Ex Parte HAVERKOST et al

Patent Trial and Appeal BoardMar 11, 2019

14485136 (P.T.A.B. Mar. 11, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/485,136 09/12/2014 121974 7590 03/13/2019 KACVINSKY DAISAK BLUNI PLLC America's Cup Building 50 Doaks Lane Marblehead, MA 01945 FIRST NAMED INVENTOR PATRICK A. HAVERKOST 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. 8150BSC0238 3217 EXAMINER EKRAMI, YASAMIN ART UNIT PAPER NUMBER 3794 NOTIFICATION DATE DELIVERY MODE 03/13/2019 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): bbonneville@kdbfirm.com docketing@kdbfirm.com ehysesani@kdbfirm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PATRICK A. HA VERKOST, MARY M. BYRON, CASS A. HANSON, MARTIN R. WILLARD, DEREK C. SUTERMEISTER, ROBERT N. SQUIRE, and BRIAN K. JABLONSKI Appeal2018-007150 Application 14/485,136 1 Technology Center 3700 Before NINA L. MEDLOCK, PHILIP J. HOFFMANN, and KENNETH G. SCHOPPER, Administrative Patent Judges. HOFFMANN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. Â§ 134(a), Appellants appeal from the Examiner's rejection of claims 1, 2, 4--15, and 20-25. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We REVERSE. 1 Appellants identify "Boston Scientific Scimed, Inc." as the real party in interest. Appeal Br. 3. Appeal2018-007150 Application 14/485,136 According to Appellants, the invention is directed "to medical devices for sympathetic nerve ablation." Spec. 1, 11. 9-10. Claims 1 and 20 are the independent claims under appeal. Below, we reproduce independent claim 1 as illustrative of the appealed claims. 1. A medical device for sympathetic nerve ablation, compnsmg: a catheter shaft; an expandable balloon coupled to the catheter shaft, the balloon being capable of shifting between an unexpanded configuration and an expanded configuration; a plurality of elongate electrode assemblies each comprising one or more electrodes disposed on the balloon; and a cover layer disposed over an outer surface of the electrode assemblies, wherein the cover layer seals the electrode assemblies onto the balloon. REJECTIONS AND PRIOR ART The Examiner rejects the claims as follows: I. Claims 1, 2, 4--9, 12, 14, 15, and 20-22 under 35 U.S.C. Â§ 102(b) as anticipated by Salahieh et al. (US 8,295,902 B2, iss. Oct. 23, 2012) (hereinafter "Salahieh"); II. Claims 10 and 11 under 35 U.S.C. Â§ 103(a) as unpatentable over Salahieh and Simpson et al. (US 6,692,492 B2, iss. Feb. 17, 2004) (hereinafter "Simpson"); III. Claim 13 under 35 U.S.C. Â§ 103(a) as unpatentable over Salahieh and Swanson et al. (US 6,123,702, iss. Sept. 26, 2000) (hereinafter "Swanson"); and 2 Appeal2018-007150 Application 14/485,136 IV. Claims 23-25 under 35 U.S.C. Â§ 103(a) as unpatentable over Salahieh and Shapland et al. (US 5,807,306, iss. Sept. 15, 1998) (hereinafter "Shapland"). ANALYSIS Reiection I As set forth above, independent claim 1 recites, in relevant part, "a cover layer disposed over an outer surface of the electrode assemblies, wherein the cover layer seals the electrode assemblies onto the balloon." Appeal Br., Claims App. In the Final Office Action mailed June 29, 2017, the Examiner finds that Salahieh's "insulating layer 100 is disposed on the outer surface [ of] ... one or more electrodes 6 and seals the portions of the electrodes it covers, [(see] Fig[ure]s 2A and 4A[)]." Final Action 3 ( emphasis added). Appellants argues that the Examiner errs in rejecting claim 1 as anticipated by Salahieh because Salahieh does not disclose a cover layer that seals electrode assemblies onto the balloon. Appeal Br. 7. In response to Appellants' argument, the Examiner finds that [i]t is the Examiner's position [that] since ... cover layer 100 is disposed on the outer surface of the plurality of elongate electrode assemblies 105 (which include one or more branches 17 of flex circuit 89, each having one or more conductive traces 16 and conductive pads 59 wherein one or more electrodes can be electrically coupled to the flex circuit 89 via the conductive pad 59 of the conductive layer 96), it reads on the claimed limitation of sealing the electrode assemblies onto the balloon as broadly as claimed. Answer 2-3. This statement is inadequate to explain how Salahieh's insulating layer 100 seals electrode assemblies 105 and their associated components ( for example) onto a balloon. Each of Salahieh' s Figures 2A 3 Appeal2018-007150 Application 14/485,136 and 4A shows a minimal overlap between insulating layer 100 and electrode 6. Conversely, Salahieh explains that it is "an adhesive" that retains or seals "electrodes 6 ... to ... membrane 34." Salahieh col. 10, 11. 22-24. Without further findings or explanation, the Examiner does not support adequately that Salahieh discloses the insulating layer as claimed. Thus, based on the foregoing, we do not sustain claim 1 's anticipation rejection. We also do not sustain independent claim 20's anticipation rejection for substantially the same reasons. Further, we do not sustain the anticipation rejection of claims 2, 4--9, 12, 14, 15, 21, and 22 that depend from, and which the Examiner rejects with, these independent claims. Reiection II-IV The Examiner does not rely on any reference to remedy the above deficiency in the independent claims' rejection. Thus, we do not sustain any of these obviousness rejections of claims 10, 11, 13, and 23-25 that depend from the independent claims. DECISION We REVERSE the Examiner's rejections of claims 1, 2, 4--15, and 20-25. REVERSED 4