Ex Parte Amthor et al

Patent Trials and Appeals BoardJun 27, 2019

14416451 - (D) (P.T.A.B. Jun. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/416,451 01/22/2015 Thomas Erik Amthor 24737 7590 07/01/2019 PHILIPS INTELLECTUAL PROPERTY & STANDARDS 465 Columbus A venue Suite 340 Valhalla, NY 10595 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 2012P00843WOUS 3135 EXAMINER DINGA, ROLAND ART UNIT PAPER NUMBER 3792 NOTIFICATION DATE DELIVERY MODE 07/01/2019 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): patti. demichele@Philips.com marianne.fox@philips.com katelyn.mulroy@philips.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte THOMAS ERIK AMTHOR, SASCHA KRUEGER, STEFFEN WEISS, and FALK UHLEMANN 1 Appeal2018---001402 Application 14/416,451 Technology Center 3700 Before DANIELS. SONG, JILL D. HILL, and LEE L. STEPINA, Administrative Patent Judges. HILL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Thomas Erik Amthor et al. ("Appellants") appeal under 35 U.S.C. Â§ 134(a) from the Examiner's final decision rejecting claims 1-15. We have jurisdiction under 35 U.S.C. Â§ 6(b). We REVERSE. 1 Appellants identify the real party in interest as KONINKLIJKE PHILIPS N.V. Appeal Br. 4. Appeal2018---001402 Application 14/416,451 BACKGROUND Claims 1, 14, and 15 are independent. Independent claim 1, reproduced below, illustrates the claimed invention, with certain limitations italicized. 1. A medical device for multiple treatment therapies, compnsmg: a hollow tube having a first end portion which comprises an electrode and an insulator configured over a length of the tube such that conductive materials of the tube except for the electrode are electrically isolated from an exterior surface of the tube; a conductive connection configured to electrically couple to the electrode to provide a voltage thereto, said conductive connection configured to be releasably inserted into the hollow tube while the hollow tube is positioned at an internal treatment site, wherein the conductive connection is configured to contact the electrode and electrically couple to the electrode while the hollow tube is positioned at the internal treatment site; and a selectively closeable valve configured to dispense a medical fluid from the tube. REJECTION I. Claims 1, 2, 3, 6, 9, 10, and 12-14 stand rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Sigg (US 2005/0049542 Al, pub. Mar. 3, 2005) and Koblish (US 6,032,061, iss. Feb. 29, 2000). Final Act. 2. II. Claims 1, 13, and 14 stand rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Vilims (US 2007/0135881 Al, pub. June 14, 2007) and Koblish. Final Act. 5. III. Claims 1, 11, and 13-15 stand rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Pearson (US 2007/0112342 Al, pub. May 17, 2007) and Koblish. Final Act. 6. 2 Appeal2018---001402 Application 14/416,451 IV. Claims 1, 4, 5, 7, 8, 13, and 14 stand rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Schroeppel (US 2005/0004507 Al, pub. Jan. 6, 2005) and Koblish. Final Act. 8. ANALYSIS Rejection I - Sigg and Koblish The Examiner finds, inter alia, that Sigg discloses a conductive connection 22A, 22B that is ( 1) configured to electrically couple to its electrode 15/30 and provide voltage thereto, and (2) capable of being releasably inserted into Sigg's catheter body (hollow tube 32) "after the device has been positioned at an internal treatment site (12)." Final Act. 3 (citing Sigg Figs. 1-5). The Examiner finds that Sigg does not disclose (1) its hollow tube contacting the electrode, or (2) electrically coupling its conductive connection 22A, 22B to its electrode 15/30 while its device is positioned at an internal treatment site. Id. The Examiner finds, however, that Koblish discloses ( 1) a hollow tube contacting its electrode, and (2) electrically coupling the conductive connection to the electrode while the device is positioned at an internal treatment site. Id. ( citing Koblish 4:44-- 58). The Examiner concludes that it would have been obvious to modify Sigg to electrically couple its conductive connection 22A, 22B to its electrode 15 or 30 while Sigg's device is "positioned at an internal treatment site as taught by Koblish to yield the predictable results of providing treatments." Id. at 3--4. Appellants argue, inter alia, that "Koblish does not teach or suggest that [its] electrically conductive wires are configured to be releasably inserted into the catheter while the catheter is positioned at an internal treatment site." Appeal Br. 14. 3 Appeal2018---001402 Application 14/416,451 The Examiner responds that Koblish discloses a hollow tube that "contacts the electrode and electrically couples the conductive connection to the electrode while the device is positioned at an internal treatment site." Ans. 10 (citing Koblish 4:44--58). We agree with Appellant. The Examiner erred in finding that Koblish discloses electrically coupling the conductive connection to the electrode while its device is positioned at an internal treatment site (Final Act. 3 (citing Koblish 4:44--58)). Koblish is directed to assembling catheters, with electrodes and wires therefor, in a manner that allows more simple, secure and reliable attachment of the wires to the conductors. Koblish Abstract, 1:5-7, 1:36-40, 1 :41--49, 4:4--6:8. With reference to Figures 3---6, Koblish achieves this simple, secure and reliable attachment by printing conductive bands 32, 34 on the catheter tube 21, drilling respective holes through the catheter tube 21 and bands 32, 34 thereon, inserting a wire 33, 35 through each hole, and adhering 43 the wires 33, 35 to respective conducting bands 32, 34. Id. at 5:18---6:3. Thereafter, electrodes 22, 24 are secured over respective bands 32, 34 and wires 33, 35, and adhered via adhesive 51, 53 thereto. Nothing in Koblish's assembly method, or its assembled ablation catheter, discloses or suggests that Koblish's device is capable of electrically coupling a conductive connection to its electrode while the device is positioned at an internal treatment site. Koblish's electrical coupling takes place during assembly, which occurs prior to the device arriving at a treatment site. For this reason, Appellants have persuaded us of Examiner error forming the basis of the rejection of independent claim 1, or claims 2, 3, 6, 9, 10, 12, and 13 that depend therefrom. 4 Appeal2018---001402 Application 14/416,451 Independent claim 14 similarly recites a conductive connection configured to be (1) releasably inserted into the hollow tube, and (2) contact the electrode and electrically couple to the electrode, while the hollow tube is positioned at an internal treatment site. We do not sustain Rejection I. Rejection II - Vilims and Koblish The Examiner finds, inter alia, that Vilims' discloses a conductive connection 18 that is (1) configured to electrically couple to its electrode 22 and provide voltage thereto, and (2) capable of being releasably inserted into Vilims' catheter body 24 "after the device has been positioned at an internal treatment site D." Final Act. 5---6 (citing Vilims ,r 68). The Examiner finds that Vilims does not disclose electrically coupling its conductive connection 18 to its electrode 22 while its device is positioned at an internal treatment site. Id. The Examiner again finds that Koblish discloses ( 1) a hollow tube contacting its electrode, and (2) electrically coupling the conductive connection to the electrode while the device is positioned at an internal treatment site. Id. at 6 ( citing Koblish 4:44--58). The Examiner concludes that it would have been obvious to modify Vilims to electrically couple its conductive connection 18 to its electrode 22 while Vilims' device is "positioned at an internal treatment site as taught by Koblish to yield the predictable results of providing treatments." Id. Appellants refer back to their previous arguments regarding Koblish (Appeal Br. 16-17 and 13-15). For the reasons set forth above, we determine that nothing in Koblish's assembly method, or its assembled ablation catheter, discloses or suggests that Koblish's device is capable of electrically coupling a conductive connection to its electrode while the device is positioned at an internal treatment site. Koblish's electrical 5 Appeal2018---001402 Application 14/416,451 coupling takes place during assembly, which occurs prior to the device arriving at a treatment site. For this reason, Appellants have persuaded us of Examiner error forming the basis of the rejection of claim 1, and claim 13 that depends therefrom. Independent claim 14 also recites a conductive connection configured to be (1) releasably inserted into the hollow tube, and (2) contact the electrode and electrically couple to the electrode, while the hollow tube is positioned at an internal treatment site. We do not sustain Rejection II. Rejection III - Pearson and Koblish The Examiner finds, inter alia, that discloses a conductive connection "(see figs. 1,2A)" as the "connection leaving power source '20' ," which is ( 1) configured to electrically couple to its electrode 18 and provide voltage thereto, and (2) capable of being releasably inserted into Pearson's hollow tube 14 after Pearson's device "has been positioned at an internal treatment site ( 5) [ see figs.1-2A]." Final Act. 7. The Examiner finds that Pearson does not disclose electrically coupling its conductive connection to its electrode 18 while its device is positioned at an internal treatment site. Id. The Examiner finds, however, that Koblish discloses electrically coupling the conductive connection to the electrode while the device is positioned at an internal treatment site. Id. at 7-8 (citing Koblish 4:44--58). The Examiner concludes that it would have been obvious to modify Pearson to electrically couple its conductive connection to its electrode 18 while Pearson's device is "positioned at an internal treatment site as taught by Koblish to yield the predictable results of providing treatments." Id. at 8. Appellants refer back to their previous arguments regarding Koblish (Appeal Br. 20 and 13-15). For the reasons set forth above, we determine 6 Appeal2018---001402 Application 14/416,451 that nothing in Koblish's assembly method, or its assembled ablation catheter, discloses or suggests that Koblish's device is capable of electrically coupling a conductive connection to its electrode while the device is positioned at an internal treatment site. Koblish' s electrical coupling takes place during assembly, which occurs prior to the device arriving at a treatment site. For this reason, Appellants have persuaded us of Examiner error forming the basis of the rejection of claim 1, and claims 11 and 13 that depend therefrom. Independent claims 14 and 15 also recite a conductive connection configured to be (1) releasably inserted into the hollow tube, and (2) contact the electrode and electrically couple to the electrode, while the hollow tube is positioned at an internal treatment site. We do not sustain Rejection III. Rejection IV - Schroeppel and Koblish The Examiner finds, inter alia, that Schroeppel discloses a conductive connection 175 that is (1) configured to electrically couple to its electrode 174 and provide voltage thereto, and (2) capable of being releasably inserted into Schroeppel' s hollow tube 172 after Schroeppel' s device "has been positioned at an internal treatment site." Final Act. 8-9 ( citing Schroeppel Fig. 35B). The Examiner finds that Schroeppel does not disclose electrically coupling its conductive connection 17 5 to its electrode 174 while its device is positioned at an internal treatment site. Id. at 9. The Examiner finds, however, that Koblish discloses electrically coupling the conductive connection to the electrode while the device is positioned at an internal treatment site. Id. (citing Koblish 4:44--58). The Examiner concludes that it would have been obvious to modify Schroeppel to electrically couple its conductive connection 17 5 to its electrode 17 4 while Schroeppel' s device is 7 Appeal2018---001402 Application 14/416,451 "positioned at an internal treatment site as taught by Koblish to yield the predictable results of providing treatments." Id. Appellants refer back to their previous arguments regarding Koblish (Appeal Br. 24 and 13-15). For the reasons set forth above, we determine that nothing in Koblish' s assembly method, or its assembled ablation catheter, discloses or suggests that Koblish's device is capable of electrically coupling a conductive connection to its electrode while the device is positioned at an internal treatment site. Koblish' s electrical coupling takes place during assembly, which occurs prior to the device arriving at a treatment site. For this reason, Appellants have persuaded us of Examiner error forming the basis of the rejection of claim 1, and claims 4, 5, 7, 8, and 13 that depend therefrom. Independent claim 14 also recites a conductive connection configured to be (1) releasably inserted into the hollow tube, and (2) contact the electrode and electrically couple to the electrode, while the hollow tube is positioned at an internal treatment site. We do not sustain Rejection IV. DECISION We REVERSE the rejection of claims 1, 2, 3, 6, 9, 10, and 12-14 as unpatentable over Sigg and Koblish. We REVERSE the rejection of claims 1, 13, and 14 as unpatentable over Vilims and Koblish. We REVERSE the rejection of claims 1, 11, and 13-15 as unpatentable over Pearson and Koblish. We REVERSE the rejection of claims 1, 4, 5, 7, 8, 13, and 14 as unpatentable over Schroeppel and Koblish. 8 Appeal2018---001402 Application 14/416,451 REVERSED 9