Ex Parte Stangenes et alDownload PDFPatent Trials and Appeals BoardMay 31, 201911647317 - (D) (P.T.A.B. May. 31, 2019) Copy Citation 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 06/04/2019 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-0503US0/82410.0158 1656 EXAMINER DELLA,JAYMIE ART UNIT PAPER NUMBER 3794 NOTIFICATION DATE DELIVERY MODE 06/04/2019 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): ptodocket@wileyrein.com ASJM_Patents@abbott.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 WST Appeal2018-008644 1 Application 11/647 ,317 2 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(a) from the rejection of claims 1-3, 5, 6, 8, 10, 11, and 13-25. We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM. 1 Our decision references the Appeal Brief ("Br.," filed May 24, 2018), the Examiner's Answer ("Ans.," mailed June 20, 2018), and the Final Office Action ("Final Act.," mailed Feb. 7, 2018). 2 According to Appellants, the real party in interest is St. Jude Medical, Atrial Fibrillation Division, Inc. Br. 2. Appeal2018-008644 Application 11/647,317 BACKGROUND According to Appellants, the "invention relates to cardiac catheters, and further relates to catheters that are especially suited to ablation of cardiac tissue." Spec. ,r 1. CLAIMS Claims 1, 8, 16, 17, and 21 are the independent claims 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 comprising a loop shape in a plane perpendicular to a longitudinal axis of the catheter shaft, the loop shape having both an upper forward surface and an outward surface, 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% and less than 100% of the circumference of said distal portion of said catheter shaft and extends into both the upper forward surface and the outward surface; (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 width parallel to the longitudinal axis of the catheter shaft and a length along the circumference of the 2 Appeal2018-008644 Application 11/647,317 catheter shaft in a plane perpendicular to the longitudinal axis of the catheter shaft, wherein each slotted opening extends through said wall of the catheter shaft, along its respective length, and from an outer surface of the catheter shaft to said inner lumen, and wherein the width of the slotted opening is less than the length of the slotted opening. Br. 15 ( emphasis added). REJECTIONS 1. The Examiner rejects claims 1, 2, 5, 6, 8, 10, 11, 13, 14, and 17-24 under 35 U.S.C. § I03(a) as unpatentable over Swartz3 in view ofVanney 253 4 and Engel. 5 2. The Examiner rejects claim 3 under 35 U.S.C. § I03(a) as unpatentable over Swartz in view ofVanney 253, Engel, and Francischelli. 6 3. The Examiner rejects claim 15 under 35 U.S.C. § I03(a) as unpatentable over Swartz in view ofVanney 253, Engel, and Fleischman. 7 4. The Examiner rejects claim 16 under 35 U.S.C. § I03(a) as unpatentable over Swartz in view ofVanney 253, Engel, and Lesh. 8 5. The Examiner rejects claims 1 and 25 under 35 U.S.C. § I03(a) as unpatentable over Swartz in view ofVanney 565 9 and Engel. 3 Swartz et al., US 6,080,151, iss. June 27, 2000. 4 Vanney et al., US 2004/0143253 Al, pub. July 22, 2004. 5 Engel et al., US 2005/0015072 Al, pub. Jan. 20, 2005. 6 Francischelli, US 2003/0073991 Al, pub. Apr. 17, 2003. 7 Fleischman et al., US 5,797,905, iss. Aug. 25, 1998. 8 Lesh, US 6,471,697 Bl, iss. Oct. 29, 2002. 9 Vanney, US 2005/0004565 Al, pub. Jan. 6, 2005. 3 Appeal2018-008644 Application 11/647,317 DISCUSSION As an initial matter, we note that we previously issued a Decision on appeal with respect to this application. See Decision on Appeal, mailed May 6, 2016. We do not further address this prior decision herein because the issues addressed in the prior decision are not applicable to the issues presented in the current appeal. Rejection 1 Appellants group claims 1, 2, 5, 6, 8, 10, 11, 13, 14, and 17-24 together as a single group. Br. 11. We select claim 1 as representative of this group, and the remaining claims fall with claim 1. With respect to claim 1, the Examiner finds that Swartz discloses an ablation catheter as claimed except for three claim elements. Final Act. 3---6. First, the Examiner acknowledges that Swartz does not "specifically disclose the catheter shaft distal portion comprising a loop shape in a plane perpendicular to a longitudinal axis of the shaft, the loop shape having both an upper forward surface and an outward surface." Id. at 4. The Examiner relies on Vanney 253 with respect to this limitation. Id. at 4--5. Next, the Examiner acknowledges that Swartz and Vanney do not disclose each opening spanning between 25% and 100% of the circumference of the distal portion of the catheter and extending into the upper forward surface and outward surface of the loop. Id. at 5. However, the Examiner finds that this arrangement of slots would have been obvious in view of the exemplary dimensions presented in Swartz. Id. at 5-6. Finally, the Examiner acknowledges that neither Swartz nor Vanney 253 discloses slots with widths that are less than their lengths. Id. at 6. However, the Examiner finds that Engel discloses a catheter shaft with slots having a width less than 4 Appeal2018-008644 Application 11/647,317 their length, and the Examiner determines that it would have been obvious to further modify Swartz in view of Vanney 253 to provide slots as taught by Engel "in order to provide the benefit of the openings having a major axis and a minor axis that are buckle-resistant such that the shaft may exhibit a greatest degree of bending." Id. ( citing Engel Figs. 3---6; ,r,r 24--31 ). We agree with and adopt the Examiner's findings and conclusions with respect to claim 1 here. See Final Act. 3-6; see also Ans. 3--4. As discussed below, we are not persuaded of reversible error by Appellants' argument. Appellants assert that claim 1 requires that the catheter includes slots that have widths less than their length and "that the openings extend about less than the entire circumference of the catheter." Br. 11. Appellants argue that "[t]he claimed shape and arrangement of openings cannot be found in the combination" of art proposed by the Examiner because Swartz and Vanney only disclose circular openings and "Engel discloses openings that extend about the entire circumference." Id. We are not persuaded of error. First, the claim requires that "each slotted opening" spans at least 25% and less than 100% of the circumference. Thus, the claim only appears to require that an individual opening spans less than the circumference of the catheter. Engel discloses a catheter with "eye-shaped apertures 22" that individually span less than the entire circumference of the catheter. See Engel ,r 30, Figs. 3-7. Similarly, each of Swartz and Vanney 253 discloses openings that span less than the entire circumference of the catheter. See Swartz Fig. 6, see also Vanney 253 Fig. 4. Without further explanation, we fail to see why the proposed combination would not meet the claim 5 Appeal2018-008644 Application 11/647,317 requirement that each opening spans less than 100% of the circumference of the catheter. Second, even if we were to agree with Appellants' indication that the claim requires that the openings collectively cannot extend around the entire circumference of the catheter, Appellants' arguments against the references individually do not show error in the rejection. In particular, the Examiner determines that the specific length of the slotted openings about the circumference of the catheter would be obvious in view of Swartz. See Final Act. 5-6. Separately, the Examiner relies on Engel to show that it would have been obvious to include openings with a width smaller than the length as claimed. Thus, the Examiner relies on the shape of Engel's openings and does not indicate that the combination would incorporate the specific arrangement of Engel's plurality of openings. See id. at 6; see also Ans. 3- 4. Based on the foregoing, we are not persuaded of error in the rejection of claim 1 here. Accordingly, we sustain this rejection of claim 1. We also sustain the rejection of claims 2, 5, 6, 8, 10, 11, 13, 14, and 17-24, which fall with claim 1. Rejections 2--4 Appellants do not raise separate arguments with respect to the rejections of claims 3, 15, and 16, and instead, Appellants rely on the same arguments discussed above with respect to claim 1. Thus, we also sustain the rejections of claims 3, 15, and 16 for the reasons discussed above. 6 Appeal2018-008644 Application 11/647,317 Rejection 5 Claim 1 The Examiner provides an alternate rejection of claim 1, relying on Vanney 565. See Final Act. 31-35. With respect to this rejection of claim 1, Appellants do not present any specific arguments. See Br. 13 ( only addressing the motivation provided by the Examiner with respect to claim 25). Thus, Appellants do not apprise us of any error in the rejection, and accordingly, we sustain it. Claim 25 Claim 25 depends from claim 1 and further recites "wherein each slotted opening of said plurality of slotted openings extends only into the upper forward surface and the outward surface." Br. 20. The Examiner finds that Vanney 565 also "discloses slotted openings (76, 82) that also extend only into the upper forward surface." Final Act. 35. The Examiner determines: Id. At the time of the invention, it would have been obvious to one of ordinary skill in the art to modify the invention of Swartz et al. such that the slotted openings extend only into the upper forward surface and the outward surface in order to provide the benefit of providing a pathway for fluid flowing out of the openings to the bloodstream such that the fluid is not readily blocked by tissue as taught by [Vanney 565]. ([0066], [0071]; Fig. 3A). With respect to this rejection, Appellants argue that "there is no motivation to modify the asserted references in an effort to yield the claimed invention, because doing so would defeat the stated purpose of the asserted references." Br. 13. In support, Appellants assert that "the instant specification establishes that the openings must be pressed against the tissue 7 Appeal2018-008644 Application 11/647,317 in order to deliver ablative energy" and thus, the opening must be blocked by tissue in order to ablate the tissue. Id. (citing Spec. ,r,r 55, 56). We are not persuaded of error. Appellants do not explain adequately why the proposed modification would defeat the purpose of Swartz. Although it may be true that the device must be in close proximity to the tissue in order to provide ablative energy, the Examiner relies on the opening in Vanney 565 that are not only shaped to provide ablative energy but are also shaped to allow a pathway for additional saline flowing out of the slots. See Vanney ,r 71. Thus, it is not clear why Swartz's ability to provide ablative energy would be defeated by this modification. Accordingly, we are not persuaded of error, and we sustain the rejection. CONCLUSION We AFFIRM the rejections of claims 1-3, 5, 6, 8, 10, 11, and 13-25. 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 8 Copy with citationCopy as parenthetical citation