Ex Parte DANEK et alDownload PDFPatent Trial and Appeal BoardDec 17, 201814171973 (P.T.A.B. Dec. 17, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/171,973 02/04/2014 Christopher J. DANEK 109610 7590 12/19/2018 Bookoff McAndrews, PLLC 2020 K Street, NW Suite 400 Washington, DC 20006 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. 11710-0054-02000 4384 EXAMINER IWAMAYE, ANDREW MICHAEL ART UNIT PAPER NUMBER 3774 NOTIFICATION DATE DELIVERY MODE 12/19/2018 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): usptomail@bomcip.com Kross@bomcip.com eofficeaction@appcoll.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CHRISTOPHER J. DANEK, MICHAEL BIGGS, BRYAN E. LOOMAS, MICHAEL D. LAUFER, GARY S. KAPLAN, KELLY M. SHRINER, and WILLIAM J. WIZEMAN 1 Appeal2017-010824 Application 14/171,973 Technology Center 3700 Before RICHARD M. LEBOVITZ, MICHAEL J. FITZPATRICK, and RYAN H. FLAX, Administrative Patent Judges. FLAX, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) involving claims to a method of treating a lung. The Examiner's rejections of claims 41, 42, 47, 50, 55, 57---63, and 65-72 under 35 U.S.C. § 103(a) are appealed. We have jurisdiction under 35 U.S.C. § 6(b ). We reverse. 1 The Real Party in Interest is identified as "Boston Scientific Scimed, Inc." Appeal Br. 2. Appeal2017-010824 Application 14/171,973 STATEMENT OF THE CASE Independent claim 41, reproduced below, is representative: 41. A method of treating a lung, the method compnsmg: stimulating an airway in the lung; after stimulating the airway, measuring a parameter of the airway; delivering a liquid to an enclosed volume via an energy delivery device; and based on the measured parameter, applying energy from an electrode of the energy delivery device, through the enclosed volume of liquid, to tissue surrounding the airway to damage nerve tissue. Appeal Br. 24 (Claims Appendix). Independent claims 55 and 57 are similar to claim 41 in that they require some variation of "applying energy from an electrode of the energy delivery device, through the enclosed volume of liquid, to tissue." The following rejections are on appeal: 2 Claims 55, 57, 60, 61, 66, 69, and 72 stand rejected under 35 U.S.C. § I03(a) over Kuth3 and Laufer. 4 Final Action 2. 2 A rejection of claims 41 and 68-71 as obvious over Sekins, Laufer, Kuth, and Mitchell was withdrawn. Answer 2. 3 US 6,338,836 Bl (issued Jan. 15, 2002) ("Kuth"). 4 WO 98/44854 (published Oct. 15, 1998) ("Laufer"). 2 Appeal2017-010824 Application 14/171,973 Claims 58 and 59 stand rejected under 35 U.S.C. § 103(a) over Kuth, Laufer, and Mitchell5 or Templeton. 6 Id. at 4. Claims 41, 42, 47, 50, 62, 63, 65, 67, 69, and 70 stand rejected under 35 U.S.C. § 103(a) over Kuth, Laufer, and Sekins. 7 Id. at 6. DISCUSSION "[T]he examiner bears the initial burden, on review of the prior art or on any other ground, of presenting aprimafacie case ofunpatentability. [Only once] that burden is met, the burden of coming forward with evidence or argument shifts to the applicant." In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,416 (2007). "[O]bviousness requires a suggestion of all limitations in a claim." CFMT, Inc. v. Yieldup Int'! Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003) (citing In re Royka, 490 F.2d 981,985 (CCPA 1974)). A claim can be obvious even where all of the claimed features are not found in specific prior art references, where "there is a showing of a suggestion or motivation to modify the teachings of [ the prior art] to the claimed invention." SIB IAN eurosciences, Inc. v. Cadus Pharm. Corp., 225 F.3d 1349, 1356 (Fed. Cir. 2000) (concluding that patent would have been obvious in light 5 H.W. Mitchell & M.P. Sparrow, Video-imaging of lumen narrowing; muscle shortening and flow responsiveness in isolated bronchial segments of the pig, 7 J. EuRRESPIR 1317-25 (1994) ("Mitchell"). 6 A.G.B. Templeton et al., Effects of S-salbutamol on Human Isolated Bronchus, 11 PULMONARY PHARMACOLOGY & THERAPEUTICS 1---6 (1998) ("Templeton"). 7 US 5,562,608 (issued Oct. 8, 1998) ("Sekins"). 3 Appeal2017-010824 Application 14/171,973 of teachings in prior art which provided motivation and suggestion to modify existing techniques to arrive at method in question). Ormco Corp. v. Align Technology Inc., 463 F.3d 1299, 1307 (Fed. Cir. 2006). However, the "mere fact that the prior art may [ or can] be modified in the manner suggested by the Examiner does not make the modification obvious unless the prior art suggested the desirability of the modification." In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992). We conclude the decision on appeal turns on the same facts for each obviousness rejection. Therefore, we address all rejections together. The Examiner determined the claims would have been obvious, in each rejection, over the combination of Kuth and Laufer; also adding Sekins and/or Mitchell or Templeton to supply teachings concerning recited elements of certain claims. Final Action 2-9. As a foundation for each obviousness rejection, the Examiner determined that Kuth taught or suggested the concept and claimed steps of stimulating an airway of a lung to react, as in an allergic reaction, and measuring that reaction, e.g., using MRI scanning, once to identify the tissue's normal state, once to identify the reaction, and again to determine the effectiveness of related treatment. Final Action 2-3, 6, 14 (citing Kuth generally, but specifically at 4:2-13, 4:50- 60). Because the Examiner determined Kuth did not teach a device for, or a step of, applying energy to the lung airway tissue as a therapy, as claimed, the Examiner looked to Laufer, determining that the reference supplied a teaching of a catheter-type device having electrodes for supplying energy, e.g., heat, to lung airway tissue to reconfigure collagen and treat conditions like asthma. Final Action 3, 6-7 and Answer 3--4 (collectively citing Laufer 4 Appeal2017-010824 Application 14/171,973 7: 17-9:6, Figures 2A, 2B). Sekins was cited in the rejection of claim 41 for its teaching of delivering a liquid to the lungs. Final Action 7. Appellants present a persuasive argument, which is that "the combination of Kuth, Laufer, and Sekins ... fails to disclose or render obvious at least the claimed features of ... [']applying energy from an electrode of the energy delivery device, through the enclosed volume of liquid, to tissue surrounding the airway,' as recited by" the claims. Appeal Br. 15. Appellants argue that Laufer's devices are taught to have electrodes only on their outer surface with no enclosed liquid between the electrodes and tissue, and also that insulating material of the balloon catheter lying between such electrodes would necessarily prevent transmission of electricity between electrodes without it first traveling through the tissue, such that there would not be a transmission of energy from an electrode, through contained liquid, to tissue. The Examiner's response to this argument points to Laufer's disclosure of energies alternative to RF energy, such as microwave energy and thermal energy, to be applied to lung airway tissue. Answer 4 (we note this argument abandons the Examiner's original argument, which relied on natural, liquid-containing cells of lung tissue as being the enclosed liquid claimed-see Final Action 3). The Examiner determined that, when using such other energies, and when enclosing liquid within Laufer' s balloon catheter upon which its electrodes are mounted, energy would be delivered through the enclosed volume of liquid to the surrounding tissue, as claimed. Answer 4. The Examiner also determined that combining Laufer with 5 Appeal2017-010824 Application 14/171,973 Sekins would provide a liquid filled balloon to meet the claim limitations at issue. Answer 3. We find that the Examiner did not meet the burden of establishing that the disputed claimed limitation is disclosed or suggested by the prior art. As argued by Appellants, the Examiner has identified only structures, in Laufer, that would transfer energy directly from an electrode to adjacent tissue in use, rather than intermediately through an enclosed liquid. There is no disclosure identified by the Examiner in any of the cited prior art, including Laufer, that energy is transmitted from an electrode, through an enclosed liquid, to tissue. The electrodes disclosed by Laufer are on its devices' surfaces, which in use are pressed against the tissue to be treated. See, e.g., Laufer 4:5-14, Figures 1A--4B (electrodes are preferably on exterior surface of device, as illustrated). Moreover, Sekins is cited for teaching a method and catheter for delivering liquid to the lung's airways and "temporarily filling" the airways with liquid (not an enclosed liquid). See Sekins 5:28- 39; see also Final action 7 ( citing Sekins Figures 5, 6). Thus, the Examiner has not identified a prior art teaching or suggestion of transmitting energy from electrodes, through an enclosed liquid, and to tissue, as claimed. For this reason, we must find the Examiner has not established a prima facie case for obviousness. SUMMARY The obviousness rejections are each reversed. REVERSED 6 Copy with citationCopy as parenthetical citation