Ex Parte Long

Board of Patent Appeals and Interferences

Feb 15, 2012

10986602 (B.P.A.I. Feb. 15, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/986,602 11/10/2004 Gary L. Long END-5253 1336
21884 7590 02/16/2012
WELSH FLAXMAN & GITLER LLC
2000 DUKE STREET, SUITE 100
ALEXANDRIA, VA 22314
EXAMINER
PEFFLEY, MICHAEL F
ART UNIT PAPER NUMBER
3739
MAIL DATE DELIVERY MODE
02/16/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte GARY L. LONG
__________

Appeal 2010-010407
Application 10/986,602
Technology Center 3700
__________

Before ERIC GRIMES, FRANCISCO C. PRATS, and
STEPHEN WALSH, Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the rejection of
claims directed to a medical device and a method of performing a procedure
on a patient. The Patent Examiner rejected the claims for obviousness. We
have jurisdiction under 35 U.S.C. § 6(b). We reverse.
Appeal 2010-010407
Application 10/986,602

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STATEMENT OF THE CASE
Claims 1, 2, 6-9, 13-15, 18, 19, 24, and 25 are on appeal. Claims 1
and 18 are representative and read as follows (emphasis added):
1. A medical device for performing a therapeutic procedure on a patient
comprising:
an elongate probe extending to an applicator end sized and shaped to
be slidably received in an endoscope working channel;
an injection needle positioned adjacent the applicator end of the probe
and communicatible with a fluid source for delivering fluid and an electrical
energy source for delivering electrical energy to the needle when
performing the therapeutic procedure on the patient, said needle having a
central axis; and
an ablating loop positioned adjacent the applicator end of the probe
and communicatible with said electrical energy source for delivering
electrical energy to the ablating loop when performing the therapeutic
procedure, said ablating loop having a central axis that is spaced from the
central axis of the injection needle;
wherein during operation of the device, the injection needle and
ablating loop have opposite charges for ablating tissue of the patient.

18. A method for performing a procedure on a patient comprising:
guiding a working end of an endoscope to a predetermined location
within the patient;
positioning an ablating loop having a central axis and an injection
needle having a central axis adjacent the working end of the endoscope such
that the central axis of the ablating loop is spaced from the central axis of the
injection needle;
injecting fluid through the injection needle into tissue of the patient
adjacent the predetermined location within the patient; and
applying electrical energy to the injection needle and ablating loop
simultaneously such that the injection needle and ablating loop have
opposite charges, thereby ablating at least a portion of the tissue.

The Examiner rejected the claims under 35 U.S.C. § 103(a) as
unpatentable over Nakao (US 5,741,271, April 21, 1998) and Edwards (US
5,536,267, July 16, 1996).
Appeal 2010-010407
Application 10/986,602

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OBVIOUSNESS
The Issue
The Examiner’s position is that Nakao described a device comprising
an injection needle, but “no specific embodiment where the needle and the
loop are connected to opposite poles in a bipolar pair.” (Ans. 4.) Based on a
finding that “the use of needles as electrodes, and specifically as an electrode
in a bipolar pair, is generally well known in the art,” the Examiner
concluded that it would have been obvious “to make the Nakao et al device a
bipolar device, and to use the needle as an electrode in the bipolar pair.”
(Id.)
Appellants contend that
The teachings of Edward . . . certainly do not support the
conclusion of converting a non-conducting needle of Nakao into an
electrical conducting electrode (having a charge opposite as required
by claims 1, 14, 18 and 25). Ultimately, all that Nakao teaches is a
device including a needle (that is, a tube 722 with a needle point 724
as disclosed by Nakao) and cauterizing loop. The citation of Edwards
does not alter this fact and does not show how the proposed
modification by Edwards would have been obvious to one of ordinary
skill in the art.

(App. Br. 13.) Referring to Nakao’s explanation of how the device is
used, Appellants point out that Nakao’s “tube 722 and the cauterization loop
708 are utilized separately and distinctly from each other [and] the tube 722
is retracted when the cauterization loop 708 is ejected.” (Id. at 16.)
Appellants argue that “[s]ince they are used at separate and distinct times,
the application of a bipolar charge to these structures, or any charge at all to
the tube 722, would not function in a manner enhancing the procedure
Appeal 2010-010407
Application 10/986,602

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disclosed by Nakao. As such, the rationale for the proposed combination
fails as, ultimately, the proposed rationale for the combination does not
enhanc[e] the procedure disclosed by Nakao.” (Id.)
The Examiner responds by referring to different references and argues
that “one of ordinary skill in the art would readily recognize that the Nakao
device may be operated in either a monopolar or a bipolar manner,” and it is
“well-known that injection needles may be used as RF electrodes in
electrosurgical systems.” (Ans. 5-6.)
Findings of Fact
1. Nakao described a
[m]ultiple endoscopic instrument including a cauterization loop, a
flexible web member connected to the cauterization loop or to an
auxiliary loop so as to form a capture pocket, and an elongate flexible
fluid feed tube provided at the distal end with a needle point and an
aperture.

(Nakao, Abstract.)
2. Nakao’s Figure 29 is reproduced here:

Appeal 2010-010407
Application 10/986,602

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{FIG. 29 is a schematic partial perspective view, on an enlarged
scale, of an endoscopic instrument assembly for removing flat
or nonprojecting polyps. (Nakao, col. 7, ll. 7-10.)}
3. Nakao described Fig. 29 as follows:
[a]s illustrated in FIG. 29, an endoscopic instrument assembly 700 for
use in severing and retrieving a flat or nonprojecting polyp from a
wall of a colon or other internal organ comprises . . . an elongate
flexible tube 722 provided at a distal end with a needle point 724 and
an aperture 726. Tube 722 is disposed at least partially in tubular
member 702 and is provided at a proximal end with a fluid feed
connector 728 for coupling the tube to a pressurizable liquid supply
730, whereby fluid is fed to tube 722 for ejection through aperture
726.

(Id., col. 18, ll. 12-37.)
4. Nakao described the use of instrument assembly 700 as follows:
Upon a detection of what appears to be a flat or nonprojecting polyp
FP along colon wall WC, tubular member 702 is shifted in the distal
direction to eject a distal end portion of the tubular member from
biopsy channel 704. In addition, tube 722 is shifted in the distal
direction to eject needle point 724 from tubular member 702. As
shown in FIG. 30A, needle point 724 and aperture 726 are inserted
into the polyp FP, for example, at the base thereof. Liquid is then
transferred through tube 722 from supply 730 and forced out through
aperture 726 into polyp FP to expand the polyp and thereby induce the
polyp to stand away from colon wall WC, as shown in FIG. 30B.
After polyp FP is induced to stand away from wall WC, tube
722 is retracted back into tubular member 702 and cauterization loop
708 is ejected, expanded from a collapsed configuration and placed
about the expanded polyp, as shown in FIG. 30B. . . . Subsequently,
an electrical current is conducted from source 714 along wire 710 to
cauterization loop 708 to sever the expanded polyp FP.

(Id., col. 18, ll. 46-67.)

Appeal 2010-010407
Application 10/986,602

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Analysis
Appellants’ arguments are persuasive. Specifically, Nakao described
its tube 722 simply as a flexible tube. (FF 3.) Nakao did not describe its
flexible tube 722 as an electrical conductor, and the rejection did not
establish that it would have been obvious to make it an electrical conductor.
The rejection did not identify evidence that tube 722 was communicatable
with an electrical energy source. Nakao described retracting tube 722 and
then extending cauterization loop 708. (FF 4.) Thus, there is insufficient
evidence to support a finding that the unmodified Nakao device “may be
operated in . . . a bipolar manner.” (Ans. 5.) The rejection did not establish
that it would have been obvious to change Nakao’s mode of operation.

SUMMARY
We reverse the rejection of claims 1, 2, 6-9, 13-15, 18, 19, 24, and 25
under 35 U.S.C. § 103(a) as unpatentable over Nakao and Edwards.

REVERSED

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