Ex Parte Rashidi

Patent Trial and Appeal Board

Nov 24, 2017

13209110 (P.T.A.B. Nov. 24, 2017)

United States Patent and Trademark Office
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.
13/209,110 08/12/2011 Rassoll Rashidi 0B-045402US 9388
55962 7590
Wiley Rein LLP
Patent Administration
1776 K Street, NW
Washington, DC 20006
EXAMINER
SCHAETZLE, KENNEDY
ART UNIT PAPER NUMBER
3766
NOTIFICATION DATE DELIVERY MODE
11/28/2017 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):
ptodocket @ wileyrein. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RASSOLL RASHIDI
Appeal 2015-007862
Application 13/209,110
Technology Center 3700
Before RICHARD E. SCHAFER, JAMESON LEE, and
JAMES T. MOORE, Administrative Patent Judges.
LEE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1—20, which constitute all the claims pending in this
application. We have jurisdiction over the appeal pursuant to 35 U.S.C.
§ 6(b).1
We affirm.
1 This Decision refers to Appellant’s Appeal Brief (“App. Br.,” filed Feb. 11,
2015), Examiner’s Answer (“Ans.,” mailed July 15, 2015), Appellant’s
Reply Brief (“Reply Br.,” filed Aug. 27, 2015), and Final Office Action
(“Final Act.,” mailed Oct. 21, 2014).
Appeal 2015-007862
Application 13/209,110
The Invention
The disclosure states that the invention relates to catheters employed
for diagnostic and/or therapeutic procedures in the field of medicine, and
more specifically in the field of minimally invasive cardiac
electrophysiology and or cardiac ablation procedures. Spec. 12. Claims 1
and 16 are the only independent claims and are reproduced below (emphasis
added):
1. A medical device, comprising:
an elongated body comprising a distal portion and a
proximal portion, the distal portion comprising a deflectable
portion and a distal end portion;
a deflection member disposed within the elongated body
and movable relative to the proximal portion, wherein the
deflection member is operably fixed to the distal end portion such
that pushing on the deflection member causes the deflectable
portion to deflect in a first direction; and
a handle coupled to the proximal portion of the elongated
body, the handle comprising a housing and an actuator assembly
comprising an actuator, wherein the actuator assembly is
operably coupled to the deflection member such that rotation of
the actuator in a first rotational direction relative to the housing
causes the actuator assembly to push on the deflection member,
thereby causing the deflection member to move within the
proximal portion of the elongate body and the deflectable portion
of the elongate body to deflect in the first direction.
16. A catheter, comprising:
an elongated body comprising a distal portion and a
proximal portion, the distal portion comprising a steerable
portion and a distal end portion;
a steering member disposed within the elongated body and
movable relative to the proximal portion, wherein the steering
member is operably fixed to the distal end portion such that
placing a compressive force on the steering member steers the
steerable portion in a first direction; and
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Application 13/209,110
a handle coupled to the proximal portion of the elongated
body, the handle comprising a housing and an actuator assembly
comprising an actuator, wherein the actuator assembly is
operably coupled to the steering member such that rotation of the
actuator in a first rotational direction relative to the housing
causes the actuator assembly to place a compressive force on the
steering member, thereby causing the steering member to move
within the proximal portion of the elongate body and the
steerable portion of the elongate body to steer in the first
direction.
Notably, claim 1 recites a deflection member and requires that
pushing on the deflection member causes a deflectable portion of the
medical device to deflect in a first direction, and claim 16 recites a steering
member and requires that placing a compressive force on the steering
member steers a steerable portion of the catheter in a first direction.
Figure 2 of the involved application is reproduced below:
Figure 2 is an enlarged cross-sectional view of a distal end of an
embodiment of Appellant’s invention. Spec. 116. The specification
describes: “As particularly illustrated in FIG. 2, the tension/compression
member pair 40 includes a first member 42 and a second member 44
disposed in side-by-side relation. . . . The tension/compression members are
preferably thin wires (e.g., stainless steel wires) received in the tube 50. . . .”
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Appeal 2015-007862
Application 13/209,110
Spec. 123. The specification states that in one embodiment of the invention,
there is “a pair of tension/compression members extending through the body
for selectively deflecting at least the distal end of the body.” Id. 17.
The Prior Art
The prior art relied on in rejecting the claims on appeal are:
Truckai US Pat. No. 5,487,757 Jan. 30, 1996
Stevens-Wright US Pat. No. 8,383,851 Jan. 24, 1995
Lundquist ’441 US Pat. No. 5,228,441 July 20, 1993
Lundquist ’088 US Pat. No. 5,254,088 Oct. 19, 1993
The Rejections
Claims 1—8, 13, 14, and 16—19 were finally rejected under 35 U.S.C.
§ 102(b) as anticipated by Stevens-Wright. Final Act. 4.
Claim 3, 8—12, 18, and 20 were finally rejected under 35 U.S.C.
§ 103(a) as unpatentable over Stevens-Wright and Truckai. Id. at 6.
Claims 3 and 18 were finally rejected under 35 U.S.C. § 103(a) as
unpatentable over Stevens-Wright and Lundquist ’441. Id. at 8.
Claim 15 was finally rejected under 35 U.S.C. § 103(a) as
unpatentable over Stevens-Wright and Lundquist ’088. Id.
Claims 1—20 were finally rejected on the ground of nonstatutory
double patenting over claims 1—29 of U.S. Patent No. 5,861,024 in view of
Stevens-Wright, Truckai, Lundquist ’441, and Lundquist ’088. Id. at 3.
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Appeal 2015-007862
Application 13/209,110
ANALYSIS
A. Rejection of Claims 1—8, 13, 14,
and 16—19 as Anticipated by Stevens-Wright
Stevens-Wright discloses a steerable catheter including an elongated
flexible shaft and a flexible tip assembly connected to the distal end of the
shaft. Stevens-Wright, 2:40-42. The tip assembly comprises a distal section
and a proximal section coaxial with the shaft. Id. at 2:42-44. The proximal
and distal sections can be separately bent to provide distal and proximal
bending of the catheter. Id. at 2:44-46. Figures 13a—13c of Stevens-Wright
is reproduced below:
Figures 13a through 13c illustrate proximal bending movement of the tip
assembly. Id. at 3:1—3. Stevens-Wright describes:
The thumbwheel 92 includes an indicator of a neutral
position wherein, for example, the two pull cables 32a, 32c
which are connected to the thumbwheel 92 are both equally
tensioned and the corresponding section of the tip assembly 14
is in its relaxed position. A neutral position indicator is provided
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Application 13/209,110
using a positive detent engagement between the thumbwheel 92
and a portion of the housing 12.
Id. at 8:67—9:6. Stevens-Wright also describes that the thumbwheel may be
rotated by an operator’s hand, and that rotational resistance is used in the
thumbwheel to maintain a particular angular position as well as a particular
bent at the tip assembly. Id. at 8:59-63; 9:29—32.
Claim construction is central to this appeal. Specifically, according to
independent claim 1, pushing on the deflection member “causes the
deflectable portion to deflect in a first direction.” According to claim 16,
placing a compressive force on the steering member is referred to as
“thereby causing the steering member to move within the proximal portion
of the elongate body and the steerable portion of the elongate body to steer
in the first direction.” In both instances, there is the requirement of
causation. In claim 1, pushing on the deflection member causes deflection
of the deflectable portion. In claim 16, applying a compressive force to the
steering member causes the steering member to steer a steerable portion in
one direction.
Appellant’s underlying position is that the recited basis of causation
from a pushing force (claim 1) or a compressive force (claim 16) to
deflection or steering of a part in one direction must be the sole or exclusive
cause for the deflection in claim 1 and the steering in claim 16. Reply Br. 4.
We disagree. During examination, “the PTO gives a disputed claim term its
broadest reasonable interpretation.” In re Bigio, 381 F.3d 1320, 1324 (Fed.
Cir. 2004); In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989). Absent claim
language carrying a narrow meaning, the Office should only limit the claim
based on the specification and prosecution history when those sources
expressly disclaim the broader definition. Bigio, 381 F.3d at 1325; see also
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Application 13/209,110
In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Appellant has not
identified, nor can we discern, any such disclaimer in the prosecution history
or the specification. We also see no embodiment in Appellant’s
specification that uses only a pushing or compressive force, to the exclusion
of any other force, e.g., pulling force, that causes a portion or part to move in
a first direction. Thus, neither the pushing force of claim 1 nor the
compressive force of claim 16 has to be the only or exclusive causation for
the deflection recited in claim 1 or the steering recited in claim 16.
To satisfy claim 1 ’s pushing force that causes a deflection member to
deflect in a first direction, and to satisfy claim 16’s compressive force that
causes a steerable portion to be steered in a first direction, the Examiner
relied on wire 32a or 32c shown in Appellant’s Figures 13a and 13c
reproduced above. Final Act. 5, Ans. 2. Specifically, with regard to the
pushing or compressive force to deflect or steer, the Examiner explained:
Regarding the reference to “pushing”, while Stevens-
Wright does not explicitly refer to pushing per se, such an
operation is inherently required in order to control the catheter as
shown in Figs. 13a-c. In Fig. 13a, for example, rotation of the
actuator in the direction shown would cause the deflection
member 32a to be pulled proximally around the thumbwheel, and
deflection member 32c to be simultaneously pushed distally out
from the thumbwheel since the members are fixed relative to one
another about the thumbwheel.
In any event, and independent of the above logical
reasoning, Falwell et al. [US Patent No. 5,944,690] gives
evidence that prior art devices such as the Stevens-Wright ’852
patent typically employ control wires that are actuated by placing
one wire in tension, while simultaneously placing the other wire
in compression (col. 1, lines 30-46). A wire in compression is
considered to be pushed.
Final Act. 5—6, Ans. 3.
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Prior art references must be “considered together with the knowledge
of one of ordinary skill in the pertinent art.” In re Paulsen, 30 F.3d 1475,
1480 (Fed. Cir. 1994) (citation omitted). In that regard, “it is proper to take
into account not only specific teachings of the reference but also the
inferences which one skilled in the art would reasonably be expected to draw
therefrom.” In re Preda, 401 F.2d 825, 826 (CCPA 1968). As the Court of
Appeals for the Federal Circuit explained, for anticipation, the dispositive
question is “whether one skilled in the art would reasonably understand or
infer from a prior art reference that every claim element is disclosed in that
reference.” Eli Lilly and Co. v. Los Angeles Biomedical Res. Inst, at
Harbor-UCLA Medical Center, 849 F.3d 1073, 107^1075 (Fed. Cir. 2017)
(citation omitted).
We agree with the Examiner that the buckling reflected in wire 32c in
Figure 13a of Stevens-Wright and in wire 32a in Figure 13c of Stevens-
Wright would have been read and understood by one with ordinary skill in
the art as the result of a pushing or compressive force. Also, another panel
of the Board, in a prior appeal involving an ancestral application of the
application on appeal, i.e., Application 09/232,866, had determined that
Figure 13a of Stevens-Wright shows wire 32c to be under compression and
that Figure 13c of Stevens-Wright shows wire 32a to be under longitudinal
compression. Ex parte Rashidi, Appeal No. 2005-2407 (March 31, 2006).
Appellant argues that the Examiner relied on Ex parte Rashidi, supra,
to assert that the causation requirement of claims 1 and 16 are inherently
met. App. Br. 10. Appellant asserts that the prior Board decision made no
such determination regarding causation. Id. In the Answer, the Examiner
explains that he did not rely on the prior Board decision to establish
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Application 13/209,110
inherency in the required causation. Ans. 8. Rather, the Examiner indicates
the evidence of inherency on causation stems from the disclosure of US Pat.
No. 5,944,690 (“Falwell”). Id. Specifically, the Examiner explained:
The Falwell et al. patent — owned by the same company as the
Stevens-Wright patent — explicitly states that mechanisms for
steering catheters typically include control cables which are
operated in such a manner so as to place one of the cables in
tension, while “. . . simultaneously [emphasis added]
compressing, or buckling, the other wire,” (col. 1, lines 31—46).
Falwell et al. further go on to say in the same paragraph that an
example of such a mechanism may be found in Stevens-Wright
Patent No. 5,383,852.
Id.
The explanation amply establishes how one with ordinary skill in the
art would have read and understood Figures 13a through 13c of Stevens-
Wright, i.e., that the pushing or compressive force on one of the wires 32a
and 32c causes deflection or steering of a part in a first direction, whether or
not the principle of inherency is applied. Stevens-Wright describes Figures
13a — 13c as showing proximal bending movements of the tip assembly.
Stevens-Wright, 3:1—3. Stevens-Wright also describes that thumbwheel 92
is rotated by the thumb of the operator’s hand. Stevens-Wright, 8:61—63.
The Examiner further explained: “In the absence of compression [of a wire],
the deflectable member [of Stevens-Wright] cannot be caused to move. It is
therefore not a situation where pushing may result in deflection, but rather a
situation where pushing must result in deflection.” Ans. 9. We find the
reasoning both logical and supported by the disclosure of Stevens-Wright as
noted above.
Appellant further argues that because Stevens-Wright also discloses
an opposite wire that is in tension, not compressed, and because the
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Application 13/209,110
Examiner deemed as “indeterminate” whether the tensioning caused the
compression or the compression caused the tensioning, the causation
requirement cannot be inherently met. Reply Br. 4. The argument is
misplaced, because it simply does not matter whether pushing or
compression of one wire is caused by tensioning of another wire. In
discussing claim construction above, we determined that the pushing force
or the compressive force need not be the sole or exclusive cause for
deflecting or steering a part in a first direction. The fact that in Stevens-
Wright there exists another wire that is being pulled, which together with the
wire that is being pushed or compressed cause the deflection and steering in
one direction, does not help the Appellant. The presence of the other wire
does not negate the pushing or compressive force on a first wire and the
deflection or steering effect of that pushing or compressive force.
For the foregoing reasons, Appellant has not shown error in the
Examiner’s final rejection of claims 1 and 16 as anticipated by Stevens-
Wright. That rejection is affirmed. Appellant has not argued dependent
claims 2—8, 13, 14, and 17—19 separately from independent claims 1 and 16.
Thus, the dependent claims stand or fall with claims 1 and 16. See 37 C.F.R.
§ 41.37(c)(l)(iv). The rejection of claims 2—8, 13, 14, and 17—19 as
anticipated by Stevens-Wright also is affirmed.
B. Rejection of Claims 3, 8—12, 18,
and 20 as Obvious over Stevens-Wright and Truckai
Claims 3 and 8—12 each depend, directly or indirectly, from claim 1.
Claims 18 and 20 each depend directly from claim 16. Appellant does not
set forth any argument separate from those it asserted in the context of
independent claims 1 and 16. Accordingly, Appellant has not shown error in
the Examiner’s rejection of claims 3, 8—12, 18, and 20 as obvious over
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Stevens-Wright and Trackai. The rejection of claims 3, 8—12, 18, and 20 as
obvious over Stevens-Wright and Truckai is affirmed.
C. Rejection of Claims 3 and 18 as
Obvious over Stevens-Wright and Lundquist ’441
Claim 3 depends from claim 1. Claim 18 depends from claim 16.
Appellant does not set forth any argument separate from those it asserted in
the context of independent claims 1 and 16. Accordingly, Appellant has not
shown error in the Examiner’s rejection of claims 3 and 18 as obvious over
Stevens-Wright and Lundquist ’441. The rejection of claims 3 and 18 as
obvious over Stevens-Wright and Lundquist ’441 is affirmed.
D. Rejection of Claim 15 as Obvious
over Stevens-Wright and Lundquist ’088
Claim 15 depends from claim 1. Appellant does not set forth any
argument separate from those it asserted in the context of independent
claim 1. Accordingly, Appellant has not shown error in the Examiner’s
rejection of claim 15 as obvious over Stevens-Wright and Lundquist ’088.
The rejection of claim 15 as obvious over Stevens-Wright and Lundquist
’088 is affirmed.
E. Rejection of Claims 1—20 for nonstatutory
double patenting over claims 1—29 of
US Pat. No. 5,861,024 in light of Stevens-Wright,
Truckai, Lundquist ’441, and Lundquist ’088
Appellant’s appeal brief does not address the Examiner’s final
rejection of claims 1—20 on the ground of nonstatutory double patenting over
claims 1—29 of US Pat. No. 5,861,024, in light of Stevens-Wright, Truckai,
Lundquist ’441, and Lundquist ’088. Accordingly, Appellant has not shown
error in this rejection. The rejection is affirmed.
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Application 13/209,110
DECISION
The rejection of claims 1—8, 13, 14, and 16—19 under 35 U.S.C.
§ 102(b) as anticipated by Stevens-Wright is affirmed.
The rejection of claims 3, 8—12, 18, and 20 under 35 U.S.C. § 103(a)
as unpatentable over Stevens-Wright and Truckai is affirmed.
The rejection of claims 3 and 18 under 35 U.S.C. § 103(a) as
unpatentable over Stevens-Wright and Lundquist ’441 affirmed.
The rejection of claim 15 under 35 U.S.C. § 103(a) as unpatentable
over Stevens-Wright and Lundquist ’088 affirmed.
The rejection of claims 1—20 on the ground of nonstatutory double
patenting over claims 1—29 of US Pat. No. 5,861,024 in view of Stevens-
Wright, Truckai, Lundquist ’441, and Lundquist ’088 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.L.R. § 1.136(a)(l)(iv).
ALLIRMED
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