Ex Parte Kaplan et al

Patent Trial and Appeal BoardOct 13, 2016

13271908 (P.T.A.B. Oct. 13, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/271,908 10/12/2011 Aaron V. Kaplan 42074 7590 10/17/2016 Faegre Baker Daniels LLP PATENT DOCKETING - INTELLECTUAL PROPERTY (32469) 2200 WELLS FARGO CENTER 90 SOUTH SEVENTH STREET MINNEAPOLIS, MN 55402-3901 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. 32469-404493 2339 EXAMINER HELLER, TAMMIE K ART UNIT PAPER NUMBER 3766 NOTIFICATION DATE DELIVERY MODE 10/17/2016 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): PatentDocketing@FaegreBD.com e-OfficeActionBSC@FaegreBD.com PTOL-90A (Rev. 04/07) TJJ\.HTED STi\.TES Pi\. TENT i\.ND TP"-'ADElVLA.RK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte AARON V. KAPLAN and KEVIN F. HAHNEN Appeal2014-009298 Application 13/271,908 Technology Center 3700 Before WILLIAM A. CAPP, AMANDA F. WIEKER, and ARTHUR M. PESLAK, Administrative Patent Judges. CAPP, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. Â§ 134 of the final rejection of claims 1-20 under 35 U.S.C. Â§ 102(e) as anticipated by Koblish (US 2002/0087208 Al, pub. July 4, 2002). We have jurisdiction under 35 U.S.C. Â§ 6(b). We REVERSE. Appeal2014-009298 Application 13/271,908 THE INVENTION Appellants' invention relates to electrical lead placement on the heart. Spec. i-fi-12--4. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. An apparatus for placing a lead on a surface of a heart, the apparatus comprising: an elongated body including a proximal end portion and a distal end portion, the elongated body defining a longitudinal axis and having a length configured to permit minimally invasive access to the heart, the distal end portion of the elongated body having a contact surface generally parallel to the longitudinal axis, the distal end portion of the body further having a non-circular shape defined by an upper surface and a lower surface, the lower surface including the contact surface; a lead receiving passageway extending through the elongated body to a distal outlet on the contact surface; and a steering member extending through the elongated body from the distal end portion to a more proximal portion of the elongated body, the steering member configured to move the distal end portion of the body in at least one plane when force is applied to the steering member at the more proximal portion of the elongated body. OPINION Claim 1 The Examiner finds that Koblish discloses all of the elements of claim 1. Final Action 2-3. In particular, the Examiner finds that Koblish discloses a distal end of non-circular shape and with a contact surface that is generally parallel to a longitudinal axis. Id. (citing Koblish, Fig. 13, Fig. 65) Appellants traverse the Examiner's rejection by arguing that Koblish fails to disclose a distal end portion of an elongated body having a contact surface generally parallel to the longitudinal axis and a lead receiving 2 Appeal2014-009298 Application 13/271,908 passageway extending through the elongated body to a distal outlet on the contact surface. Appeal Br. 5. Appellants also argue that Koblish fails to disclose a distal end portion with a non-circular shape as claimed. Id. at 6. In response to Appellants' "contact surface" argument, the Examiner states that a "contact surface" is broadly considered to be any surface that makes contact with something else, such as blood or tissue. Ans. 2. The Examiner explains that although Koblish's tubular body 1202, next to slotted outlet 1220, is not in direct tissue contact, it is in contact with blood and "other elements" in its vicinity. Id. at 2-3 (citing Koblish, Fig. 65). The Examiner further explains that the claim is not specific as to where or what type of contact is required by the contact surface and, therefore, the outlet of Koblish satisfies the claim requirement of a "contact surface." Id. According to the Examiner, "contact" could be achieved between the portion of tubular body 1202 next to slotted outlet 1220 and "bodily fluids." Id. Whether "contact surface" can be construed to include contact with bodily fluids is a question of claim construction. During examination of a patent application, pending claims are given their broadest reasonable construction consistent with the specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under the broadest reasonable interpretation standard, claim terms are given their ordinary and customary meaning as would be understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Even under the broadest reasonable interpretation, the Board's construction "cannot be divorced from the specification and the record evidence." In re NTP, Inc., 654 F.3d 1279, 1288 (Fed. Cir. 2011). The specification is the single best guide to the meaning of a disputed term. 3 Appeal2014-009298 Application 13/271,908 Phillips v. ATVIICorp., 415 F.3d 1303, 1315 (Fed. Cir. 2005). The specification "acts as a dictionary when it expressly defines terms used in the claims or when it defines terms by implication." Id.at 1321. Thus, even when guidance is not provided in explicit definitional format, the specification may define claim terms by implication such that their meaning may be ascertained by reading the patent documents. Irdeto Access, Inc. v. Echostar Satellite Corp., 383 F.3d 1295, 1300 (Fed. Cir. 2004). Appellants' Specification teaches positioning the distal outlet of the apparatus against a selected lead placement site. Spec. i-f 23. It further teaches disposing electrodes on the apparatus "in proximity to the distal end portion/or contact with the swface of the heart." Id. i-f 25 (emphasis added). This purpose of contacting cardiac tissue is repeated throughout the Specification. Specifically, the Specification discloses that the distal end portion with the non-circular shape contacts the swface of the heart. Id. i-f 109. Figure 4 depicts a surface with pacing electrodes disposed in proximity to distal outlet 22/or contact with the surface of the heart. Id. i-f 139, Fig. 4. Indeed, the Specification explains that contact between the electrodes and the heart surface allows pacing of the heart. Id. i-f 144. When distal end portion 16 is put into contact with a heart surface, a Doppler sensor detects a coronary artery. Id. i-f 146. Consistent with Appellants' Specification, claim 1 is directed to an apparatus for placing a lead on a surface of a heart. Claims App. In view of the teachings of the Specification, a person of ordinary skill in the art would understand that the claimed "contact surface" of distal end portion of claim 1 is a surface that contacts the surface of the heart, not merely a surface that contacts "something," as the Examiner concludes. Ans. 2. 4 Appeal2014-009298 Application 13/271,908 The embodiment ofKoblish depicted in Figure 65 and relied upon by the Examiner, (see Final Act. 2-3; Ans. 2-3), is a catheter assembly that is configured to create a circumferential lesion around the opening of a pulmonary vein. Koblish i-f 282. It comprises ablation catheter 1222 that extends from slotted outlet 1220 at, approximately, a 45 degree angle to the longitudinal axis 1214 of tubular body 1202. Id. i-f 285. Ablation catheter 1222 includes a catheter tube 1234. Id. i-f 289. Catheter tube 1234 includes ablation electrode 1238 disposed about the entire distal tip of the tube. Id. The electrode uses RF energy to ablate tissue with which it makes contact. Id. After reviewing Koblish in view of our construction of "contact surface," we conclude that the Examiner errs in finding that Koblish discloses a distal end portion with a lower surface that has a non-circular contact surface as claimed. Specifically, the Examiner's finds that the portion of tubular body 1202 surrounding slotted outlet 1220 is the claimed "contact surface," but, as the Examiner states, that portion "is not in direct tissue contact." As such, this portion of the tubular body cannot satisfy the claim language as properly construed. Accordingly, we do not sustain the rejection of claim 1. Claims 2-14 Claims 2-14 depend, directly or indirectly, from claim 1. Claims App. The Examiner's rejection of these claims suffers from the same infirmity that was identified above with respect to claim 1. Thus, for essentially the same reason expressed above in connection with claim 1, we do not sustain the rejection of claims 2-14. 5 Appeal2014-009298 Application 13/271,908 Claims 15-17 Claim 15 is an independent claim and claims 16 and 1 7 depend therefrom. Claims App. As with claim 1, claim 15 includes a limitation directed to a distal end portion with a lower, non-circular, contact surface. Id. In finding that Koblish anticipates claim 15, the Examiner relies on the same erroneous finding of fact with respect to the distal end contact surface that we previously discussed in connection with the rejection of claim 1. For essentially the same reason discussed above with respect to claim 1, we do not sustain the Examiner's rejection of claim 15, nor do we sustain the rejection of claims 16 and 17 that depend therefrom. Claims 18-20 Claim 18 is an independent claim and claims 19 and 20 depend therefrom. Claims App. As with claims 1 and 15, claim 18 includes a limitation directed to a distal end portion with a contact surface. Id. In finding that Koblish anticipates claim 18, the Examiner relies on the same erroneous finding of fact with respect to the distal end contact surface that we previously discussed in connection with the rejection of claim 1. For essentially the same reason discussed above with respect to claim 1, we do not sustain the Examiner's rejection of claim 18, nor do we sustain the rejection of claims 19 and 20 that depend therefrom. DECISION The decision of the Examiner to reject claims 1-20 is reversed. REVERSED 6