Ex Parte Geiselhart

Patent Trials and Appeals Board

May 2, 2019

13002359 - (D) (P.T.A.B. May. 2, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/002,359 02/14/2011 Franz Geiselhart
24998 7590 05/06/2019
Blank Rome LLP
1825 Eye Street, NW
Washington, DC 20006-5403
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.
E7900.2127/P2127 1251
EXAMINER
HUPCZEY, JR, RONALD JAMES
ART UNIT PAPER NUMBER
3794
NOTIFICATION DATE DELIVERY MODE
05/06/2019 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):
W ashingtonDocketing@blankrome.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRANZ GEISELHAR T
Appeal2017-009017
Application 13/002,359 1
Technology Center 3700
Before LINDA E. HORNER, STEP AN ST AI CO VICI, and
EDWARD A. BROWN, Administrative Patent Judges.
ST AI CO VICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE-
Franz Geiselhart ("Appellant") appeals under 35 U.S.C. § 134(a) from
the Examiner's decision in the Final Office Action ( dated July 22, 2016,
hereinafter "Final Act.") rejecting claims 16-18, 20-26, 32, 34, and 35. 2
Appellant's representative presented oral argument on April 25, 2019.
We have jurisdiction over this appeal under 35 U.S.C. § 6(b ).
1 ERBE ELEKTROMEDIZIN GMBH is identified as the real party in
interest in Appellant's Appeal Brief (filed Jan. 30, 2017, hereinafter "Appeal
Br."). Appeal Br. 2.
2 Claim 1-15, 19, 27-31, and 33 are canceled. Appeal Br. 2.
Appeal2017-009017
Application 13/002,359
SUMMARY OF DECISION
We AFFIRM-IN-PART.
INVENTION
Appellant's invention is directed to "a temperature regulator for
regulating the temperature of a cryoprobe." Spec. para. 1. 3
Claims 16, 34, and 35 are independent. Claim 16 is illustrative of the
claimed invention and reads as follows:
16. A temperature regulator for regulating the temperature
of a cryoprobe, the temperature regulator configured to supply a
refrigerant at a first pressure to an evaporation region such that
the coolant evaporates at least temporarily under the presence
of a second pressure for cooling a cooling portion of the
cryoprobe, said temperature regulator comprising:
pressure setting means that is used by the temperature
regulator to set the second pressure in the evaporation region to
a target pressure for regulating the temperature of the cryoprobe
to achieve a target temperature manually input at an operating
unit, the pressure setting means comprising at least one
adjustable valve arranged downstream of the evaporation region
for regulating the second pressure; and
flow measuring means for determining a flow occurring
as the refrigerant flows out of the evaporation region,
wherein the temperature regulator uses the determined
flow when controlling the at least one adjustable valve to set the
second pressure to the target pressure.
3 We refer to the Substitute Specification filed on January 3, 2011.
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Application 13/002,359
REJECTIONS 4
I. The Examiner rejects claims 16-18, 20-22, 24--26, 32, 34, and
35 under 35 U.S.C. § I03(a) as being unpatentable over Ryba et
al. (US 7,004,936 B2, iss. Feb. 28, 2006, hereinafter "Ryba")
and Watson (US 2012/0253337 Al, pub. Oct. 4, 2012).
II. The Examiner rejects claim 23 under 35 U.S.C. § I03(a) as
being unpatentable over Ryba, Watson, and Burnside et al.
(US 6,387,092 Bl, iss. May 14, 2002, hereinafter "Burnside").
ANALYSIS
Rejection I
Claims 16--18, 20---22, 24-26, and 32
Appellant does not present arguments for the patentability of claims
17, 18, 20-22, 24--26, and 32 apart from claim 16. See Appeal Br. 6-9.
Therefore, in accordance with 37 C.F.R. § 4I.37(c)(l)(iv), we select claim
16 as the representative claim to decide the appeal of the rejection of these
claims, with claims 17, 18, 20-22, 24--26, and 32 standing or falling with
claim 16.
Independent claim 16 recites a "pressure setting means ... to set the
second pressure in the evaporation chamber to a target pressure for
regulating the temperature of the cryoprobe to achieve a target temperature
manually input at an operating unit." Appeal Br. 11 (emphasis added).
4 The Examiner has withdrawn the rejection of claims 16-18, 20-26, and 32
under 35 U.S.C. § 112, second paragraph as being indefinite. See Advisory
Action 2 (dated Nov. 4, 2016, hereinafter "Adv. Act."); see also Final Act.
2-3.
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Application 13/002,359
The Examiner finds that Ryba discloses a cryoprobe temperature
regulator that supplies refrigerant at a first pressure Pw to an evaporation
region at a tip 56 where the refrigerant evaporates due to a phase change at a
second pressure po. Final Act. 4 (citing Ryba, Fig. 4). The Examiner further
finds that Ryba' s temperature regulator contains a pressure setting means
including valve 64, sensor 68, and exhaust unit 24, for setting "the second
pressure [po] in the evaporation region [54] to a target pressure for regulating
the temperature of the cryoprobe to achieve a target temperature," wherein
the target temperature is "manually input at an operating unit." Id. Citing to
Ryba's column 4, lines 45---67, the Examiner finds that because the control
process compares cryoprobe tip temperature Tt to ensure that it does not
increase, the target temperature "would be manually entered via some
manner of programming." Id. The Examiner takes the position that
"temperature values would be required to be programmed in the computer
control to function as limit values" so that "the control computer[, i.e,
"operating unit"] can compare a T[tJ value to the limit." Adv. Act. 2 (citing
Ryba, col. 8, 11. 11-18).
Appellant argues that because Ryba discloses that "outflow pressure
Po should be kept as close as possible to 'one atmosphere pressure,"' Ryba
fails to disclose "setting the pressure at the tip section to a target pressure
based on a target temperature." Appeal Br. 8. Appellant further argues that
Ryba "does not disclose that the 'target temperature' is 'manually input at an
operating unit' as recited in claim 16." Id. at 9. According to Appellant,
"[b ]ecause Ryba seeks only to determine if Tt has increased, any comparison
of temperatures would necessarily involve only comparing the current
measured temperature to a previous measured temperature." Id.
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Application 13/002,359
Appellant's arguments are not commensurate with the scope of the
capability called for in claim 16, which does not require a temperature
regulator to set the pressure in the evaporation region to a "target pressure
based on a target temperature," as Appellant contends. See Appeal Br. 8
( emphasis added). As stated by our reviewing court in In re Hiniker Co.,
150 F.3d 1362, 1369 (Fed. Cir. 1998), "the name of the game is the claim."
It is well established that limitations not appearing in the claims cannot be
relied upon for patentability. In re Self, 671 F.2d 1344, 1348 (CCPA 1982).
In this case, first, the temperature regulator of claim 16 sets the "pressure in
the evaporation region to a target pressure ... to achieve a target
temperature." Appeal Br. 11 (Claims App.). Ryba's temperature regulator
includes such a feature by setting pressure Po in evaporation region 54 to one
atmosphere (15 psi) to achieve a target temperature of -88 °C. See Ryba,
col. 4, 11. 63---65 5, col. 7, 11. 40-43, Fig. 5 (point "D").
Second, the pressure setting means of the temperature regulator of
claim 16 is "for regulating the temperature of the cryoprobe to achieve a
target temperature manually input at an operating unit." Appeal Br. 11
(Claims App.). "A patent applicant is free to recite features of an apparatus
either structurally or functionally ... Yet, choosing to define an element
functionally, i.e., by what it does, carries with it a risk." In re Schreiber, 128
F.3d 1473, 1478 (Fed. Cir. 1997) (internal citation omitted). When the PTO
has reason to believe that a functional limitation asserted to be critical may
in fact be an inherent characteristic of the prior art, it possesses the authority
5 "The purpose here is to maintain the outflow pressure (po) in the tip section
of the catheter at a desired value (e.g. 15 psia)."
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Application 13/002,359
to shift the burden of proof to applicant or patent owner to prove otherwise.
Id ( emphasis added).
Here, Ryba discloses that the mass flow rate of the refrigerant affects
the operation of its cryoablation catheter 12 and teaches running its system
at an operation point "F" defined by the highest mass flow rate of refrigerant
at the lowest refrigerant temperature (i.e., target temperature). See Ryba,
col. 2, 11. 27-38, col. 7, 1. 60-col. 8, 1. 6, Fig. 6. Thus, Ryba's system
monitors the temperature of the refrigerant at the tip section 56, i.e., Tt, and
based on variations of this temperature, controls the mass flow rate of
refrigerant using valve 64 to control the pressure difference between
working pressure Pw and outlet pressure Po in evaporation chamber 54. See
Ryba, col. 2, 11. 27-28, col. 5, 11. 3-10, col. 8, 11. 12-13. As such, we agree
with the Examiner that "temperature values would necessarily be required to
be programmed in the computer control to function as limit values for the
[target] temperature" Tt of -88°C. Ans. 4 ( emphasis added). In other words,
without knowing the target temperature Tt of -88°C and its limit values,
Ryba's temperature regulator would not be able to control the pressure
difference pw-Po, and, thus, achieve the highest mass flow rate of refrigerant
at the lowest refrigerant (target) temperature, i.e., operation point "F." See
Ryba, col. 8, 11. 6-16, Fig. 6. Hence, we agree with the Examiner's position
"that this programming of the computer control would, therefore, be the
claimed manually input target temperature at the operating unit." Ans. 4.
Accordingly, for the foregoing reasons, we do not agree with
Appellant that Ryba discloses "only measured temperatures." Appeal Br. 9.
Appellant does not provide evidence or persuasive reasoning that Ryba's
temperature regulator would not be capable of performing the function "to
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Application 13/002,359
set the second pressure ... to a target pressure for regulating the temperature
of the cryoprobe to achieve a target temperature manually input at an
operating unit," as called for by claim 16.
Lastly, we do not agree with Appellant that a "computer cannot be the
recited 'operating unit,' which one of ordinary skill in the art would
understand is used by the surgeon during operation of the cryoprobe." Reply
Brief (filed June 6, 2017, hereinafter "Reply Br.") 2. Although the claims
are interpreted in light of the Specification (see Spec. para. 39), limitations
from the Specification are not read into the claims. See Superguide Corp. v.
DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004).
In conclusion, for the foregoing reasons, we sustain the rejection
under 35 U.S.C. § 103(a) of claim 16 as unpatentable over Ryba and
Watson. Claims 17, 18, 20-22, 24--26, and 32 fall with claim 16.
Claims 34 and 35
Independent claim 34 recites a "temperature regulator configured to
determine a target pressure based on the target temperature." Appeal Br. 14
(Claims App.) ( emphasis added). Similarly, independent claim 35 recites a
"controller configured ... to calculate based on the target temperature a
target pressure." Id. at 15 ( emphasis added).
Appellant argues that "Ryba does not disclose setting the pressure at
the tip section to a target pressure based on a target temperature." Appeal
Br. 8.
In response, the Examiner relies on the same position described above
in the rejection of claim 16. See Ans. 6 ("It is for this same reasoning that
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Application 13/002,359
the Examiner further believes that Ryba also teaches the limitations ... with
respect to independent claims 34 and 35.").
As discussed supra, Ryba's temperature controller sets the second
pressure to a target pressure Po of one atmosphere ( 15 psi) to achieve a target
temperature Tt of -88 °C. See Ryba, col. 4, 11. 63---65, col. 7, 11. 40-43, Fig. 5
(point "D"). However, the temperature regulator of claims 34 and 35 is
different from the regulator of claim 16 in that it is configured to
"determine" or "calculate," respectively, a target pressure based on a target
temperature. Ryba fails to disclose such a feature because the resulting
target temperature of -88 °C is merely the boiling temperature under a
pressure of one atmosphere of the nitrous oxide refrigerant, i.e., normal
boiling point temperature. See Ryba, col. 5, 11. 15-20. In other words,
Ryba's temperature controller is not configured to "determine" or
"calculate," respectively, a target pressure based on a target temperature, but
rather, is only configured to set a target pressure Po of one atmosphere. See
Ryba, col. 1, 11. 50-56, col. 5, 11. 15-20.
Accordingly, for the foregoing reasons, we do not sustain the rejection
under 35 U.S.C. § 103(a) of claims 34 and 35 as unpatentable over Ryba and
Watson.
Rejection II
Claim 23 depends indirectly from independent claim 16. See Appeal
Br. 12-13. Appellant relies on the same arguments discussed supra in the
rejection of claim 16. See id. at 9 ("Claim 23 ... is therefore patentable over
Ryba (alone or in combination with Watson) for at least the reasons
described above with respect to claim 16.").
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Application 13/002,359
Therefore, for the reasons discussed above, we sustain the rejection of
claim 23 over the combined teachings of Ryba, Watson, and Burnside.
SUMMARY
The Examiner's decision to reject claims 16-18, 20-26, 32, 34, and
35 under 35 U.S.C. § 103(a) is affirmed as to claims 16-18, 20-26, and 32
and reversed as to claims 34 and 35.
AFFIRMED-IN-PART
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