Ex Parte Hoey et al

Patent Trial and Appeal Board

Aug 4, 2016

13595914 (P.T.A.B. Aug. 4, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/595,914 08/27/2012
66854 7590
SHAY GLENN LLP
2755 CAMPUS DRIVE
SUITE 210
SAN MATEO, CA 94403
08/08/2016
FIRST NAMED INVENTOR
Michael Hoey
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.
10837-700.300 7763
EXAMINER
PEFFLEY, MICHAEL F
ART UNIT PAPER NUMBER
3739
NOTIFICATION DATE DELIVERY MODE
08/08/2016 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):
info@shayglenn.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL HOEY and JOHN H. SHADDUCK
Appeal2014-002846
Application 13/595,914
Technology Center 3700
Before NEALE. ABRAMS, LINDA E. HORNER, and JILL D. HILL,
Administrative Patent Judges.
HILL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Michael Hoey and John H. Shadduck ("Appellants") appeal under 35
U.S.C. § 134(a) from the Examiner's decision to reject claims 1-17. We
have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
Appeal2014-002846
Application 13/595,914
CLAIMED SUBJECT MATTER
Sole independent claim 1, reproduced below, represents the subject
matter on appeal, with the key disputed limitation emphasized.
1. A prostate ablation system, comprising:
a vapor generator; and
a vapor delivery probe operatively coupled to the vapor
generator and adapted to be inserted transurethrally into a
prostate adjacent to a prostatic urethra of a patient, the vapor
delivery probe adapted to deliver condensable vapor from the
vapor generator into the prostate to deliver between 100 and
10, 000 Joules to the prostate to ablate the prostate without
ablating the prostatic urethra.
REJECTIONS
I. Claims 1-9 and 13-17 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Shadduck (US 2006/0135955 Al; pub. June 22, 2006)
and McGaffigan (US 5,873,877; iss. Feb. 23, 1999). Final Act. 2.
II. Claims 10 and 11 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Shadduck, McGaffigan, and Paddock (US 6,238,389 B 1;
iss. May 29, 2001). Final Act. 3.
III. Claim 12 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Shadduck, McGaffigan, and Woodruff (US 6,287 ,297 B 1;
iss. Sept. 11, 2001 ). Final Act. 4.
ANALYSIS
The dispositive issue in this case is whether the Examiner properly
concludes that one skilled in the art would have found it obvious to deliver
between 100 and 10,000 Joules to the prostate via generated vapor.
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Appeal2014-002846
Application 13/595,914
The Examiner finds that, inter alia, Shadduck discloses a vapor
ablation system, but not the specific amount of energy delivered by the
system. Final Act. 2. The Examiner concludes, however, that "those of
ordinary skill in the art would recognize the necessary and acceptable energy
levels suitable for tissue ablation." Id. The Examiner further contends that
Shadduck discloses "operating voltages in a range capable of providing the
claimed energy levels," such that one skilled in the art "versed in the energy
levels necessary for proper ablation of tissue ... would obviously provide
acceptable energy levels for efficaciously performing the disclosed
procedure of ablating tissue." Ans. 3, 4.
Appellants argue that "the Examiner must do more than simply
conclude [that] it would have been obvious to add [the] missing limitation to
the combined disclosures of Shadduck and McGaffigan," and that the
Examiner failed to find evidence in the prior art "describing the amount of
energy delivered by condensable vapor to ablate prostate tissue without
ablating the prostatic urethra." Reply Br. 4.
We agree with Appellants. Both Shadduck and McGaffigan are silent
regarding energy levels that efficaciously ablate tissue. Without any
evidence that the claimed energy level was known to be efficacious, or
general teachings regarding acceptable energy levels for vapor ablation, the
Examiner's rejection impermissibly resorts to speculation. We therefore do
not sustain the rejection of claim 1. Claims 2-9 and 13-17 depend from
claim 1. We do not sustain Rejection I.
Regarding Rejections II and III, claims 1 0-12 depend from claim 1,
and neither Paddock nor Woodruff cures the deficiency set forth above
regarding Rejection I. We therefore do not sustain Rejection II and III.
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Appeal2014-002846
Application 13/595,914
DECISION
We REVERSE the Examiner's rejection of claims 1-9 and 13-17
under 35 U.S.C. § 103(a) as unpatentable over and McGaffigan.
We REVERSE the Examiner's rejection of claims 10 and 11under35
U.S.C. § 103(a) as unpatentable over Shadduck, McGaffigan, and Paddock.
We REVERSE the Examiner's rejection of claim 12 under 35 U.S.C.
§ 103(a) as unpatentable over Shadduck, McGaffigan, and Woodruff.
REVERSED
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