John Hauck

Patent Trials and Appeals Board

May 29, 2020

11647272 - (D) (P.T.A.B. May. 29, 2020)

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.
11/647,272 12/29/2006 John A. Hauck 0G-0404USP4/82410.0136 1469
55962 7590 05/29/2020
Wiley
Patent Administration
1776 K Street, NW
Washington, DC 20006
EXAMINER
NGANGA, BONIFACE N
ART UNIT PAPER NUMBER
3793
NOTIFICATION DATE DELIVERY MODE
05/29/2020 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):
ASJM_Patents@abbott.com
ptodocket@wiley.law
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN A. HAUCK
Appeal 2019-006334
Application 11/647,272
Technology Center 3700
Before BENJAMIN D. M. WOOD, JILL D. HILL, and LISA M. GUIJT,
Administrative Patent Judges.
HILL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 9–12, and 282. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as St. Jude Medical,
Atrial Fibrillation Division, Inc. Br. 2.
2 Claims 14–27 and 34–38 are withdrawn from consideration. Final Act. 1.
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Application 11/647,272

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BACKGROUND
Claims 1 (method) and 28 (apparatus) are independent. Claim 1,
reproduced below, illustrates the claimed invention, with certain limitations
italicized:
1. A method of monitoring contact between a probe and a
tissue surface, the probe having an electrophysiology sensor at
a distal end thereof, the method comprising:
placing the probe in proximity to the tissue surface;
robotically moving the probe;
measuring an electrophysiological tissue parameter at the
distal end of the probe using the electrophysiology sensor,
wherein the electrophysiological tissue parameter comprises
phase angle;
calculating a rate of change in the measured
electrophysiological tissue parameter with respect to a distance
traveled by the probe; and
indicating a change in proximity or degree of contact
between the probe and the tissue surface based upon the rate of
change in the measured electrophysiological tissue parameter
with respect to the distance traveled by the probe.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Sun US 6,391,024 B1 May 21, 2002
Wallace US 2005/0222554 A1 Oct. 6, 2005
O’Sullivan US 2007/0106287 A1 May 10, 2007
REJECTIONS
Claims 1, 11, 12, and 28 stand rejected under 35 U.S.C. § 103 as
unpatentable over Wallace and O’Sullivan. Final Act. 6.
Claims 9 and 10 stand rejected under 35 U.S.C. § 103 as unpatentable
over Wallace, O’Sullivan, and Sun. Final Act. 11.
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ANALYSIS
The Examiner finds, inter alia, that Wallace discloses a method of
monitoring contact between a probe and tissue, including “calculating a rate
of change in the measured electrophysiological tissue parameter with respect
to proximity of tissue, a direct indication of a distance between the probe
and the tissue,” and “indicating a change in proximity or degree of contact
between the probe and the tissue surface based upon the amount of change in
the measured electrophysiological tissue parameter.” Final Act. 6–7 (citing
Wallace ¶¶ 287, 294–95). The Examiner finds that Wallace does not
disclose the electrophysiology parameter comprising a phase angle, but finds
this disclosure in O’Sullivan. Id. at 7–8. The Examiner concludes that it
would have been obvious to “modify the contact sensing method of Wallace
to include monitoring rate of change of impedance and/or phase angle with
respect to proximity to tissue or distance travelled by the probe relative to
the tissue, to predictably and reliably detect contact or proximity of the
probe to tissue of interest,” which is “the substitution of one known
technique for another to achieve the same end result would have yielded
predictable results to one of ordinary skill in the art.” Id. at 8.
Rate of Change with Respect to Distance Traveled
Appellant argues that the Examiner’s proposed combination of
Wallace and O’Sullivan does not disclose using a rate of change in the
measured electrophysiological tissue parameter (i.e., phase angle) with
respect to a distance traveled by the probe to determine a change in
proximity or degree of contact between the probe and the tissue surface. Br.
8–9. According to Appellant, “Wallace does not disclose ‘a rate of change
... with respect to a distance traveled by the probe’ as claimed,” instead
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disclosing “differentiating an ECG signal ‘with respect to time.’” Id. at 9
(citing Wallace ¶ 295 (emphasis added by Examiner)). Appellant contends
that “[d]ifferentiating a signal with respect to time, as disclosed in Wallace,
is a rate of change over time rather than over distance as claimed.” Id.
Further, the “changes in the slope of Wallace’s ECG signals are changes in
voltage over time, not phase angle over distance as claimed,” and “[t]his is
so even if the changes result from a change in position (e.g., the
measurement electrode moves during ECG collection).” Id. Although
Wallace appreciates that “an ECG waveform may differ depending upon the
distance between the probe and the tissue surface,” appreciating that
difference “does not equate to measuring the rate at which such differences
manifest relative to a distance traveled by the probe.” Br. 9. In fact,
Appellant argues, “the distance to which the Examiner points is not even the
distance traveled by the probe between measurements, but rather the
distance between the probe and the tissue.” Id. Further, Appellant argues
that O’Sullivan does not remedy this deficiency. Id.
The Examiner disagrees, contending that Wallace discloses that
“[w]hen the ECG signal is differentiated with respect to time, the resulting
differentiated signal has higher amplitude whether electrode is in contact, as
compared with a slower-rising curve for a not in-contact scenario.” Ans. 12
(citing Wallace ¶ 295). According to the Examiner, Wallace’s signal that is
differentiated with respect to time is a rate of change, and Wallace’s changes
in ECG waveform are the “result of not only contact, but proximity to
contact as the waveform shape changes with proximity to the pertinent tissue
structure (i.e., distance or nearness to pertinent tissue as exemplified by
O’Sullivan (US 20070106287) in the [abstract] and [0009]).” Id. The
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Examiner contends that Wallace’s contact sensing feature “is logically
utilized to stop insertion driving of the instrument, further evidence that the
‘slower-rising curve’ noted in” Wallace results from driving “the instrument
towards the pertinent tissue which involves a change in distance, which also
attributes the slow-rising curve prior to contact, to change in distance to the
pertinent tissue structure.” Id. (citing Wallace ¶ 295). Accordingly, the
Examiner contends, “Wallace discloses ‘a rate of change . . . with respect to
distance travelled.’” Id.
Appellant has the better position. Independent claim 1 recites
“calculating a rate of change in the measured electrophysiological tissue
parameter with respect to a distance traveled by the probe,” and “indicating a
change in proximity or degree of contact . . . based upon the rate of change
in the measured electrophysiological tissue parameter with respect to the
distance traveled by the probe.” Br. 13 (Claims App.). Similarly,
independent claim 28 recites “a processor programmed to monitor [a tissue
surface parameter] and indicate a change in proximity or degree of contact . .
. based on a rate of change in the parameter relative to a distance traveled by
the probe.” Id. at 14 (Claims App.). Thus, the claims recite the change in
proximity or degree of contact being measured as a change in measured
electrophysiological tissue parameter not with respect to time, but with
respect to a distance traveled by the probe.
The Examiner’s finding that Wallace discloses measuring a change in
electrophysiological tissue parameter with respect to distance is in error.
Wallace discloses a robotic catheter that recognizes contact between a probe
tip (shown in Wallace Figures 153 and 154) and patient tissue by
differentiating an ECG signal “with respect to time.” Wallace ¶ 295. While
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we agree with the Examiner that Wallace appreciates that its ECG can
indicate probe-tissue contact being via a change in a measured
electrophysiological tissue parameter (see, e.g., measurement mV in
Wallace’s Figure 157), the rate of parameter change is only measured with
respect to time, and not distance. See Wallace Figs. 156, 157. While it may
be true that when the speed (Δdistance/Δtime) of probe movement is known,
the change in time can be used to determine the change in distance, we do
not discern that a skilled artisan would understand that Wallace discloses a
known speed, or using the change in time to determine a rate based on a
change in distance. For this reason, the Examiner’s finding that “Wallace
discloses ‘a rate of change . . . with respect to distance travelled’” (Ans. 12)
is in error. The Examiner makes no finding that O’Sullivan determines a
rate based on distance traveled. Lacking such a finding, prima facie
obviousness has not been established. We, therefore, do not sustain the
rejection of independent claims 1 and 28 as unpatentable over Wallace and
O’Sullivan. Claims 11 and 12 depend from claim 1, and we do not sustain
the rejection thereof for the same reason.
Regarding the rejection of claims 9 and 10 as unpatentable over
Wallace, O’Sullivan, and Sun, the Examiner makes no finding that Sun
determines a rate based on distance travelled. Claims 9 and 10 depend from
claim 1. We do not sustain this additional rejection for the reasons set forth
above.

Appeal 2019-006334
Application 11/647,272

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DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis  Affirmed Reversed
1, 11, 12, 28 103 Wallace,
O’Sullivan
1, 11, 12, 28
9, 10 103 Wallace,
O’Sullivan, Sun
9, 10
Overall
Outcome:
  1, 9–12, 28

REVERSED