Boston Scientific Scimed, Inc.

Patent Trials and Appeals Board

Jan 3, 2022

2021001959 (P.T.A.B. Jan. 3, 2022)

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. 16/126,387 09/10/2018 Wen-Jui Ray CHIA 11900-0029-05000 2966 109610 7590 01/03/2022 Bookoff McAndrews, PLLC 2020 K Street, NW Suite 400 Washington, DC 20006 EXAMINER LUAN, SCOTT ART UNIT PAPER NUMBER 3792 NOTIFICATION DATE DELIVERY MODE 01/03/2022 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): Kross@bomcip.com eofficeaction@appcoll.com usptomail@bomcip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte WEN-JUI RAY CHIA, MEILING WU, ION GHINEA, and MING KO ____________ Appeal 2021-001959 Application 16/126,387 Technology Center 3700 ____________ Before JOSEPH A. FISCHETTI, BRUCE T. WIEDER, and TARA L. HUTCHINGS, Administrative Patent Judges. HUTCHINGS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 27-47, which are all of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Boston Scientific Scimed, Inc. as the real party in interest. Appeal Br. 2. Appeal 2021-001959 Application 16/126,387 2 CLAIMED INVENTON Appellant’s invention is “directed to a probe tip for use in medical laser treatments by communicating and laterally directing electromagnetic radiation and methods of forming the probe tip.” Spec. ¶ 2. Claims 27, 38, and 43 are the independent claims on appeal. Claim 27, reproduced below, is illustrative of the claimed subject matter: 27. An apparatus, comprising: a waveguide having a tip; a first capsule including an outlet port, a proximal end over a proximal side of the tip of the waveguide, a distal end over a distal side of the tip of the waveguide, and a compressed region on the proximal end to secure the first capsule to the waveguide; and a channel between the first capsule and the waveguide, the channel extending from the compressed region to the outlet port, wherein the compressed region includes a proximalmost end of the first capsule, and wherein a diameter of an inner surface of the compressed region is less than a diameter of an inner surface of the distal end. REJECTION Claims 27-47 are rejected under 35 U.S.C. § 103(a) as unpatentable over Griffin (US 2006/0282068 A1, pub. Dec. 14, 2006), Appling (US 2012/0316546 A1, pub. Dec. 13, 2012), and Yamakawa (US 6,238,104 B1, iss. May 29, 2001). ANALYSIS Appellant argues claims 27-47 as a group. Appeal Br. 10-13. We select independent claim 27 as representative. The remaining claims stand or fall with claim 27. See 37 C.F.R. § 41.37(c)(1)(iv). Appeal 2021-001959 Application 16/126,387 3 In rejecting claim 27, the Examiner primarily relies on Griffin as disclosing the recited limitations. The Examiner acknowledges that Griffin does not teach that the region on the proximal end of the first capsule to secure the first capsule to the waveguide is compressed. Final Act. 4. However, the Examiner finds that Griffin teaches using an adhesive to secure the proximal end of the first capsule to the waveguide. Id. (citing Griffin ¶ 96). The Examiner further finds that Appling teaches using an adhesive to secure a proximal end of a capsule to a waveguide, and reinforcing the adhesive bond by crimping the capsule. Id. (citing Appling ¶¶ 60-62, Fig. 4). The Examiner reasons that it would have been obvious to a person of ordinary skill in the art to modify Griffin in light of Appling to include a compressed region “in order to attach more securely the capsule to the waveguide.” Id. at 5. Appellant argues that crimping Griffin’s secondary capsule 255 with a full circumferential crimp based on the teachings of Appling would render Griffin inoperable for its intended purpose, because it would seal Griffin’s fluid channel, preventing fluid from flowing distally of the crimp. Appeal Br. 12-13. According to Appellant, Appling’s crimp area 33 “extends around an entirety of a circumference of jacket 9.” Id. at 12 (citing Appling Fig. 5A). Appellant asserts that applying Appling’s fully circumferential crimp around a proximal end of Griffin’s capsule 255 would prevent cooling fluid from flowing distally of the crimp, and render the device unsuitable for tissue contact due to a significantly higher operating temperature. Id. at 12-13. However, contrary to Appellant’s assertion, Appling at Figure 5A does not show whether the crimping is fully circumferential. Instead, Appeal 2021-001959 Application 16/126,387 4 Figure 5A of Appling depicts a cross-sectional view of the distal end segment of the optical fiber with spacer assembly 1. See Appling ¶ 63, Fig. 5A; see also Ans. 7 (“Appling does not teach a crimp that is fully circumferential”). Paragraph 62 of Appling describes crimping a proximal section of protective sleeve 19 at crimp area 33 to enhance the attachment strength between sleeve 19 and jacketed fiber 3. Appling ¶ 62, Fig. 5A. But it does not describe whether or not the crimping is fully circumferential. See Ans. 7 (finding that “Appling does not teach a crimp that is fully circumferential” and that one of ordinary skill in the art “would recognize that crimps need not be fully circumferential”). The Examiner determines that one of ordinary skill in the art would understand that “crimps need not be fully-circumferential.” Ans. 7. The Examiner further determines that [i]nformed by Appling’s teaching that . . . when the outer and inner capsules are secured by an adhesive, the adhesive can be reinforced by a crimp, the person of ordinary skill would use a crimp that is not fully circumferential in order to preserve the fluid channel that Griffin considers as the critical piece of the technological puzzle. Id.; see also id. at 8 (reasoning that the skilled artisan would be motivated “to arrive at an operative device with a crimp that is not fully circumerential in order to ‘reduce, forestall onset or eliminate degradation [thereby] improving surgical precision and speed, obviating the need of tissue- cooling’” (quoting Griffin ¶ 45) (alteration in original)). The Examiner’s rationale for not providing full circumferential crimping appears adequately supported, and Appellant does not persuade us of error. See Griffin ¶ 45 (describing how the intra-cap flow between the caps serves well to cool the tissue contact cap from within). Appeal 2021-001959 Application 16/126,387 5 Appellant further argues that one would not be motivated to modify Griffin because “crimping any part of the secondary capsule 255 would reduce the thickness of secondary capsule 255 and, thus, decrease the ability of secondary capsule 255 to hold up against extreme temperatures encountered during vaporizing tissue.” Appeal Br. 13 (citing Griffin ¶ 91). Yet, we agree with the Examiner that Appellant’s argument is speculative. See Ans. 9. Griffin at paragraph 91 describes that the device’s “tissue contact function requires more substantial material bulk and thickness, owing to the extreme temperatures encountered in vaporizing tissues and the challenging chemical use evirornent [sic] presented by surgical applications.” However, Griffin does not disclose or suggest that providing a crimp at a proximal location of the secondary capsule would render the device inoperable for vaporizing tissue. Accordingly, we are not persuaded by Appellant’s arguments that the Examiner erred in rejecting claim 27 under 35 U.S.C. § 103, because the combination of combination of Griffin, Appling, and Yamakawa renders Griffin inoperable for its intended purpose. Appeal Br. 10-13. Therefore, we sustain the rejection under 35 U.S.C. § 103 of claim 27, and claims 28-47, which fall with claim 27. CONCLUSION In summary: Claims Rejected 35 U.S.C. § References/Basis Affirmed Reversed 27-47 103 Griffin, Appling, Yamakawa 27-47 Appeal 2021-001959 Application 16/126,387 6 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED