Ex Parte Krishnan

Patent Trial and Appeal Board

May 11, 2016

12972788 (P.T.A.B. May. 11, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/972,788 12/20/2010
55962 7590
Wiley Rein LLP
Patent Administration
1776 K Street, NW
Washington, DC 20006
05/13/2016
FIRST NAMED INVENTOR
Subramaniam C. Krishnan
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.
OB-052608US 1610
EXAMINER
MALAMUD, DEBORAH LESLIE
ART UNIT PAPER NUMBER
3766
NOTIFICATION DATE DELIVERY MODE
05/13/2016 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):
ptodocket@wileyrein.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SUBRAMANIAM C. KRISHNAN
Appeal2014-005226
Application 12/972,788
Technology Center 3700
Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
JACQUELINE T. HARLOW, Administrative Patent Judges.
PER CURIAM
DECISION ON APPEAL
This is an appeal 1 under 35 U.S.C. § 134 involving claims to an
apparatus for performing transseptal puncture. The Examiner rejected the
claims as anticipated. We have jurisdiction under 35 U.S.C. § 6(b). We
reverse.
1 Appellant identifies the Real Party in Interest as St. Jude Medical, Atrial
Fibrillation Division, Inc. (see App. Br. 2).
Appeal2014-005226
Application 12/972,788
Statement of the Case
Background
Appellant's invention relates to "methods and apparatus for locating
the fossa ovalis, as well as methods and apparatus for performing transseptal
punctures" (Spec. i-f 2).
The Claims
Claims 1-3 and 7 are on appeal. Independent claim 1 is
representative and reads as follows (emphasis added):
1. An apparatus comprising:
a hollow catheter comprising a hollow lumen
terminating at a distal end;
means for measuring cardiac electrical activity
coupled to the distal end of the hollow catheter, wherein the
hollow catheter is navigable through a patient's vasculature;
and
wherein said hollow lumen is adapted to receive a
second medical device having a length greater than that of the
hollow catheter, and
wherein the second medical device comprises a
transseptal needle comprising means for advancing and
retracting said transseptal needle into and through the hollow
lumen to an extent that, when said transseptal needle is
advanced, a distal tip of the transseptal needle protrudes
beyond the distal end of the hollow catheter.
The Issue
The Examiner rejected claims 1-3 and 7 under 35 U.S.C. § 102(e) as
being anticipated by Swanson2 (Ans. 3--4).
The issue with respect to this rejection is: Does the evidence of
record support the Examiner's findings that Swanson anticipates claim 1?
2 Swanson et al., US 6,668,198 B2, issued Dec. 23, 2003.
2
Appeal2014-005226
Application 12/972,788
Findings of Fact
1. Swanson teaches
[a] catheter assembly compnsmg a elongated, flexible
support structure having an axis. The assembly also includes
an elongated porous electrode assembly carried by the
support structure along the axis for contact with tissue. The
elongated porous electrode assembly comprises a wall having
an exterior peripherally surrounding an interior area, a lumen
to convey a medium containing ions into the interior area, and
an element coupling the medium within the interior area to a
source of electrical energy.
(Swanson Abstract; see also Ans. 3--4.)
2. Swanson's Figure 1 is reproduced below:
FJG. 1
Figure 1 shows "a multiple electrode probe 10 that includes a structure 20
carrying multiple electrode elements 28" (Swanson 7:46--47; see also Ans.
3--4).
3. Swanson's Figure 2A is reproduced below:
20
rB/i--~ '~~ 2~--1 r r'"
C[_t~-~~~----,dQ;------- 12~·~~~~~"1:=:.::
3
Appeal2014-005226
Application 12/972,788
Figure 2A shows that "the support structure 20 comprises a flexible spline
leg 22 surrounded by a flexible, electrically nonconductive sleeve 32. The
multiple electrodes 28 are carried by the sleeve 32" (Swanson 8:4--7; see
also Ans. 3--4 ).
4. Swanson teaches
A transeptal approach will most likely be used to create
left atrial lesions. In a transeptal approach, an introducing
sheath is inserted into the right atrium through the use of a
dilator. Once the dilator/sheath combination is placed near
the fossa ovalis under fluoroscopic guidance, a needle is
inserted through the dilator and is advanced through the fossa
ovalis. Once the needle has been confirmed to reside in the
left atrium by fluoroscopic observation of radiopaque contrast
material injected through the needle lumen, the dilator/sheath
combination is advanced over the needle and into the left
atrium. At this point, the dilator is removed leaving the sheath
in the left atrium.
(Swanson 22:18-29; see also Ans. 4.)
Principles of Law
An anticipatory reference under 35 U.S.C. § 102
must clearly and unequivocally disclose the claimed
compound or direct those skilled in the art to the compound
without any need for picking, choosing, and combining
various disclosures not directly related to each other by the
teachings of the cited reference. Such picking and choosing
may be entirely proper in the making of a 103, obviousness
rejection, where the applicant must be afforded an
opportunity to rebut with objective evidence any inference of
obviousness which may arise from the similarity of the
subject matter which he claims to the prior art, but it has no
place in the making of a 102, anticipation rejection.
In re Arkley, 455 F.2d 586, 587-588 (CCP A 1972).
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Appeal2014-005226
Application 12/972,788
Analysis
Appellant contends that
Swanson, however, does not expressly or inherently teach that
sheath 26 includes "means for measuring cardiac electrical
activity coupled to the distal end" thereof ... Swanson's
structure 20 lacks the open end that the skilled artisan would
understand is part of the claimed "hollow catheter." ... even if
some component disclosed in Swanson, whether sheath 26 or
structure 20, could be mapped accurately to the claimed
"hollow catheter" ... the claimed invention would still be novel
because Swanson does not expressly or inherently disclose an
apparatus that includes both the claimed hollow catheter and a
transseptal needle.
(App. Br. 9.)
The Examiner finds that "sheath 26 is considered to be the hollow
catheter comprising a hollow lumen as claimed" (Ans. 5). The Examiner
also finds that "Swanson discloses that a needle is urged through the sheath,
or a dilator/sheath as in col. 22, lines 18-29. Therefore, in express
disclosure, Swanson discloses the needle protruding past the end of the
hollow lumen as in the claim" (Ans. 5).
We find that Appellant has the better position. The claim requires two
elements, a catheter comprising a "means for measuring cardiac electrical
activity" and a transseptal needle that can be advanced and retracted through
the catheter. The Examiner has identified separate teachings in Swanson for
these elements (FF 1--4). However, in order to obtain the claimed invention,
the ordinary artisan would need to pick sheath 26 coupled to electrode 20
(FF 3) and then separately pick a transseptal needle (FF 4), because the
Examiner does not identify any disclosure in Swanson showing these two
elements combined in a single apparatus as required by claim 1.
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Appeal2014-005226
Application 12/972,788
Instead, the Examiner picks distinct teachings from different parts of
Swanson for the catheter and transseptal needle that were not taught as
integrated components, and finds anticipation. However, in an anticipation
rejection, "it is not enough that the prior art reference ... includes multiple,
distinct teachings that. .. [an ordinary] artisan might somehow combine to
achieve the claimed invention." Net MoneyIN, Inc. v. VeriSign, Inc., 545
F.3d 1359, 1371 (Fed. Cir. 2008). Rather, the reference must "clearly and
unequivocally disclose the claimed [invention] or direct those skilled in the
art to the [invention] without any need for picking, choosing, and combining
various disclosures not directly related to each other by the teachings of the
cited reference." Id.
Conclusion of Law
The evidence of record does not support the Examiner's findings that
Swanson anticipates claim 1.
SUMMARY
In sum, we reverse the rejection of claims 1-3 and 7 under 35 U.S.C.
§ 102( e) as being anticipated by Swanson.
REVERSED
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