Ex Parte Mauch

Patent Trials and Appeals Board

Mar 6, 2019

14203826 - (D) (P.T.A.B. Mar. 6, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/203,826 03/11/2014 Kevin Mauch
28390 7590 03/08/2019
MEDTRONIC VASCULAR, INC.
IP LEGAL DEPARTMENT
3576 UNOCAL PLACE
SANTA ROSA, CA 95403
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.
P0042035.USU1 8210
EXAMINER
OUYANG,BO
ART UNIT PAPER NUMBER
3794
NOTIFICATION DATE DELIVERY MODE
03/08/2019 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):
rs.vasciplegal@medtronic.com
rs.patents.five@medtronic.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEVIN MAUCH
Appeal2018-000060
Application 14/203,826
Technology Center 3700
Before JOSEPH A. FISCHETTI, CYNTHIA L. MURPHY, and
AMEE A. SHAH, Administrative Patent Judges.
SHAH, Administrative Patent Judge.
DECISION ON APPEAL 1
The Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's
final decision rejecting claims 1--4 and 6-25. We have jurisdiction under
35 U.S.C. § 6(b ).
We REVERSE.
1 Throughout this Decision, we refer to the Appellant's Appeal Brief
("Appeal Br.," filed Apr. 6, 2017), Reply Brief ("Reply Br.," filed Sept. 28,
2017), and Specification ("Spec.," filed Mar. 11, 2014), and to the
Examiner's Answer ("Ans.," mailed July 28, 2017) and Final Office Action
("Final Act.," mailed Sept. 9, 2016).
2 According to the Appellant, the real party in interest is "Medtronic Ardian
Luxembourg S.a.r. l." Appeal Br. 1.
Appeal2018-000060
Application 14/203,826
STATEMENT OF THE CASE
The Appellant's invention relates generally to catheters and
particularly to "neuromodulation catheters including neuromodulation
elements configured to deliver energy to nerves at or near a treatment
location within a body lumen." Spec. ,r 1.
Claims 1, 15, and 22 are the independent claims on appeal. Claim 1
(App. Br. 17 (Claims App.)) is illustrative of the subject matter on appeal
and is reproduced below:
1. A neuromodulation catheter, comprising:
an elongate shaft; and
a neuromodulation element operably connected to the shaft, the
neuromodulation element including -
an elongate support member, and
a plurality of bow springs operably connected to the support
member, the individual bow springs including a distal leg and a
proximal leg, the distal and proximal legs of the plurality of bow
springs being longitudinally interdigitated,
wherein the individual bow springs are configured to
independently expand radially outward from the support member
when the neuromodulation element transitions from a low-profile
delivery state to a deployed state.
REJECTIONS
Claims 1, 2, 6-10, 12-17, 19, 20, and 22-25 stand rejected under
35 U.S.C. § 103 as being unpatentable over Hill et al.
(US 2013/0231659 Al, pub. Sept. 5, 2013) ("Hill").
Claims 3 and 4 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Hill in view of Katoh et al. (US 2008/0306499 Al, pub.
Dec. 11, 2008) ("Katoh").
2
Appeal2018-000060
Application 14/203,826
Claims 11 and 18 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Hill in view of Just et al. (US 2014/0088591 Al, Mar. 27,
2014) ("Just").
Claim 21 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Hill in view of Esposito (US 2006/0058598 Al, pub. Mar. 16, 2006).
ANALYSIS
We agree with the Appellant's contention that the Examiner's
rejection under 35 U.S.C. § 103 of the independent claims is in error because
the Examiner has not adequately shown that Hill renders obvious the
individual bow springs or radial-expansion members configured to expand
radially outward from the support member independently of each other, as
recited in independent claims 1, 15, and 22. See Appeal Br. 10-11; Reply
Br. 2--4.
The Examiner finds that Hill's embodiment as depicted in Figure I IA
teaches the catheter comprising an elongate shaft and a neuromodulation
element including a support member and plurality of bow springs/radial
expansion members. See Final Act. 2-3, 6-7, 10. The Examiner
acknowledges that this embodiment of Hill does not teach the springs or
members expanding independently of each other. Id. at 3, 8, 10. The
Examiner relies on a separate embodiment of Hill's, as described in
paragraph 45, to cure this deficiency, determining that "[i]t would have been
obvious to one of ordinary skill in the art to modify Hill with the
independently expanding struts, replacing the pulling mechanism of Hill" as
"a known alternative to expand struts to reach tissue to be treated" that
"would work equally well to treat the target tissue" and "would allow the
3
Appeal2018-000060
Application 14/203,826
struts to contact tissue without additional input from the user, reducing
complexity of the procedure." Id. at 3, 8; see also id. at 11.
Hill discloses an ablative catheter system embodiment comprising, in
relevant part, pairs of struts 1102, 1104 and 1110, 1112 "fixed proximally
and distally and by rings 1106, 1108 [and 1114, 1116]." Hill ,r 72
( describing Figure 1 lA). The struts may be positioned opposite one another
so that when the vessel is expanded, such as by pulling a pull wire,
alternating apexes are created. Id. In another embodiment, a nerve
modulation assembly may be self-expandable. Id. ,r 45 ( describing
Figure 2B). Self-expandable members are formed of material, such as
Nitonol, that allows for compression when force is applied and expansion
when force is released. Id.
Although Hill teaches a catheter system whereby struts/bow springs or
radial members may be expanded radially outward from the support
member, we do not see, and the Examiner does not adequately explain, how
Hill teaches that the struts/members are expanded independently of each
other, as required by the claims. As the Appellant points out (Reply Br. 3),
Hill is silent about the expansion of the struts or members independently of
each other. We disagree with the Examiner's determination that "it is clear
to one of ordinary skill in the art that the struts would be independently
expandable." Ans. 2-3. Rather, we agree with the Appellant that Hill
teaches expanding the vessel of assembly as a whole, but does not discuss or
teach expanding the individual members independently. See Reply Br. 3.
The Examiner does not adequately show how Hill's discussion of the
expansion of the vessel/assembly shows the struts/members expanding, or
4
Appeal2018-000060
Application 14/203,826
are capable of expanding, independently of each other. Cf Ans. 3
( discussing how/why Hill teaches the struts expanding independently).
Accordingly, based on the record before us, we do not sustain the
rejection of independent claims 1, 15, and 22, and dependent claims 2, 6-10,
12-14, 16, 17, 19, 20, and 23-25, under 35 U.S.C. § 103 as obvious over
Hill.
We also do not sustain the rejections under 35 U.S.C. § 103 of
dependent claims 3, 4, 11, 18, and 21, which rely on the same findings
regarding Hill. See Final Act. 12-14. The additional references used by the
Examiner in rejecting these claims do not remedy the deficiencies noted
above in Hill.
DECISION
The Examiner's rejections of claims 1--4 and 6-25 under 35 U.S.C.
§ 103 are REVERSED.
REVERSED
5