Ex Parte Wang et alDownload PDFPatent Trial and Appeal BoardJun 30, 201611939206 (P.T.A.B. Jun. 30, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111939,206 11113/2007 67337 7590 07/05/2016 DYKEMA GOSSETT PLLC (STJ) 4000 Wells Fargo Center 90 South Seventh Street Minneapolis, MN 55402 FIRST NAMED INVENTOR Huisun Wang 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-052200US/65513.0013 5528 EXAMINER GOOD, SAMANTHA M ART UNIT PAPER NUMBER 3739 NOTIFICATION DATE DELIVERY MODE 07/05/2016 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): MN_IPMail@dykema.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HUISUN WANG and JEREMY DANDO Appeal2014-003890 Application 11/939,206 Technology Center 3700 Before MICHAEL L. HOELTER, ANNETTE R. REIMERS, and PAUL J. KORNICZKY, Administrative Patent Judges. REIMERS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Huisun Wang and Jeremy Dando (Appellants) seek our review under 35 U.S.C. § 134 of the Examiner's decision to reject under 35 U.S.C. § 112, second paragraph, claims 1-7, 22, and 23 for indefiniteness; and under U.S.C. § 103(a): (1) claims 1-8, 10, 12-18, 20, 22, and 23 as unpatentable over Brucker (US 6,017,338; iss. Jan. 25, 2000) and Messing (US 2004/0054272 Al; pub. Mar. 18, 2004); (2) claim 19 as unpatentable over Brucker, Messing, and Wittkampf (WO 2005/048858 Al; pub. June 2, 2005); and (3) claims 1, 8-11, 18-20, 22, and 23 as unpatentable over Appeal2014-003890 Application 11/939,206 Wittkampf, Brucker, and Messing. Claim 21 has been cancelled. We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM-IN-PART. THE CLAIMED SUBJECT MATTER The claimed subject matter relates to "irrigated ablation electrodes and/or assemblies that include at least one recessed portion." Spec. para. 1, Figs. 2, 4. Claims 1, 8, and 23 are independent. Claim 1, reproduced below, is illustrative of the subject matter on appeal and recites: 1. An electrode for an irrigated ablation catheter comprising: an outer body portion having a proximal portion and distal portion, the body portion including an outer surface having at least one first recessed portion, wherein the at least one first recessed portion has a variable width; an inner cavity defined within the outer body portion configured to receive irrigation fluid from a source at a proximal end of the ablation catheter; and at least one passageway that extends from the inner cavity to an outlet of the passageway in the at least one first recessed portion. ANALYSIS Indefiniteness Claims 1-7, 22, and 23 The Examiner addresses the recited limitation of "at least one passageway that extends ... to an outlet of the passageway" and determines that the term "the passageway" has "insufficient antecedent basis" and "is 2 Appeal2014-003890 Application 11/939,206 vague and indefinite": ( 1) "because it is not clear if [Appellants are] referring to a single passageway within the 'at least one passageway' or if this recitation should read 'the at least one passageway"'; and (2) "because the structure of 'at least one passageway' is being defined in terms of the passageway itself." Final Act. 2. Appellants contend that (1) "'at least one passageway' provides the antecedent basis for the term 'the passageway"' (Appeal Br. 3); and (2) "it is clear that the recitation of 'the passageway' is referring to the at least one passageway" (Reply Br. 1 ). Appellants also contend that "the structure 'at least one passageway' is not being defined in terms of the passageway itself, but the passageway is its own structure extending from the inner cavity to the recited outlet." Appeal Br. 3; see also Reply Br. 1. The test for definiteness under 35 U.S.C. § 112, second paragraph, is whether "those skilled in the art would understand what is claimed when the claim is read in light of the specification." Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations omitted). As disclosed in the Specification and figures, the subject invention has a passageway 32 that extends from the inner cavity 38 to an outlet on the outer surface 26. See Spec., paras. 24-25. The subject invention may have more than one of these passageways, as seen in Figures 2, 3 and 4A of Appellants' disclosure. Where there is more than one passageway, each passageway extends from the inner cavity to its own respective outlet belonging to that passageway. See Spec., paras. 24-25; see also id. at Figs. 2, 3, and 4A. Based on Appellants' Specification and figures, a skilled 3 Appeal2014-003890 Application 11/939,206 artisan would recognize that the "the passageway" refers back to the "the at least one passageway." We agree with Appellants that the recitation "at least one passageway" provides proper antecedent basis for the recitation "the passageway." Appeal Br. 3. We also agree with Appellants that the structure "at least one passageway" is its own structure that extends from the inner cavity to an outlet of, or belonging to, the passageway. See id.; see also Reply Br. 1 Accordingly, for the foregoing reasons, we do not sustain the Examiner's rejection of claims 1-7, 22, and 23 as indefinite. Obviousness over Brucker and Messing Appellants present the same arguments for independent claims 8 and 23 as those presented for independent claim 1. See Appeal Br. 4-11. Appellants also do not present arguments for claims 2-6, 10, 12-14, and 16- 18 separate from those presented for claim 1. See id. at 11. vVe select claim 1 as representative. Claims 2-6, 8, 10, 12-14, 16-18, and 23 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv) (2015). Appellants present additional arguments for claims 7, 15, 20, and 22. Appeal Br. 14-17. We address the additional arguments raised for claims 7, 15, 20, and 22 separately below. Claims 1-6, 8, 10, 12-14, 16-18, and 23 Claim 1 requires a recessed portion with "a variable width." The Examiner finds that "[Brucker] teaches the at least one recessed portion [56, 58] (Figures 8 and 9), however fails to expressly teach that it has a variable 4 Appeal2014-003890 Application 11/939,206 width." Final Act. 3. The Examiner finds that Messing (Figure 8 combined with Figure 6, or alternatively Figure 8 alone) discloses having a variable width in through channels 810 to provide quicker cooling by providing increased surface area. Final Act. 4; see also Ans. 3. Appellants contend that the combination of Figures 8 and 6 of Messing is improper. Appeal Br. 5. ("[T]he Office appears to mischaracterize Messing as though any embodiment could be combined with Figure 8, the disclosure in reality applies to combining the features of Figure 8 with other internally cooled embodiments"). Appellants also contend: [Figure 8 of] Messing does not teach or suggest that it is the variable width feature of the channels that cause quicker cooling. Messing is concerned with increasing the surface area of the electrode subject to contact with blood [by providing through holes 81 OJ, which is the disclosed mechanism for improving cooling, rather than a variable width. Reply Br. 3; see also Appeal Br. 5-8. Appellants' arguments are persuasive. We agree with Appellants that Messing does not teach or suggest modifying the passageways of Figure 6 to have a variable width channel as disclosed in Figure 8, but rather teaches combining the separate, externally cooled channels of Figure 8 with embodiments having internally circulating irrigating fluid. See Messing, paras. 44, 47, Figs. 6, 8; see also Appeal Br. 5-8. Even if Figures 6 and 8 were combined as suggested by Messing (Messing para. 4 7), there is still no suggestion that passageways 620 in Figure 6 of Messing would have outlets coupled to or positioned in through holes 810 of Figure 8, which the Examiner equates to the recessed portion. See Final Act. 3-4; see also Ans. 5 Appeal2014-003890 Application 11/939,206 2-3. This is because Messing states that externally cooled through holes 810 "are not connected to an internal irrigation channel" such as passageways 620. Messing para. 4 7. Regardless of whether the Examiner modifies Brucker with Messing's Figures 8 and 6, or Figure 8 alone, we agree with Appellants that the variable width shown in Figure 8 of Messing is unrelated to the motivation of providing quicker cooling via internal irrigation channels. See Appeal Br. 5-8; see also Reply Br. 3. As pointed out by Appellants, through channels 810 (not the variable width of the through channels) allow for quicker cooling by providing external circulation of blood. Appeal Br. 7-8; see also Reply Br. 3 and Messing para 47. As such, the Examiner fails to establish by sufficient evidence or technical reasoning how providing quicker cooling via external circulation through variable width channels 810 of Messing relates to forming internal circulation 1 1 ' 1 • 1 1 • 1.1 r1 T""'I. 1 A.. ' ,.... Al 1 ... !""'\ ,.... cnanne1s w nave a vanao1e w1arn . .)ee te ,• f> 1 ,• "l/ v arzous aaernanve c011Jzguranons OJ recess ea ponzons j o may further be provided based on the configuration of the ablation electrode 10, such as recessed portions 36 having constant or variable depths, alternate positioning of the passageways 32 or opening of passageways 32 within the recessed portions, and various combinations thereof Id. ,-i 33 (emphasis added). Because the Specification ( 1) describes that the width of the recessed portion can be uniform or variable; (2) gives no reasons or benefits for the recessed portion having variable width; and (3) contemplates the recessed portion having a variety of different configurations, the Specification does not impart any criticality to the claimed recessed portion having a "variable width" and does not provide support for Appellants' argument that the 7 Appeal2014-003890 Application 11/939,206 recessed portion having a variable width is critical to the functioning of the device. See Final Act. 4; see also Appeal Br. 10-11; Reply Br. 5. Moreover, Appellants contention that a variable width recessed portion may provide a benefit over a recessed portion with a uniform width (see Appeal Br. 10-11) is unsupported attorney argument. See In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984) (arguments and conclusions unsupported by factual evidence carry no evidentiary weight). Appellants further contend that "the MPEP does not explicitly require that the criticality and/or unexpected results must be disclosed in the application, as opposed to simply being demonstrated by the Applicant." Appeal Br. 10 (citing MPEP § 2144.04). Appellants' argument is not persuasive for the following reasons. As noted above, Appellants' Specification does not impart any criticality to the claimed recessed portion having a "variable width." Furthermore, Appellants have not come forth with any objective evidence of non- obviousness (i.e., secondary considerations). Specifically, Appellants have not provided any objective evidence of unexpected results, commercial success, long-felt but unsolved needs, or failure of others. In re Rou.ffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998); US. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1565 (Fed. Cir. 1997). Although the MPEP does not require that the criticality and/ or unexpected results be disclosed in Appellants' application, merely stating that a recessed portion having a variable width "may be" considered critical or that "unexpected results/properties" have been obtained is not sufficient to rebut the rejection; factual evidence must 8 Appeal2014-003890 Application 11/939,206 be provided. See In re De Blauwe, 736 F.2d at 705; see also Appeal Br. 10; Reply Br. 5. For these reasons, we agree with the Examiner's alternative rejection that Appellants have not demonstrated criticality of the claimed recessed portion having a "variable width." 1 Accordingly, we sustain the Examiner's rejection of claim 1 as unpatentable over Brucker and Messing. We also sustain the Examiner's rejection of claims 2-6, 8, 10, 12-14, 16-18, and 23, which fall with claim 1. Claims 7 and 15 Claims 7 and 15 depend from claims 1 and 8, respectively. We select claim 7 as representative and claim 15 stands or falls with claim 7. See 37 C.F .R. § 41.3 7 ( c )(1 )(iv) (2015). The relevant part of claim 7 recites "wherein the variable width of the at least one first recessed portion tapers from a first location where the at least one passageway is disposed to a second location further from the at least one passageway." Appeal Br. 17, Claims App. As noted above, we agree with Appellants that the Examiner's proposed combination of Brucker and Messing is improper. However, the Examiner alternatively determines 1 In further support that a "variable width" recessed portion is an obvious variation over the prior art, it is noted that a skilled artisan would consider axial groove 56 of Brucker to have a wider width at the portion intersecting with annular groove 58. See Brucker, Figs. 8, 9. It is also noted that a skilled artisan would recognize that Figure 5 of Messing shows another type of variable width recess. 9 Appeal2014-003890 Application 11/939,206 that the recessed portion having a tapering width would have been an obvious variation of the recessed portion of Brucker because "there is a lack of disclosed criticality or unexpected result for the variable width [tapering width] of the recessed portion." Final Act. 5; see also Ans. 5. The Examiner further determines that [a recessed portion that] tapers from a first location where the at least one passageway is disposed to a second location further from the at least one passageway is a change in shape which is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed recessed portion was significant (See MPEP 2144.04). Final Act. 5-6; see also Ans. 5. Appellants do not address whether or not a recessed portion having a tapering width is critical. Appeal Br. 11; see also Reply Br. 6; Ans. 5. Appellants' Specification describes that "the width of recessed portions 36 may taper as the portion, or groove, extends towards the proximal portion 22 of electrode 10 .... Various alternative configurations of recessed portions 3 6 may further be provided based on the configuration of the ablation electrode 10. See Spec., para. 33 (emphasis added). As noted in our analysis of claim 1, the Specification does not impart any criticality to the claimed recessed portion having a variable width, including a tapering width. As such, we agree with the Examiner's alternative rejection that the recessed portion having a tapering width would have been an obvious variation of the recessed portion of Brucker because "there is a lack of 10 Appeal2014-003890 Application 11/939,206 disclosed criticality or unexpected result for the variable width [tapering width] of the recessed portion." Final Act. 5. Accordingly, for the foregoing reasons, we sustain the Examiner's rejection of claim 7 as unpatentable over Brucker and Messing. We further sustain the Examiner's rejection of claim 15, which falls with claim 7. Claims 20 and 22 Claim 22 recites "at least one second recessed portion on the outer surface of the end of the distal portion, the at least one second recessed portion extending from the outlet of the axial passageway." Appeal Br. 20, Claims App. The Examiner acknowledges that Brucker fails to disclose at least one second recessed portion at the outlet of the axial passageway, but concludes that it would have been obvious "to modify the outlet of the axial passageway, as taught by Brucker, with an additional recess portion, as taught by Brucker, in order to provide a continuous evenly distributed fluid protective layer over substantially the entire surface of the electrode at the distal most tip of the electrode." Final Act. 8 (citing Brucker, col. 6, 11. 26- 32). According to the Examiner, the recessed portions 56/58 of Brucker are what provide an evenly distributed fluid layer over the electrode. Ans. 6. Appellants contend that Brucker discloses "interconnecting channels to provide a continuous, evenly distributed fluid protective layer. Because Brucker already provides for sufficient structure configured to accomplish the stated motivation, one of ordinary skill in the art would not be motivated to modify Brucker based on this purported reasoning." Appeal Br. 12; see 11 Appeal2014-003890 Application 11/939,206 also Reply Br. 6. Thus, Appellants appear to contend that the interconnecting channels 60, not recessed portions 56/58, provide an evenly distributed fluid protective layer over substantially the entire surface of the electrode. Upon review of Brucker, it is noted that the recessed portions of Brucker are formed in a grid-like configuration of axial and radial grooves 56/58. See Figures 8-9 and Brucker col. 3, 11. 55-59. It appears that, in column 6, lines 29-31, Brucker suggests that it is neither the recessed portions 56/58, as asserted by the Examiner, nor the interconnecting channels/passageways 60, as asserted by Appellants, that provide an evenly distributed fluid layer. Instead, it is the combination of the grid-like configuration of recessed portions and the interconnecting channels/passageways that provide this benefit. However, as pointed out by Appellants, the Examiner is proposing to modify the Brucker reference with itself using the motivation (i.e., providing an evenly distributed fluid protective layer) for a benefit that Brucker already possesses. 2 See Appeal Br. 12; see also Reply Br. 6. As such, the Examiner does not provide any reasoning as to how providing a second recessed portion at the outlet of the axial passageway of Brucker would provide an additional benefit not already present in the device of Brucker. See Final Act. 7-8; see also Ans. 5-6. 2 The Examiner does not rely on any disclosure from Messing for the rejection of claims 20 and 22. See Final Act. 7-8; see also Ans. 5-6. 12 Appeal2014-003890 Application 11/939,206 Claim 20 includes limitations similar to those discussed for claim 22. See Appeal Br. 19, Claims App. The Examiner relies on the same unsupported findings and conclusions for claim 20 as discussed above in claim 22. See Final Act. 7-8; see also Ans. 5-6. Thus, the Examiner's findings and conclusions with respect to Brucker are deficient for claim 20 as well. Accordingly, for the foregoing reasons, we do not sustain the Examiner's rejection of claims 20 and 22 as unpatentable over Brucker and Messing. Obviousness over Brucker, Messing, and Wittkampf Claim 19 Appellant contends: Claim 19 depends indirectly from independent claim 8 and therefore includes all of the limitations thereof. Moreover, the addition of Wittkampf does not cure the deficiencies of Brucker and Messing, alone or in combination. Accordingly, for at least the same reasons given above, [Appellants] submit that the rejection of claim 19 is improper. Appeal Br. 13. For the reasons discussed above, we agree with Appellants that the Examiner's combination of Brucker and Messing is improper. Because the Examiner relies on the same unsupported findings and conclusions to reject the claim 19 under Brucker, Messing, and Wittkampf, and does not rely on Wittkampf to remedy the deficiencies of Brucker and Messing, we further 13 Appeal2014-003890 Application 11/939,206 agree with Appellants that the Examiner's combination of Brucker, Messing, and Wittkampf is improper. However, Appellants do not separately address the Examiner's alternative rejection based on "lack of disclosed criticality or unexpected result for the variable width of the recessed portion." See Final Act. 4; see also Appeal Br. 13. As such, Appellants do not apprise us of Examiner error. As noted above, we find no deficiency in the Examiner's alternative rejection of the claims based on modifying Brucker's uniform recessed portions 56/58 to have "variable width," because "there is a lack of disclosed criticality or unexpected result for the variable width of the recessed portion." See Final Act. 4. Accordingly, for reasons similar to those discussed above for claims 1 and 8, we sustain the Examiner's rejection of claim 19 as unpatentable over Brucker, Messing, and Wittkampf. Obviousness over Wittkampf, Brucker, and Messing Claims 1, 8-11, 18, 19, and 23 The Examiner makes similar findings and conclusions as those to the rejection of claim 1 over Brucker and Messing detailed above. See Final Act. 10-11. Appellants rely on the same arguments as those presented above for the rejection of claim 1 over Brucker and Messing. Appeal Br. 14-15. For the reasons discussed above, we agree with Appellants that the Examiner's combination of Brucker and Messing is improper. Because the Examiner relies on the same unsupported findings and conclusions to reject 14 Appeal2014-003890 Application 11/939,206 the claims under Wittkampf, Brucker, and Messing and does not rely on Wittkampf to remedy the deficiencies of Brucker and Messing, we further agree with Appellants that the Examiner's combination of Wittkampf, Brucker, and Messing is improper. See Final Act. 9-1 O; see also Appeal Br. 14-15. However, Appellants do not separately address the Examiner's alternative rejection based on "lack of disclosed criticality or unexpected result for the variable width of the recessed portion." See Final Act. 10-11; see also Appeal Br. 14-15. As such, Appellants do not apprise us of Examiner error. As noted above, Appellants' Specification does not impart any criticality to the claimed recessed portion having a "variable width," and Appellants have not come forth with any objective evidence of non- obviousness (i.e., secondary considerations). Accordingly, for the foregoing reasons, we sustain the decision of the Examiner to reject claims 1, 8-11, 18, 19, and 23 as unpatentable over Wittkampf, Brucker, and Messing. Claims 20 and 22 The Examiner's rejection of claims 20 and 22 as unpatentable over Wittkampf, Brucker, and Messing (see Final Act. 12-13) is based on the same unsupported findings and conclusions discussed above with respect to the rejection of claims 20 and 22 over Brucker and Messing. The Examiner does not rely on Wittkampf or Messing to remedy the deficiency of Brucker. 15 Appeal2014-003890 Application 11/939,206 Accordingly, for reasons similar to those discussed above for the Examiner's rejection of claims 20 and 22 over Brucker and Messing, we do not sustain the Examiner's rejection of claims 20 and 22 as unpatentable over Wittkampf, Brucker, and Messing. DECISION We REVERSE the decision of the Examiner to reject claims 1-7, 22, and 23 as indefinite. We AFFIRM the decision of the Examiner to reject claims 1-8, 10, 12-18, and 23 as unpatentable over Brucker and Messing. We REVERSE the decision of the Examiner to reject claims 20 and 22 as unpatentable over Brucker and Messing. We AFFIRM the decision of the Examiner to reject claim 19 as unpatentable over Brucker, iviessing, and Wittkampf. We AFFIRM the decision of the Examiner to reject claims 1, 8-11, 18, 19, and 23 as unpatentable over Wittkampf, Brucker and Messing. We REVERSE the decision of the Examiner to reject claims 20 and 22 as unpatentable over Wittkampf, Brucker, and Messing. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED-IN-PART 16 Copy with citationCopy as parenthetical citation