Ex Parte Lee et al

Patent Trial and Appeal Board

Mar 4, 2014

12327171 (P.T.A.B. Mar. 4, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte WARREN LEE, MIRSAID SEYED-BOLORFOROSH,
and DOUGLAS GLENN WILDES
__________

Appeal 2012-001343
Application 12/327,171
Technology Center 3700
__________

Before DEMETRA J. MILLS, ERIC GRIMES and ULRIKE W. JENKS,
Administrative Patent Judges.

MILLS, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134. The Examiner has rejected
the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b).
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STATEMENT OF CASE
The following claims are representative:
1. An integrated therapy and imaging catheter comprising:
a catheter body;
a therapy device having an array of therapy elements; and
an imaging device having an array of imaging elements, the imaging
device configured to capture a real time three-dimensional (3D) imaged
volume,
wherein the therapy device and the imaging device are positioned in
the catheter body and wherein the therapy device and the imaging device
extend along a long axis of the catheter body such that the array of therapy
elements is spaced apart from the array of imaging elements.

8. The catheter of claim 7 wherein the ablation array is configured to
ablate multiple ablation sites simultaneously.

17. A combined therapy and imaging device to capture real-time
images of a lumen and perform therapy therein, the device comprising:
a catheter insertable into a lumen of a subject to be imaged;
an real-time three-dimensional (3D) imaging ultrasound transducer
disposed within the catheter; and
an ablation array disposed within the catheter, the ablation array
comprising a set of independent activatable ablation elements that
collectively create more than one ablation point when the ablation elements
are selectively activated, and wherein the ablation array and the real-time 3D
ultrasound transducer are configured to be integrated into a single
component.

18. The device of claim 17 wherein the ablation array comprises
ablation elements arranged in one or more rings around the catheter.

Cited References

Reichenberger US 5,817,021 Oct. 6, 1998
Seward et al. US 5,699,805 Dec. 23, 1997
Hutchinson et al. US 6,929,608 B1 Aug. 16, 2005
Brosch et al. US 2004/0254569 A1 Dec. 16, 2004
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Grounds of Rejection
Claims 1-7, 9, 12-14, and 16 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Reichenberger in view of Seward.
Claims 8, 10-11, 15, 17 and 19-20 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Reichenberger in view of Seward and
Hutchinson.
Claim 18 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Reichenberger in view of Seward, Hutchinson and Brosch.

FINDINGS OF FACT
The Examiner’s findings of fact are set forth in the Answer at pages
5-9.

Discussion
ISSUE
The Examiner argues that Reichenberger teaches each element
claimed except it does “not specifically disclose that the imaging device has
an array of imaging elements, the imaging device configured to capture a
real time three dimensional (3D) imaged volume.” (Ans. 6.)
Appellants contend that the cited combination of references does not
teach a therapy device having an “array of therapy elements,” as claimed.
(Br. 10.)
The issue is: Does the cited prior art support the Examiner’s finding
that Reichenberger teaches an “array of therapy elements”?
PRINCIPLES OF LAW
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In making our determination, we apply the preponderance of the
evidence standard. See, e.g., Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427
(Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings
before the Office).
Our mandate is to give claims their broadest reasonable interpretation.
In re American Academy of Science Tech Center, 367 F.3d 1359, 1364 (Fed.
Cir. 2004). “An essential purpose of patent examination is to fashion claims
that are precise, clear, correct, and unambiguous. Only in this way can
uncertainties of claim scope be removed, as much as possible, during the
administrative process.” In re Zletz, 893 F.2d 319, 322 (Fed. Cir. 1989).
We decline to read limitations from the specification into the claims, a
practice that the Court of Appeals for the Federal Circuit, our reviewing
court, cautions against. See SuperGuideCorp. v. DirecTV Enterprises, Inc.,
358 F.3d 870, 875 (Fed. Cir. 2004) (“Though understanding the claim
language may be aided by explanations contained in the written description,
it is important not to import into the claim limitations that are not part of the
claim. For example, a particular embodiment in the written description may
not be read into a claim when the claim language is broader than the
embodiment.”).
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness. Only if that
burden is met, does the burden of coming forward with evidence or
argument shift to the applicant.” In re Rijckaert, 9 F.3d 1531, 1532 (Fed.
Cir. 1993) (citations omitted). In order to determine whether a prima facie
case of obviousness has been established, we consider the factors set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966): (1) the scope and content
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of the prior art; (2) the differences between the prior art and the claims at
issue; (3) the level of ordinary skill in the relevant art; and (4) objective
evidence of nonobviousness, if present.
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).

ANALYSIS
We select claims 1, 17, and 18 as representative of the obviousness
rejections before us. Appellants present similar argument for claim 12 as for
claim 1 (Br. 14), thus claim 12 stands or falls with claim 1.
We agree with the Examiner’s fact finding, statement of the rejection
and responses to Appellant’s arguments as set forth in the Answer. We find
that the Examiner has provided evidence to support a prima facie case of
obviousness. We provide the following additional comment to argument set
forth in the Answer.
Our mandate is to give claims their broadest reasonable interpretation.
In re American Academy of Science Tech Center, 367 F.3d 1359, 1364 (Fed.
Cir. 2004). “An essential purpose of patent examination is to fashion claims
that are precise, clear, correct, and unambiguous. Only in this way can
uncertainties of claim scope be removed, as much as possible, during the
administrative process.” In re Zletz, 893 F.2d 319, 322 (Fed. Cir. 1989).
Claim 1 before us merely requires an “array of therapy elements.”
There is no specificity in the claims as to the location of the multiple therapy
elements, only the requirement that they be an array, i.e., “an ordered set of
related elements”. (Ans. 10.) We decline to read limitations from the
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Specification into the claims, a practice that the Court of Appeals for the
Federal Circuit, our reviewing court, cautions against. See SuperGuideCorp.
v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). Figure 3
of Reichenberger is reproduced below.

Figure 3 of Reichenberger shows multiple therapeutic ultrasound
transducers 2 in an array within a catheter (not numbered) (Reichenberger,
col. 4, ll. 21-22). Appellants have not explained why the aligned, multiple
therapeutic ultrasound transducers (element 2) of Reichenberger fail to meet
the limitation of “an array of therapy elements”. Appellants argue that a
“single piezoelectric transducer element 8 [within each transducer 2 (Fig. 5)]
of Reichenberger cannot be considered an ‘array of therapy elements’, as
only one therapy element is present in each therapeutic ultrasound
transducer 2.” (Br. 11.) This argument, however, fails to address the
Examiner’s contention that the two transducers 2 of Reichenberger taken
together, constitute an “array of therapy elements.” Nor is there a
requirement in the claims for there to be multiple adjacent transducer
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elements (piezoelectric elements) within each transducer. In addition,
Seward further evidences that transducer arrays with multiple transducers in
the therapy device array were well known at the time of the present
invention. (See Seward, col. 4, ll. 11-13, and 52-65; Fig. 1, element 48, and
abstract.)
With respect to claim 17, Appellants argue that
Hutchinson fails to teach the ablation array including a set of
independent activatable ablation elements that collectively create more
than one ablation point when the ablation elements are selectively
activated as claimed in independent claim 17. In addition, as
previously described, Appellants reiterate the combination of
Reichenberger and Seward fails to render obvious independent claim
17.

(Br. 18.) Appellants argue that claim 18 is unobvious as well, because it
depends from claim 17 (Br. 20).
Claims 17 and 18 are affirmed for the reasons given in the Answer,
pages 8-9. As the Examiner found, Hutchinson teaches “an array of
radiating elements used to generate ultrasound energy that can be
independently controlled and used to product double foci (ablation points)
(see Answer 8; Hutchinson, col. 11, ll. 46-66, col. 16, ll. 20-52).
In view of the above, Appellants have failed to rebut the Examiner’s
obviousness rejections by a preponderance of the evidence.

CONCLUSION OF LAW
The cited references support the Examiner’s obviousness rejections,
which are affirmed for the reasons of record.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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