Ex Parte Maschke

Patent Trial and Appeal Board

Oct 31, 2012

11058655 (P.T.A.B. Oct. 31, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
11/058,655 02/15/2005 Michael Maschke 2003P18594US 6989
7590 10/31/2012
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
170 WOOD AVENUE SOUTH
ISELIN, NJ 08830
EXAMINER
CWERN, JONATHAN
ART UNIT PAPER NUMBER
3737
MAIL DATE DELIVERY MODE
10/31/2012 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MICHAEL MASCHKE
____________

Appeal 2010-006931
Application 11/058,655
Technology Center 3700
____________

Before STEFAN STAICOVICI, JAMES P. CALVE, and
SCOTT A. DANIELS, Administrative Patent Judges.

CALVE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the rejection of claims
9-11, 13-16, and 18. App. Br. 2. Claims 1-8, 12, and 17 were cancelled. Id.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
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Application 11/058,655

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CLAIMED SUBJECT MATTER
Claim 9 is representative of the claimed subject matter on appeal:
9. A device for applying and monitoring medical
rotablation, comprising:
a rotablation catheter device;
an intravascular ultrasound (IVUS) catheter
device having an IVUS sensor and an IVUS signaling
line connected to the IVUS sensor for monitoring the
rotablation, the rotablation catheter device and the
IVUS catheter device integrated into one catheter unit
having a catheter tip;
the rotablation catheter device having a rotatable
drill head including particles for grinding distributed on
a working surface of the drill head, the drill head having
an oval shape and being arranged at the catheter tip for
removing vascular plaque, the drill head sized and
configured to deflect normal vascular tissue while
removing plaque from a vascular wall affected by
plaque, wherein the drill head is operatively connected
to the IVUS sensor, wherein the working surface of the
drill head is arranged to rotate at a rotational speed in a
range from 20,000 revolutions-per minute to 150,000
revolutions per minute, wherein the monitoring of the
rotablation with the IVUS sensor and the plaque
removal are performed simultaneously, wherein the
IVUS sensor is disposed in an interior portion of the
drill head;
a hollow catheter jacket for accommodating the
catheter unit, wherein the catheter jacket is configured
to receive a hollow drive shaft coaxially extending
along an interior of the hollow catheter jacket, the drive
shaft coupled to rotate the working surface of the drill
head and the IVUS sensor disposed in the interior
portion of the drill head; and a micro gear unit for
rotatably interconnecting the drive shaft to the working
surface of the drill head and to the IVUS sensor
disposed in the interior portion of the drill head, said
micro gear unit configured so that a rotation speed of
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Application 11/058,655

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the working surface of the drill head is different from a
rotation speed of the IVUS sensor, wherein the rotation
speed of the IVUS sensor is a lower speed relative to
the speed of the working surface of the drill head,
wherein the rotation speed of the IVUS sensor is
regulated with an electronic drive to provide a constant
rotation speed to the IVUS sensor disposed in the
interior portion of the drill head.

REJECTIONS
Claims 9-11 and 15 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Snow (US 6,299,622 B1; iss. Oct. 9, 2001), Hammerslag
(US 5,287,858; iss. Feb. 22, 1994), Sher (US 2006/0015126 A1; pub. Jan.
19, 2006), Kawabuchi (US 4,895,158; iss. Jan. 23, 1990), and Brown (US
6,027,450; iss. Feb. 22, 2000).
Claims 13 and 14 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Snow, Hammerslag, Sher, Kawabuchi, Brown, and
Hastings (US 2002/0019644 A1; pub. Feb. 14, 2002).
Claim 16 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Snow, Hammerslag, Sher, Kawabuchi, Brown, and Corvi (US
5,879,499; iss. Mar. 9, 1999).
Claim 18 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Snow, Hammerslag, Sher, Kawabuchi, Brown, and Ponzi (US
5,897,529; iss. Apr. 27, 1999).
ANALYSIS
Claims 9-11 and 15 as unpatentable over Snow, Hammerslag, Sher,
Kawabuchi, and Brown
Appellant argues claims 9-11 and 15 as a group. App. Br. 4-8. We
select claim 9 as representative. See 37 C.F.R. 41.37(c)(1)(vii) (2011).
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Application 11/058,655

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The Examiner found that Snow discloses an atherectomy catheter that
uses a cutting blade and a material imaging device that can be an ultrasonic
transducer array to excise and image material in a body lumen. Ans. 3-4.
The Examiner found that Snow lacks a drill-type cutting instrument, but that
Hammerslag discloses a rotational atherectomy guidewire that has an oval
shaped drill head with particles for grinding and that operates at speeds up to
200,000 rpm. Ans. 4 (citing col. 4, ll. 25-34; fig. 1a). The Examiner found
that Sher discloses an atherectomy system with an OCT sensor in a drill type
cutting head, balloons, an imaging guidewire, and a controller that controls
rotation of the imaging components. Ans. 4. The Examiner also found that
Kawabuchi discloses an ultrasonic probe that uses a microgear to reduce the
rotational speed of the imaging element relative to the rotational speed of the
motor, and Brown discloses the placement of an IVUS sensor in a drill head.
Ans. 4-5. The Examiner determined that it would have been obvious to
substitute a drill-type cutter of Hammerslag for Snow’s cutting component.
Ans. 5. The Examiner reasoned that because Sher illustrates drill type heads
with imaging systems (Ans. 5), it would have been obvious to combine the
known atherectomy tools of Sher with Snow and Hammerslag (Ans. 9). The
Examiner determined that it would have been obvious to use Kawabuchi’s
microgear in the combined system of Snow, Hammerslag, and Sher to
modify the rotational speed of the imaging sensor relative to the high speed
cutting element so the imaging element can be rotated at a speed suitable for
imaging and the cutting element can rotate at a higher speed to efficiently
remove plaque. Ans. 5.
Appellant argues that it would not have been obvious to combine the
teachings of Snow and Hammerslag because Snow uses cutting knives that
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Application 11/058,655

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run at lower rotational speed than Hammerslag, which rotates at speeds of
about 150,000 rpm. App. Br. 5. Appellant also argues that the Examiner
has not provided a reasonable explanation as to how the rotablation speeds
of Hammerslag would be congruous with the low-speed cutting knives of
Snow. Id. These arguments are not persuasive because the Examiner has
proposed to substitute a drill-type cutter of Hammerslag for Snow’s cutting
components rather than combining the features as Appellant argues. Ans. 5.
The Examiner reasoned that a variety of atherectomy tools are known in the
art and a skilled artisan would select appropriate cutting elements based on a
desired objective of removing particular types of plaque from different body
locations to include substituting Hammerslag’s drill-type cutter for Snow’s
cutting knives. Ans. 8. To the extent Appellant is arguing that Hammerslag
cannot be incorporated bodily into Snow, that is not the test for obviousness.
Appellant argues that Sher does not use a microgear because it rotates
at a speed of not more than 100 rpm and thus teaches away from higher rpm
operations of a rotablator. App. Br. 6. Appellant also argues that Sher
deprecates higher rpm rotation devices so combining Sher with Snow and
Hammerslag would render the combination unsuitable for the objective
purported by the Examiner. Reply Br. 2; App. Br. 6. This argument is not
persuasive because the Examiner relied on Hammerslag to disclose a high
speed rotatable drill and Sher to disclose an imaging guidewire, positioning
balloons, optical fiber in a catheter, OCT sensor in a drill head (Ans. 4) and
example of a drill-type head with an imaging sensor (Ans. 8). Appellant has
not explained why Sher’s lower speed teaches away from combining these
features with Snow and Hammerslag, or how these features would render the
device of Snow and Hammerslag unsuitable for medical rotablation.
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Appellant further argues that it would not have been obvious to
combine Kawabuchi’s probe, which is a large, bulky device useful for a
body coelum, with a drill head to be manipulated inside a vascular vessel of
a human as proposed by the Examiner. App. Br. 7. Appellant contends that
“the Examiner errs in trivializing the substantially different problems faced
by the artisan regarding a device designed for insertion into a blood vessel
(claimed invention) versus a device designed for vaginal or rectal insertion
(Kawabuchi).” Reply Br. 2. This argument is not persuasive because the
Examiner does not propose to combine the device of Kawabuchi with the
devices of Snow or Hammerslag or Sher. Instead, the Examiner proposes to
use a microgear of Kawabuchi’s device in the device of Snow, Hammerslag,
and Sher so the imaging element can be rotated at a speed more suitable for
imaging and the cutting element can efficiently remove plaque at a different
rotational speed. Ans. 5. Kawabuchi uses the microgear 12 to reduce the
rotational speed of a transducer element 15 relative to the rotational speed of
a pulse motor 11 to allow a sector scan. Col. 3, ll. 14-23.
Appellant’s argument that the combination of Snow, Hammerslag,
Sher, Kawabuchi, and Brown does not establish the prima facie obviousness
of claim 9 in view of the foregoing considerations (App. Br. 8) does not
persuade us of error in the Examiner’s findings or conclusion of obviousness
as to claim 9. As such, we sustain the rejection of claims 9-11 and 15.
Claims 13, 14, 16, and 18 as unpatentable over Snow, Hammerslag, Sher,
Kawabuchi, Brown, and Hastings / Corvi / Ponzi
Appellant argues that Hastings, Corvi, and Ponzi, which are relied
upon in the rejections of dependent claims 13, 14, 16, and 18, do not cure the
deficiencies of the primary references as to claim 9. App. Br. 8. Because
we sustain the rejection of claim 9 based on Snow, Hammerslag, Sher,
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Kawabuchi, and Brown, there are no deficiencies to cure for claim 9. We
sustain the rejection of claims 13, 14, 16, and 18.
DECISION
We AFFIRM the rejection of claims 9-11, 13-16, and 18.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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