Ex Parte Johnson et al

Board of Patent Appeals and Interferences

May 7, 2008

09916214 (B.P.A.I. May. 7, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte THEODORE C. JOHNSON,
DANIEL J. BALBIERZ, and ROBERT M. PEARSON
____________

Appeal 2008-0411
Application 09/916,214
Technology Center 3700
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Decided: May 7, 2008
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Before JAMESON LEE, TERRY J. OWENS, and RICHARD TORCZON,
Administrative Patent Judges.

Filed by TORCZON, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
The examiner rejected claims 38-42 and 45-71 for anticipation under
35 U.S.C. § 102(b) or, in the alternative, under 35 U.S.C. § 103(a) as having
been obvious (Ans. at 4:9). The appellant (Johnson), seeks review under 35
U.S.C. § 134 (2002). We have jurisdiction under 35 U.S.C. § 6(b) (2002).
Appeal 2008-0411
Application 09/916,214

The examiner relies on the following prior art in rejecting the claims:
E.J. Gough ('484) US Patent 5,800,484 1 Sept. 1998
E.J. Gough ('384) US Patent 5,683,384 4 Nov. 1997

We REVERSE the anticipation and obvious rejections.
THE CLAIMS
The claims on appeal relate generally to an apparatus for performing
ablative therapies to treat tumors using localized impedance measurements
(Spec. at 2). We select independent claim 38 as broadly representative of
the claims on appeal and reproduce it (from the Claim Appendix of the
Appeal Brief, emphasis added) below:
An apparatus for impedance characterization and ablative
treatment of tumors, comprising:
an elongated delivery device including a lumen, the
elongated delivery device being maneuverable in tissue; and
an impedance array comprising a plurality of resilient
members being positionable in the elongated delivery device in
a compacted state and deployable with curvature into tissue
from the elongated delivery device in a deployed state and
defining a sample volume in the deployed state, at least two of
the plurality of resilient members being a sensor member and
including a sensor for determining impedance, where each
sensor member is operatively connected to a separate
impedance energy source, at least some of said resilient
members being electrodes which can be coupled to at least one
ablating energy source for ablating tissue when electrical
energy is supplied to the electrodes from the ablating source;
wherein said impedance array is effective to determine
localized impedance.
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Application 09/916,214

ANTICIPATION UNDER § 102(b)
Issue
Did Johnson establish that the examiner erred in determining that the
prior art anticipated each claim limitation of the patent application?
Findings of Fact
1. The Gough references disclose an ablative system that has one or
more impedance sensors (Gough '384 patent, col. 6, ll. 48-50; Gough '484
patent, col. 5, ll. 20-23).
2. The Gough references disclose that impedance sensors are used to
monitor and determine the level of ablative therapy to be used so that not too
much of the surrounding tissue is destroyed (Gough '384 patent, col. 6, l. 66
to col. 7, l. 3; Gough '484 patent., col. 5, ll. 39-43).
3. The Gough references disclose a multi-antenna device where one
or more sensors can be positioned on the exterior or interior of the primary
or secondary antennas to detect impedance (Gough '383 patent, col. 4, ll. 44-
46; Gough '484 patent Figure 3).
4. The Gough references disclose "an energy source" is connected to
a multi antenna device (Gough '384 patent, col. 4, ll. 16-17; Gough '484
patent, col. 5, ll. 1-3).
5. The Gough references disclose "an energy source" for the arrays
can be a radio frequency, microwave, short wave, or laser energy source, or
the like (Gough '384 patent, col. 6, ll. 35-47; Gough '484 patent, col. 5, ll. 3-
10).
6. The Gough references disclose that the energy source may provide
a combination of energies, specifically radio frequency and microwave
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Application 09/916,214

energies (Gough '384 patent, col. 6, ll. 35-43; Gough '484 patent, col. 5, ll. 3-
9).
Principles of Law
A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference. Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628,
631 (Fed. Cir. 1987).
Under the principle of inherency, if the prior art necessarily functions
in accordance with, or includes, the claimed limitation, it anticipates. In re
Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002).
Inherency may not be established by probabilities or possibilities.
The mere fact that a certain thing may result from a given set of
circumstances is not sufficient. In re Robertson, 169 F.3d 743, 745 (Fed.
Cir. 1999).
During examination, claims are to be given their broadest reasonable
interpretation consistent with the specification. In re American Academy of
Science Tech Center, 367 F.3d 1359, 1364 (Fed. Cir. 2004).
Analysis of Anticipation
Johnson argues that the references do not expressly or inherently
disclose the claim limitation that each sensor is operatively connected to a
separate impedance energy source (Br. at 3). The examiner agrees that the
cited references do not expressly anticipate this contested claim, but goes on
to explain that a separate energy source for each impedance sensor is
inherently disclosed in the Gough references because different antenna
arrays can have different energy sources (Ans. at 5).
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Appeal 2008-0411
Application 09/916,214

We focus our analysis on the contested limitation, which we construe
to mean that the impedance array has one or more impedance sensors, each
of which is connected to a separate impedance energy source. The cited
references used by the examiner have "an energy source" for the antenna
array. The energy source may provide various types of energy, but the
Gough references do not disclose a separate impedance energy source for
each sensor (Findings 1-6). The examiner has not identified where the
contested limitation is inherently disclosed in the Gough references.
The Gough references do not anticipate claim 38. The anticipation
rejection is REVERSED.
OBVIOUSNESS UNDER § 103(a)
The examiner relies on the same two Gough patents as evidence of
obviousness in rejecting the pending claims under 35 U.S.C. § 103 (Ans.
at 6).
Issue
Did Johnson show the examiner erred in rejecting claims 38-42 and
45-71 as being directed to subject matter that would have been obvious in
view of the cited prior art?
Additional Finding of Fact
7. A person of ordinary skill in the art knew that tumors could be
treated by applying heat from various energy sources including radio
frequency, microwave, and ultrasound energy sources (Gough '484 patent,
col. 1, ll. 44-49; Gough '384 patent, col. 1, ll. 45-49).
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8. The Gough '384 patent teaches an apparatus for ablative treatment
that includes multiple sensors (Gough '384 patent, col. 6, ll. 35-43).
9. The Gough '484 patent teaches an ablative system similar to the
'384 patent and adds a method of delivery of electrolytic solution to tumors
(Gough '484 patent, col. 2, ll. 23-26).
10. The contested difference between the prior art and the subject
matter of claim 38 is the claim limitation that the impedance array have at
least two sensor members that includes a sensor for determining impedance,
where each sensor member is operatively connected to a separate impedance
energy source.
Principles of Law for Obviousness
In analyzing obviousness, the scope and content of the prior art must
be determined, the differences between the prior art and the claims
ascertained, and the ordinary level of skill in the art resolved. Graham v.
John Deere Co., 383 U.S. 1, 17 (1966). Mere conclusory statements will not
support an obviousness rejection; instead, the examiner must articulate
reasoning with some rational underpinning to support the legal conclusion of
obviousness. In re Kahn,441 F.3d 977, 988 (Fed. Cir. 2006).
Analysis for Obviousness
Johnson argues the Gough patents do not teach or suggest that the
impedance array has the contested limitation that at least one impedance
sensor member is operatively connected to a separate impedance energy
source, nor would modifying the Gough device to have separate energy
sources have been obvious to one skill in the art (Br. 7-9). The examiner has
a different interpretation of the contested claim limitation. The examiner
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states that an energy source for each impedance sensor would have been
obvious to one of ordinary skill in the art, and points out that both Gough
references disclose a multi-sensor antenna array whereby an impedance
sensor can be located on each antenna array. The examiner goes on to state
that the energy source for each array maybe connected to different energy
source. According to the examiner, the Gough references disclose the
contested claim limitation (Ans. at 6).
The contested claim limitation discussed above in the anticipation
analysis applies equally here. We conclude that the contested claim
limitation requires a separate impedance energy source be operatively
connected to at least one impedance sensor member of the array and the
cited references by the examiner do not satisfy this claim limitation. The
examiner has not shown why someone of ordinary skill in the art prior to the
application would have modified sensors like Gough's to have independent
energy sources.
We conclude that Johnson has sufficiently demonstrated that the
examiner erred in determining that claim 38 is obviousness over the Gough
references. The obvious rejection is REVERSED.
CONCLUSION
The record does not support a finding of anticipation or a conclusion
of obviousness in light or Gough '384 or Gough '484. Consequently, all the
rejections on appeal are —
REVERSED

lb
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Appeal 2008-0411
Application 09/916,214

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