Ex Parte Greenburg et al

Patent Trial and Appeal Board

Jan 16, 2018

13474572 (P.T.A.B. Jan. 16, 2018)

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.
13/474,572 05/17/2012 Benny Greenburg H-IL-00039 DIV 2
(1988-00
1318
107146 7590
Covidien LP
5920 Longbow Drive
Mail Stop A36
Boulder, CO 80301-3299
EXAMINER
CHOU, WILLIAM B
ART UNIT PAPER NUMBER
3779
NOTIFICATION DATE DELIVERY MODE
01/18/2018 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):
docket @ cdfslaw. com
SurgicalUS@covidien.com
medtronic_mitg-et_docketing@cardinal-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BENNY GREENBURG,
ODED ZUR, and RAPHAEL MELOUL
Appeal 2017-001533
Application 13/474,572
Technology Center 3700
Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
DAVID COTTA, Administrative Patent Judges.
FREDMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal1 under 35U.S.C. § 134 involving claims to a method
of treating target tissue in a distal portion of the lungs. The Examiner
rejected the claims as anticipated and as obvious. We have jurisdiction
under 35 U.S.C. § 6(b). We reverse.
Statement of the Case
Background
“Identifying and treating lung tissue abnormalities presents challenges
that are somewhat unique to the lungs. ... If a tissue lesion or tumor is to be
identified endoscopically, the complicated bronchial maze must be
1 Appellants identify the real party in interest as Covidien LP., a subsidiary
of Medtronic, PLC. (App. Br. 1).
Appeal 2017-001533
Application 13/474,572
navigated” (Spec. 12). “Bronchoscopes are small cameras attached to the
end of a navigable probe and are useful in navigating the airways . . .
however, these bronchoscopes have some inherent shortcomings” {id. 13).
To reach locations beyond the bronchoscopes reach, the prior art teaches a
“guide is advanced beyond the tip of the bronchoscope towards the
designated target. . . . When the guide’s tip is at the target, the guide is
withdrawn, freeing the sheath for insertion of a bronchoscopic tool” {id. 1 5).
“The present invention represents a step forward in endoscopic
procedures by providing an endoscopic tool that is capable of being inserted
into narrow passageways and performing procedures once a target has been
reached” (Spec. 19).
The Claims
Claims 1,3, and 5—12 are on appeal. Claim 1 is representative and
reads as follows:
1. A method of treating target tissue in a distal portion of
the lungs comprising:
using a bronchoscope to visually navigate through
proximal airways in a distal direction toward said target tissue
until said airways become too narrow for said bronchoscope;
extending through a working channel of said
bronchoscope, a catheter having a navigation system, an optic
system, and a tool lumen, wherein both the optic system and the
navigation system are permanently disposed in the catheter;
navigating said catheter to said target tissue; and
extending through said tool lumen, a tool usable to treat
said target tissue.
2
Appeal 2017-001533
Application 13/474,572
The issues
A. The Examiner rejected claim 1 under 35 U.S.C. § 102(b) as
anticipated by Watts2 (Final Act. 3—4).
B. The Examiner rejected claims 3, 5—10, and 12 under 35 U.S.C.
§ 103(a) as obvious over Watts and Miyagi3 (Final Act. 4—6).
C. The Examiner rejected claim 11 under 35 U.S.C. § 103(a) as obvious
over Watts, Miyagi, Miyazaki,4 and Krauter5 (Final Act. 6—7).
A. 35 U.S.C. § 102(b) over Watts
The Examiner finds Watts teaches
a method of treating target tissue in a distal portion of the lungs
in [0003] and [012] comprising:
using a bronchoscope “endoscope” in [0003] and (52) in
[0046] to visually navigate through proximal airways in a distal
direction toward said target tissue until said airways become too
narrow for said bronchoscope “advanced as far as possible” as
described in [0012];
extending through said bronchoscope, a catheter (28) in
[0046] having a navigation system (18) in [0046], an optic
system (26) in [0046], and a tool lumen “adequate number of
lumens” in [0036], wherein both the optic system and the
navigation system are permanently disposed in the catheter;
navigating said catheter to said target tissue as described
in [0036]-[0038]; and
extending through said tool lumen, a tool “therapeutic
and/or diagnostic tool” in [0036] usable to treat said target
tissue.
(Final Act. 3—4; emphasis omitted).
2 Watts et al., US 2006/0149129 Al, published July 6, 2006.
3 Miyagi et al., US 6,689,049 Bl, issued Feb. 10, 2004.
4 Miyazaki, US 5,989,185, issued Nov. 23, 1999.
5 Krauter et al., US 6,068,593, issued May 30, 2000.
3
Appeal 2017-001533
Application 13/474,572
The issue is: Does the evidence of record support the Examiner’s
conclusion that Watts anticipates claim 1?
Findings of Fact
1. Watts teaches: “There are many types of endoscope, and they
are named in relation to the organs or areas they explore. Endoscopes used
to look directly at the . . . lungs [are named] . . . (bronchoscopy).” (Watts
13)
2. Watts teaches: “Bronchoscopy is a diagnostic procedure in
which a tube with a tiny camera on the end is inserted through the nose or
mouth into the lungs. The procedure provides a view of the airways of the
lung” (Watts 112).
3. Watts teaches in “bronchoalveolar lavage, up to 300 cc of saline
(20 tablespoons) are instilled into the airway after the bronchoscope has
been advanced as far as possible and a small airway is completely blocked
(temporarily) by the scope” (Watts 112).
4. Figure 1 of Watts is reproduced below:
PROCESSOR 32
FIG, 1
4
Appeal 2017-001533
Application 13/474,572
Figure 1 illustrates that “catheter assembly 10 additionally includes a
movable imaging catheter assembly 28 that includes a movable imaging tube
30 coupled to a control handle 32” (Watts 136).
5. Watts teaches an embodiment of figure 1 where an “adequate
number of lumens is provided so as to allow for a therapeutic and/or
diagnostic tool to be used simultaneously with the imaging tube 30” (Watts
136).
6. Figure 7 of Watts is reproduced below
Figure 7 depicts “catheter assembly 52 [that] includes ports/and valves 54 in
communication with lumens 56 extending through the second
catheter assembly 52 for air, gas, suction, diagnostic or therapeutic tools as
well as for the movable imaging catheter assembly 28” (Watts 146).
7. Watts teaches “tube 14 can include the visual or imaging device
26, light sources (LEDs) 26 and control wires 18” (Watts 146).
8. Watts teaches the “visual device 26 can be at a fixed position or
coupled to an end of the insertion tube 14” (Watts 135).
5
Appeal 2017-001533
Application 13/474,572
Principles of Law
A prior art reference can only anticipate a claim if it discloses all the
claimed limitations “arranged or combined in the same way as in the claim.”
Wm. Wrigley Jr. Co. v. Cadbury Adams USALLC, 683 F.3d 1356, 1361
(Fed. Cir. 2012).
Analysis
Appellants contend “the movable imaging catheter assembly 28
[disclosed in Watts] in no way includes a navigation system, optic system,
and a tool lumen. Indeed, Watts merely discloses that movable imaging
catheter assembly 28 includes an imaging device 34” (App. Br. 7).
The Examiner responds: “There is no basis for the argument that the
catheter itself [lacks] a tool lumen” (Ans. 8).
We find that Appellants have the better position. We agree that the
requirement for “a catheter having a navigation system, an optic system, and
a tool lumen” in claim 1 requires that these components be located within
the catheter, not merely adjacent to the catheter. This interpretation is
consistent with the Specification which teaches “catheter 10 generally
includes a working channel 20, a location system 100 ... an optical system
200, an optic cleaning system 300, a tool 400, a steering mechanism 500,
and a catheter body 600” (Spec. 137). The Specification also teaches the
“catheter 10 includes a working channel 20 . . . that can accommodate a tool
400” (Spec. 1 65).
The correct inquiry in giving a claim term its broadest
reasonable interpretation in light of the specification is not
whether the specification proscribes or precludes some broad
reading of the claim term adopted by the examiner. And it is
not simply an interpretation that is not inconsistent with the
6
Appeal 2017-001533
Application 13/474,572
specification. It is an interpretation that corresponds with what
and how the inventor describes his invention in the
specification.
In re Smith International, Inc., 871 F.3d 1375, 1382—83 (Fed. Cir. 2017)
The cited evidence does not establish that Watts teaches an
embodiment with a tool lumen within the catheter. If catheter assembly 28
of Watts is deemed the catheter recited in the pending claim, then there is no
tool lumen in the catheter as required by the claims (see FF 4). In this
regard, we note that the “adequate number of lumens” referenced in Watts
are in catheter assembly 10, not catheter assembly 28. See FF5; see also,
Watts 32 and 36 (referencing lumens 22a, 22b and 22c in catheter
assembly 10) and Fig. 3.
Alternatively, if catheter assembly 52 of Watts is deemed the catheter,
then while there is a tool lumen 56, a navigation system (18) and an optic
system (26), the catheter assembly 52 does not extend through a working
channel of a bronchoscope as required by the claims.
We are not persuaded by the Examiner’s argument that “the movable
imaging catheter assembly [28] itself includes movable imaging tube 30 in
[0036] that extends a tool lumen therethrough with control wire 36 in [0036]
and [0040]” (Ans. 8) because the claim requires a single catheter to have all
three components of a navigation system, an optic system, and a tool lumen.
In this case, it is only by picking and choosing elements found in two
different elements that all of the components required are present.
Such picking and choosing may be entirely proper in the
making of a 103, obviousness rejection, where the applicant
must be afforded an opportunity to rebut with objective
evidence any inference of obviousness which may arise from
7
Appeal 2017-001533
Application 13/474,572
the similarity of the subject matter which he claims to the prior
art, but it has no place in the making of a 102, anticipation
rejection.
In reArkley, 455 F.2d 586, 587-88 (CCPA 1972).
Conclusion of Law
The evidence of record does not support the Examiner’s conclusion
that Watts anticipates claim 1.
B.-C. 35 U.S.C. § 103(a) rejections
These rejections rely upon the underlying anticipation rejection over
Watts. Having reversed the rejection of claim 1, we also necessarily reverse
these obviousness rejections because the Examiner does not identify where
Miyagi, Krauter, or Miyazaki suggest a process as required by claim 1.
SUMMARY
In summary, we reverse the rejection of claim 1 under 35 U.S.C.
§ 102(b) as anticipated by Watts.
We reverse the rejection of claims 3, 5—10, and 12 under 35 U.S.C.
§ 103(a) as obvious over Watts and Miyagi.
We reverse the rejection of claim 11 under 35 U.S.C. § 103(a) as
obvious over Watts, Miyagi, Miyazaki, and Krauter.
REVERSED
8