RELIGN Corporation

Patent Trials and Appeals Board

Sep 1, 2021

2021000362 (P.T.A.B. Sep. 1, 2021)

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.
15/709,051 09/19/2017 Aaron Germain 41879-707.302 4662
104326 7590 09/01/2021
Schwegman Lundberg & Woessner / Zimmer
P.O. Box 2938
Minneapolis, MN 55402
EXAMINER
TEJANI, ANKIT D
ART UNIT PAPER NUMBER
3792
NOTIFICATION DATE DELIVERY MODE
09/01/2021 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):
SLW@blackhillsip.com
USPTO@slwip.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte AARON GERMAIN, BALAZS LESKO, and
BENEDEK ORCZY-TIMKO

Appeal 2021-000362
Application 15/709,051
Technology Center 3700
____________

Before BRUCE T. WIEDER, KENNETH G. SCHOPFER, and
AMEE A. SHAH, Administrative Patent Judges.

SCHOPFER, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–5, 7–11, and 20–25. 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 Relign
Corporation. Appeal Br. 3.
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Application 15/709,051

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BACKGROUND
The Specification discloses that the “invention relates to medical
instruments and systems for applying energy to tissue, and more particularly
relates to a system for ablating and treating damaged cartilage tissue.”
Spec. ¶ 2.
ILLUSTATIVE CLAIM
Claim 1 is the only independent claim on appeal and recites:
1. A probe for ablating tissue, said probe extending along a
longitudinal axis and comprising an electrosurgical working end
having a planar surface on a distal side thereof with a first surface
region, a second surface region, and a gap disposed between said
first and second surface regions, wherein said gap is configured
to emit a plasma, said electrosurgical working end further
comprising a tissue abrasive material disposed on at least one of
the first and second surface regions adjacent to the gap.
Appeal Br. 13.
REJECTION
The Examiner rejects claims 1–5, 7–11, and 20–25 under 35 U.S.C.
§ 103 as unpatentable over Davison2 in view of Schmitz.3
DISCUSSION
We are persuaded of error in the rejection of claim 1 because the
Examiner has not established that the art of record makes obvious a device
as claimed, and in particular, a probe including a gap disposed between first
and second surface regions and a tissue abrasive material on a first or second
surface region adjacent to the gap.

2 Davison, US 2008/0015565 A1, pub. Jan. 17, 2008.
3 Schmitz et al., US 2010/0331883 A1, pub. Dec. 30, 2010.
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In the rejection of claim 1, the Examiner relies on Davison as teaching
a probe for ablating tissue that includes an electrosurgical working end with
a planar surface, two surface regions, a gap between the surface regions that
is configured to emit a plasma as claimed, and a tissue abrasive. Final Act. 4
(citing Davison Figs. 2, 32; ¶¶ 179, 204, 256). Regarding the claimed
abrasive material, the Examiner finds and determines:
Davison does not explicitly disclose an abrasive material
disposed on at least one of the first and second surface regions.
However, Schmitz also describes probes for ablating tissue
([0017]), including the use of an abrasive material disposed on
one of the surface regions of the probe ([0078]). As Schmitz is
also directed towards probes for ablating tissue and is in a similar
field of endeavor, it would have been obvious to a person having
ordinary skill in the art at the time the invention was made to
incorporate an abrasive material, as described by Schmitz, when
using the probe described by Davison, as doing so
advantageously allows the resulting probe to better produce a
smooth, contoured tissue surface, as is a goal of Davison’s device
([0010], [0026]).
Final Act. 5. Specifically regarding the location of the abrasive material in
the proposed combination, the Examiner asserts that Schmitz “was
introduced to address this part of the limitation,” and the Examiner further
explains:
The Examiner concedes that there is no explicit disclosure in
Davison that the abrasive material is located on a surface region
adjacent to the plasma-emitting gap, but Schmitz does describe
an abrasive material located on a surface region. Davison
already describes that a gap or fluid delivery port may be located
on the surface region, as discussed above. Therefore, an obvious
combination of the Davison and Schmitz references would result
in an abrasive material (as described by Davison) being located
on a surface region (the location described by Schmitz) which
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also includes a gap or fluid delivery port (as described by
Davison).
Ans. 7–8.
As an initial matter, we find it necessary to provide an interpretation
of the claim limitation at issue in order to determine whether the Examiner
has shown that the art of record teaches a device with an abrasive material
located as claimed. The Examiner appears to be interpreting the claim to
require that the surface regions of the probe are adjacent to the gap and that
the art need only teach an abrasive material located on a surface region, and
not necessarily adjacent to the gap, to meet the claim requirement of “a
tissue abrasive material disposed on at least one of the first and second
surface regions adjacent to the gap.” In contrast, Appellant appears to
interpret the claim to require that the abrasive material is located adjacent to
the gap. As discussed below, we agree with Appellant.
The claim first recites that the probe includes a working end with a
planar surface with first and second surface regions thereon and a gap
disposed between the first and second surface regions. Thus, the claim
recites the location of the surface regions on the planar surface and with
respect to the gap, i.e., the surface regions are on the planar surface and on
either side of the gap. The claim later recites that the working end includes
“a tissue abrasive material disposed on at least one of the first and second
surface regions adjacent to the gap.” Read in isolation, it appears that the
claim requires that the first and second surface regions are adjacent to the
gap and that the abrasive material need only be disposed somewhere on one
of the surface regions. However, because the claim previously recited that
the gap is disposed between the surface regions, this interpretation of the
claim seems redundant. Further, the syntax of the claim suggests that the
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clause “adjacent to the gap” refers to the location of the tissue abrasive
material both because the location of the surface regions is already defined
in the claim and because here the claim is providing a description of the
tissue abrasive material.
Thus, we interpret the claim to require that the tissue abrasive material
is not only located on one of the surface regions but also is located adjacent
to the gap disposed between the surface regions. We further note that this
interpretation is consistent with the Specification, which describes an
embodiment shown in Figure 25 including an abrasive material “that is
positioned around or adjacent to the plasma emitting gap.” Spec. ¶ 93.
In light of this claim interpretation, we are persuaded by Appellant’s
argument that the Examiner has not shown that it would have been obvious,
in light of the combination proposed, to locate the tissue abrasive material on
a first or second surface region adjacent to the gap disposed between those
regions, as required by the claim. The Examiner only provides that the
combination of Davison and Schmitz was “used to obviate the placement of
the abrasive material on a surface region.” Ans. 8. Although we agree with
the Examiner that the art teaches abrasive materials that are located on
surface regions generally, the claim requires more as discussed above, i.e., it
requires that the abrasive material is located adjacent to the gap disposed
between the surface regions. The Examiner fails to provide evidence or
explanation showing that it would have been obvious to locate the abrasive
material adjacent to the gap between the first and second surface regions in
the combination proposed.
Based on the foregoing, we are persuaded of error in the rejection of
claim 1. Accordingly, we do not sustain the rejection of claim 1. In
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rejecting the dependent claims, the Examiner does not rely on any further
evidence or explanation that would cure the deficiency in the rejection of
independent claim 1. Thus, we also do not sustain the rejection of dependent
claims 2–5, 7–11, and 20–25 for the reasons discussed regarding claim 1.
CONCLUSION
We REVERSE the rejection of claims 1–5, 7–11, and 20–25.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–5, 7–11,
20–25
103 Davison,
Schmitz
1–5, 7–
11, 20–
25

REVERSED