Ex Parte Keogh et al

Patent Trial and Appeal Board

Jan 10, 2019

15098494 (P.T.A.B. Jan. 10, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
15/098,494 04/14/2016 James R. Keogh
28390 7590 01/14/2019
MEDTRONIC VASCULAR, INC.
IP LEGAL DEPARTMENT
3576 UNOCAL PLACE
SANTA ROSA, CA 95403
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.
P0023856.USC6 4622
EXAMINER
SMITH, RUTHS
ART UNIT PAPER NUMBER
3793
NOTIFICATION DATE DELIVERY MODE
01/14/2019 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):
rs.vasciplegal@medtronic.com
rs.patents.five@medtronic.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES R. KEOGH, TIMOTHY R. RYAN,
CAROLE. EBERHARDT, MARKT. STEWART,
JAMES R. SKARDA, TIMOTHY G. LASKE,
ALEXANDER J. HILL, JACK D. LEMMON, and
DAVIDE. FRANCISCHELLI
Appeal2018-001908
Application 15/098,494
Technology Center 3700
Before JEREMY M. PLENZLER, AR THUR M. PESLAK, and
BRENT M. DOUGAL, Administrative Patent Judges.
PLENZLER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner's Decision rejecting claims 25--42. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
Appeal2018-001908
Application 15/098,494
CLAIMED SUBJECT MATTER
Claim 25 is independent, with claims 26-42 depending therefrom.
Claim 25 is reproduced below:
25. A method for treating a human patient, the method
compnsmg:
emitting ultrasound energy from an ultrasound transducer
positioned remotely from target tissue of the patient, wherein
the ultrasound transducer is positioned at a desired location
relative to the patient and target tissue using location and
imaging techniques;
focusing the ultrasound energy such that one or more
focal points are directed to the target tissue of the patient; and
ablating the target tissue at each focal point with the
focused ultrasound energy without ablating non-target tissue
through which the ultrasound energy passes between the
ultrasound transducer and the one or more focal points.
REJECTIONS
1. Claims 25-29, 31, 33, 35-37, and 39-42 are rejected under 35
U.S.C. § I02(e) as anticipated by Larson (US 2005/0165298 Al, published
July 28, 2005).
2. Claim 27 is rejected under 35 U.S.C. § I03(a) as being
unpatentable over Larson and Cain (US 6,309,355 Bl, issued Oct. 30, 2001).
3. Claim 30 is rejected under 35 U.S.C. § I03(a) as being
unpatentable over Larson and Govari (US 2004/0162507 Al, published Aug.
19, 2004).
4. Claims 32 and 38 are rejected under 35 U.S.C. § I03(a) as being
unpatentable over Larson.
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Appeal2018-001908
Application 15/098,494
5. Claim 34 is rejected under 35 U.S.C. § I03(a) as being
unpatentable over Larson and Beach (US 6,042,556, issued Mar. 28, 2000)
or Weng (US 2001/0031922 Al, published Oct. 18, 2001).
OPINION
Each of the rejections asserted by the Examiner relies, at least in part,
on Larson. The status of Larson as prior art against the pending application
depends on whether the pending application is entitled to the July 31, 2000
filing date of U.S. Patent No. 6,595,934 ("the '934 patent"), from which it is
a continuation filing. The dispute concerns whether the '934 patent provides
adequate written description support for the pending claims.
The Examiner has the initial burden of presenting evidence of reasons
why persons skilled in the art would not recognize in the disclosure a
description of the invention defined by the claims. In re Wertheim, 541 F .2d
257,263 (CCPA 1976). Although that burden is met when the Examiner
points out that the claim reads on embodiments outside the scope of the
original written description (id.), when the original written description
describes something within the scope of the claim, the Examiner must do
more than point out the difference in scope (see In re Rasmussen, 650 F.2d
1212, 1215 (CCPA 1981).
The Examiner must consider the specific facts of the case and provide
supporting reasoning. In re Smythe, 480 F.2d 1376, 1382 (CCPA
1973). The Examiner can meet his burden by analyzing factors such as the
knowledge of one skilled in the art and the level of predictability in the field
(see Bilstad v. Wakalopulos, 386 F.3d 1116, 1124--26 (Fed. Cir. 2004)), or
by demonstrating that the specification reflects that the invention is no
broader than what is disclosed in the specification, such as distinguishing
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Appeal2018-001908
Application 15/098,494
over the broader disclosure (see Tronzo v. Biomet, Inc., 156 F.3d 1154, 1159
(Fed. Cir. 1998)).
In the case before us, the Examiner's rejection rests simply on an
assertion that the continuation claims are broader than the embodiment in the
parent filing. See Final Act. 7; Ans. 6-7. There is no analysis sufficient to
meet the burden as outlined above. Accordingly, the Examiner has not
established sufficiently that Larson, which is required for each of the
rejections before us, qualifies as prior art against the pending application.
For at least these reasons, we do not sustain the Examiner's decision
to reject claims 25--42.
DECISION
We REVERSE the Examiner's decision to reject claims 25--42.
REVERSED
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