ordinary skill in the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d
1359, 1364 (Fed. Cir. 2004). First, we note that although Appellant’s
Specification does not expressly define the term “ablation component,”1

1 An ordinary and customary meaning of the term “ablate” is “to remove or
destroy especially by cutting, abrading, or evaporating.” MERRIAM
WEBSTER’S COLLEGIATE DICTIONARY (11TH ED. 2005).
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Appellant’s Specification does disclose that “[t]he ablation components are
adapted to . . . ablate or create lesions in the tissue between the
components.” Spec. 2, ll. 27-30; App. Br. 11; Reply Br. 3. We further note
that both independent claims 1 and 2 define the subject invention to require a
first “ablation component” and a second “ablation component.” App. Br.,
Claims Appendix. In other words, the nomenclature of the first and the
second components is identical, (i.e., they are both “ablation” components).
“We apply a ‘presumption that the same terms appearing in different
portions of the claims should be given the same meaning unless it is clear
from the specification and prosecution history that the terms have different
meanings at different portions of the claims.’” PODS, Inc. v. Porta Stor,
Inc., 484 F.3d 1359, 1366 (Fed.Cir.2007) (quoting Fin Control Sys. Pty.,
Ltd. v. OAM, Inc., 265 F.3d 1311, 1318 (Fed.Cir.2001)); see also, e.g.,
Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc)
(“Because claim terms are normally used consistently throughout the patent,
the usage of a term in one claim can often illuminate the meaning of the
same term in other claims.”).
A person of ordinary skill in the art would readily recognize that the
claimed first and second “ablation” components would require that both the
first and the second components provide ablation. Hence, we agree with
Appellant that the Examiner’s interpretation of the claim limitation “ablation
component” is unreasonably broad in light of what persons of ordinary skill
in the art would understand from reading the Specification. App. Br. 11-12;
Reply Br. 3.
Further, in regard to the Examiner’s position that independent claim 1
requires only the first component to be an ablator, because the claim fails to
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“positively recite a second means for delivery of ablation energy on the
second ablation component” (Ans. 5; see also Ans. 6), we agree with
Appellant that “the inclusion of the feature ‘means for delivery of ablation
energy’ does not preclude an interpretation that both ablation components
provide ablation.” Reply Br. 4.
Regarding Appellant’s second argument, we find that Wang teaches a
first component (endocardial catheter 108) including an ablator 68 and a
second component (epicardial probe 110) including a detector 106 that is
used to detect the location of the ablator 68 on the first component
(endocardial catheter 108). Wang, col. 10, ll. 19-31; fig. 21. As such, we
agree with Appellant that Wang teaches “an endocardial ablation catheter
108 for performing an ablation and an epicardial probe [110] for performing
a detection and not an ablation.” App. Br. 8. We further agree with
Appellant that Wang does not teach every limitation of independent claims 1
and 2, because both claims require first and second ablation components,
wherein each component provides ablation. Reply Br. 2, 5.
Accordingly, for the foregoing reason, the Examiner’s rejection of
claims 1-5 and 8-12 under 35 U.S.C. § 102(e) as anticipated by Wang cannot
be sustained.

DECISION
The decision of the Examiner is reversed as to claims 1-5 and 8-12.

REVERSED

mls