Ex Parte Behnke

Patent Trial and Appeal BoardAug 30, 2017

11827266 (P.T.A.B. Aug. 30, 2017)

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. H-US-00931 (1544-36) 1044 EXAMINER DELLA, JAYMI E ART UNIT PAPER NUMBER 3739 NOTIFICATION DATE DELIVERY MODE 11/827,266 07/11/2007 90039 7590 Covidien LP Attn: IP Legal 5920 Longbow Drive Mail Stop A36 Boulder, CO 80301-3299 09/01/2017 Robert Behnke 09/01/2017 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): mail @ cdfslaw. com SurgicalUS@covidien.com medtronic_mitg-si_docketing@cardinal-ip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ROBERT BEHNKE Appeal 2016-006770 Application 11/827,2661 Technology Center 3700 Before DONALD E. ADAMS, RACHEL H. TOWNSEND and DAVID COTTA, Administrative Patent Judges. COTTA, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims to a measurement and control system for use in a medical procedure. The Examiner rejected the claims on appeal as obvious under 35 U.S.C. § 103(a). We reverse. STATEMENT OF THE CASE The Specification states: “The present invention relates to systems and methods for performing a medical procedure, wherein the medical procedure includes transferring energy from an energy source to a patient via a 1 According to Appellant, the real party in interest is Covidien LP, which is a wholly-owned subsidiary of Medtronic PLC. Br. 1. Appeal 2016-006770 Application 11/827,266 transmission line and, more particularly, maximizing the amount of energy transferred to a patient by compensating for the losses associated with the transmission line.” Spec. 11. Claims 1, 2, and 5—9 are on appeal. Claim 1 is illustrative and reads as follows: 1. A measurement and control system for use in performing a medical procedure, comprising: an energy source configured to generate an output signal; an energy delivery instrument; a directional coupler; a transmission line including a first portion directly coupled to the energy source and the directional coupler and a second portion directly coupled to the energy delivery instrument and the directional coupler, wherein the output signal is unmodified as the output signal travels from the first portion to the second portion; a measurement system configured to sample the output signal generated by the energy source at the directional coupler, the sampled output signal having a magnitude and a phase, the measurement system configured to measure forward and reflected voltages of the sampled output signal to calculate forward, reflected and load power portions thereof; a control system including: a network analyzer configured to determine loss information of the transmission line; a calibration unit configured to receive and store the loss information for the transmission line from the network analyzer, the calibration unit further configured to receive the magnitude and phase portions of the sampled output signal and generate a calibration signal having a magnitude and a phase that are representative of the sampled output signal of the measurement system and of the loss information for the transmission line; and a control unit configured to receive the forward, reflected, and load power portions of the sampled output signal and the calibration signal and adjust the energy source in response to a value of the calibration signal. 2 Appeal 2016-006770 Application 11/827,266 App. Br. 9-10. The claims stand rejected as follows: Claims 1,2, and 5—8 were rejected under 35 U.S.C. § 103(a) as obvious over the combination of Neilson2 and Behnke.3 Claim 9 was rejected under 35 U.S.C. § 103(a) as obvious over the combination of Neilson, Behnke and Waxman.4 ANALYSIS The same issue is dispositive with respect to both rejections. Accordingly, we address both rejections together. In rejecting the pending claims as obvious, the Examiner found that Neilson disclosed a measurement and control system in which a microwave generating source transmits energy through a coaxial cable to a microwave antenna-containing catheter. Final Act. 3.5 The Examiner found that the coaxial cable transmits current directly from the generating source to a directional coupler and then directly from the directional coupler to the antenna. Id. Information regarding forward and reflected power, which the Examiner found to include magnitude and phase, is measured at the directional coupler, and a real-time controller controls the microwave power source. Id. at 3^4. In sum, the Examiner found that Neilson disclosed all of the limitations of claim 1 except that it did not disclose “a network analyzer 2 Neilson et al., US Patent No. 5,330,518, issued July 19, 1994 (“Neilson”). 3 Behnke et al., US Patent Publication No. 2006/0224152, published Oct. 5, 2006 (“Behnke”). 4 Waxman, US Patent Publication No. 2004/0236871 Al, published Nov. 25, 2004 (“Waxman”). 5 Office Action mailed July 31, 2015 (“Final Act.”). 3 Appeal 2016-006770 Application 11/827,266 configured to determine loss information of the transmission line” and “a calibration unit configured to receive and store the loss information for the transmission line from the network analyzer, the calibration unit further configured to receive the magnitude and phase portions of the sampled output signal and generate a calibration signal having a magnitude and a phase that are representative of the sampled output signal of the measurement system and of the loss information for the transmission line.” Id. at 4. The Examiner found that Behnke disclosed a measurement and control system in which the control system inherently includes “a network analyzer configured to determine loss information of the transmission line via the encoded rating which communicates, either automatically or manually, to an input of a calibration unit in the generator.” Final Act. 4. Based on the combined teachings of Neilson and Behnke, the Examiner concluded that it would have been obvious to modify the control system so as to include a network analyzer and a calibration unit “in order to provide the benefit [of] compensating for the impedance in the cable and/or other components as taught by Behnke.” Id. at 5. Appellant argues, inter alia, that the cited references do not disclose a “transmission line including ... a second portion directly coupled to the energy delivery instrument and the directional coupler” as required by claim 1. App. Br. 3. Appellants contend that Neilson, which the Examiner relies upon as disclosing this element, discloses “a coaxial cable 76 that connects the antenna 74 [the energy delivery instrument] directly to the connection manifold 35, rather than a directional coupler.” Id. at 6. 4 Appeal 2016-006770 Application 11/827,266 As stated in In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992): “[T]he examiner bears the initial burden ... of presenting a prima facie case of unpatentability.” Appellant have persuaded us that the Examiner has not carried the burden of establishing that the claimed invention would have been obvious over the cited art. As shown in Figure 9 (reproduced below), Nielson discloses a catheter containing a microwave antenna that is connected to a microwave generating source by a coaxial cable. Nielson col. 3,11. 18—20. “FIG. 9 is a block diagram of the transurethral microwave thermal therapy system of the present invention.” Id. at col. 4,11. 26—27. The Examiner contends that “[i]n Fig. 9, the current carrying line of coaxial cable 76 extends directly from the directional coupler and directly to the antenna, extending, unmodified, through connection manifold 35.” Final Act. 7. The Examiner thus concludes that the directional coupler is connected directly to the antenna. Id. We are not persuaded. There is no dispute that the coaxial cable connecting the directional coupler and the antenna passes through a connection manifold. The Examiner contends that the cable passes through the manifold “unmodified,” thus effecting a direct connection. Id. While Figure 9 does show a cable 5 Appeal 2016-006770 Application 11/827,266 passing straight through the connection manifold, when Neilson discusses the connection manifold in greater detail than is depicted in Figure 9, it suggests the connection manifold interrupts the connection between the directional coupler and the antenna. For Example, Figure 2 A (reproduced below) illustrates connections between, inter alia, the microwave generating source (38), the connection manifold (35) and the antenna. “FIG. 2A is a side view of the distal end of the urethral catheter of the [Neilson’s] invention.” Id. col. 4,11. 6—7. In describing the connections between the microwave generating source (38), the connection manifold (35) and the antenna, Nielson states: [A]s shown in FIGS. 2A-2B . . . Antenna 74 is carried at the proximal- most end of coaxial cable 76. The distal-most end of coaxial cable 76 is connected to connection manifold 35 by a conventional quick coupling fitting 73. Coaxial cable 76 communicates with microwave generating source 38 by connection cable 76A, which is connected between microwave generating source 38 and connection manifold 35. Id. at col. 5,11. 43—51. This passage suggests that a different cable is used to connect the microwave source to the connection manifold than is used to connect the antenna to the connection manifold. First, the two cables are separately numbered, 76 and 76A. Second, a “quick fit coupling fitting” is used to connect the cable 76 to the manifold, suggesting termination of the cable. Third, the passage describes the connection to the manifold as 6 Appeal 2016-006770 Application 11/827,266 occurring at the “distal-most end of coaxial cable 76,” further suggesting that the cable terminates at the manifold. As Nielson suggests that the cable 76 terminates at the manifold, we find that the preponderance of the evidence does not support the Examiner’s conclusion that “coaxial cable 76 extends directly from the directional coupler and directly to the antenna, extending, unmodified, through connection manifold 35.” Final Act. 7. The Examiner further failed to establish that Waxman makes up for the foregoing deficiency in the combination of Nielson and Behnke. See Br. 7. Accordingly, we reverse the Examiner’s rejection of claims 1, 2, and 5—9. SUMMARY For the reasons set forth herein, we reverse the Examiner’s rejection of claims 1, 2, and 5—9. REVERSED 7