Ex Parte Ostrovsky

Patent Trial and Appeal Board

Feb 22, 2013

11289981 (P.T.A.B. Feb. 22, 2013)

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.
11/289,981 11/29/2005 Isaac Ostrovsky 1362001-2026.1 6464
79292 7590 02/22/2013
Boston Scientific Corporation
c/o Frommer Lawrence & Haug LLP
745 Fifth Avenue
New York, NY 10151
EXAMINER
ROY, BAISAKHI
ART UNIT PAPER NUMBER
3777
MAIL DATE DELIVERY MODE
02/22/2013 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 ISAAC OSTROVSKY
__________

Appeal 2011-009091
Application 11/289,981
Technology Center 3700
__________

Before DONALD E. ADAMS, LORA M. GREEN, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s rejection of claims 1-9 and 16-21.1 We have jurisdiction under
35 U.S.C. § 6(b).

1 Claim 15 is also pending, but stands objected to as being dependent upon a
rejected base claim (Ans. 5).
Appeal 2011-009091
Application 11/289,981

2
STATEMENT OF THE CASE
Claim 1 is the only independent claim on appeal, and reads as follows:
1. An imaging catheter having distal and proximal ends and a lumen,
comprising:
a coaxial cable comprising a center wire, an outer shield, and a distal end;
an imaging transducer assembly located within the lumen of a distal
portion of the catheter, the imaging transducer assembly including an
imaging transducer; and
a sensor adapted to communicate with a medical positioning system,
wherein the sensor and the imaging transducer are each electrically coupled,
in a parallel electrical configuration with respect to each other, to the center
wire and the outer shield at the distal end of the coaxial cable.

The following grounds of rejection are before us for review:
Claims 1-9 and 16-212 stand rejected under 35 U.S.C. § 103(a) as
being rendered obvious by the combination of Ben-Haim3 and Sieben 4(Ans.
4).
We reverse.

ANALYSIS
The Examiner finds that Ben Hain “discloses an imaging catheter for
use in intracardiac drug delivery including an imaging element at the distal
end” (Ans. 4). The Examiner notes that Ben-Haim “fails to disclose the use
of a coaxial cable for running the system in parallel with the sensor” (id.).

2 The statement of rejection refers to claims 1-14 and 16-23, but clams 22
and 23 appear to have been cancelled (App. Br. 5).
3 Haim et al., US 6,309,370 B1, issued Oct. 30, 2001.
4 Sieben., US 6,309,370 B1, issued Oct. 30, 2001.
Appeal 2011-009091
Application 11/289,981

3
The Examiner finds that Sieben “teaches the use of a coaxial cabling
(col. 12, lines 25-29, fig. 43), wherein the sensor and the imaging transducer
are electrically coupled in a parallel configuration (col. 43, lines 52-60)”
(id.). The Examiner concludes that “[i]t would have been obvious to one of
ordinary skill in the art at the time of the invention to have included the
connection components of Sieben with the system of Ben-Haim et al for the
purpose of providing the best signal and clearest diagnostic image possible
with very little loss or distortion from noise or crosstalk” (id. at 5).
Appellants argue that “Sieben does not teach or suggest a sensor
adapted to communicate with a medical positioning system and an imaging
transducer in a parallel electrical configuration with respect to the sensor as
recited in claim 1” (App. Br. 10). Appellants assert that the “CCD arrays of
Siben are not ‘adapted to communicate with a medical positioning system’
as recited in claim 1,” but are “used to receive the signals from the
ultrasound transducer as explained at Col. 42, line 57 to Col 43, line 38”
(id.). Appellants thus assert that the CCD arrays do not correspond to the
claimed sensor and any teaching regarding them is irrelevant to the invention
of claim 1 (id.).
We agree with Appellants that the Examiner has failed to set forth a
prima facie case of obviousness. “Rejections on obviousness grounds
cannot be sustained by mere conclusory statements; instead, there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006), cited with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
417-18 (2007).
Appeal 2011-009091
Application 11/289,981

4
Here, the Examiner points to two disparate teachings in the Sieben
reference, but does not explain how the coaxial cable relates to the CCD
array relates to the coaxial cabling, or how the teaching of the CCD array by
Sieben relates to “a sensor adapted to communicate with a medical
positioning system, wherein the sensor and the imaging transducer are each
electrically coupled, in a parallel electrical configuration with respect to each
other, to the center wire and the outer shield at the distal end of the coaxial
cable,” as required by claim 1. The rejection is thus too cursory to pass the
Kahn test, and it is thus reversed.

REVERSED

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