Ex Parte Bar-Tal

Patent Trial and Appeal Board

Jan 10, 2019

14025233 (P.T.A.B. Jan. 10, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/025,233 09/12/2013
27777 7590 01/14/2019
JOSEPH F. SHIRTZ
JOHNSON & JOHNSON
ONE JOHNSON & JOHNSON PLAZA
NEW BRUNSWICK, NJ 08933-7003
FIRST NAMED INVENTOR
Meir Bar-Tal
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.
BI05377USNP 4337
EXAMINER
FOWLER, DANIEL WAYNE
ART UNIT PAPER NUMBER
3794
NOTIFICATION DATE DELIVERY MODE
01/14/2019 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):
jnjuspatent@corus.jnj.com
lhowd@its.jnj.com
pairjnj@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MEIR BAR-TAL
Appeal2018-002394
Application 14/025 ,23 3 1
Technology Center 3700
Before DANIEL S. SONG, MICHELLE R. OSINSKI, and
NATHAN A. ENGELS, Administrative Patent Judges.
ENGELS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
1 and 3-13, which constitute all the claims pending in this application.
Claims 14--26 are withdrawn. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The Appeal Brief identifies Biosense Webster (Israel) Ltd. as the real party
in interest. Appeal Br. 1.
Appeal2018-002394
Application 14/025,233
ILLUSTRATIVE CLAIM
According to Appellant, independent claim 1 is directed to "a medical
probe and position tracking system combination comprising a plurality of
body electrodes configured to be placed on a body surface, and a console
configured to determine position coordinates of the medical probe." Appeal
Br. 2-3. Claim 1, reproduced below, is the only independent claim on
Appeal and is illustrative of the claimed subject matter:
1. A medical probe and position tracking system
combination comprising:
a plurality of electrodes configured to be placed on a body
surface;
a console configured to determine position coordinates of
the medical probe, the medical probe comprising:
a flexible insertion tube having a deformable distal head
for insertion into a body cavity of a patient, the deformable distal
head comprising a conductive, flexible and porous, resilient
woven fabric having strands and a weave pattern, the strands and
the weave pattern forming pores in the resilient woven fabric, the
pores being sufficiently sized and configured to convey fluid
through the woven fabric to irrigate the tissue, the deformable
distal head being configured to be brought into contact with
tissue in the body cavity and inflated and irrigated by a fluid;
a channel contained within the insertion tube and
configured to convey the fluid for inflating the deformable distal
head, the woven fabric and channel configured to irrigate the
tissue through the pores of the resilient woven fabric of the
deformable distal head; and
an electrical conductor passing through the flexible
insertion tube and terminating in the deformable distal head and
configured to convey radio frequency (RF) energy to the tissue
via the deformable distal head, the deformable distal head being
configured to conduct radio frequency (RF) energy to the tissue,
and to transmit signals received by the electrodes to the console
for determining position coordinates of the medical probe.
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Appeal2018-002394
Application 14/025,233
THE REJECTIONS
Claims 1 and 3-11 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable in view of Jackson et al. (US 5,846,238; Dec. 8, 1998),
Nardella et al. (US 5,944,022; Aug. 31, 1999), and Eisele (US 2007 /0156138
Al; July 5, 2007).
Claims 12 and 13 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable in view of Jackson, Nardella, Eisele, and Edwards et al. (US
5,471,982; Dec. 5, 1995).
ANALYSIS
Claims 1 and 3-11
In the rejection of independent claim 1, the Examiner cites Jackson for
its disclosures of a cardiac treatment device that includes a deformable distal
head comprising a conductive mesh material that can be inflated via a fluid.
Final Act. 2 (citing Jackson 6:36-48, 10:48---61, Figs. 1, 8). The Examiner
additionally cites Jackson's disclosures of pores included in a deformable
distal head that allow active cooling of a treatment site as a liquid cooling
medium is perfused through the pores. Final Act. 3 (citing Jackson 27:36-
54, 28:3-19, Fig. 39). The Examiner concludes that, in light of the teachings
of these embodiments, it would have been obvious "to provide the
conductive mesh electrode embodiment of Jackson with a porous quality and
an irrigation fluid channel[,] thus allowing for cooling the electrode for
producing larger and deep lesions as taught by Jackson." Final Act. 3. The
Examiner also cites Eisele for its disclosures of an ablation device with an
inflatable electrode comprised of conductive woven fabric with pores sized
to allow fluid passage (Final Act. 3 ( citing Eisele ,r,r 25, 27)), and the
Examiner cites Nardella for its disclosures of a cardiac catheter positioning
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Appeal2018-002394
Application 14/025,233
system that includes a plurality of body surface electrodes and a console
configured to determine position coordinates of a probe (Final Act. 4 ( citing
Nardella 4:29-46, Fig. 1, Abstract)). Based on these findings, the Examiner
concludes that "it would have been obvious to one of ordinary skill in the art
to provide the device of Jackson-Eisele with the position tracking structure
as taught by Nardella to allow an operator to be aware of the position of the
device inside the heart." Final Act. 4 ).
In the Appeal Brief, the Appellant summarizes each limitation of
claim 1 (Appeal Br. 3--4) and states generally that "Applicant respectfully
asserts that Jackson in view of Nardella and further in view of Eisele do not
teach all these limitations" (id. at 4). The Appellant also summarizes
portions of each cited reference individually (id. at 4---6), but the Appellant
does not address what a person of ordinary skill would have understood
from the combined teachings of the prior art as cited by the Examiner.
Specifically, the Appeal Brief summarizes Jackson's Figure 8 and
related descriptions as disclosing an embodiment having an expandable body
with an interior bladder surrounded by a mesh structure, both of which
expand upon introduction of an inflation medium. Appeal Br. 4. The
Appellant then summarizes Jackson as teaching that "[a]ltematively, if the
mesh structure 50 is tightly woven enough to be essentially liquid
impermeable, the interior bladder 126 could be eliminated" (id. 4 ( citing
Jackson 10:57---67)), arguing that such a tightly woven mesh is different than
the claimed woven fabric having pores sized and configured to convey fluid
through the woven fabric to irrigate the tissue (id. at 4--5). The Appellant
summarizes "another embodiment" of Jackson in which the expandable
body includes holes formed in the body's walls to provide cooling, but the
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Application 14/025,233
Appellant argues "the balloon-like shell is not made from a resilient woven
fabric having strands and a weave pattern, wherein the strands and the weave
pattern form pores in the resilient woven fabric." Appeal Br. 5. Further,
according to the Appellant, "[i]n still another embodiment" Jackson
discloses that the expandable body includes an internal frame structure, but
the Appellant argues that in this embodiment "there is still no teaching or
suggestion that the mesh structure itself is configured to be inflated and
irrigated by a fluid as claimed." Appeal Br. 5.
As noted above, the Appellant's arguments do not address what a
person of ordinary skill would have understood from Jackson as a whole nor
the combined teachings of Jackson and the additional references as cited by
the Examiner. Cf Final Act. 2-3, 7-8; Ans. 3. In particular, Appellant does
not address the Examiner's reasoning for providing Jackson's conductive
mesh electrode embodiment with a porous quality and irrigation fluid
channel. See Ans. 3 ("[L ]ooking at the[] two embodiments [ of Jackson], we
see a mesh and a teaching of the benefits of having ports. . .. [I]t would
have been obvious to provide the mesh of one embodiment of Jackson with
some pore size large enough to allow the passage of fluid as taught by the
other embodiment."). Instead, the Appeal Brief next argues that Nardella
does not overcome "these deficiencies," followed by a summary of Nardella
and the argument that "[t]here is no disclosure in Nardella relating to an
expandable mesh structure" as claimed. Appeal Br. 5. But the Examiner
does not cite Nardella for an expandable mesh structure; the Examiner cites
Nardella for its disclosures of the limitations relating to a catheter
positioning system. See Final Act. 4.
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Application 14/025,233
Similarly, the Appellant argues that Eisele does not overcome "these
deficiencies," followed by a summary of Eisele. Appeal Br. 5-6. The
Appellant contends that Eisele discloses an expandable body but that "it is
not the outer surface of the 3-dimensional structure that is energized and
configured to conduct radio frequency (RF) energy to the tissue. Instead,
Eisele teaches that an electrically conductive fluid is used to contact the
tissue." Appeal Br. 6. But the Appellant does not address what a person of
ordinary skill would have understood from the combined teachings of Eisele
and Jackson, as cited by the Examiner. See Ans. 3 (addressing the combined
teachings of Jackson; explaining that Eisele was cited for a more specific
teaching of a conductive woven fabric having pores sized to allow the
passage of fluid "[i]n the interest of compact prosecution").
The Appeal Brief then states "[ fJor the reasons stated above,
Applicant asserts that Jackson in view of Nardella and Eisele does not
disclose all the claim limitations of independent claims 1 [sic]." Appeal
Br. 6. But such a general assertion does not substantively address the
Examiner's findings regarding the combined teachings of the prior art. The
Examiner's rejection describes how a person of ordinary skill would have
combined the teachings from Jackson's cited embodiments in view of Eisel
and Nardella, but the Appellant's arguments unpersuasively attack the
references individually without substantively addressing what a person of
ordinary skill would have understood from the combined teachings of the
prior art, as cited by the Examiner. See In re Merck & Co. Inc., 800 F .2d
1091, 1097 (Fed. Cir. 1986) (explaining that nonobviousness cannot be
established by attacking the references individually when the rejection is
predicated upon a combination of prior art disclosures); In re Keller, 642
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Application 14/025,233
F.2d 413, 425 (CCPA 1981) ("The test for obviousness is not whether the
features of a secondary reference may be bodily incorporated into the
structure of the primary reference; ... the test is what the combined
teachings of the references would have suggested to those of ordinary skill
in the art."); see also Final Act. 6-7 (explaining that Appellant's arguments
made in response to a previous rejection merely attack the references
individually, citing Keller and Merck). In short, the Examiner's rejection
explains what a person of ordinary skill would have understood from the
references' teachings with reasonable rationales for combining those
teachings, and we are unpersuaded of error as the Appellant does not
substantively rebut those findings and conclusions.
In the Reply Brief, the Appellant attempts to distinguish Keller by
arguing that "[in Keller], the [a]pplicant did not address all the references,
but instead only attacked a single reference" and that "it stands to reason that
[Keller] is not applicable when a response to an office action includes
rebuttal evidence regarding each and every reference cited by the
Examiner." Reply Br. 3. We disagree, as the holding of Keller, Merck, and
similar cases does not tum on whether an applicant directs arguments to
each reference; controlling case law, including Keller and Merck,
consistently provides that the test for obviousness is what the combined
teachings of the prior art would have taught or suggested to a person of
ordinary skill. E.g., Allied Erecting and Dismantling Co. v. Genesis
Attachments, LLC, 825 F.3d 1373, 1381 (Fed. Cir. 2016) (citing Keller and
similar decisions).
Also unavailing are the arguments in the Appellant's Reply Brief that
the Examiner has not shown any reason to combine the teachings of the prior
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Application 14/025,233
art or a reasonable expectation of success without undue experimentation or
impermissible hindsight (Reply Br. 4, 6-7), as these arguments were not
raised in the Appeal Brief. Absent a showing of good cause, arguments
raised for the first time in a reply brief are waived. See Hyatt v. Dudas, 551
F.3d 1307, 1313-14 (Fed. Cir. 2008); Exparte Borden, 93 USPQ2d 1473
(BPAI 2010) (informative); 37 C.F.R. §§ 4I.37(c)(l)(iv), 41.41(b)(2). Here,
Appellant made no showing of good cause for raising these arguments for
the first time in the Reply Brief. 2
Accordingly, having considered the Examiner's rejection of claim 1 in
light of each of the Appellant's arguments and the evidence of record, we
disagree with the Appellant and have not been apprised of error in the
Examiner's findings and conclusions. We sustain the Examiner's rejection
of independent claim 1, as well as the Examiner's rejection of dependent
claims 3-11, which the Appellant does not address separately.
Claims 12 and 13.
In addition to the Examiner's findings and conclusions regarding
independent claim 1, the Examiner cites Edwards for its disclosures of a
wire frame as claimed in dependent claims 12 and 13. Final Act. 5-6. In the
Appeal Brief, the Appellant summarizes the requirements of claim 12 and
contends that "th[ e] combination of the deformable distal head and wire
frame is not taught by the cited references, individually or in combination."
Appeal Br. 8. The Appeal Brief also summarizes Jackson again followed by
2 Even if these arguments were not waived, we find the arguments
unpersuasive as the arguments do not substantively address the Examiner's
cited rationale for combining the references' teachings. See Final Act. 3--4;
Ans. 4--5.
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Application 14/025,233
individual summaries of Edwards, Nardella, and Eisele (Appeal Br. 8-10),
but Appellant again fails to substantively address the Examiner's findings
and conclusions regarding what a person of ordinary skill would have
understood from the combined teachings of the prior art.
The same is true of the Appellant's arguments regarding claim 13.
The Appellant summarizes claim 13 and summarizes the references (Jackson
in particular) without substantively addressing the Examiner's findings and
conclusions regarding what a person of ordinary skill would have
understood from the combined teachings of the prior art.
Moreover, we note that the Examiner's Answer addresses the
individual differences cited by the Appellant in the discussion of claims 12
and 13. Ans. 5-7. The Appellant does not address those findings or
explanations in the Reply Brief, as the Reply Brief does not substantively
address claims 12 and 13 at all. In sum, like the arguments advanced for
claim 1, the Appellant's arguments regarding claims 12 and 13 fail to
substantively address what a person of ordinary skill would have understood
from the combined teachings of the prior art and are therefore unpersuasive
of error. See Merck, 800 F.2d at 1097; Keller, 642 F.2d at 425.
Accordingly, having considered the Examiner's rejection of claims 12
and 13 in light of each of the Appellant's arguments and the evidence of
record, we disagree with the Appellant and have not been apprised of error
in the Examiner's findings and conclusions. We sustain the Examiner's
rejection of claims 12 and 13.
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Application 14/025,233
DECISION
We affirm the Examiner's rejection of claims 1 and 3-13.
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)(l )(iv).
AFFIRMED
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