Ex Parte Ostrovsky et al

Patent Trial and Appeal Board

May 31, 2016

12249134 (P.T.A.B. May. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/249,134 10/10/2008
109610 7590 06/02/2016
Bookoff McAndrews, PLLC
2401 Pennsylvania Avenue, NW, Suite 450
Washington, DC 20037
FIRST NAMED INVENTOR
Isaac Ostrovsky
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.
10124/06402(06-00061US2) 1149
EXAMINER
SIRIPURAPU, RAJEEV P
ART UNIT PAPER NUMBER
3737
NOTIFICATION DATE DELIVERY MODE
06/02/2016 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):
usptomail@bookoffmcandrews.com
Kross@bookoffmcandrews.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ISAAC OSTROVSKY, JON T. MCINTYRE, TY F AIRNENY,
VICTOR SHUKHAT, and MICHAEL MADDEN
Appeal2014-000289
Application 12/249, 1341
Technology Center 3700
Before MICHAEL C. ASTORINO, PHILIP J. HOFFMANN, and
AMEE A. SHAH, Administrative Patent Judges.
ASTORINO, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1, 3-11, 13-18, and 20-27. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b ).
We REVERSE.
1 According to the Appellants the real party in interest is Boston Scientific
Scimed, Inc. Appeal Br. 2.
Appeal2014-000289
Application 12/249,134
Claimed Subject Matter
Claims 1 and 21 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the subject matter on appeal.
1. A device for treating tissue, comprising:
an elongate probe;
a light delivery unit supported by the elongate probe for
illuminating a target area with light within a first wavelength
band selected to enhance identification of target tissue;
an ultrasound crystal mounted at a tissue-contacting
portion of the probe, the crystal being exposed at a distal end of
the probe to directly contact the target tissue, the crystal being
stimulated to generate ultrasound energy to treat the target tissue
identified using the light delivery unit; and
a cooling element for controlling a temperature of the
ultrasound crystal, the cooling element delivering a coolant to a
chamber over which the ultrasound crystal is mounted.
Rejections
I. Claims 1, 3-7, 9-11, 15-18, 20, and 26 are rejected under
35 U.S.C. § 103(a) as unpatentable over Mcintyre (US 2006/0100615 Al,
pub. May 11, 2006), Sinofsky (US 2004/0059397 Al, pub. Mar. 25, 2004),
Tu (US 6,206,842 Bl, iss. Mar. 27, 2001), Andrus (US 5,895,356, iss. Apr.
20, 1999), and Lacoste (US 2005/0085726 Al, pub. Apr. 21, 2005).
II. Claims 21-25 and 27 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Sinofsky, Mcintyre, Tu, Andrus, and Lacoste.
III. Claim 8 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Mcintyre, Sinofsky, Tu, Andrus, Lacoste, and Barthe
(US 2006/0084891 Al, pub. Apr. 20, 2006).
IV. Claims 13 and 14 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Mcintyre, Sinofsky, Tu, Andrus, Lacoste, and
MacLauchlan (US 5,511,424, iss. Apr. 30, 1996).
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Appeal2014-000289
Application 12/249,134
Rejections L IIL and IV
ANALYSIS
The Appellants argue that the combined teachings of Mcintyre,
Sinofsky, Tu, Andrus, and Lacoste fail to disclose the cooling element
recited in claim 1, i.e., "a cooling element for controlling a temperature of
the ultrasound crystal, the cooling element delivering a coolant to a chamber
over which the ultrasound crystal is mounted." See Appeal Br. 4--7; Reply
Br. 2-8. The Appellants also argue that the applied prior art references have
been improperly combined, in part because "of the fact that some references
teach contacting tissue with the transducer while the remaining references
teach separating the transducer from the tissue." Appeal Br. 7-9; Reply
Br. 8-10.
After careful consideration of the Examiner's rejection and the
Appellants' arguments, we determine that the claimed invention as a whole
is not obvious over the Examiner's combination of teachings from the prior
art references. Although the Examiner's findings appear to be supported
from the prior art references, the findings overlap to such a degree that it is
difficult to ascertain the resulting combination of teachings from the
Examiner's rejection. For example, it is unclear how the teachings of
Andrus and Lacoste, which have different structural arrangements for using
a cooling liquid to cool a transducer, would have been combined with the
teachings of Mcintyre, Sinofsky, and Tu to result in the claimed invention as
a whole, including the claimed "[ultrasound] crystal being exposed at a
distal end of the probe to directly contact the target tissue." Put simply, we
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Appeal2014-000289
Application 12/249,134
would have to resort to speculation to ascertain the result of the Examiner's
rejection to be able to decide the issues presented in this appeal.
Thus, we are persuaded that the Examiner's rejection of claims 1, 3-7,
9-11, 15-18, 20, and 26 as unpatentable over Mcintyre, Sinofsky, Tu,
Andrus, and Lacoste (Rejection I), is in error and not sustained. For similar
reasons as those discussed above, we do not sustain the Examiner's rejection
of: claim 8 as unpatentable over Mcintyre, Sinofsky, Tu, Andrus, Lacoste,
and Barthe (Rejection III), and claims 13 and 14 as unpatentable over
Mcintyre, Sinofsky, Tu, Andrus, Lacoste and MacLauchlan (Rejection IV).
Rejection II
The Appellants argue that the proffered combination of teachings fail
to disclose the "cooling element," as recited in claim 21. Appeal Br. 10.
Similar to above, we would have to resort to speculation to ascertain the
result of the Examiner's rejection to be able to decide the issue presented in
this appeal.
Thus, the Examiner's rejection of claims 21-25 and 27 as
unpatentable over Sinofsky, Mcintyre, Tu, Andrus and Lacoste is not
sustained.
DECISION
We REVERSE the Examiner's decision rejecting claims 1, 3-11, 13-
18, and 20-27.
REVERVSED
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