Ex Parte GovariDownload PDFPatent Trial and Appeal BoardMar 29, 201712636064 (P.T.A.B. Mar. 29, 2017) Copy Citation 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. 12/636,064 12/11/2009 Assaf Govari BI05227USNP 1552 25570 7590 03/31/2017 Roberts Mlotkowski Safran Cole & Calderon, P.C. 7918 Jones Branch Drive Suite 500 McLean, VA 22102 EXAMINER RAM, JOCELYN D ART UNIT PAPER NUMBER 3739 NOTIFICATION DATE DELIVERY MODE 03/31/2017 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): lgallaugher@rmsc2.com docketing@rmsc2.com dbeltran @ rmsc2. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ASSAF GOVARI Appeal 2015-007849 Application 12/636,064 Technology Center 3700 Before: EDWARD A. BROWN, LEE L. STEPINA, and SEAN P. O’HANLON, Administrative Patent Judges. BROWN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Assaf Govari (Appellant)1 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1—6.2 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 Biosense Webster (Israel) Ltd. is identified as the real party in interest. Appeal Br. 1. 2 Claim 7 is cancelled, and claims 8—21 are withdrawn from consideration. Appeal Br. 9—12 (Claims App.). Appeal 2015-007849 Application 12/636,064 INVENTION Claim 1 is representative of the claimed subject matter, and reads: 1. A medical device, comprising: an insertion tube, having a longitudinal axis and having a distal end adapted and configured for insertion through a body passage into a cavity within a body of a patient without use of any active steering mechanism therein; an electrode, which is located on the distal end of the insertion tube and is configured to contact tissue in the cavity; and a resilient member pre-formed in a curved shape, the curved shape consisting of a single arcuate segment, which is contained only within the distal end of the insertion tube and is configured, when unconstrained, to cause the distal end to bend away from the longitudinal axis in the curved shape and to straighten the curved shape of the distal end of the insertion tube toward the longitudinal axis when subjected to an inward radial force, wherein the resilient member is configured to buckle when the radial force exceeds a predetermined threshold to prevent the puncturing of tissue due to excessive pressure. Appeal Br. 8 (Claims App.). REJECTIONS Claims 1, 2, and 6 are rejected under 35 U.S.C. § 102(b) as anticipated by Belhe (US 7,122,034 B2, issued Oct. 17, 2006). Claims 3—5 are rejected under 35 U.S.C. § 103(a) as unpatentable over Belhe and Avitall (US 2006/0253116 Al, published Nov. 9, 2006). ANALYSIS Claims 1, 2, and 6 as anticipated by Belhe Claim 1 recites a medical device comprising “a resilient member pre formed in a curved shape . . . wherein the resilient member is configured to 2 Appeal 2015-007849 Application 12/636,064 buckle when the radial force exceeds a predetermined threshold to prevent the puncturing of tissue due to excessive pressure.’ '' Appeal Br. 8 (Claims App., emphasis added). The Examiner finds that Belhe discloses a resilient member (i.e., wire 60) which inherently buckles when an inward radial force, exerted by sheath 6, exceeds a predetermined threshold. Final Act. 3. Continuing, the Examiner finds that it is inherent that Belhe’s resilient support 60 “will break/buckle if too large a force is applied, as any material has a predetermined breaking point.” Id. The Examiner notes that “the predetermined threshold is not explicitly defined except that the resilient member is configured to buckle to prevent the puncturing [of] tissue due to excessive pressure.” Id. The Examiner determines that because Belhe discloses that wire 60 can be made of nitinol, “which is the same material as the resilient member 60 of the instant invention,” wire 60 “will have the same material properties as the resilient member of the instant invention and can be configured to buckle under the same force.” Id. (emphasis added). Appellant contests the Examiner’s inherency position. Appeal Br. 3. Particularly, Appellant contends that the Examiner does not provide the required evidence at least tending to show that the claimed buckling of the resilient member flows from Belhe’s disclosure. Id. Appellant contends that the mere fact that its resilient member and Belhe’s are made from the same material does not mean that both resilient members will buckle under the same amount of force, that is, buckle to prevent puncturing of tissue due to excessive pressure. Id. at 3^4. Appellant explains that the type of material is just one factor when determining the amount of force it will take to buckle the resilient member, and “[pjrobably the most important factor is the size and configuration (length, width, thickness, cross-sectional area).” Id. at 4. 3 Appeal 2015-007849 Application 12/636,064 Continuing, Appellant explains that “[t]wo resilient members made of the same material, but of different lengths, thicknesses, shape, or cross-sectional areas will not necessarily buckle or fail under the same load.” Id. Appellant’s contentions are persuasive. To anticipate a claim, a prior art reference must disclose each and every claim limitation, either explicitly or inherently. In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). “A prior art reference may anticipate without disclosing a feature of the claimed invention if that missing characteristic is necessarily present, or inherent, in the single anticipating reference.” Verizon Servs. Corp. v. Cox Fibernet Va., Inc., 602 F.3d 1325, 1336—37 (Fed. Cir. 2010). “Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” In re Oelrich, 666 F.2d 578, 581 (CCPA 1981). Appellant’s Specification describes: Member 60 may comprise, for example, a strut, rod or tube made from a shape memory material, such as Nitinol.... Resilient member 60 may be made structurally weak enough to buckle if the pressure against the catheter tip is greater than a certain predetermined threshold, thus giving an extra measure of safety against excessive pressure that could otherwise puncture the vein or heart wall. Spec. 11:27—12:9 (emphasis added). As noted correctly by the Examiner, the term “predetermined threshold” is not described in the Specification. However, claim 1 specifies that “the resilient member is configured to buckle when the radial force exceeds a predetermined threshold to prevent the puncturing of tissue due to excessive pressure.” An ordinary meaning of “configured” is “to set up for operation esp. in a particular way.” Merriam-Webster’s Collegiate 4 Appeal 2015-007849 Application 12/636,064 Dictionary 261 (11th ed. 2003). See also Aspex Eyewear, Inc. v. Marchon Eyewear, Inc., 672 F.3d 1335, 1349 (Fed. Cir. 2012) (phrases such as “configured to” are frequently used to have the meaning “designed to” or “made to”). Consistent with Appellant’s Specification, we construe the disputed claim language to mean that the resilient member is designed to, or made to, “buckle when the radial force exceeds a predetermined threshold to prevent the puncturing of tissue due to excessive pressure.” The claimed resilient member is configured not to be able to withstand an inward radial force greater than the predetermined threshold. Rather, it will buckle when subjected to such force to prevent puncturing of tissue in contact with the device that could otherwise occur due to excessive pressure if such buckling of the resilient member did not occur. That is, the resilient member is made structurally weak enough to buckle when subjected to a radial force exceeding a threshold force to prevent such puncturing from occurring. We agree with Appellant that Belhe’s mere disclosure that wire 60 can be made from nitinol, alone, does not establish that Belhe’s wire 60 is designed to, or made to, buckle when subjected to an inward radial force that exceeds any predetermined threshold. Rather, as explained by Appellant, other design considerations, including the size and configuration of the resilient member, will affect the amount of force required to buckle the resilient member. Indeed, the Examiner acknowledges that “the size and configuration of the resilient member can effect [sic] the force under which it will buckle.” Ans. 2. Even assuming that Belhe’s wire 60 will buckle “if too large a force is applied,” this does not establish that Belhe’s wire 60 is, necessarily, “configured to buckle when the radial force exceeds a 5 Appeal 2015-007849 Application 12/636,064 predetermined threshold to prevent the puncturing of tissue due to excessive pressure.” For example, it is possible that Belhe’s wire may not buckle unless it is subjected to a radial force that would result in “puncturing of tissue due to excessive pressure.” The Examiner states, “[i]f the prior art structure is capable of performing the intended use, then it meets the claim. The resilient member of Belhe, made of nitinol, can be configured to buckle to prevent the puncturing of tissue.” Ans. 2 (emphasis added). However, claim 1 recites that the resilient member “A configured to buckle,” not that it “can be configured to buckle.” To the extent it is the Examiner’s position that Belhe’s wire 60 could be configured to buckle, and, specifically, as recited in claim 1, the Examiner provides no explanation why or how one of ordinary skill in the art would modify Belhe to arrive at the claimed medical device. Accordingly, we do not sustain the rejection of claim 1, and claims 2 and 6 depending therefrom, as anticipated by Belhe. Claims 3—5 over Belhe and Avitall The Examiner’s use of Avitall does not cure the deficiencies of the rejection of claim 1, from which claims 3—5 depend. Final Act. 4—5. Accordingly, we do not sustain the rejection of claims 3—5 as unpatentable over Belhe and Avitall. DECISION The Examiner’s decision to reject claims 1—6 is reversed. REVERSED 6 Copy with citationCopy as parenthetical citation