Ex Parte Weitzner

Patent Trial and Appeal Board

Sep 30, 2016

13325570 (P.T.A.B. Sep. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/325,570 12/14/2011
109610 7590 10/04/2016
Bookoff McAndrews, PLLC
2401 Pennsylvania Avenue, NW, Suite 450
Washington, DC 20037
FIRST NAMED INVENTOR
Barry WEITZNER
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.
06530.0345-02000 4575
EXAMINER
DELLA, JAYMIE
ART UNIT PAPER NUMBER
3739
NOTIFICATION DATE DELIVERY MODE
10/04/2016 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):
usptomail@bookoffmcandrews.com
Kross@bookoffmcandrews.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BARRY WEITZNER
Appeal2014-007859
Application 13/325,570
Technology Center 3700
Before ANTON W. PETTING, CYNTHIA L. MURPHY, and
KENNETH G. SCHOPPER, Administrative Patent Judges.
MURPHY, Administrative Patent Judge.
DECISION ON APPEAL
The Appellant1 appeals under 35 U.S.C. § 134 from the Examiner's
rejections of claims 38--44, 46-53, and 55-58.2 We have jurisdiction over
this appeal under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 The Appellant identifies the real party in interest as "Boston Scientific
Scimed." (Appeal Br. 2.)
2 Claims 38-53 and 55-58 are pending in the application with claim 45
being withdrawn from consideration. (Final Action 1.)
Appeal2014-007859
Application 13/325,570
STATEMENT OF THE CASE
The Appellant's invention relates to "endoscopic nmcosal resection
including injecting fluid into tissue, positioning wire snares at a treatment
site, and applying current between the snares in order to cut and remove
tissue." (Spec. i-f 1.)
Illustrative Claim3
38. A device for excising target tissue in a body,
compnsmg:
a catheter including a first channel and a second channel;
an injection needle including an insulating lumen and
disposed within the first channel of the catheter, wherein the
injection needle is configured to deliver a fluid through the
insulating lumen and to the target tissue;
a first electrically-conductive member disposed within
the second channel; and
a second electrically-conductive member movably
disposed within the insulating lumen of the injection needle.
Chu
Snow
Ellman
Francischelli
Snay
References
us 5,961,526
us 6,007 ,546
US 6,352,533 B 1
US 2003/0073991 Al
US 2005/0245927 Al
Rejections
Oct. 5, 1999
Dec. 28, 1999
Mar. 5, 2002
Apr. 17, 2003
Nov. 3, 2005
I. The Examiner rejects claims 38--43, 46, 53, and 55-57 under
35 U.S.C. § 103(a) as unpatentable over Snow, Ellman, and Chu. (Final
Action 2.)
3 This illustrative claim is quoted from the Claims Appendix ("Claims
App.") set forth on pages 23-26 of the Appeal Brief.
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IL The Examiner rejects claim 44 under 35 U.S.C. § 103(a) as
unpatentable over Snow, Ellman, Chu, and Francischelli. (Id. at 7.)
III. The Examiner rejects claims 47-52 under 35 U.S.C. § 103(a) as
unpatentable over Snow, Chu, and Ellman. (Id. at 8.)
IV. The Examiner rejects claim 58 under 35 U.S.C. § 103(a) as
unpatentable over Snow, Ellman, Chu, and Snay. (Id. at 10-11.)
ANALYSIS
Claims 38, 47, and 53 are the independent claims on appeal, with the
rest of the claims on appeal (i.e., claims 39--44, 46, 48-52, and 55-57)
depending therefrom. (Claims App.) Independent claims 38, 47, and 53
each recite a "device for excising tissue in a body." (Id.)
Independent Claim 38
Independent claim 38 recites "a catheter" that includes a "channel," an
"injection needle" that is "disposed within" the channel, and "[an]
electrically-conductive member." (Claims App.) The Examiner finds Snow
discloses these components. (See Final Action 3.) Snow discloses a
catheter 820 that includes a channel 822A, an injection needle 840 disposed
within this channel, and an electrically conductive snare 850. (See Snow,
col. 6, lines 1-10, Fig. 8.)
Independent claim 38 requires the injection needle to include "an
insulating lumen." (Claims App.) The Examiner finds Snow's needle 840
includes such an insulating lumen. (See Final Action 2-3.) Snow teaches
that its injection needle can be comprised of a proximal electrically
conducting portion and a distal non-electrically conducting portion. (See
Snow col. 4, lines 22-26, Fig. 4.) The Examiner considers the distal non-
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Application 13/325,570
electrically conduction portion of Snow's injection needle to be its
"insulating lumen." (See Final Action 3.)
Independent claim 38 further requires the electrically conductive
member to be "disposed within" the needle's "insulating lumen." (Claims
App.) Snow teaches attaching an electrically conductive member (e.g.,
snare 850) to a coupler 460 situated between the proximal and distal portions
of its injection needle. (See Snow col. 4, lines 26-28, Fig. 4.) Thus, Snow
does not disclose that its snare 850 is disposed within the distal insulating
portion of its injection needle 840.
The Examiner finds that Chu teaches a catheter wherein an electrically
conductive snare is extendable and retractable through a lumen of an
injection needle. (See Final Action 4; see also Chu, Fig. IA.) The Examiner
determines that it would have been obvious to modify Snow's device to have
its snare 850 "disposed within the lumen of the injection needle" (Final
Action 4) or, in other words, disposed within the distal insulating portion of
its injection needle 840. The Examiner explains that this would "provide the
benefit of allowing retraction of the needle when not in use to substantially
reduce the risk of accidental perforation or entanglement as taught by Chu."
(Id.)
The Appellant advances arguments premised upon Snow and Chu
having conflicting teachings that discredit and/or criticize each other. (See
Appeal Br. 17-19; see also Reply Br. 1-2.) We are not persuaded by these
arguments because we view these references as complementary, and not
conflicting, in that they demonstrate different design priorities arising
depending on surgical circumstances. For example, Snow shows that, in
some surgical circumstances, concerted movement of the snare and injection
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Application 13/325,570
needle may be an important feature; while Chu shows that, in other surgical
circumstances, unwanted tissue perforation is a significant concern and
concerted movement of the snare and injection needle are not necessary or
desired.
The Appellant also advances arguments premised upon "both Snow
and Chu teaching electrical contact between a snare and an injection
needle." (Appeal Br. 18; see also Reply Br. 2-3.) We are not persuaded by
these arguments because Snow teaches an injection needle having an
electrically non-conductive (i.e., insulating) distal portion and Chu teaches a
snare disposed in a distal portion of an injection needle. 4 One of ordinary
skill in the art would glean from these teachings that Snow's snare 850 could
be disposed in the insulating distal portion of its injection needle 840. The
Examiner "need not seek out precise teachings directed to the specific
subject matter of the challenged claim" as "the inferences and creative steps
that a person of ordinary skill in the art would employ" can be taken into
account. See KSR 550 U.S. at 418. As for Snow already addressing certain
concerns (see Reply 2), the Appellant does not adequately address why this
would cause one of ordinary skill to infer that other options taught by the
prior art should be completely ignored.
The Appellant further argues that "[ n ]othing in Ellman teaches or
even suggests" an "electrically-conductive member movably disposed within
4 Although Snow teaches a non-conductive distal portion for reasons related
to flexibility (see Snow, col. 5, lines 1-9), this flexible distal portion would
nonetheless constitute an insulating lumen in the Examiner's combination of
the prior art teachings. And, as noted by the Examiner, Chu teaches that a
snare can be electrically connected to an energy source in a manner that "does
not depend" on the injection needle. (See Answer 5; see also Chu, Fig. 17.)
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Application 13/325,570
an insulating lumen of an injection needle." (Appeal Br. 19.) We are not
persuaded by this argument because the Examiner does not rely upon Ellman
to teach this feature. The Examiner finds Ellman teaches using two
electrically conductive loop members in a device for excising tissue. (See
Final Action 3.) The Appellant does not point, with particularity, to flaws in
this finding by the Examiner.
Accordingly, we are not persuaded that the Examiner errs in
determining that the device recited in independent claim 38 would have been
obvious over the combined teachings of Snow, Ellman, and Chu. Thus, we
sustain the Examiner's rejection of independent claim 38 under 35 U.S.C.
§ 103(a) as unpatentable over Snow, Ellman, and Chu (Rejection I).
Dependent Claims 39-44 and 46
The Appellant does not argue these dependent claims separately from
independent claim 38 (see Appeal Br. 19) and so they fall therewith. Thus,
we sustain the Examiner's rejection of dependent claims 39--43 and 46 under
35 U.S.C. § 103(a) as unpatentable over Snow, Ellman, and Chu
(Rejection I); and we sustain the Examiner's rejection of dependent claim 44
under 35 U.S.C. § 103(a) as unpatentable over Snow, Ellman, Chu, and
Francischelli (Rejection II).
Independent Claim 47
Independent claim 47, like independent claim 38, requires the
injection needle to include "an insulating lumen." (Claims App.)
Independent claim 4 7 also requires a "snare loop" to be "movably disposed
within the insulating lumen of the injection needle." (Id.) The Examiner
finds that such a disposition of a snare loop would have been obvious over
the teachings of Snow and Chu. (See Final Action 8-9.) The Appellant
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submits that the "same arguments above with respect Snow, Chu, and
Ellman apply equally to claim 47." (Appeal Br. 20.) As discussed above,
we are not persuaded by these arguments.
Thus, we sustain the Examiner's rejection of independent claim 47
under 35 U.S.C. § 103(a) as unpatentable over Snow, Chu, and Ellman
(Rejection III).
Dependent Claims 48-52
The Appellant does not argue these dependent claims separately from
independent claim 47 (see Appeal Br. 20) and so they fall therewith. Thus,
we sustain the Examiner's rejection of dependent claims 48-52 under
35 U.S.C. § 103(a) as unpatentable over Snow, Chu, and Ellman
(Rejection III).
Independent Claim 53
Independent claim 53, like independent claims 38 and 47, requires the
injection needle to include "an insulating lumen" and also requires an
"electrode" to be "movably disposed within the insulating lumen of the
injection needle." (Claims App.) The Appellant submits that the "same
arguments above with respect Snow, Chu, and Ellman apply equally to
claim 53." (Appeal Br. 20.) As discussed above, we are not persuaded by
these arguments.
Independent claim 53 recites the additional limitation that "an amount
of exposed area of each of the first electrode and the second electrode
beyond the insulating material of the catheter and the insulating lumen of the
injection needle, respectively, controls a flow of current between the first
electrode and the second electrode." (Claims App.) The Examiner finds
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that Ellman teaches "the relationship between the surface area of the
electrode exposed and the current discharge or flow." (Answer 7.)
The Appellant argues that "Ellman says nothing about translation of
the wires relative to the insulating tubes 36, 38, e.g., to control the area of
the wires exposed beyond the tubes 36, 38." (Appeal Br. 21.) We are not
persuaded by these arguments because independent claim 53 does not
require translation of electrical components to acquire a certain flow of
current there between. Independent claim 53 only requires that, if the
electrodes are moved beyond the insulating material, their exposed area
controls the flow of current. Ellman teaches that this exposed area
(whatever it may be) controls the flow of current.
Thus, we sustain the Examiner's rejection of independent claim 53 as
unpatentable over Snow, Ellman, and Chu (Rejection I).
Dependent Claim 58
Dependent claim 58 requires the "insulating lumen of the injection
needle [to] include[] an electrically-insulating coating." (Claims App.)
Although Snow teaches that the distal portion of its injection needle may be
comprised of "an electrically non-conductive material" (Snow, col. 4, lines
65---66), Snow does not teach an electrically-insulating coating.
The Examiner finds that Snay discloses an electrically-insulating
coating for a lumen in which an electrode is disposed. (See Final
Action 11.) The Examiner determines that it would have been obvious, in
view of the teachings of Snay, to provide Snow's distal portion with
electrically-insulating coating. (See Final Action 11.) The Examiner
explains that this would be done "in order to provide the benefit of further
electrical insulation as taught by Snay." (Id.)
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The Appellant argues that "there would have been no reason to add
such a coating" to the distal portion of Snow's injection needle. (Appeal
Br. 22.) We are persuaded by this argument because Snow teaches that, it is
a desire for flexibility (not electrical insulation) that drives its suggestion to
make the distal portion of the injection needle from non-conductive material.
(See Snow, col. 5, lines 1---6.) As such we agree with the Appellant that if
"an electrically-insulating coating would not lend flexibility," there would
be "no reason to add such a coating." (Appeal Br. 22.)
Thus, we do not sustain the Examiner's rejection of dependent
claim 58 under 35 U.S.C. § 103(a) as unpatentable over Snow, Ellman, Chu,
and Snay (Rejection IV).
DECISION
We AFFIRM the Examiner's rejections of claims 38--44, 46-53, and
55-57.
We REVERSE the Examiner's rejection of claim 58.
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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