Ex Parte Bonde et al

Patent Trials and Appeals Board

Feb 19, 2019

15200275 - (D) (P.T.A.B. Feb. 19, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
15/200,275 07/01/2016
71996 7590 02/21/2019
SHUMAKER & SIEFFERT, P.A
1625 RADIO DRIVE, SUITE 100
WOODBURY, MN 55125
FIRST NAMED INVENTOR
Eric H. Bonde
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.
1023-664US02/P0028933.USV 7042
EXAMINER
MARLEN, TAMMIE K
ART UNIT PAPER NUMBER
3792
NOTIFICATION DATE DELIVERY MODE
02/21/2019 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):
pairdocketing@ssiplaw.com
rs.patents.five@medtronic.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ERICH. BONDE and MARTIN T. GERBER
Appeal2018-005128
Application 15/200,275
Technology Center 3700
Before FRANCISCO C. PRATS, MICHAEL J. FITZPATRICK, and
DAVID COTTA, Administrative Patent Judges.
FITZPATRICK, Administrative Patent Judge.
DECISION ON APPEAL
Eric H. Bonde and Martin T. Gerber ("Appellants") 1 appeal under 35
U.S.C. § 134(a) from the Examiner's final decision rejecting claims 1-11.
We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 Appellants identify the real party in interest as "Medtronic plc of Dublin,
Ireland, which is the ultimate parent entity of the assignee of record,
Medtronic, Inc." Appeal Br. 3.
Appeal2018-005128
Application 15/200,275
STATEMENT OF THE CASE
The Specification
The claimed invention relates to medical devices for implanting other
medical devices, such as medical leads of an electrical stimulation system.
Spec. i-fi12-3.
Id. ,I6.
The Specification describes:
an implant tool and a cannula that may be used to facilitate the
implantation of a medical device into a patient. The implant tool
includes a housing that is held by a user and a needle attached to
the housing. The needle is configured so that the cannula may
be positioned over the needle and delivered to the target tissue
site by the needle. Once the needle is in place relative to a target
site within the patient, the needle is removed and a medical
device may be implanted through the lumen of the cannula that
remains within the patient.
The Rejected Claims
Claims 1-12 are pending and claims 1-11 are rejected. Final Act. 1
(rejecting claims 1-12); Ans. 2 (withdrawing all rejections of claim 12).
Claim 1, the sole independent claim, is representative and reproduced below.
1. A method comprising:
introducing a cannula and needle assembly into a patient,
wherein the needle is at least partially disposed within a lumen
of the cannula, and wherein the lumen is configured to allow
passage of a medical device, the cannula comprising:
an elongated housing defining the lumen; and
at least one of a partial ring electrode or a
segmented electrode positioned on a distal portion of the
elongated housing, the at least one of the partial ring
electrode or the segmented electrode extending around
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Appeal2018-005128
Application 15/200,275
less than an entire outer perimeter of the elongated
housing;
advancing the cannula to a target site within the patient;
and
delivering test stimulation to the patient via the at least
one of the partial ring electrode or the segmented electrode.
Appeal Br. 17.
The Appealed Rejection
The following rejection is before us for review: claims 1-11 under 35
U.S.C. § I03(a) as obvious over US 6,847,849 B2, issued January 25, 2005
("Mamo") and US 2004/0098074 Al, published May 20, 2004 ("Erickson").
Final Act. 6-9. 2
DISCUSSION
Claim 1 recites "introducing a cannula and needle assembly into a
patient, wherein the needle is at least partially disposed within a lumen of
the cannula."
The Examiner relied on Mamo to meet this claim language, stating:
Mamo discloses a method comprising: introducing a cannula
and needle assembly into a patient, wherein the needle is at least
partially disposed within a lumen of the cannula, and wherein the
lumen is configured to allow passage of a medical device, the
cannula comprising an elongated housing defining the lumen
(see steps 50/52/54/56/78/90' in Figures 4, 5a, 6a, 7a, and 10).
Final Act. 6.
2 The rejection of claims 1-12 over Mamo and a different reference (Stone)
and the rejection of claim 12 over Mamo and Erickson were withdrawn in
the Answer. See Ans. 2.
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Appeal2018-005128
Application 15/200,275
Each of the cited the prior art figures shows a flowchart that begins
with a step of "INSERTING NEEDLE" and nothing else. Mamo Figs. 4, 5a,
6a, 7 a, and 10. In the Appeal Brief, Appellants stated that they therefore
understood the Examiner to be asserting that Mamo' s needle meets the
"cannula" of claim 1 ( e.g., in addition to meeting the "needle" of claim 1 ).
Appeal Br. 5.
In the Answer, the Examiner clarified that "it is not the needle, but
rather the dilator of Mamo that satisfies the claim limitation for a cannula."
Ans. 3. The Examiner then referred to "dilator 42'," which is assembled
from dilator body (Fig. 8a) and dilator sheath (Fig. 8b) as shown in
Figure 8c and which is employed in the embodiment of Figure 10. Id.
In response to the Examiner's clarification, Appellants argued that
"none of the cited examples of Mamo describe[ s] introducing an assembly
including Mamo's dilator 42 and needle 36 into a patient, where the needle
is at least partially disposed within the dilator 42." 3 Reply Br. 3. Rather, as
Appellants point out, Mamo describes initially inserting only a needle into a
patient and thereafter inserting a dilator (i.e., the asserted "cannula") over
the already inserted needle. Id.; E.g., Mamo Fig. 10 (showing flowchart that
starts with "INSERTING NEEDLE," then "GUIDING NEEDLE," then
"INSERTING ASSEMBLED DILATOR OVER NEEDLE.").
The claim language at issue recites "introducing a cannula and needle
assembly into a patient, wherein the needle is at least partially disposed
within a lumen of the cannula." The Examiner does not, in the Final Action,
3 Mamo refers both to dilators 42 generally and a particular dilator 42' that is
comprised of a dilator sheath and body. See, e.g., Mamo 7:15 and 10:57-58.
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Application 15/200,275
squarely address how Mamo allegedly meets this limitation. See Final Act.
6. But, in the Answer, the Examiner implicitly construes the limitation to
allow for introducing the needle only and then subsequently introducing the
cannula such that the needle ultimately becomes disposed within the
cannula. See Ans. 10.
The Examiner's implicit construction is too broad. The broadest
reasonable construction in light of the specification requires that the cannula
must be introduced into the patient while the needle is at least partially
within the lumen of the cannula.
Our construction is supported by the plain language of the claim itself.
For example, it refers to the combined structure of "a cannula and needle
assembly" as the structure that is introduced into the patient. Additionally,
the "introducing" step recites that the "the needle is at least partially
disposed within a lumen of the cannula." Appeal Br. 1 7 ( emphasis added).
This is in contrast to the recitation, in the same "introducing" step, that the
cannula "lumen is configured to allow passage of a medical device." Id.
( emphasis added). In other words, claim 1 requires that, when the "cannula
and needle assembly" is being introduced into the patient, the needle must be
at least partially disposed within the cannula lumen but a medical device
need not be passing through at that time. Instead, the lumen need only be
configured to allow passage of a medical device.
Our construction is further supported by the Specification, which
describes insertion of both a needle and a cannula surrounding the needle at
the same time. For example, the drawings include three flowcharts of
embodiments of the disclosed invention. Spec. Figs. 14, 17, and 18. In all
three, the first step of the method is "INSERT NEEDLE AND CANNULA
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Appeal2018-005128
Application 15/200,275
INTO PATIENT." Spec. Fig. 14 (ref. 140), 17 (ref. 204), and 18 (ref. 204).
The Specification clarifies that the needle is within the cannula when being
introduced into a patient by stressing that the needle tip must be exposed to
provide piercing:
As shown in FIG. 4A, implant tool 50 includes cannula 68 fitted
over needle 62 and substantially conforming to the shape of the
needle. The length of cannula 68 is shorter than the exposed
length of needle 62 to allow piercing tip 64 to extend past the end
of the cannula. In this manner, piercing tip 64 defines an
insertion path for needle 62 and cannula 68 through tissue of
patient 12.
Id. ,T62.
The Examiner has not shown that the prior art teaches or suggests
"introducing a cannula and needle assembly into a patient, wherein the
needle is at least partially disposed within a lumen of the cannula," giving
that claim language its broadest reasonable interpretation consistent with the
Specification. Accordingly, we reverse the rejection of claim 1 as well as
claims 2-10, which ultimately depend from claim 1. See In re Fine, 837
F.2d 1071, 1076 (Fed. Cir. 1988) ("Dependent claims are nonobvious under
section 103 if the independent claims from which they depend are
nonobvious.").
DECISION
The Examiner's rejection of claims 1-11 is reversed.
REVERSED
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