Ex Parte Stangenes et al

Patent Trial and Appeal Board

May 4, 2016

11647317 (P.T.A.B. May. 4, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/647,317 12/29/2006
55962 7590
Wiley Rein LLP
Patent Administration
1776 K Street, NW
Washington, DC 20006
05/06/2016
FIRST NAMED INVENTOR
Todd Stangenes
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-050300US/82410.0158 1656
EXAMINER
DELLA, JAYMIE
ART UNIT PAPER NUMBER
3739
NOTIFICATION DATE DELIVERY MODE
05/06/2016 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):
ptodocket@wileyrein.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TODD STANGENES and DALE JUST
Appeal2014-005185
Application 11/647,317 1
Technology Center 3700
Before HUBERT C. LORIN, KENNETH G. SCHOPPER, and
TARA L. HUTCHINGS Administrative Patent Judges.
SCHOPPER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the rejection of claims
1-8 and 10-24. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
BACKGROUND
According to Appellants:
The instant invention relates to catheters. In particular,
the instant invention relates to cardiac catheters, and further
1 According to Appellants, the real party in interest is St. Jude Medical,
Atrial Fibrillation Division, Inc. Appeal Br. 2.
Appeal2014-005185
Application 11/647,317
relates to catheters that are especially suited to ablation of
cardiac tissue. The catheters of the present invention comprise
slotted openings at their distal end, each slotted opening is
arranged around the circumference of the catheter shaft and
covers at least about 25% of the circumference of the catheter
shaft. These slotted ablation catheters allow for effective
ablation lesions to be created in a wide variety of cardiac tissue
orientation.
Spec. ,-r 1.
CLAIMS
Claims 1-8 and 10-24 are on appeal. Claim 1 is illustrative of the
appealed claims and recites:
1. An ablation catheter for ablating tissue, the ablation
catheter comprising:
(a) a catheter shaft, said catheter shaft comprising a wall,
a proximal portion and a distal portion, said distal portion being
adapted to be inserted into a body having tissue to be ablated
and being disposed remotely from said proximal portion, said
distal portion comprising a plurality of slotted openings each
located on a circumference of the distal portion and being
adapted to deliver a conductive medium to the tissue to be
ablated, wherein said plurality of slotted openings are arranged
along the circumference of the distal portion, wherein each
slotted opening of said plurality of slotted openings spans at
least about 25% of the circumference of said distal portion of
said catheter shaft;
(b) an inner lumen disposed within said distal portion and
defined by said wall of the catheter shaft, said inner lumen
adapted to carry the conductive medium; and
( c) an electrode disposed within said distal portion of the
catheter shaft, said electrode being adapted to supply ablation
energy to the conductive medium, wherein each slotted opening
of the plurality of slotted openings defines a length along the
circumference of the catheter shaft, wherein each slotted
opening extends through said wall of the catheter shaft, along
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Application 11/647,317
its respective length, and from an outer surface of the catheter
shaft to said inner lumen.
Appeal Br. 16
REJECTIONS2
I. The Examiner rejects claims 1, 2, 6, 8, 10, 11, 17-20, 22, and 23
under 35 U.S.C. § 102(b) as anticipated by Swartz. 3
II. The Examiner rejects claims 23 and 24 under 35 U.S.C. § 103(a) as
unpatentable over Swartz.
III. The Examiner rejects claim 3 under 35 U.S.C. § 103(a) as
unpatentable over Swartz in view of Francischelli.4
IV. The Examiner rejects claims 4, 5, 7, and 12-14 under 35 U.S.C.
§ 103(a) as unpatentable over Swartz in view of Vanney. 5
V. The Examiner rejects claim 15 under 35 U.S.C. § 103(a) as
unpatentable over Swartz in view of Fleischman. 6
VI. The Examiner rejects claim 16 under 35 U.S.C. § 103(a) as
unpatentable over Swartz in view of Lesh.7
VII. The Examiner rejects claims 1, 4, 6-8, 12, 17, 18, 20, and 22-24 on
the ground of nonstatutory obviousness-type double patenting over claims 1,
9-11, and 15-16 ofU.S. Patent No. 7,235,070 in view of Swartz.
2 The rejection of claim 21 as anticipated by Vanney (US 2005/0004565
Al, pub. Jan. 6, 2005) has been withdrawn. See Ans. 3.
3 Swartz et al. (US 6,080,151, iss. June 27, 2000).
4 Francischelli (US 2003/0073991 Al, pub. Apr. 27, 2003).
5 Vanney (US 2004/0143253 Al, pub. July 22, 2004).
6 Fleischman et al. (US 5,797,905, iss. Aug. 25, 1998).
7 Lesh (US 6,471,697 Bl, iss. Oct. 29, 2002).
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VIII. The Examiner rejects claims 1, 6, 17, 18, 20, and 22-24 on the ground
of nonstatutory obviousness-type double patenting over claims 1 and 34 of
U.S. Patent No. 7,416,552 in view of Swartz.
IX. The Examiner rejects claims 1, 6, 8, 17, 18, 20, and 22-24 on the
ground of nonstatutory obviousness-type double patenting over claims 1 and
20 of U.S. Patent No. 7,776,034 in view of Swartz.
DISCUSSION
Rejection I
With respect to this rejection, Appellants raise two arguments. First,
Appellants argue that Swartz does not disclose slotted openings as required
by each of independent claims 1, 8, and 17. Appeal Br. 10-11. Second,
Appellants argue that Swartz does not disclose the claimed slot dimensions
required by claims 1, 8, and 17. Id. at 12.
With respect to Appellants' first argument, we disagree. We find that
Swartz's circular openings may be considered slotted openings under the
broadest reasonable interpretation of the claims. Specifically, we agree with
the Examiner that the term "slot" may be reasonably construed to mean "a
groove or channel into which something fits" and that the term channel may
be construed to include the openings in Swartz's catheter. See Ans. 4.
However, we are persuaded by Appellants' second argument.
Regarding the claimed dimensional relationship between the slots and the
circumference of the catheter, the Examiner relies on exemplary diameters
for the openings and the distal end of the catheter found in Swartz's
disclosure. See Final Action 6, 8, 10 (citing Swartz col. 7, 11. 65-67). For
example, with respect to claim 1, the Examiner states:
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openings 20/410 are circular in cross-section with a diameter of
about .25 mm to about 2.5 mm and the diameter of the catheter
10 can range from about 4 to 16 French or 1.33 mm to about
5.33 mm, thus, if the catheter diameter is 1.33 mm the openings
must be at least about (n x 1.33 mm x 1/4) 1.04 mm which is
within the disclosed range of .25 mm to about 2.5 mm; Col. 7-
8, II. 65-11.
Id. at 6. We agree with Appellants that Swartz's disclosure of exemplary
dimensions for the openings and the catheter are not sufficient to anticipate
the claimed dimensions. Specifically, the Examiner does not cite to any
specific examples of a catheter disclosed by Swartz with a particular
circumference and openings of a particular diameter that meet the claimed
dimensions. Although, the ranges provided could lead to a catheter with
those dimensions, it is not necessarily so, and thus, not enough to show
anticipation. See In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999)
("Inherency, however, may not be established by probabilities or
possibilities. The mere fact that a certain thing may result from a given set
of circumstances is not sufficient." (quoting Cont 'l Can Co. v. Monsanto
Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991))
Based on the foregoing, we do not sustain the rejection of independent
claims 1, 8, and 17. We also do not sustain the rejection of dependent
claims 2, 6, 10, 11, 18-20, 22, and 23.
Rejections 11-V
Each of claims 3, 4, 5, 7, 12-15, 23, and 24 each ultimately depend
from independent claim 1 or 8. The Examiner has not shown how the art of
record cures the deficiencies found in the rejection of claims 1 and 8.
Accordingly, we do not sustain these rejections for the same reason we do
not sustain the rejection of claims 1 and 8.
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Rejection v1
With respect to claim 16, Appellants argue only that this rejection
should be reversed for the same reasons presented with respect to the
anticipation rejection. Specifically, Appellants state:
Like claims 1, 8, and 17, independent claim 16 recites a
particular configuration of its slotted openings that is neither
taught nor suggested by Swartz. Nor is this configuration
disclosed in Lesh. Indeed, the Examiner relies upon Lesh only
for its alleged disclosure of a catheter capable of creating
simultaneous lesions. See Office action, p.33.
Thus, claim 16 is not prima facie obvious over the
asserted combination of Swartz and Lesh; accordingly, the
Board should vacate the§ 103 rejection thereof.
Appeal Br. 14 (citation omitted).
We are not persuaded of error with respect to the rejection of claim
16. As noted above, we find that Swartz discloses a catheter with slotted
openings. Further, to the extent that Appellants argue that Swartz does not
suggest slotted openings spanning between about 120° and 270° of the
circumference of the catheter, we disagree. The Examiner finds that Swartz
discloses dimensions for the catheter and openings that could meet this
requirement of claim 16. Final Action 19. We find that the cited
dimensions of Swartz are sufficient to suggest a catheter with openings
encompassing the relationship claimed to a person of ordinary skill in the art
as found by the Examiner. Accordingly, we sustain the rejection of claim
16.
Rejections VII-IX
Appellants do not address the double patenting rejections in their
briefs. Accordingly, we summarily sustain these rejections.
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CONCLUSION
For the reasons set forth above, we find as follows.
We reverse the rejection of claims 1, 2, 6, 8, 10, 11, 17-20, 22, and 23
under 35 U.S.C. § 102(b) as anticipated by Swartz.
We reverse the rejection of claims 23 and 24 under 35 U.S.C. § 103(a)
as unpatentable over Swartz.
We reverse the rejection of claim 3 under 35 U.S.C. § 103(a) as
unpatentable over Swartz in view of Francischelli.
We reverse the rejection of claims 4, 5, 7, and 12-14 under 35 U.S.C.
§ 103(a) as unpatentable over Swartz in view of Vanney.
We reverse the rejection of claim 15 under 35 U.S.C. § 103(a) as
unpatentable over Swartz in view of Fleischman.
We affirm the rejection of claim 16 under 35 U.S.C. § 103(a) as
unpatentable over Swartz in view of Lesh.
We affirm the rejection of claims 1, 4, 6-8, 12, 17, 18, 20, and 22-24
on the ground of nonstatutory obviousness-type double patenting over
claims 1, 9-11, and 15-16 U.S. Patent No. 7,235,070 in view of Swartz.
We affirm the rejection of claims 1, 6, 17, 18, 20, and 22-24 on the
ground of nonstatutory obviousness-type double patenting over claims 1 and
34 of U.S. Patent No. 7,416,552 in view of Swartz.
We affirm the rejection of claims 1, 6, 8, 17, 18, 20, and 22-24 on the
ground of nonstatutory obviousness-type double patenting over claims 1 and
20 of U.S. Patent No. 7,776,034 in view of Swartz
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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