Ex Parte Klimovitch

Patent Trial and Appeal Board

Feb 8, 2016

12428173 (P.T.A.B. Feb. 8, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/428,173 0412212009
67337 7590 02/10/2016
DYKEMA GOSSETT PLLC (STJ)
4000 Wells Fargo Center
90 South Seventh Street
Minneapolis, MN 55402
FIRST NAMED INVENTOR
Gleb V. Klimovitch
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.
OE-043700US
(065513-0216)
CONFIRMATION NO.
8392
EXAMINER
CARPENTER, WILLIAM R
ART UNIT PAPER NUMBER
3763
NOTIFICATION DATE DELIVERY MODE
02/10/2016 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):
MN_IPMail@dykema.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GLEB V. KLIMOVITCH
Appeal2013-002273
Application 12/428, 173
Technology Center 3700
Before JOHN C. KERINS, LYNNE H. BROWNE, and JILL D. HILL,
Administrative Patent Judges.
HILL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Warren L. Starkebaum et al. (Appellants) appeal under 35 U.S.C.
§ 134 from the Examiner's decision rejecting claims 7-29 and 34--41. 1 We
have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
CLAIMED SUBJECT MATTER
Sole independent claim 1, reproduced below, represents the claimed
subject matter.
1 Claims 1---6 and 30-33 have been withdrawn from consideration. Final
Act. 1.
Appeal2013-002273
Application 12/428, 173
1. A method of ablating a tissue site, comprising the steps of:
during a first stage, conducting bipolar ablation between a
first pair of electrodes in an opposing arrangement on opposing
sides of the tissue site so as to form a pair of opposing first stage
ablation regions in the site; and
during a second stage, conducting bipolar ablation
between a second pair of electrodes in a diametrical arrangement
with respect to the first stage ablation regions to form a second
stage ablation region intermediate said first stage ablation
reg10ns.
Appeal Br. Claims App.
REJECTIONS
I. Claims 1-3 and 12-19 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Witt (US 2002/0111624 Al, pub. Aug. 15, 2002) and
Gollnick (US 2010/0022999 Al, pub. Jan 28, 2010). Final Act. 2.
II. Claims 20 and 21 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Witt, Gollnick, and Swanson (US 2005/0043727 Al, pub.
Feb. 24, 2005). Final Act. 6.
OPINION
Rejection I
Appellant argues claims 1-3 and 12-19 as a group. Appeal Br. 10.
We select claim 1 as representative. Claims 2-3 and 12-19 stand or fall
with claim 1.
Regarding Claim 1, the Examiner finds that Witt discloses an
embodiment in Fig. 40 having a pair of electrodes 542, 546 in opposing
arrangement that he considers to form a pair of first stage ablation regions,
and an embodiment in Fig. 6 having electrodes 42, 44, 46, 48 in a
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Application 12/428, 173
"diametrical arrangement" that he considers to form a second stage ablation
at the focal point of the arrow (current flow line) running between electrodes
42 and 48, and the arrow (current flow line) running between 44 and 46.
Final Act 2-3. The Examiner finds that Witt fails to disclose performing
ablation in first and second stages having defined regions, but finds that
Gollnick discloses using multiple stages to treat multiple regions to target
tissue, and altering the separation distance and positioning of electrodes to
treat target tissue at differing locations/depths. Final Act. 3 (citing Gollnick,
Fig. 1 A, Fig. 1 B, i-f 7 0). The Examiner concludes that Gollnick "provid[ es]
support for an embodiment wherein the ablative energy is applied to
multiple depths of the same tissue by altering the distance between the
electrodes," and that it therefore would have been obvious to employ both
Witt's opposed electrode pair (Fig. 40) and Witt's diametrical electrode pairs
(Fig. 6) to treat a single region of patient tissue "to allow the electrodes to
penetrate to different tissue depths as governed by their separation distance,
thereby creating complete ablation at each stage of tissue depth." Id. at 3--4.
Appellant first argues that neither Witt nor Gollnick discloses
electrodes in a diametrical arrangement with respect to "first stage ablation
regions" to form a second stage ablation region that is "intermediate" the
first stage ablation regions. Appeal Br. 3; Reply Br. 1. Appellant notes
specifically that Witt does not teach or suggest that its embodiments in
Figures 6 and 40 can or should be used in combination. Id. at 4.
While Appellant is correct that Witt teaches the embodiments of
Figures 6 and 40 as alternatives, this argument addresses Witt and Gollnick
individually, rather than addressing the combination of Witt and Gollnick set
forth by the Examiner. Other arguments in the Appeal Brief and the other
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Application 12/428, 173
arguments set forth at pages 2-7 of the Reply Brief discuss the teachings of
each of Witt and Gollnick extensively, but not the combination thereof
proposed by the Examiner.
Appellant then argues that the Examiner's characterization of
Gollnick as teaching ablation depth varying with electrode separation
distance "is at best incomplete" and would not motivate one skilled in the art
to modify Witt as proposed by the Examiner. Appeal Br. 5, 7; Reply Br. 4--
8. Appellant notes the distinction between electrical current path and
ablated tissue volume, arguing that Gollnick may teach varying current path
when varying its electrode separation distance, but does not thereby teach
varying the depth of the current path or the depth of tissue ablation, because
factors other than electrode location affect tissue ablation depth. Appeal Br.
5-7 (citing Spec. i12).
We are not persuaded by Appellant's argument regarding Gollnick,
which specifically states that varying the separation distance of its
handpieces (electrodes) allows treatment of target tissue at different depths.
Gollnick i170; see Ans. 13-17. While other factors may also have an effect
on ablation depth, Appellant does not persuade us that these render
erroneous Gollnick's teaching of ablation depth varying with electrode
separation distance.
Appellant next argues that "the ablation electrode configurations of
Witt appear to have relatively little room for adjusting the separation
distance between electrodes," because Witt's electrodes must stay in contact
with the skin, which precludes increasing the separation distance thereof as
suggested by Gollnick. Appeal Br. 7. Appellant further argues that
modifying Witt to combine the embodiments of its Figures 6 and 40 would
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Application 12/428, 173
not involve adjusting the electrode separation distance, making Gollnick
"ineffective to motivate one of ordinary skill in the art along the lines
contended by the Examiner." Id.
The Examiner responds that the proposed combination of Witt and
Gollnick provides electrode pairs having a plurality of separation distances,
rather than an adjustable separation distance, and that modifying Witt to use
both its embodiment of Figure 6 and its embodiment of Figure 40 provides a
plurality of separation distances. See Ans. 17-18. We agree with the
Examiner that Gollnick teaches of a plurality of separation distances to reach
varying depths, and that Witt's electrodes need not be adjustable to
accommodate the teachings of Gollnick.
Appellant further argues that Gollnick's "treatment" is not necessarily
co-extensive with the volume of ablated tissue, so that Gollnick's teaching
of treating target tissues at different depths is ineffective in providing a
suitable motivation to one skilled in the art. Appeal Br. 7-8.
The Examiner responds that Gollnick's treatment "is generally the
creation of an ablative volume (Par. 15, 16, 18, and 86); with ablation
explicitly referenced as one of the types of treatment the device is concerned
with (Par. 86)," so that one skilled in the art would understand Gollnick's
"treatment" to disclose "creation of ablative volumes." Ans. 18-19. We
agree with the Examiner and note that, in addition to the claims not reciting
the volume of the ablated tissue, Appellant has not explained why Gollnick's
"treatment" is not co-extensive with the volume of ablated tissue, or why
that would cause the Examiner's stated reasoning to lack a rational
underpinning.
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Appeal2013-002273
Application I2/428, I 73
Appellant argues that Gollnick "is devoid of any teaching that would
motivate" one skilled in the art to coordinate "a first stage and a second
stage of ablation," or to arrange electrodes diametrically "with respect to the
first stage ablation regions" to form second stage ablation regions that are
intermediate the first stage ablation regions. Appeal Br. 8.
The Examiner responds that "Gollnick explicitly contemplates a
multi-stage ablation procedure (see Fig. IA and Fig. IB) that may be
performed in a sequential method at the same patient treatment region (i.e.
tissue site) (Par. 70)." Ans. I9. The Examiner has the better position.
Despite neither reference using the term "stage" or "region," Appellant
simply has not explained why the Examiner's proposed combination would
not create the claimed first and second regions when applied in the claimed
successive stages.
Appellant also argues that Gollnick teaches away from a two-stage
ablation method "including the recited arrangement of the second pair of
electrodes during the second stage," because Gollnick's second stage is
shown in its Figure IB to be adjacent its first stage and lackoverlap.
Appeal Br. 8; Reply Br. 7-8.
Regarding teaching away, the Examiner responds that "Gollnick
cannot be construed as 'teaching away' because it does not disparage,
admonish, or otherwise discourage the claimed solution." Ans. I9; see In re
Fulton, 39I F.3d 1195, I200-0I (Fed. Cir. 2004). The Examiner also
responds that one skilled in the art would "recognize and appreciate that the
precise locations of the electrodes in Fig[s]. IA and IB are intended only to
be exemplary, and not exhaustive." Id. at I9-20. We agree with the
Examiner. Claim I does not recite any overlap in treatment regions. One
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Application 12/428, 173
skilled in the art would understand that Gollnick's intent, like Appellant's, is
to treat a single region of a patient at various depths via electrode placement.
Further, even if Gollnick were considered to only address adjacent regions,
with overlapping of regions being claimed, treating adjacent/non-
overlapping stages does not, itself, "disparage, admonish, or otherwise
discourage" forming first ablation regions and then forming "a second stage
ablation region intermediate said first stage ablation regions" as recited in
claim 1.
Appellant then argues that Gollnick's "treatment of 'a single region of
a patient' does not teach or suggest 'a single region of patient tissue,"' but
rather refers to "a general body area of the patient." Appeal Br. 9.
The Examiner responds that Gollnick's treatment of regions is
treatment of tissue, because "Gollnick utilizes the phrase 'region' to denote
areas of 'skin or target tissue' (Par. 87 or 90)." Ans. 20 (also citing Gollnick
i-f 150). The Examiner is correct. Gollnick's cited paragraphs disclose tissue
treatment.
Appellant further argues that the claimed invention "allow[ s] for
achieving complete ablation" while "reduc[ing] the volume of tissue that
needs to be ablated to achieve complete ablation." Id. The Examiner
responds that Appellant's recognition of another advantage that "flow[s]
naturally from following the suggestion of the prior art cannot be the basis
for patentability when the differences would otherwise be obvious." Ans. 21
(citing Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985)).
We agree with the Examiner that a recognized advantage of the prior art is
not, itself, patentable, and further note, in any event, that complete ablation
and reduction of ablated tissue volume are not recited in the claims.
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Application 12/428, 173
Regarding Appellant's argument that the embodiments of Witt's
Figures 6 and 40 are both described as ablating the same tissue depth and
therefore one skilled in the art would not be motivated by Gollnick's
teaching of varying depths to combine Witt's embodiments (Reply Br. 8-9),
this argument is made for the first time in the Reply Brief, does not appear to
be responsive to any argument raised in the Examiner's Answer, and good
cause has not been shown as to why this argument was not earlier presented
and should now be considered. We decline to consider this argument
without providing the Examiner with an opportunity to respond. See 37
CPR 41.41(b)(2); MPEP 1205.02 (iv).
For the reasons set forth above, we sustain Rejection I.
Rejection II
Appellant makes no argument that claims 20 and 21 would be
patentable over Witt, Gollnick, and Swanson if claim 1 is not patentable
over Witt and Golnick. Appeal Br. 10. We therefore sustain Rejection II for
the reasons set forth above.
DECISION
We AFFIRM the rejection of claims 1-3 and 12-19 under 35 U.S.C.
§ 103(a) as unpatentable over Witt and Gollnick.
We AFFIRM the rejection of claims 20 and 21 under 35 U.S.C.
§ 103(a) as unpatentable over Witt, Gollnick, and Swanson.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
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Appeal2013-002273
Application 12/428, 173
AFFIRMED
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