Ex Parte Paul et al

Patent Trial and Appeal Board

Oct 27, 2016

12979475 (P.T.A.B. Oct. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/979,475 12/28/2010
67337 7590 10/31/2016
DYKEMA GOSSETT PLLC (STJ)
4000 Wells Fargo Center
90 South Seventh Street
Minneapolis, MN 55402
FIRST NAMED INVENTOR
Saurav Paul
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.
OB-141101US 3063
EXAMINER
MOHAMMED, SHAHDEEP
ART UNIT PAPER NUMBER
3737
NOTIFICATION DATE DELIVERY MODE
10/31/2016 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):
MN_IPMail@dykema.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SAURA VP AUL, TROY T. TEGG,
and REED R. HEIMBECHER
Appeal2014-008515
Application 12/979,475
Technology Center 3700
Before JAMES P. CAL VE, GEORGE R. HOSKINS, and LEE L. STEPINA,
Administrative Patent Judges.
HOSKINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Saurav Paul et al. ("Appellants")1 appeal under 35 U.S.C. § 134 from
the Examiner's decision rejecting claims 1-17 and 19-21 in this application.
The Board has jurisdiction over the appeal under 35 U.S.C. § 6(b).
We REVERSE.
1 The Appeal Brief identifies St. Jude Medical, Atrial Fibrillation Division,
Inc., as the real party in interest. Appeal Br. 2.
Appeal2014-008515
Application 12/979,475
CLAIMED SUBJECT MATTER
Claims 1, 16, and 21 are independent. Claim 1 illustrates the subject
matter on appeal, and it recites:
1. An acoustic assessment system for a catheter, the system
compnsmg:
a flexible catheter shaft;
at least one acoustic transducer coupled to the flexible
catheter shaft, the at least one acoustic transducer configured to
emit a generated acoustic signal for reflection by an adjacent
tissue, the at least one acoustic transducer configured to receive
a reflected acoustic signal from the adjacent tissue responsive to
the emitted acoustic signal;
an output device electrically connected to the at least one
acoustic transducer, the output device including a processing
device configured to interpret electrical signals generated in
response to the reflected acoustic signal and corresponding to
one or more property of the tissue, wherein the processing device
is configured to interpret an in-phase reflected acoustic signal
as the flexible catheter shaft is in an endoluminal flow
en-vironment and an oitt-of-phase reJ'lected acoitstic signal as
indicating the flexible catheter shaft is in contact with the
adjacent tissue;
a window positioned adjacent to the at least one acoustic
transducer, the window configured to focus the generated
acoustic signal; and
wherein the output device is configured to generate output
for assessing one or more properties of the tissue.
Appeal Br. 15 (Claims App.) (emphasis added).
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Appeal2014-008515
Application 12/979,475
REJECTIONS ON APPEAL
Claims 1-5, 10, and 12 stand rejected under 35 U.S.C. § 103(a)2 as
unpatentable over Hendriks (US 2010/0280390 Al, pub. Nov. 4, 2010) and
Zeleznik (US 2003/0055360 Al, pub. Mar. 20, 2003).
Claims 1, 7, and 14 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Sliwa (US 2010/0168570 Al, pub. July 1, 2010),
Hendriks, and Zeleznik.
Claim 6 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Hendriks, Zeleznik, and Koger (US 6,475,151 B2, iss. Nov. 5, 2002).
Claim 8 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Hendriks, Zeleznik, and Suorsa (US 7,488,289 B2, iss. Feb. 10, 2009).
Claim 9 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Hendriks, Zeleznik, and Saguchi (US 2010/0217160 Al, pub. Aug. 26,
2010).
Claim 11 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Hendriks, Zeleznik, and Kubota (US 2006/0173321 Al, pub. Aug. 3,
2006).
Claims 13 and 21 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Hendriks, Zeleznik, and Salcudean
(US 2005/0119568 Al, pub. June 2, 2005).
Claim 14 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Hendriks, Zeleznik, and Weng (US 2009/0036774 Al, pub. Feb. 5,
2009).
2 The Examiner's reference to§ 102(e) rather than§ 103(a) is revealed to be
a typographical error by the overall context of the rejection. Final Act. 2-3.
The same is true of the rejection of claim 11. Id. at 6-7.
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Appeal2014-008515
Application 12/979,475
Claim 15 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Hendriks, Zeleznik, and Maguire (US 6,599,288 B2, iss. July 29, 2003).
Claim 16 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Zanelli (US 6,546,276 Bl, iss. Apr. 8, 2003), Suorsa, Zeleznik, and
Salcudean.
Claim 17 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Zanelli, Suorsa, Zeleznik, Salcudean, and Maguire.
Claim 19 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Zanelli, Suorsa, Zeleznik, Salcudean, and Panescu
(US 2003/0208123 Al, pub. Nov. 6, 2003).
Claim 20 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Zanelli, Suorsa, Zeleznik, Salcudean, and Weng.
ANALYSIS
A. Obviousness based on Hendriks and Zeleznik-
Claims 1-5, 10, and 12
Appellants argue the Examiner errs in finding Zeleznik discloses, as
recited in claim 1, interpreting an in-phase reflected acoustic signal as the
catheter being in an endoluminal flow environment, and interpreting an out-
of-phase reflected acoustic signal as the catheter being in contact with
adjacent tissue. Appeal Br. 6-7; Reply Br. 3-5. As described in Appellants'
Specification, an in-phase signal indicates the catheter is "free-floating"
within a blood flow through the heart and is "not in contact with" the heart
tissue wall, because free-flowing blood exerts the same pressure on the
catheter in all directions, so the acoustic signals are uniform or the same for
each acoustic transducer. Spec. i-fi-158---60. Conversely, an out-of-phase
signal indicates the catheter is in contact with the heart tissue wall because
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Appeal2014-008515
Application 12/979,475
one acoustic transducer receives a return signal much faster than another
acoustic transducer. Id. i-fi-158, 61.
The Examiner cites Zeleznik's disclosure at paragraphs 67----69 and 82,
and Figures 13a-13b, in support of the challenged finding. Final Act. 3, 14--
16; Ans. 14--16. In connection with Figures 13a-13b, Zeleznik indicates one
challenge in using a hardness sensor is knowing when sense rod 101 of the
hardness sensor is in contact with tissue 150 to be sensed. Zeleznik i165.
Zeleznik places "a point contact sensor" 151 such as an "ultrasonic sensor"
at the distal end of sense rod 101, to measure contact with the tissue surface.
Id. i-fi-1 66-68, Fig. 14. According to Zeleznik,
An ultrasonic sensor, when used as contact sensor 151, can
use shifts in frequency or phase of ultrasonic signals to identify
the proximity of the probe tip to tissue 150. Alternatively or
additionally, the delay between ultrasonic pulse-echo signals can
be used to measure distance or proximity, similar in concept to
sonar ranging. Further shifts in frequency, phase, and/or delay
will occur as a force is applied between the sensor and the tissue.
These shifts may be used to provide additional verification of
contact and/or tissue rigidity to the operation of the hardness
sensor.
Id. i1 67 (emphases added).
We agree with Appellants' argument that such disclosure in Zeleznik
does not correspond to interpreting an in-phase reflected acoustic signal as
an endoluminal flow environment (i.e., a lack of contact with the tissue
wall), and interpreting an out-of-phase reflected acoustic signal as contact
with the tissue wall, as claimed. Zeleznik discloses only that change(s) in a
reflected acoustic signal may be monitored to determine when contact with
the tissue wall occurs, and such change(s) may include "shifts in" the
frequency, phase, or delay of the reflected acoustic signal. Zeleznik i1 67.
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Appeal2014-008515
Application 12/979,475
Zeleznik does not disclose that such "shifts" correspond to an in-phase
signal becoming an out-of-phase signal, or vice versa. Nor has the Examiner
set forth technical reasoning or evidence that suggests Zeleznik's described
frequency, phase, or delay shifts necessarily correspond to an in-phase signal
becoming an out-of-phase signal, or vice versa.
The Examiner additionally cites paragraph 82 of Zeleznik. That
paragraph discloses an ultrasonic transducer that drives reciprocation of
sense rod 101 against the tissue at a predetermined frequency, so that the
resulting compression and retraction of bellows 103 may be monitored to
determine the tissue hardness. Zeleznik i-fi-181-82, Figs. 10-12. For
example, changes in the output phase of a pressure sensor coupled to
bellows 103 may be monitored to determine the tissue hardness. Id. i182.
Thus, the ultrasonic transducer disclosed in paragraph 82 is
performing a different function (tissue hardness determination) than the
ultrasonic transducer disclosed in paragraphs 67----69 (tissue contact
determination). Claim 1 is directed to using an acoustic transducer to
perform the latter function. The Examiner does not explain how the use of
an ultrasonic transducer to determine tissue hardness relates to the use of an
ultrasonic transducer to determine tissue contact. Moreover, paragraph 82,
like the other cited Zeleznik disclosures, discloses only that change(s) in a
frequency or phase are monitored, and does not specify that such changes
correspond to in-phase or out-of-phase signals.
For the foregoing reasons, we determine a preponderance of evidence
does not support the Examiner's finding that Zeleznik discloses interpreting
an in-phase reflected acoustic signal to indicate a catheter being in an
endoluminal flow environment, and an out-of-phase reflected acoustic signal
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Appeal2014-008515
Application 12/979,475
indicating contact with adjacent tissue. The Examiner's findings concerning
the Hendriks disclosure, and corresponding obvious analysis, do not cure
that deficiency in the Zeleznik disclosure in relation to claim 1. Final
Act. 2-3. The Examiner's additional consideration of dependent claims 2-5,
10, and 12 likewise does not cure the deficiency. Id. Therefore, we do not
sustain the rejection of claims 1-5, 10, and 12 as unpatentable over Hendriks
and Zeleznik.
B. Obviousness based on Hendriks, Zeleznik, and one of Koger, Suorsa,
Saguchi, Kubota, Salcudean, Weng, and Maguire-
Claims 6, 8, 9, 11, 13-15, and 21
The Examiner's additional consideration of claims 6, 8, 9, 11, and 13-
15, each of which depends from claim 1, in light of the combination of
Hendriks and Zeleznik with one of Koger, Suorsa, Saguchi, Kubota,
Salcudean, Weng, and Maguire, does not cure the deficiency of Zeleznik in
connection with claim 1, discussed above. Final Act. 5-10. We, therefore,
do not sustain the various obviousness rejections of these claims for the
reasons provided above.
Independent claim 21 recites a similar "in-phase" I "out-of-phase"
limitation as the limitation discussed above in connection with claim 1.
Appeal Br. 18 (Claims App.). In rejecting claim 21 as unpatentable over
Hendriks, Zeleznik, and Salcudean, the Examiner relies on the same findings
concerning the Zeleznik disclosure discussed above in connection with
claim 1. Final Act. 7-8. The Examiner's findings concerning the Hendriks
and Salcudean disclosures, and corresponding obvious analysis, do not cure
the deficiency in the Zeleznik disclosure. Id. We, therefore, do not sustain
the rejection of claim 21.
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Appeal2014-008515
Application 12/979,475
C. Obviousness based on Sliwa, Hendriks, and Zeleznik-
Claims 1, 7, and 14
In rejecting claim 1 and its dependent claims 7 and 14 as unpatentable
over Sliwa, Hendriks, and Zeleznik, the Examiner relies on the same
findings concerning the Zeleznik disclosure as discussed above in
connection with the other rejection of claim 1. Final Act. 3-5. The
Examiner's findings concerning the Sliwa and Hendriks disclosures, and
corresponding obvious analysis, do not cure the deficiency in the Zeleznik
disclosure. Id. We, therefore, do not sustain the rejection of claims 1, 7, and
14 as unpatentable over Sliwa, Hendriks, and Zeleznik.
D. Obviousness based on Zanelli, Suorsa, Zeleznik, and Salcudean-
Claim 16
Independent claim 16 recites a similar "in-phase" I "out-of-phase"
limitation as the limitation discussed above in connection with claim 1.
Appeal Br. 17 (Claims App.). In rejecting claim 16 as unpatentable over
Zanelli, Suorsa, Zeleznik, and Salcudean, the Examiner relies on the same
findings concerning the Zeleznik disclosure discussed above in connection
with claim 1. Final Act. 10-12. The Examiner's findings concerning the
Zanelli, Suorsa, and Salcudean disclosures, and corresponding obvious
analysis, do not cure the deficiency in the Zeleznik disclosure. Id. We,
therefore, do not sustain the rejection of claim 16.
E. Obviousness based on Zanelli, Suorsa, Zeleznik, Salcudean, and one
of Maguire, Panescu, and Weng-
Claim 17, 19, and 20
The Examiner's additional consideration of claims 17, 19, and 20,
each of which depends from claim 16, in light of the combination of Zanelli,
Suorsa, Zeleznik, and Salcudean with one of Maguire, Panescu, and Weng,
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Appeal2014-008515
Application 12/979,475
does not cure the deficiency of Zeleznik in connection with claim 16,
discussed above. Final Act. 12-14. We, therefore, do not sustain the
various obviousness rejections of these claims for the reasons provided
above.
DECISION
The Examiner's decision to reject claims 1-17 and 19-21 is reversed.
REVERSED
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