Ex Parte O et al

Patent Trial and Appeal Board

Feb 14, 2017

10622221 (P.T.A.B. Feb. 14, 2017)

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.
10/622,221 07/18/2003 Martin O'Sullivan 50571/Wl 12 4670
23363 7590 02/16/2017
T ewis; Rnra Rnthcrerher Phrisitie T T P
EXAMINER
PO BOX 29001
Glendale, CA 91209-9001
ROANE, AARON F
ART UNIT PAPER NUMBER
3769
NOTIFICATION DATE DELIVERY MODE
02/16/2017 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):
pto@lrrc.com
pair_cph @ firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARTIN O’SULLIVAN, JAMES K. LEE, and IRMA HILL
Appeal 2014-008519
Application 10/622,2211
Technology Center 3700
Before JOHN C. KERINS, STEFAN STAICOVICI, and
BRANDON J. WARNER, Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Martin O’Sullivan et al. (Appellants) appeal under 35 U.S.C. § 134(a)
from the Examiner’s decision rejecting claims 1, 2, 4, 9-17, 19, and 22—32.2
We have jurisdiction over this appeal under 35 U.S.C. § 6(b).
1 According to Appellants, the real party in interest is Biosense
Webster, Inc. Appeal Br. 1 (filed Dec. 20, 2013).
2 Claims 3, 5—8, 18, 20, and 21 are canceled, and claims 33 and 34 are
withdrawn. See id. at 14, 16, and 18 (Claims App.).
Appeal 2014-008519
Application 10/622,221
SUMMARY OF DECISION
We AFFIRM.
INVENTION
Appellants’ invention relates to a “steerable electrode catheter.” Spec.
1,1.7.
Claims 1 and 17 are independent. Claim 1 is illustrative of the
claimed invention and reads as follows:
1. A catheter for ablating tissue, the catheter comprising:
an elongated generally-tubular catheter body having
proximal and distal ends; and
an electrode assembly at the distal end of the catheter
body, the electrode assembly including a porous electrode
arrangement that is generally transverse to the catheter body,
the porous electrode arrangement comprising:
a non-conductive tubing mounted on the distal end
of the catheter, a mid-section of the non-conductive
tubing having shape-memory such that the mid-section of
the tubing is biased into a pre-formed generally heel­
shaped curve comprising a first bend away from a first
central longitudinal axis of the catheter body and a
second bend distal the first bend back toward and past the
first central longitudinal axis of the catheter body,
wherein the non-conductive tubing terminates in a
generally straight distal end having a second central
longitudinal axis that is generally transverse to the first
central longitudinal axis of the catheter body and having
a free distal end, the second central longitudinal axis of
the generally straight distal end forming an angle with the
first central longitudinal axis of the catheter body ranging
from about 75° to about 110°;
a single, continuous coiled electrode wrapped
around at least a portion of the non-conductive tubing,
the single, continuous coiled electrode being electrically
connectable to a suitable energy source;
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Application 10/622,221
a porous sleeve mounted in surrounding relation to
the coiled electrode and defining an open space between
the porous sleeve and the coiled electrode; and
one or more irrigation openings fluidly connecting
the open space to a lumen extending through the catheter
through which fluid can pass;
wherein, in use, fluid passes through the lumen in
the catheter, through the one or more irrigation openings,
into the open space and through the porous sleeve.
REJECTIONS
The following rejections are before us for review:
I. The Examiner rejected claims 1, 2, 4, 9-17, 19, and 22—32
under 35U.S.C. § 112, second paragraph, as being indefinite.
II. The Examiner rejected claims 1, 2, 4, 9-17, 19, and 22—29
under 35 U.S.C. § 103(a) as being unpatentable over Cox (US
6,161,543, iss. Dec. 19, 2000) and Whayne (US 6,203,525 Bl,
iss. Mar. 20, 2001).
III. The Examiner rejected claims 30 and 31 under 35 U.S.C.
§ 103(a) as being unpatentable over Cox, Whayne, and Fung
(US 6,120,476, iss. Sept. 19, 2000).
IV. The Examiner rejected claim 32 under 35 U.S.C. § 103(a) as
being unpatentable over Cox, Whayne, and Swanson (US
5,961,513, iss. Oct. 5, 1999).
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Application 10/622,221
ANALYSIS
Rejection I
The Examiner finds that the term “generally,” as used in the phrases
“generally-tubular,” “generally transverse,” “generally heel-shaped,” and
“generally straight,” “is a relative term which renders the claim[s]
indefinite” because “the claims and [the] [Specification do not limit the
degree of the term ‘generally.’” Final Act. 2 (mailed Jan. 8, 2013).
In response, Appellants contend that a person of ordinary skill in the
art would readily understand that “the term ‘generally,’ as it is used in the
present [Specification and claims, is ... a term of approximation.” Appeal
Br. 8.
The standard for measuring a term of degree need not necessarily be
defined in the Specification with numerical specificity to satisfy the
definiteness requirement. See Cordis Corp. v. Medtronic AVE, Inc., 339
F.3d 1352, 1360 (Fed. Cir. 2003). In this case, the term “generally” may be
used as a term of approximation to mean “mostly” and to allow some degree
of deviation. E.g., North Am. Container, Inc. v. PlastipakPackaging, Inc.,
415 F.3d 1335, 1346 (2005) (“generally” was used as a term of
approximation such that “generally convex” meant “mostly convex”). We
thus agree with Appellants here that
the term “generally” is used to convey that the relevant
component has a shape or position that is approximately straight,
transverse, tubular or heel-shaped, and that the term “generally”
accounts for the inherent variation in shapes and positions and
the difficulty in making a shape or position that is perfectly
straight, transverse, tubular or heel-shaped.
Appeal Br. 8. As such, by not specifying that the claimed relevant
components have a shape or position that is not exactly, but rather
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Application 10/622,221
approximately, straight, transverse, tubular or heel-shaped, the claim terms
are merely broader than exact shapes or positions. See In re Johnson, 558
F.2d 1008, 1016 n. 17 (CCPA 1977) (breadth is not indefmiteness).
In conclusion, for the foregoing reasons, we do not sustain the
rejection of claims 1, 2, 4, 9-17, 19, and 22—32 under 35 U.S.C. § 112,
second paragraph, as being indefinite.
Rejection II
Appellants have not presented arguments for the patentability of
claims 2, 4, 9-17, 19, and 22—29 apart from claim 1. Therefore, in
accordance with 37 C.F.R. § 41.37(c)(l)(iv), we select claim 1 as the
representative claim to decide the appeal of the rejection of these claims,
with claims 2, 4, 9-17, 19, and 22—29 standing or falling with claim 1.
The Examiner finds that Cox discloses a tissue ablating catheter
including a
heel-shaped curve comprising a first bend away from the axis of
the catheter body and a second bend back toward and past the
axis of the catheter body and terminates in a generally straight
distal end which end is generally transverse to the axis of the
catheter body. It should further be noted that Cox ... disclose[s]
the generally straight distal end of the non-conductive tubing
forms an angle with the axis of the catheter body ranging from
about 75° to about 110°.
Final Act. 3^4 (mailed June 5, 2014) (citing Cox, Figs. 4, 5, 6A—D, 9, 12A,
24, 27, 28, 33, 34, and 45^47); see also Ans. 16—17 (citing Cox, Figs. 4,
19A, 19B, 27,32, 33, and 45).
Appellants argue that the embodiments of Cox’s Figures 5, 9, 12A,
and 24 depict an “elbow portion between the elongated shaft and the
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Application 10/622,221
ablating end” and thus fail to disclose “first and second bends, as presently
recited.” Appeal Br. 11.
In response, the Examiner annotates Figures 4 and 19A of Cox to
show that the angle formed between the claimed first and second
longitudinal axes “is about 75° to about 110°,” as called for by independent
claim 1. See Ans. 15—16. The Examiner further notes that “[sjimilar ax[e]s
can be drawn for figures 19B, 27, 32, 33, and 45).” Id. at 17. The Examiner
then finds that, because the claim uses the less exacting term “about,”
“[w]ith a modest tolerance of ± 20° it is clear the . . . figures of Cox . . .
disclose the recited angle range of about 75° to about 110°, or 55° to 130°.”
Id.
Referring to Figures 4 and 19A of Cox, Appellants respond that “the
Examiner provides no basis in the text of the Cox reference” to find that the
particular angle between the claimed first and second longitudinal axes is
about 75° to about 110°, but rather “appears to rely on his own naked eye
observation of the drawings in the Cox reference.” Reply Br. 4 (emphasis
added). Furthermore, Appellants contend that “none of the probes depicted
in Figures 4 and 19A of Cox appear to disclose” first and second bends, as
called for by independent claim 1. Id.
Although we appreciate Appellants’ position regarding the depicted
probes in Figures 4 and 19A of Cox, nonetheless, we note that the Examiner
has cited to other embodiments in Cox. For example, the Examiner cites to
the probe illustrated in Figure 45. See Final Act. 4; Ans. 17.
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An annotated version of Figure 45 of Cox is shown below:
Cox’s annotated Figure 45 shows a catheter including a catheter body having
a first central longitudinal axis, a non-conductive tubing having a first bend
and a second bend, and a “generally straight distal end” having a second
central longitudinal axis.
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Application 10/622,221
An annotated version of Appellants’ Figure 3 is shown below:
Annotated Figure 3 of Appellants’ Drawings shows a generally-
tubular catheter body 14 having a first central longitudinal axis, a non-
conductive tubing having a first bend and a second bend, and a “generally
straight distal end” having a second central longitudinal axis.
At the outset, we note the similarity between the embodiments of
Appellants’ Figure 3 and Cox’s Figure 45. More specifically, we note that,
similar to Appellants’ annotated Figure 3, annotated Figure 45 of Cox
illustrates a generally-tubular catheter body (reference number 332) having a
first central longitudinal axis (1st longitudinal axis).3 Cox’s annotated Figure
45 similarly illustrates a non-conductive tubing having a mid-section
including “a first bend away from [the] first central longitudinal axis of the
catheter body” (first bend) and “a second bend distal the first bend back
toward and past the first central longitudinal axis of the catheter body”
Parentheticals refer to the annotations.
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Application 10/622,221
(second bend), as recited in claim 1. As in Appellants’ annotated Figure 3,
Cox’s annotated Figure 45 further illustrates a “generally straight distal end”
(reference number 338) having a second central longitudinal axis (2nd
longitudinal axis).
Although we appreciate that Cox fails to disclose textually the angle
between first and second longitudinal axes in the embodiment of Figure 45,
nonetheless, we note that a drawing teaches all that it reasonably discloses
and suggests to a person of ordinary skill in the art. In re Aslanian, 590 F.2d
911,914 (CCPA 1979). In this case, a person of ordinary skill in the art
would have readily recognized that the angle between first and second
longitudinal axes in Cox’s annotated Figure 45 is more than 45°, but less
than 90°, that is, “about 75°.” As Appellants’ Specification fails to provide a
standard for measuring the degree of the term “about,” we agree with the
Examiner that the angle between first and second longitudinal axes shown in
Cox’s annotated Figure 45 is “about 75° to about 110°,” as called for by
claim 1. See Ans. 18 (“[A] broad interpretation of ± 20° for the range of
about 75° to about 110°, or 55° to 130°, the figures of Cox . . . clearly
meet[s] this angular range.”).
Moreover, even assuming arguendo that the angle between first and
second longitudinal axes shown in Cox’s annotated Figure 45 is not “about
75° to about 110°,” as Appellants contend, nonetheless, the Examiner
correctly finds that Cox discloses that shaft 332 includes malleable metal rod
334 that allows a user to shape shaft 332 as necessary such that tip 338
reaches the tissue to be ablated. See Final Act. 4 (citing Cox, col. 34,11. 20-
59). Appellants do not persuasively argue the Examiner’s findings and
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Application 10/622,221
reasoning to modify the shape of Cox’s catheter. See id. at 6—7; see also
Ans. 18.
In conclusion, for the foregoing reasons, we sustain the rejection
under 35 U.S.C. § 103(a) of claim 1 as unpatentable over Cox and Whayne.
Claims 2, 4, 9—17, 19, and 22—29 fall with claim 1.
Rejections III and IV
Regarding these rejections, Appellants rely on the arguments
discussed supra in Rejection II. See Appeal Br. 11—12. Accordingly, for the
same reasons as discussed above, we sustain the rejections under 35 U.S.C.
§ 103(a) of claims 30 and 31 as unpatentable over Cox, Whayne, and Fung
and of claim 32 as unpatentable over Cox, Whayne, and Swanson.
SUMMARY
The Examiner’s decision to reject claims 1, 2, 4, 9-17, 19, and 22—32
under 35 U.S.C. § 112, second paragraph, as being indefinite is reversed.
The Examiner’s decision to reject claims 1, 2, 4, 9-17, 19, and 22—29
under 35 U.S.C. § 103(a) as being unpatentable over Cox and Whayne is
affirmed.
The Examiner’s decision to reject claims 30 and 31 under 35 U.S.C.
§ 103(a) as being unpatentable over Cox, Whayne, and Fung is affirmed.
The Examiner’s decision to reject claim 32 under 35 U.S.C. § 103(a)
as being unpatentable over Cox, Whayne, and Swanson is affirmed
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).
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AFFIRMED
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