Ex Parte PAULUS

Patent Trial and Appeal Board

Nov 13, 2018

13525853 (P.T.A.B. Nov. 13, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/525,853
90039 7590
Covidien LP
Attn: IP Legal
5920 Longbow Drive
Mail Stop A36
06/18/2012
11/15/2018
Boulder, CO 80301-3299
FIRST NAMED INVENTOR
JOSEPH A. PAUL US
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.
H-US-01037DIV(l544-55DIV) 4403
EXAMINER
OSINSKI, BRADLEY JAMES
ART UNIT PAPER NUMBER
3783
NOTIFICATION DATE DELIVERY MODE
11/15/2018 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):
mail@cdfslaw.com
rs. patents. two@medtronic.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSEPH A. PAULUS
Appeal 2017-011776
Application 13/525,853
Technology Center 3700
Before BART A. GERSTENBLITH, CYNTHIA L. MURPHY, and
SCOTT C. MOORE, Administrative Patent Judges.
MURPHY, Administrative Patent Judge.
DECISION ON APPEAL
The Appellant1 appeals under 35 U.S.C. § 134 from the Examiner's
rejection of claims 1-16. We have jurisdiction over this appeal under
35 U.S.C. § 6(b).
We AFFIRM.
1 "The real party in interest is the assignee of the entire interest in this patent
application, Covidien LP, which is a wholly-owned subsidiary of Medtronic
PLC." (Appeal Br. 1.)
Appeal 2017-011776
Application 13/525,853
STATEMENT OF THE CASE
The Appellant's invention "relates generally to medical/ surgical
ablation systems and methods for delivering electrosurgical energy to tissue,"
and, more particularly, "to the spectral frequency content of the energy
delivered to tissue to achieve deep penetration of energy." (Spec. ,r 2.)
Illustrative Claim
1. A method for delivering electrosurgical energy to a target
tissue, the method comprising:
providing a di-pole microwave antenna attached to a
distal end of a microwave energy transmission line, the di-pole
microwave antenna including:
proximal and distal radiating portions configured
to resonate at at least two resonant, microwave
frequencies;
positioning the di-pole microwave antenna relative to the
target tissue;
connecting a microwave generator to a proximal end of
the microwave energy transmission line, the microwave
generator configured to generate a microwave signal containing
energy at the at least two resonant, microwave frequencies;
estimating energy delivery to the target tissue of a
resulting current density waveform of the microwave signal at a
plurality of instantaneous time points, each time point of the
plurality of instantaneous time points corresponding to a phase
angle of the resulting current density waveform, such that the
phase angle of each time point is shifted by a predetermined
phase angle from a preceding time point;
generating the microwave signal; and
delivering the microwave signal through the microwave
energy transmission line and to the di-pole microwave antenna,
wherein the microwave signal resonates the di-pole microwave
antenna at the at least two resonant, microwave frequencies.
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Appeal 2017-011776
Application 13/525,853
Rejection
The Examiner rejects claims 1-16 under 35 U.S.C. § I03(a) as
unpatentable over Kassayan2 and Miller. 3 (Final Action 2.)
ANALYSIS
Claims 1 and 9 are the independent claims on appeal, with the rest of
the claims on appeal (i.e., claims 2-8 and 10-16) depending therefrom. (See
Appeal Br., Claims App.)
Independent claim 1 recites "[a] method for delivering electrosurgical
energy to a target tissue," and independent claim 9 recites "[a] method of
increasing penetration of microwave energy into a target tissue." (Appeal
Br., Claims App.) The Examiner determines that the claimed methods
would have been obvious over the combined teachings of Kassayan and
Miller (see Final Action 2-9); and the Appellant argues that the Examiner
errs in making this determination (see Appeal Br. 4--5). As discussed below,
we are unpersuaded by the Appellant's arguments because they are not
aligned with the Examiner's rejection.
Independent claims 1 and 9 recite a "di-pole microwave antenna," and
a "microwave generator" that is configured to "generate a microwave
signal" for delivery thereto. (Appeal Br., Claims App.) Independent
claims 1 and 9 also recite that this "microwave signal" contains energy at
two or more "microwave frequencies." (Id.)
The Examiner finds that Kassayan discloses a method in which a
microwave generator generates a microwave signal for delivery to a di-pole
2 US 2005/0205566 Al, published September 22, 2005.
3 US 6,503,191 Bl, issued January 7, 2003.
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Appeal 2017-011776
Application 13/525,853
microwave antenna. (See Final Action 2-3; see also Kassayan ,r,r 7, 11, 12.)
The Examiner also finds that, in Kassayan, the generator is configured to
generate a microwave signal containing energy at "two microwave
frequencies." (Final Action 2, 6; see also Kassayan ,r 59.)
Independent claims 1 and 9 require the two or more "microwave
frequencies" of the microwave signal to be "resonant" microwave
frequencies. (Appeal Br., Claims App.) Independent claim 1 further recites
that "the microwave signal resonates the di-pole microwave antenna at the at
least two resonant, microwave frequencies." (Id.) Independent claim 9
similarly recites "resonating the di-pole microwave antenna at the at least
two resonant, microwave frequencies." (Id.)
The Examiner finds that Miller teaches that, when the aim is "to
destroy unwanted molecules and cells," a "resonant frequency" makes "it
possible to target specific, undesirable cells." (Final Action 5.) To this end,
Miller teaches a generator "designed to provide a resonant frequency signal
to destroy unwanted molecules and cells." (Id. at 4.) In other words, Miller
teaches the generation and delivery of a signal containing energy at a
resonant frequency corresponding to the unwanted tissue. (See Miller,
col. 5, 1. 64 - col. 6, 1. 3.)
The Examiner further finds that "Miller discloses using one or more
resonance frequencies." (Final Action 5.) This finding by the Examiner is
based upon Miller's explanation that the unwanted "molecules" have a
unique family of "resonance frequencies," and"[ w ]hen irradiated at exactly,
or very nearly, one or any number of these frequencies, by electromagnetic
(EM) waves, resonance absorption occurs transforming the EM energy into
heat energy." (Miller, col. 7, 11. 51-54.) Thus, Miller discloses that, when
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Appeal 2017-011776
Application 13/525,853
radiating unwanted tissue at a single resonant frequency, this "single
resonant frequency" can be selected from a number of "resonance
frequencies" corresponding to this unwanted tissue.
The Examiner determines that it would have been obvious, in view of
the teachings of Miller, to modify Kassayan's method to generate a
microwave signal containing energy at "two resonant microwave
frequencies" in order to "more selectively destroy targeted tissues." (Final
Action 5.) Put another way, when Kassayan is radiating unwanted tissue at
two microwave frequencies, these two frequencies can be selected from a
number of "resonance frequencies" corresponding to this unwanted tissue.
The Appellant advances arguments premised upon neither Kassayan
nor Miller individually disclosing "the at least two resonant, microwave
frequencies" required by independent claims 1 and 9. (See Appeal Br. 4--5.)
As for Kassayan, the Appellant asserts that the Examiner "concedes" that it
does not disclose causing its antenna to resonant at two resonant
frequencies. (Id. at 4.) As for Miller, the Appellant contends that its
antenna "is merely resonated at a single frequency at a given time." (Id.
at 5, emphasis omitted.)
We are not persuaded by these arguments because they are not aligned
with the Examiner's rejection, which relies upon Kassayan to teach a
microwave signal containing energy at two microwave frequencies to
destroy unwanted tissue, and relies upon Miller only to teach that a plurality
of resonance frequencies correspond to this unwanted tissue. The Appellant
does not find fault with the Examiner's finding that Kassayan teaches using
a microwave signal, containing energy at two microwave frequencies, to
destroy unwanted tissue. (See Final Action 2-3.) And the Appellant does
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Application 13/525,853
not dispute that Miller teaches that a number of "resonance frequencies" can
correspond to this unwanted tissue. (See id. at 4.)
The Appellant also advances arguments that appear to be premised
upon Miller's method being modified to accommodate a microwave signal
containing energy at two resonant frequencies. (See Reply Br. 2-6.) For
example, the Appellant asserts that "Miller is entirely devoid of any
disclosure of the output device having the capability of resonating at at least
two resonant, microwave frequencies when supplied by microwave energy
containing the at least two resonant, microwave frequencies." (Id. at 2-3.)
Along this same line, the Appellant contends that the Examiner has failed to
provide "evidentiary support" that Miller's output device is capable of
resonating at two resonant microwave frequencies. (Id. at 3.)
We are not persuaded by these arguments because, again, they are not
aligned with the Examiner's rejection. In the Examiner's proposed
combination of the prior art, it is Kassayan's method that is modified. In
this modified method, the microwave signal, containing energy at two
microwave resonant frequencies, is delivered to Kassayan's output device.
And the Appellant does not assert that Kassayan's output device would not
be capable of resonating at two resonant frequencies.
Thus, the Appellant does not show sufficiently that the Examiner errs
in determining that the methods recited in independent claims 1 and 9 would
have been obvious over the prior art. The Appellant does not argue the
dependent claims separately. (See Appeal Br. 5.) We, therefore, sustain the
Examiner's rejection of independent claims 1 and 9, and the claims on
appeal depending therefrom, under 35 U.S.C. § I03(a) as unpatentable over
Kassayan and Miller.
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Application 13/525,853
DECISION
We AFFIRM the Examiner's rejection of claims 1-16.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 )(iv).
AFFIRMED
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