Ex Parte Placek et al

Patent Trial and Appeal Board

Jan 15, 2019

13589956 (P.T.A.B. Jan. 15, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/589,956 08/20/2012
21971 7590 01/17/2019
WILSON, SONSINI, GOODRICH & ROSATI
650 PAGE MILL ROAD
PALO ALTO, CA 94304-1050
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Brian Placek
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.
31992-712.401 5661
EXAMINER
MEHL, PATRICK M
ART UNIT PAPER NUMBER
3793
NOTIFICATION DATE DELIVERY MODE
01/17/2019 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):
patentdocket@wsgr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRIAN PLACEK and ROBERT K. DECKMAN 1
Appeal2018-002729
Application 13/589,956
Technology Center 3700
Before DANIELS. SONG, WILLIAM A. CAPP, and JILL D. HILL,
Administrative Patent Judges.
SONG, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Office Action ("Final Act.") rejecting claims 1-7 in the present
application (App. Br. 3). We have jurisdiction under 35 U.S.C. §§ 6(b) and
134(a).
We REVERSE.
1 Collectively referred to as "Appellant" herein. The Appellant identifies
the real party in interest as Gynesonics, Inc. (Appeal Brief ("App. Br.") 3).
Appeal2018-002729
Application 13/589,956
The claimed invention is directed to a method for treating uterine
fibroids (App. Br. 15, Claims App.). Representative independent claim 1
reads as follows (App. Br. 15, Claims App., emphasis added):
1. A method for treating uterine fibroids, said method
compnsmg:
introducing a probe into a uterus;
locating a uterine fibroid using an ultrasonic transducer
carried by the probe;
advancing a central member from the probe into uterine
tissue proximate the uterine fibroid; and
advancing a plurality of needle electrodes in a distal
direction from the central member through a channel array into
the uterine fibroid and/ or tissue surrounding the uterine fibroid,
wherein each channel has a ramp which has (1) a ramp entrance
located at a first angular orientation in a transverse plane about a
longitudinal axis of the central member and at a preselected
radial depth beneath an outer surface of the central member and
(2) a ramp exit located distally of the first ramp entrance along
the longitudinal axis and at a second angular orientation in the
transverse plane about the longitudinal axis angularly offset from
the first angular orientation and on an outer surface of the central
member; and
delivering energy from the needle electrodes to necrose
the fibroid.
REJECTIONS
The Examiner rejects claims 1, 2, and 5-7 under 35 U.S.C. § I03(a) as
obvious over Gerbi et al. (US 2007 /0249939 Al, pub. Oct. 25, 2007
("Gerbi")) in view of Epstein et al. (US 2007/0006215 Al, pub. Jan. 4, 2007
("Epstein")) and Agnew (US 2007/0112306 Al, pub. May 17, 2007) (Final
Act. 5).
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Appeal2018-002729
Application 13/589,956
The Examiner rejects claims 3 and 4 under 35 U.S.C. § I03(a) as
obvious over Gerbi in view of Epstein, Agnew, and Grossman (US
2007/0179380 Al, pub. Aug. 2, 2007) (Final Act. 7).
ANALYSIS
The Examiner rejects independent claim 1, finding that the
combination of Gerbi and Epstein discloses a method for treating uterine
fibroids as substantially claimed, and in particular, that Gerbi discloses the
steps of "introducing a probe into a uterus," and "advancing a central
member from the probe into uterine tissue" as recited in claim 1. (Final
Act. 5---6). The Examiner concludes that it would have been obvious to a
person of ordinary skill in the art to have "use[ d] the teachings of Epstein to
modify Gerbi to include deployment of multiple needle electrodes from a
deployment shaft with curved channels," in order to "deploy multiple
electrodes that all curve around the fibroid to cover as much surface area as
possible without the need to shift and move the device." (Final Act. 5---6).
As to the recited angular orientation of the ramp in which a second
angular orientation is angularly offset from the first angular orientation, the
Examiner finds that
Agnew teaches a ramp which has (1) a ramp entrance located at
a first angular orientation in a transverse plane about a
longitudinal axis of the central member ... and (2) a ramp exit
located distally of the first ramp entrance along the longitudinal
axis and at a second angular orientation in the transverse plane
about the longitudinal axis angularly offset from the first
angular orientation.
(Final Act. 5---6 (citing Gerbi, Fig. 3D (top and bottom of groove 325))).
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Appeal2018-002729
Application 13/589,956
Based on the disclosure of Agnew, the Examiner further concludes
that it would have been obvious to a person of ordinary skill in the art to
modify Gerbi to include "a spiral path for the channels such that the needles
can curve around the fibroid" "such that more surface area of the fibroid can
be reached." (Final Act. 6).
The Appellant argues, inter alia, that none of the references disclose
"advancing a central member from the probe into uterine tissue . . . and
advancing a plurality of needle electrodes in a distal direction from the
central member" as claimed. (App. Br. 8). In that regard, the Appellant
explains that "[ w ]hile Gerbi shows a probe 16 and a single needle 14, there
is no separate central member which is advanced into tissue." (App. Br. 8;
see also Reply Br. 2). The Appellant disputes the Examiner's finding with
respect to Gerbi contending that "[t]he shaft 16 [of Gerbi] cannot be both the
probe which is introduced into the uterus and the central member which is
advanced from the probe into tissue, as required by claim 1." (Reply Br. 2-
3). In further support of patentability, the Appellant points out that Gerbi
discloses two step operation while claim 1 requires three. (Reply Br. 2-3).
As such, the Appellant argues that "no reasonable combination of the
teachings would result in the claimed combination, i.e. first introducing a
probe into the uterus, next advancing a central member from the probe into
the uterine tissue, and then advancing a plurality of needles from the central
member into the uterine tissue," as required by claim 1. (App. Br. 9). We
agree with the Appellant.
As noted above, the Examiner rejection of claim 1 is premised on the
finding that Gerbi discloses introducing a probe into a uterus, and
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Appeal2018-002729
Application 13/589,956
"advancing a central member from the probe into uterine tissue." (Final
Act. 5---6). Indeed, the Examiner elaborates that "the shaft [ of Gerbi] reads
on a central member of the probe and this probe is advanced into the uterus"
such that Gerbi discloses "introducing a probe into the uterus and advancing
a central member from the probe into uterine tissue." (Ans. 3).2
However, the Appellant is correct that Gerbi does not disclose a
central member that is advanced from the probe, wherein the needle
electrodes are advanced from the central member. The Examiner appears to
interpret the claim language to merely require advancing a central member
"of' the probe. We consider this interpretation to be unreasonably broad.
The language of the claim is clear that the central member is advanced from
the probe, thereby requiring movement of the central member relative to the
other components of the probe of which the central member is a part. This is
the proper and reasonable understanding of the claim in view of the
Specification. (See Figs. 8-16; ,r,r 52-54, 64, 66). Therefore, because we
disagree with the Examiner's apparent claim construction and fact finding
that Gerbi discloses a central member that is advanced from the probe as
required by the language of claim 1, we reverse the rejection of claim 1.
The above noted erroneous claim construction and factual finding
underlies the rejections of all the remaining claims, which ultimately depend
from independent claim 1. Therefore, we reverse the rejections of the
remaining claims as well. In that regard, the Examiner's application of
2 Although not part of the actual rejection applied, the Examiner states that
Epstein also teaches the central member (Ans. 3). However, the relevance of
Epstein is unclear because the Epstein's scope of disclosure as to the central
member is the same as that of Gerbi.
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Appeal2018-002729
Application 13/589,956
Epstein, Agnew, and Grossman does not remedy the deficiency of Gerbi.
The remaining arguments directed to: whether Agnew is non-analogous art
(App. Br. 9-11; Ans. 3-5), lack of motivation (App. Br. 11-12; Ans. 5-7),
and impermissible use of teachings in the Appellant's disclosure (App. Br.
12-13; Ans. 5-7), are all moot.
CONCLUSION
The Examiner's rejections are REVERSED.
REVERSED
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