Boston Scientific Scimed, Inc.

Patent Trials and Appeals Board

Jun 24, 2021

2020004864 (P.T.A.B. Jun. 24, 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. 15/811,492 11/13/2017 MARTIN R. WILLARD 8150BSC0168C3 7669 121974 7590 06/24/2021 Kacvinsky Daisak Bluni PLLC (8150) 2601 Weston Parkway, Suite 103 Cary, NC 27513 EXAMINER MANUEL, GEORGE C ART UNIT PAPER NUMBER 3792 NOTIFICATION DATE DELIVERY MODE 06/24/2021 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): docketing@kdbfirm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MARTIN R. WILLARD Appeal 2020-004864 Application 15/811,492 Technology Center 3700 Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and JEREMY M. PLENZLER, Administrative Patent Judges. GREENHUT, 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, 2, 4-11, 13-18 and 20. See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Boston Scientific Scimed, Inc. Appeal Br. 3. Appeal 2020-004864 Application 15/811,492 2 CLAIMED SUBJECT MATTER The claims are directed to an ablation assembly. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An ablation assembly for inserting into a body of a patient to first and second positions adjacent to opposing sides of a target tissue, the ablation assembly comprising: an elongated member configured to be disposed at the first position within the patient's body, the elongated member having a lumen, a distal end and a proximal end; a plurality of thermal elements disposed on the elongated member proximate the distal end; and a ground electrode configured to be extendable through the lumen of the elongated member and disposed at the second position within the patient's body, wherein the plurality of thermal elements are configured to direct ablation energy from the first position toward the ground electrode at the second position to facilitate ablation of the target tissue therebetween. REFERENCE The prior art relied upon by the Examiner is: Name Reference Date Wu US 2009/0076409 A1 Mar. 19, 2009 REJECTIONS Claims 1, 2, 4-11, 13-17 and 20 are rejected under 35 U.S.C. § 102(a) as being anticipated by Wu. Final Act. 2. Claim 18 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Wu. Final Act. 4. OPINION “[T]he PTO applies to the verbiage of the proposed claims the broadest reasonable meaning of the words in their ordinary usage as they Appeal 2020-004864 Application 15/811,492 3 would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the written description contained in applicant’s specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). The central issue in this appeal is whether the Examiner has sufficiently demonstrated that the broadest reasonable interpretation of the phrase “a plurality of thermal elements disposed on the elongated member,” as recited in each of the independent claims before us (claims 1, 11, and 16), covers Wu’s electrodes 929 (“thermal elements”2) within electrode lumens (not shown/labeled in Wu) within catheter 922 (“the elongated member”3) and, in certain configurations, extending through distal side ports 926. See Lee Fig. 104, para. 116 (cited at Ans. 3 and Appeal Br. 8). “[T]he precise language of 35 U.S.C. § 102 that ‘(a) person shall be entitled to a patent unless,’ concerning novelty and unobviousness, clearly places a burden of proof on the Patent Office which requires it to produce the factual basis for its rejection of an application under sections 102 and 2 Final Act. 2. 3 Final Act. 2. 4 In the Final Action, the Examiner cites Figure 9 of Wu, reference numerals 900, 922, and 929, and paragraphs 119 and 120. It is unclear if the Examiner’s citation to Figure 9 was intended to refer to one of Figures 9A- 9N in Wu, which depict various embodiments. Appellant interprets the Examiner’s rejection as being predicated on the embodiment depicted in Figure 10 of Wu (reproduced at Appeal Br. 8) which is the only figure of Wu containing all of the cited reference characters and is the figure to which cited paragraphs 119 and 120 of Wu refer. The Examiner cites paragraph 116 of Wu in response (Ans. 3), which also relates to the embodiment depicted in Figure 10 of Wu. Thus, we understand the Examiner’s anticipation rejection to be predicated on the embodiment depicted in Figure 10 of Wu. Appeal 2020-004864 Application 15/811,492 4 103.” In re Warner 379 F.2d 1011, 1016 (CCPA 1967). Claim construction, although ultimately a question of law, is often based on underlying factual determinations. See Teva Pharmaceuticals USA v. Sandoz, Inc., 574 U.S. 318, 190 L. Ed. 2d 719 (2015). Although the PTO must give claims their broadest reasonable interpretation, this interpretation must be consistent with the one that those skilled in the art would reach. In re Cortright, 165 F. 3d 1353, 1358 (Fed. Cir. 1999). The Examiner does not apprise us of any evidence in this particular art that electrodes that are advanced “through”5 a catheter would be regarded by the skilled artisan as “disposed on” that catheter. Nor does the Examiner apprise us of any general definition of the term “on” or the phrase “disposed on” to illustrate why a skilled artisan would consider Wu’s electrodes 929 as being “disposed on” Wu’s catheter 922. The ordinary meaning of “on” typically indicates contact or support with an outer surface of something.6 In stark contrast to Appellant’s exemplary embodiment (see electrodes 58 and catheter 52 in Figure 3), Wu’s electrodes 929 do not appear to be in contact with or be supported by the outer surface of Wu’s catheter 922. We recognize that there may be certain limited instances where a first thing can reasonably be said to be “disposed on” a second thing when that first thing is predominantly disposed within, and may be extending partially out of, that second thing, for example, an item “disposed on” a train. However, the Examiner does not present sufficient evidence to demonstrate that the skilled artisan would consider Wu’s electrodes 929 as “disposed on” Wu’s catheter 922 in this particular art. 5 Wu para. 116. 6 “On.” Merriam-Webster.com Dictionary, Merriam-Webster, https://www.merriam-webster.com/dictionary/on. Accessed 27 May. 2021. Appeal 2020-004864 Application 15/811,492 5 The Examiner’s overly broad claim interpretation undermines all of the Examiner’s rejections before us.7 CONCLUSION The Examiner’s rejections are REVERSED. DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 4-11, 13-17, 20 102(a) Wu 1, 2, 4-11, 13-17, 20 18 103(a) Wu 18 Overall Outcome 1, 2, 4-11, 13-18, 20 REVERSED 7 Although our decision with regard to the Examiner’s construction of “disposed on” is dispositive as to all the rejections involved in this appeal, we note for the sake of any further prosecution with regard to some of the dependent claims involved in this appeal, that in an anticipation rejection, “it is not enough that the prior art reference … includes multiple, distinct teachings that [an ordinary] artisan might somehow combine to achieve the claimed invention.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008).