Ex Parte HAVERKOST et al

Patent Trial and Appeal Board

Mar 11, 2019

14485136 (P.T.A.B. Mar. 11, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/485,136 09/12/2014
121974 7590 03/13/2019
KACVINSKY DAISAK BLUNI PLLC
America's Cup Building
50 Doaks Lane
Marblehead, MA 01945
FIRST NAMED INVENTOR
PATRICK A. HAVERKOST
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.
8150BSC0238 3217
EXAMINER
EKRAMI, YASAMIN
ART UNIT PAPER NUMBER
3794
NOTIFICATION DATE DELIVERY MODE
03/13/2019 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):
bbonneville@kdbfirm.com
docketing@kdbfirm.com
ehysesani@kdbfirm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PATRICK A. HA VERKOST, MARY M. BYRON,
CASS A. HANSON, MARTIN R. WILLARD,
DEREK C. SUTERMEISTER, ROBERT N. SQUIRE, and
BRIAN K. JABLONSKI
Appeal2018-007150
Application 14/485,136 1
Technology Center 3700
Before NINA L. MEDLOCK, PHILIP J. HOFFMANN, and
KENNETH G. SCHOPPER, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellants appeal from the
Examiner's rejection of claims 1, 2, 4--15, and 20-25. We have jurisdiction
under 35 U.S.C. § 6(b ).
We REVERSE.
1 Appellants identify "Boston Scientific Scimed, Inc." as the real party in
interest. Appeal Br. 3.
Appeal2018-007150
Application 14/485,136
According to Appellants, the invention is directed "to medical devices
for sympathetic nerve ablation." Spec. 1, 11. 9-10. Claims 1 and 20 are the
independent claims under appeal. Below, we reproduce independent claim 1
as illustrative of the appealed claims.
1. A medical device for sympathetic nerve ablation,
compnsmg:
a catheter shaft;
an expandable balloon coupled to the catheter shaft, the
balloon being capable of shifting between an unexpanded
configuration and an expanded configuration;
a plurality of elongate electrode assemblies each
comprising one or more electrodes disposed on the balloon; and
a cover layer disposed over an outer surface of the
electrode assemblies, wherein the cover layer seals the electrode
assemblies onto the balloon.
REJECTIONS AND PRIOR ART
The Examiner rejects the claims as follows:
I. Claims 1, 2, 4--9, 12, 14, 15, and 20-22 under
35 U.S.C. § 102(b) as anticipated by Salahieh et al.
(US 8,295,902 B2, iss. Oct. 23, 2012) (hereinafter "Salahieh");
II. Claims 10 and 11 under 35 U.S.C. § 103(a) as unpatentable
over Salahieh and Simpson et al. (US 6,692,492 B2, iss.
Feb. 17, 2004) (hereinafter "Simpson");
III. Claim 13 under 35 U.S.C. § 103(a) as unpatentable over
Salahieh and Swanson et al. (US 6,123,702, iss. Sept. 26, 2000)
(hereinafter "Swanson"); and
2
Appeal2018-007150
Application 14/485,136
IV. Claims 23-25 under 35 U.S.C. § 103(a) as unpatentable over
Salahieh and Shapland et al. (US 5,807,306, iss. Sept. 15, 1998)
(hereinafter "Shapland").
ANALYSIS
Reiection I
As set forth above, independent claim 1 recites, in relevant part, "a
cover layer disposed over an outer surface of the electrode assemblies,
wherein the cover layer seals the electrode assemblies onto the balloon."
Appeal Br., Claims App. In the Final Office Action mailed June 29, 2017,
the Examiner finds that Salahieh's "insulating layer 100 is disposed on the
outer surface [ of] ... one or more electrodes 6 and seals the portions of the
electrodes it covers, [(see] Fig[ure]s 2A and 4A[)]." Final Action 3
( emphasis added). Appellants argues that the Examiner errs in rejecting
claim 1 as anticipated by Salahieh because Salahieh does not disclose a
cover layer that seals electrode assemblies onto the balloon. Appeal Br. 7.
In response to Appellants' argument, the Examiner finds that
[i]t is the Examiner's position [that] since ... cover layer 100 is
disposed on the outer surface of the plurality of elongate
electrode assemblies 105 (which include one or more
branches 17 of flex circuit 89, each having one or more
conductive traces 16 and conductive pads 59 wherein one or
more electrodes can be electrically coupled to the flex circuit 89
via the conductive pad 59 of the conductive layer 96), it reads on
the claimed limitation of sealing the electrode assemblies onto
the balloon as broadly as claimed.
Answer 2-3. This statement is inadequate to explain how Salahieh's
insulating layer 100 seals electrode assemblies 105 and their associated
components ( for example) onto a balloon. Each of Salahieh' s Figures 2A
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Appeal2018-007150
Application 14/485,136
and 4A shows a minimal overlap between insulating layer 100 and
electrode 6. Conversely, Salahieh explains that it is "an adhesive" that
retains or seals "electrodes 6 ... to ... membrane 34." Salahieh col. 10,
11. 22-24. Without further findings or explanation, the Examiner does not
support adequately that Salahieh discloses the insulating layer as claimed.
Thus, based on the foregoing, we do not sustain claim 1 's anticipation
rejection. We also do not sustain independent claim 20's anticipation
rejection for substantially the same reasons. Further, we do not sustain the
anticipation rejection of claims 2, 4--9, 12, 14, 15, 21, and 22 that depend
from, and which the Examiner rejects with, these independent claims.
Reiection II-IV
The Examiner does not rely on any reference to remedy the above
deficiency in the independent claims' rejection. Thus, we do not sustain any
of these obviousness rejections of claims 10, 11, 13, and 23-25 that depend
from the independent claims.
DECISION
We REVERSE the Examiner's rejections of claims 1, 2, 4--15,
and 20-25.
REVERSED
4