Ex Parte Gunday et al

Patent Trial and Appeal Board

Oct 23, 2017

13440853 (P.T.A.B. Oct. 23, 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.
13/440,853 04/05/2012 Erhan H. Gunday 04530-P0020B 4588
24126 7590 10/25/2017
ST. ONGE STEWARD JOHNSTON & REENS, LLC
986 BEDFORD STREET
STAMFORD, CT 06905-5619
EXAMINER
FERNANDES, PATRICK M
ART UNIT PAPER NUMBER
3736
NOTIFICATION DATE DELIVERY MODE
10/25/2017 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ERHAN H. GUNDAY,
LAWRENCE J. GERRANS, and LON CHU
Appeal 2016-000407
Application 13/440,8531
Technology Center 3700
Before JENNIFER D. BAHR, EDWARD A. BROWN, and
ANTHONY KNIGHT, Administrative Patent Judges.
KNIGHT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s non-
final decision rejecting claims 1—49. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.
1 According to Appellants, the real party in interest is Sanovas, Inc. App.
Br. 2.
Appeal 2016-000407
Application 13/440,853
CLAIMED SUBJECT MATTER
The claims are directed to “a system and method for visualizing and
measuring the interior of a body cavity . . . with a balloon catheter.” Spec.
12. Claims 1 and 30 are independent. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. An imaging system for providing a 3-dimensional image
of the interior of a cavity comprising:
a balloon catheter;
a mesh affixed to the balloon catheter, said mesh having
members extending longitudinally and circumferentially about
said balloon catheter, said mesh having columns and rows that
intersect each other at a node;
a controller coupled to the balloon catheter for controlling
the inflation of said balloon catheter;
wherein each member of said mesh having at least one
electrical characteristic that changes as the member is deformed
such that, when the member comprises a length (L) a measured
electrical characteristic will be different than when the member
comprises a length (Li) where Li is greater than L;
wherein the controller determines the at least one electrical
characteristic from each member and utilizes the measured
electrical characteristics to generate a three-dimensional
rendering of an interior surface of the cavity.
Appeal Br. 15 (Claims App.).
EVIDENCE RELIED ON BY THE EXAMINER
Laptewicz et al. US 5,653,684
US 6,081,737
Aug. 5, 1997
June 27, 2000
Dec. 13, 2001
Sept. 26, 2006
Sept. 20, 2007
Dec. 27, 2007
Shah
Gazdzinski
Okumura et al.
US 2001/0051766 Al
US 7,113,569 B2
Honour et al.
Harlev et al.
US 2007/0219551 Al
US 2007/0299352 Al
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Appeal 2016-000407
Application 13/440,853
Johnson et al. US 2008/0208174 A1 Aug. 28, 2008
Gunday et al. US 2010/0121270 Al May 13, 2010
de Graff et al. US 2011/0034912 Al Feb. 10,2011
REJECTIONS
The Examiner made the following rejections:
1. Claims 1-3, 6, 10, 16, 26, 27, 30, 31, 33, 36, 44, 45, 48, and 49
stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Shah, de
Graff et al. (hereinafter “de Graff’), and Laptewicz et al. (hereinafter
“Laptewicz”).
2. Claims 4, 5, 7—9, 11, 12, 28, 29, 32, 34, 46, and 47 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over Shah, de Graff,
Laptewicz, and Harlev et al. (hereinafter “Harlev”).
3. Claims 13 and 35 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Shah, de Graff, Laptewicz, and Okumura et al.
(hereinafter “Okumura”).
4. Claims 14 and 15 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Shah, de Graff, Laptewicz, and Gunday et al.
(hereinafter “Gunday”).
5. Claims 17—20 and 37—39 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Shah, de Graff, Laptewicz, and Johnson
et al. (hereinafter “Johnson”).
6. Claims 21 and 40 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Shah, de Graff, Laptewicz, Johnson, and Honour et
al. (hereinafter “Honour”).
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Application 13/440,853
7. Claims 22, 23, and 41 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Shah, de Graff, Laptewicz, Johnson, Honour, and
Ghaffari et al. (hereinafter “Ghaffari”).
8. Claims 24, 25, 42, and 43 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Shah, de Graff, Laptewicz, Johnson, and
Gazdzinski.
OPINION
Rejection 1
Claim 1
The Examiner finds that Shah teaches a three-dimensional imaging
system for mapping a cavity in the body. Also, the Examiner finds that Shah
teaches a balloon catheter having “a mesh disposed circumferentially about
the catheter.” Final Act. 3. Furthermore, the Examiner finds that Shah
teaches that “each member of the mesh [has] an electrical characteristic that
changes as the member is deformed.” Id. According to the Examiner, Shah
does not teach “a balloon catheter or the mesh members extending
longitudinally around the catheter or that the mesh comprises a grid, or the
mesh being affixed to an outer surface of the balloon catheter.” Id. The
Examiner relies upon de Graff to teach a mesh affixed to an outer surface of
a balloon and Laptewicz to teach a wire mesh having rows and columns. Id.
at 3^4.
Appellants argue that they are “not entirely sure how Shah and de
Graff et al. could actually be combined.” Appeal Br. 11. In particular,
Appellants state that “Shah teaches ‘bow-type springs’ that deform to create
a change in resistance whereas de Graff et al. teaches ‘devices’ that are
interconnected with stretchable interconnects” and “[t]hese are mutually
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Application 13/440,853
exclusive measurement systems.” Id. Continuing with their argument,
Appellants posit that “[i]f the ‘bow-type springs’ of Shah were replaced with
the ‘devices’ and stretchable interconnects of de Graff et al., the device
would not be able to measure a change in an electrical characteristic of the
mesh as claimed.” Id. Further, Appellants argue that “Laptewicz does not
provide for any measurement of an electrical characteristic based on a
change of length.” Id. at 12.
Responding to Appellants’ arguments, the Examiner states that he “is
merely using the design of the mesh [grid of de Graff].” Ans. 12. Further,
the Examiner states that he “is not using the functionality of. . . de Graff.”
Id. With regards to Laptewicz, the Examiner states that “Laptewicz is not
being used to replace the device of Shah but is merely being used to show
the idea of columns and rows intersecting at a node as a knot.” Id. at 13.
Appellants reply by pointing to these passages and arguing that “the result of
the combination provided by the Examiner is the measurement system of
Shah in which a grid (from de Graff et al.) is formed as knots (from
Laptewicz et al.), where the ‘grid’ and the ‘knots’ provide no function or
purpose.” Reply Br. 3.
Analysis
Claims 1 requires, among other things, that “each member of said
mesh having at least one electrical characteristic that changes as the member
is deformed such that, when the member comprises a length (L) a measured
electrical characteristic will be different than when the member comprises a
length (Li) where Li is greater than L.” Appeal Br. 15 (Claims App.). The
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Application 13/440,853
Examiner has not provided any evidence or technical reasoning showing that
the combination of Shah, de Graff, and Laptewicz teaches or suggests this
claim limitation. As Appellants indicate, Shah discloses bow type springs
that deform; however, Shah does not teach that an electrical characteristic of
the springs changes as the springs deform. While it is appreciated that Shah
teaches a change in electrical resistance, a closer reading of Shah indicates
that “[t]he electrical resistance presented by resistive strip 28 varies linearly
with the distance between proximal end 27 of the bow-type spring 25 and
the point of connection of wire 30 to resistive strip 28.” Shah 4:37-41.
Thus, as bow-type spring 25 deflects, such that its proximal end 27 slides
proximally along resistive strip 28, the resistance of the circuit is reduced.
Id. 4:41 44. However, this change in resistance of the circuit, including
both spring 25 and resistive strip 28, is not a change in an electrical
characteristic of the member (spring 25) that is deformed. The Examiner’s
reliance upon Shah as teaching a member “having an electrical characteristic
that changes as the member is deformed” (Final Act. 3) is thus misplaced.
As stated by the Examiner, de Graff is not relied upon for any
functionality and is thus unavailing to cure the deficiency of Shah.
Likewise, the Examiner states Laptewicz is not relied upon to replace the
device of Shah and thus Laptewicz is unavailing to cure this deficiency.
Therefore, it is apparent that the proposed combination of Shah, de Graff,
and Laptewicz does not teach or suggest all of the limitations of claim 1.
Moreover, even accepting the Examiner’s finding that Shah teaches a
member having an electrical characteristic that changes as the member is
deformed, we share Appellants’ confusion about how or why exactly Shah
and de Graff could actually be combined to arrive at the claimed subject
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matter. See Appeal Br. 11. As Appellants point out, De Graff provides
imaging or sensing devices interconnected with stretchable interconnects
such that the devices contact the surface of tissue to perform various
measurements. Id., see de Graff H 7, 9, 101. The devices, not the
stretchable interconnects, of de Graff perform the measurements. The
Examiner does not identify, nor do we discern on our own, any teaching in
de Graff that the stretchable interconnects have an electrical characteristic
that changes as they are deformed. The Examiner determines that it would
have been obvious to modify “Shah with de Graff so that there is even
expansion and contact with the cavity wall.” Final Act. 3^4. As de Graff
provides this uniform expansion and conforming contact with the cavity wall
by providing the stretchable interconnects disclosed therein, and those
stretchable interconnects are not disclosed as having an electrical
characteristic that changes as the member is deformed, it is not sufficiently
clear how the references would be combined to arrive at the claimed subject
matter.
For the above reasons, the Examiner has not established that the
subject matter of claim 1 would have been obvious. Thus, the rejection of
claim 1 is not sustained.
Claims 2, 3, 6, 10, 16, 26, and 27
Claims 2, 3, 6, 10, 16, 26, and 27 depend from claim 1. See Final
Act. 3^4. The Examiner’s rejection of these claims does not overcome the
deficiency identified above for claim 1. Accordingly, for the same reasons
as discussed supra, the rejection of claims 2, 3, 6, 10, 16, 26, and 27 is not
sustained.
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Claim 30
Claim 30 is an independent claim directed to the method of providing
a 3-dimensional image of a cavity. Appeal Br. 19 (Claims App.). Claim 30
contains limitations similar to claim 1, as discussed above. The rejection of
claim 30 suffers from the same deficiency as that of claim 1. Accordingly,
the rejection of claim 30 is not sustained.
Claims 31, 33, 36, 44, 45, 48, and 49
Claims 31, 33, 36, 44, 45, 48, and 49 depend from claim 30. See Id.
The Examiner’s rejection of these claims does not overcome the deficiency
identified above for claim 30. Accordingly, for the same reasons as
discussed supra, the rejection of claims 31, 33, 36, 44, 45, 48, and 49 is not
sustained.
Rejection 2
Claims 4, 5, 7-9, 11,12, 28, 29, 32, 34, 46, and 47
The Examiner’s rejection of claims 4, 5,7—9, 11, 12, 28, 29, 32, 34,
46, and 47 as unpatentable over Shah, de Graff, Laptewicz, and Harlev is
based on the same unsupported findings discussed above with respect to
independent claims 1 and 30, respectively. See Final Act. 4—5. The
Examiner does not rely on Harlev to remedy the deficiencies of Shah, de
Graff and Laptewicz. Accordingly, for reasons similar to those discussed
above, we do not sustain the Examiner’s rejection of claims 4, 5,7—9, 11,
12, 28, 29, 32, 34, 46, and 47 as unpatentable over Shah, de Graff,
Laptewicz, and Harlev.
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Rejection 3
Claims 13 and 35
The Examiner’s rejection of claims 13 and 35 as unpatentable over
Shah, de Graff, Laptewicz, and Okumura is based on the same unsupported
findings discussed above with respect to independent claims 1 and 30,
respectively. See Final Act. 6. The Examiner does not rely on Okumura to
remedy the deficiencies of Shah, de Graff and Laptewicz. Accordingly, for
reasons similar to those discussed above, we do not sustain the Examiner’s
rejection of claims 13 and 35 as unpatentable over Shah, de Graff,
Laptewicz, and Okumura.
Rejection 4
Claims 14 and 15
The Examiner’s rejection of claims 14 and 15 as unpatentable over
Shah, de Graff, Laptewicz, and Gunday is based on the same unsupported
findings discussed above with respect to independent claim 1. See Final
Act. 6. The Examiner does not rely on Gunday to remedy the deficiencies of
Shah, de Graff and Laptewicz. Accordingly, for reasons similar to those
discussed above, we do not sustain the Examiner’s rejection of claims 14
and 15 as unpatentable over Shah, de Graff, Laptewicz, and Gunday.
Rejection 5
Claims 17—20 and 37—39
The Examiner’s rejection of claims 17—20 and 37—39 as unpatentable
over Shah, de Graff, Laptewicz, and Johnson is based on the same
unsupported findings discussed above with respect to independent claims 1
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and 30, respectively. See Final Act. 6—7. The Examiner does not rely on
Johnson to remedy the deficiencies of Shah, de Graff and Laptewicz.
Accordingly, for reasons similar to those discussed above, we do not sustain
the Examiner’s rejection of claims 17—20 and 37—39 as unpatentable over
Shah, de Graff, Laptewicz, and Johnson.
Rejection 6
Claims 21 and 40
The Examiner’s rejection of claims 21 and 40 as unpatentable over
Shah, de Graff, Laptewicz, Johnson, and Honour is based on the same
unsupported findings discussed above with respect to independent claims 1
and 30, respectively. See Final Act. 7—8. The Examiner does not rely on
Johnson or Honour to remedy the deficiencies of Shah, de Graff and
Laptewicz. Accordingly, for reasons similar to those discussed above, we
do not sustain the Examiner’s rejection of claims 21 and 40 as unpatentable
over Shah, de Graff, Laptewicz, Johnson, and Honour.
Rejection 7
Claims 22, 23, and 41
The Examiner’s rejection of claims 22, 23, and 41 as unpatentable
over Shah, de Graff, Laptewicz, Johnson, Honour, and Ghaffari is based on
the same unsupported findings discussed above with respect to independent
claims 1 and 30, respectively. See Final Act. 8—9. The Examiner does not
rely on Johnson, Honour, or Ghaffari to remedy the deficiencies of Shah, de
Graff and Laptewicz. Accordingly, for reasons similar to those discussed
above, we do not sustain the Examiner’s rejection of claims 22, 23, and 41
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as unpatentable over Shah, de Graff, Laptewicz, Johnson, Honour, and
Ghaffari.
Rejection 8
Claims 24, 25, 42, and 43
The Examiner’s rejection of claims 24, 25, 42, and 43 as unpatentable
over Shah, de Graff, Laptewicz, Johnson, and Gazdzinski is based on the
same unsupported findings discussed above with respect to independent
claims 1 and 30, respectively. See Final Act. 9. The Examiner does not rely
on Johnson, or Gazdzinski to remedy the deficiencies of Shah, de Graff and
Laptewicz. Accordingly, for reasons similar to those discussed above, we
do not sustain the Examiner’s rejection of claims 24, 25, 42, and 43 as
unpatentable over Shah, de Graff, Laptewicz, Johnson, and Gazdzinski.
DECISION
The Examiner’s decision to reject claims 1—49 under 35 U.S.C. § 103
is reversed.
REVERSED
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