Ex Parte Long et al

Patent Trial and Appeal Board

Jun 23, 2016

12607252 (P.T.A.B. Jun. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/607,252 10/28/2009
92223 7590 06/27/2016
K&L Gates LLP-Pittsburgh
210 SIXTH AVENUE
PITTSBURGH, PA 15222-2613
FIRST NAMED INVENTOR
GaryL. Long
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.
END6584USNP/090156 4259
EXAMINER
RAM, JOCELYN D
ART UNIT PAPER NUMBER
3739
NOTIFICATION DATE DELIVERY MODE
06/27/2016 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):
uspatentmail@klgates.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GARY L. LONG, DAVID N. PLESCIA,
and OMAR J. V AKHARIA
Appeal2014-004964
Application 12/607,252
Technology Center 3700
Before EDWARD A. BROWN, GEORGE R. HOSKINS, and
JAMES J. MAYBERRY, Administrative Patent Judges.
MAYBERRY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Gary L. Long et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the Examiner's rejections of claims 1 and 20-28. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
The claims are directed to an electrical ablation device. Appeal Br.
40-48, Claims App. Claims 1 and 20 are independent. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
Appeal2014-004964
Application 12/607,252
1. An electrical ablation apparatus, comprising:
first and second lumens, each comprising a distal end
configured to respectively receive a first electrode and a second
electrode, wherein each electrode extends along a longitudinal
axis and comprises a proximal end configured to couple to an
energy source and a distal end extendable from the distal end of
the respective first and second lumens and configured to couple
to a tissue treatment region;
wherein the distal end of the first electrode is pre-formed
with a radius to splay away from the longitudinal axis of the
first electrode when extended distally from the distal end of the
first lumen;
wherein the first electrode is selectively extendable and
retractable relative to the distal end of the first lumen and
selectively rotatable about the longitudinal axis of the first
electrode independent of the second electrode to adjust a
distance between the distal ends of the first and second
electrodes;
wherein the first electrode is movable between a first
position and a second position with respect to the second
electrode;
wherein the first and second electrodes are configured to
induce a zone of cell necrosis in a first shape when the first
electrode is in the first position; and
wherein the first and second electrodes are configured to
induce a zone of necrosis in a second shape when the first
electrode is in the second position.
Appeal Br. 40, Claims App.
REJECTIONS
I. Claims 1 and 20-28 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Fitz (US 2005/0059964 Al, published Mar. 17,
2005) and Arts (US 2010/0057078 Al, published Mar. 4, 2010).
II. Claims 1 and 20-28 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Mowery (US 2006/0200121 Al, Sept. 7, 2006).
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Application 12/607,252
ANALYSIS
Rejection I-Claims 1and25-28
Claim 1 recites, in relevant part, "wherein the first electrode is
selectively extendable and retractable relative to the distal end of the first
lumen and selectively rotatable about the longitudinal axis of the first
electrode independent of the second electrode to adjust a distance between
the distal ends of the first and second electrodes." Appeal Br. 40, Claims
App. (emphasis added). The Examiner finds that Fitz discloses much of the
subject matter of claim 1 except that "Fitz fails to explicitly disclose that the
first electrode is selectively rotatable about its longitudinal axis
independently of the second electrode to adjust a distance between the distal
ends of the first and second electrodes." Final Act. 3--4. The Examiner
further finds that Arts discloses this missing subject matter. Id. at 4. The
Examiner determines that "[i]t would have been obvious to one of ordinary
skill in the art at the time of the invention to modify Fitz so that the
electrodes are independently rotatable about their own axis to enhance the
energy coverage area." Id. As the Examiner explains, "Fitz discloses
moving the electrodes with respect to each other to enhance the energy
coverage area" and "Arts is simply used for the teaching that this relative
movement of two instruments can include rotation in addition to longitudinal
movement." Id. at 7.
Appellants argue that Fitz discloses sliding the electrodes, not
movement in general. Appeal Br. 30. Appellants contend that the Examiner
has failed to meet the burden of establishing prima facie obviousness
because of this flawed factual finding. Id.
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Application 12/607,252
Appellants' argument does not inform us of Examiner error as the
Examiner correctly determines that it would have been obvious to modify
Fitz with the teaching of Arts to include rotation of the electrodes to further
enhance energy coverage of the electrodes. "[W]hen a patent [claim]
'simply arranges old elements with each performing the same function it had
been known to perform' and yields no more than one would expect from
such an arrangement, the combination is obvious." KSR Int 'l Co. v. Teleflex
Inc., 550 U.S. 398, 417 (2007). The Examiner finds that Fitz discloses that
an electrode may be moved longitudinally within a lumen to enhance the
energy coverage area of the electrodes and Arts discloses that an electrode
may be moved in a lumen longitudinally or rotationally. Answer 2-3.
Given Arts' s teachings of both longitudinal and rotational movement, the
Examiner's proposed modification to add rotation to Fitz's longitudinal
movement would result in a predictable combination, where the energy
coverage of the electrodes is enhanced by providing both the longitudinal
movement and rotation of Fitz's curved tines.
Next, Appellants argue that the Examiner's reasoning for combining
Fitz and Arts is deficient, as it relies on impermissible hindsight. Appeal Br.
31. Appellants contend that Fitz merely teaches that longitudinal movement
enhances electrode coverage area, not movement in general, and Arts fails to
disclose the function of rotating the electrode. Id. at 32. Appellants argue
that the only suggestion that rotation enhances coverage area is from
Appellants' own disclosure. Id.
Appellants' argument does not inform us of Examiner error. The
Examiner correctly finds that Fitz suggests that electrode rotation would
enhance electrode coverage area. Answer 3. For example, Fitz discloses
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Application 12/607,252
curved electrode tines, which suggests an enhanced coverage area as the
tines are moved longitudinally, at least at the fixed angles depicted in Fitz's
Figure 2, on which the Examiner relies. Rotation of these tines would
change the angular orientation of the tines and affect a different region of
tissue, enhancing the coverage of the electrodes. One of ordinary skill
could have used his or her ordinary skill, creativity, and common sense to
apply Arts' teaching of rotation to Fitz's longitudinal movement to arrive at
the suggested enhanced coverage area for the tines. See KSR Int'! Co., 550
U.S. at 418 ("[A] court can take account of the inferences and creative steps
that a person of ordinary skill in the art would employ."); see also id. at 421
("[A] person of ordinary skill is also a person of ordinary creativity, not an
automaton.").
For the reasons above, we sustain the Examiner's rejection of claim 1
under 35 U.S.C. § 103(a) as being unpatentable over Fitz and Arts.
Appellants do not provide any arguments for the separate patentability of
claims 25, 26, and 27, which depend, directly or indirectly, from claim 1.
See Appeal Br. 26-39. Accordingly, we sustain the Examiner's rejection of
claims 25-27 under 35 U.S.C. § 103(a) as being unpatentable over Fitz and
Arts.
As to claim 28, Appellants rely on the same arguments presented for
claim 1 in traversing the rejection of claim 28. See Appeal Br. 38-39. As
discussed above, we find these arguments unpersuasive of Examiner error.
Accordingly, we sustain the Examiner's rejection of claim 28 under
35 U.S.C. § 103(a) as being unpatentable over Fitz and Arts.
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Application 12/607,252
Rejection I-Claim 2{}-24
In traversing the rejection of independent claim 20 under Rejection I,
Appellants rely on the same arguments presented for claim 1. See Appeal
Br. 35-37. As discussed above in connection with our analysis of Rejection
I for claim 1, we find these argument unpersuasive of Examiner error.
Accordingly, we sustain the Examiner's rejection of claim 20 under
35 U.S.C. § 103(a) as being unpatentable over Fitz and Arts. Appellants do
not provide any arguments for the separate patentability of claims 21, 22,
and 24, which depend, directly or indirectly, from claim 20. See Appeal Br.
26-39. Accordingly, we sustain the Examiner's rejection of claims 21, 22,
and 24 under 35 U.S.C. § 103(a) as being unpatentable over Fitz and Arts.
As to claim 23, Appellants rely on the same arguments presented for
claims 1 and 20 in traversing the rejection of claim 23. See Appeal Br.
38-39. As discussed above, we find these arguments unpersuasive of
Examiner error. Accordingly, we sustain the Examiner's rejection of claim
23 under 35 U.S.C. § 103(a) as being unpatentable over Fitz and Arts.
Rejection II
Independent claim 1 recites, in relevant part, "wherein the first
electrode is selectively extendable and retractable relative to the distal end of
the first lumen and selectively rotatable about the longitudinal axis of the
first electrode independent of the second electrode to adjust a distance
between the distal ends of the first and second electrodes." Appeal Br. 40,
Claims App. Similarly, independent claim 20 recites, in relevant part,
"wherein a distance between the first and second electrodes is adjustable by
rotating at least one of the first and second electrodes about a central axis of
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Application 12/607,252
the at least one of the first and second electrodes." Id. at 46, Claims App.
The Examiner finds that Mowery discloses much of the subject matter of
claims 1 and 20, but not that the electrode tines are rotated independently
from one another. 1 Final Act. 5---6. The Examiner finds, however, that
Mowery discloses that "[ o ]ne skilled in the art will recognize that the VIPER
provides a plurality of additional deployment configurations, depending on
the number of tines provided in the VIPER and the desire by a user to
operate any number of tines either in unison or independently." Id. (quoting
Mowery i-f 36). The Examiner determines that "it would have been obvious
to one of ordinary skill in the art at the time of the invention to rotate the
tines 80 independently of each other to have greater control over the lesion
area." Id. at 6 (citing Mowery i-f 35).
Appellants argue that the Examiner misinterprets the disclosure in
Mowery in concluding that Mowery renders claims 1 and 20 obvious.
Appeal Br. 13-15. We agree. Mowery's paragraph 36 provides:
One skilled in the art will recognize that the VIPER
provides a plurality of additional deployment configurations,
depending on the number of tines provided in the VIPER and
the desire by a user to operate any number of tines either in
unison or individually. Irrespective of the number of tines and
their selectability, the VIPER provides for simultaneous
rotation of all tines, independent of whether the tines are
1 Although claim 20 does not expressly recite that the tines rotate
individually, we determine that, for "a distance between the first and second
electrodes [to be] adjustable by rotating at least one of the first and second
electrodes about a central axis of the at least one of the first and second
electrodes," the electrodes must rotate individually, as rotating in unison
would not adjust the distance between the electrodes.
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Application 12/607,252
individually linearly deployed or simultaneously deployed in
combination with other tines.
Mowery i-f 36.
The Examiner interprets the first sentence of paragraph 3 6 as
providing for the individual rotation of the tines. See Final Act. 8. As
Appellants argue, the second sentence of paragraph 36 makes clear that the
individual operation of the tines in the first sentence of paragraph 3 6 refers
to the longitudinal movement of the tines, not the individual rotation of the
tines. Appeal Br. 14. Mowery makes clear that the tines are rotated in
unison. See Mowery i-f 36. Accordingly, the Examiner's finding is not
supported by Mowery, and the Examiner's reasoning in support of the
obviousness determination lacks the requisite rational underpinning. See
KSR Int'! Co., 550 U.S. at 418 ("[T]here must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.") (emphasis added).
For the reason above, we do not sustain the Examiner's rejection of
independent claims 1 and 20 under 35 U.S.C. § 103(a) as being unpatentable
over Mowery. We also do not sustain the rejection of claims 21-28, which
depend, directly or indirectly, from claims 1 or 20, under 35 U.S.C. § 103(a)
as being unpatentable over Mowery.
DECISION
For the above reasons, we affirm the Examiner's rejection of claims 1
and 20-28 under 35 U.S.C. § 103(a) as being unpatentable over Fitz and
Arts.
For the above reasons, we reverse the Examiner's rejection of claims
1 and 20-28 under 35 U.S.C. § 103(a) as being unpatentable over Mowery.
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Application 12/607,252
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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