Ex Parte Zachman

Patent Trial and Appeal Board

Oct 26, 2017

13074731 (P.T.A.B. Oct. 26, 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.
13/074,731 03/29/2011 Andrew K. ZACHMAN 21819A-331U-P0039924.01 1356
89554 7590 10/30/2017
Christopher & Weisberg, P.A.
200 East Las Olas Boulevard
Suite 2040
Fort Lauderdale, EL 33301
EXAMINER
KIM, EUN HWA
ART UNIT PAPER NUMBER
3739
NOTIFICATION DATE DELIVERY MODE
10/30/2017 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):
ptomail @ c wiplaw. com
medtronic_crdm_docketing @ c ardinal-ip .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREW K. ZACHMAN
Appeal 2016-004686
Application 13/074,7311
Technology Center 3700
Before JEFFREY N. FREDMAN, RICHARD J. SMITH, and
DEVON ZASTROW NEWMAN, Administrative Patent Judges.
NEWMAN, Administrative Patent Judge.
DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims to a medical probe.
The Examiner entered final rejections for obviousness.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellant identifies the Real Party in Interest as Medtronic ATS Medical,
Inc. App. Br. 3.
2 The Examiner withdrew the rejection of claims 1, 2, 5, 10, 11, 16, 17, and
21 under 35 U.S.C. § 112(a). Ans. 4.
Appeal 2016-004686
Application 13/074,731
STATEMENT OF THE CASE
Background
The Specification discloses that “atrial fibrillation (AF), either alone
or as a consequence of other cardiac disease, continues to persist as the most
common type of cardiac arrhythmia.” Spec. 14. “An alternative to open
heart or open chest surgery [to treat AF] is a minimally invasive ‘cryomaze’
procedure in which a cryosurgical catheter is used to form ablative scars in
various locations in the atrial tissue. Id. 17. “However, a significant
problem with cryosurgical catheters is that when extreme cold is applied to
the heart tissue the thermally-transmissive region adheres to the tissue and
the surgeon must apply warm saline other fluid to release it.” Id. 1 8.
The Specification discloses a “system for warming the thermally-
transmissive region of a medical device.” Id. 110.
Claims 1—5, 7—17, and 21 are pending and on appeal.3 Final Act. 1.
Claim 1 is illustrative and reads as follows, with emphasis on the claim
limitation at issue:
1. A medical device comprising:
an elongate probe defining a proximal end, a distal end
having a distal tip, and a flexible member in the distal end, the
flexible member including a thermally-transmissive region, the
elongate probe including a fluid supply line in fluid
communication with the thermally-transmissive region, the
fluid supply line being bifurcated at a bifurcation point into a
first linear portion and a second linear portion, the first linear
portion and second linear portion extending from the
3 Claims 3, 4, 7—9, and 12—15 are withdrawn from consideration.
Examiner’s Final Action, mailed April 1, 2015, 1 (“Final Act.”). Claims 6
and 18—20 are cancelled. Id. at 2.
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Appeal 2016-004686
Application 13/074,731
bifurcation point and through the entirety of the flexible
member, and
an exhaust line in fluid communication with the first and
second portions of the fluid supply line.
App. Br. 13 (Claims Appendix).
Appellant seeks our review of the Examiner’s rejection of claims 1, 2,
5, 10, 11, 16, and 21 under pre-AlA 35 U.S.C. § 103(a) as obvious over
Nahon,4 Heiner,5 and Lehmann.6
DISCUSSION
The Examiner finds that the combination of Nahon, Heiner, and
Lehmann discloses all of the limitations of claim 1. Final Act. 6—8. Specific
to the issue on appeal, the Examiner finds that Lehmann
discloses an elongate probe (catheter 14 in Fig. 1) defining a
flexible member including a thermally-transmissive region
(thermally-transmissive flexible region 44 as shown in Figs. 3—
5, [0055]). The internal view of the distal end of the elongate
probe is shown in Fig. 25. Lehmann teaches a first linear
portion (proximal-most portion of an injection tube 215) and
second linear portion (proximal-most portion of an injection
tube 216) that would extend through the entirety of the flexible
member (proximal-most region 44 of any of the embodiments
of Figs. 3-5, [0095]).
Id. at 8.
The Examiner concludes that the skilled artisan would have found it
obvious to have incorporated the teachings of Lehmann, “the first linear
portion and the second linear portion extending from the bifurcation point
4 US 7,044,946 B2, issued May 16, 2006 (“Nahon”).
5 US 2001/0037081 Al, published Nov. 1, 2001 (“Heiner”).
6 US 2002/0062122 1, published May 23, 2002 (“Lehmann”).
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Appeal 2016-004686
Application 13/074,731
and through the entirety of the flexible member,” with those of Nahon and
Heiner to allow for flexibility, greater aggregate cooling power, and
“reduction in the overall size of the distal end of the elongate probe.” Id.
Appellant argues that “FIG. 25 of the Lehmann reference clearly
shows that the ‘inner flexible members 210, 211, and 212’ do not extend
through the entirety of the flexible member” as required by claim 1. App.
Br. 9.
We agree with Appellant that Lehmann does not disclose that “the
first linear portion and second linear portion extending from the bifurcation
point and through the entirety of the flexible member.” Figure 25 of
Lehman, which illustrates a catheter, is reproduced below:
Figure 25 illustrates “another embodiment of the catheter.” Lehmann 132.
As seen in Figure 25, the linear portions of the inner flexible members
identified by the Examiner, 210, 211, and 212, do not extend “through the
entirety of the flexible member.” Rather, they are “arranged in a ‘staggered’
configuration within the outer flexible member 200” as disclosed at
Lehmann 178. We do not disagree with the Examiner that the inner flexible
members extend past a portion of the flexible member. See Ans. 3 (‘TTlhe
flexible member is correlated to the segment of the outer flexible member
200 that is disposed between the electrode ring members 207 and 208.”) But
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Application 13/074,731
we, like Appellant, read “the entirety of the flexible member” to require that
the flexible member would extend through substantially the entire length of
the outer flexible member 200 to meet the limitation at issue. At best, only
inner flexible member 212, terminating in opening 216, reasonably extends
through the entire length of the flexible member. Figure 25 depicts inner
flexible members 210 and 211 terminating well before the entire length of
the flexible member 200. However, the Examiner has not pointed us to any
teaching in Lehmann showing an embodiment in which at least two of the
inner flexible members are extended “through the entirety of the flexible
member” or a teaching or reason in Lehmann to extend the first and second
inner flexible members as claimed. We therefore reverse the rejection under
35U.S.C. § 103(a).
SUMMARY
We reverse the rejection of claims 1, 2, 5, 10, 11, 16, and 21 under
pre-AIA 35 U.S.C. § 103(a) as obvious over Nahon, Heiner, and Lehmann.
REVERSED
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