Ex Parte Keogh et al

Patent Trials and Appeals BoardJan 10, 2019

15098494 - (D) (P.T.A.B. Jan. 10, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 15/098,494 04/14/2016 James R. Keogh 28390 7590 01/14/2019 MEDTRONIC VASCULAR, INC. IP LEGAL DEPARTMENT 3576 UNOCAL PLACE SANTA ROSA, CA 95403 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. P0023856.USC6 4622 EXAMINER SMITH, RUTHS ART UNIT PAPER NUMBER 3793 NOTIFICATION DATE DELIVERY MODE 01/14/2019 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): rs.vasciplegal@medtronic.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 JAMES R. KEOGH, TIMOTHY R. RYAN, CAROLE. EBERHARDT, MARKT. STEWART, JAMES R. SKARDA, TIMOTHY G. LASKE, ALEXANDER J. HILL, JACK D. LEMMON, and DAVIDE. FRANCISCHELLI Appeal2018-001908 Application 15/098,494 Technology Center 3700 Before JEREMY M. PLENZLER, AR THUR M. PESLAK, and BRENT M. DOUGAL, Administrative Patent Judges. PLENZLER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. Â§ 134(a) of the Examiner's Decision rejecting claims 25--42. We have jurisdiction under 35 U.S.C. Â§ 6(b). We REVERSE. Appeal2018-001908 Application 15/098,494 CLAIMED SUBJECT MATTER Claim 25 is independent, with claims 26-42 depending therefrom. Claim 25 is reproduced below: 25. A method for treating a human patient, the method compnsmg: emitting ultrasound energy from an ultrasound transducer positioned remotely from target tissue of the patient, wherein the ultrasound transducer is positioned at a desired location relative to the patient and target tissue using location and imaging techniques; focusing the ultrasound energy such that one or more focal points are directed to the target tissue of the patient; and ablating the target tissue at each focal point with the focused ultrasound energy without ablating non-target tissue through which the ultrasound energy passes between the ultrasound transducer and the one or more focal points. REJECTIONS 1. Claims 25-29, 31, 33, 35-37, and 39-42 are rejected under 35 U.S.C. Â§ I02(e) as anticipated by Larson (US 2005/0165298 Al, published July 28, 2005). 2. Claim 27 is rejected under 35 U.S.C. Â§ I03(a) as being unpatentable over Larson and Cain (US 6,309,355 Bl, issued Oct. 30, 2001). 3. Claim 30 is rejected under 35 U.S.C. Â§ I03(a) as being unpatentable over Larson and Govari (US 2004/0162507 Al, published Aug. 19, 2004). 4. Claims 32 and 38 are rejected under 35 U.S.C. Â§ I03(a) as being unpatentable over Larson. 2 Appeal2018-001908 Application 15/098,494 5. Claim 34 is rejected under 35 U.S.C. Â§ I03(a) as being unpatentable over Larson and Beach (US 6,042,556, issued Mar. 28, 2000) or Weng (US 2001/0031922 Al, published Oct. 18, 2001). OPINION Each of the rejections asserted by the Examiner relies, at least in part, on Larson. The status of Larson as prior art against the pending application depends on whether the pending application is entitled to the July 31, 2000 filing date of U.S. Patent No. 6,595,934 ("the '934 patent"), from which it is a continuation filing. The dispute concerns whether the '934 patent provides adequate written description support for the pending claims. The Examiner has the initial burden of presenting evidence of reasons why persons skilled in the art would not recognize in the disclosure a description of the invention defined by the claims. In re Wertheim, 541 F .2d 257,263 (CCPA 1976). Although that burden is met when the Examiner points out that the claim reads on embodiments outside the scope of the original written description (id.), when the original written description describes something within the scope of the claim, the Examiner must do more than point out the difference in scope (see In re Rasmussen, 650 F.2d 1212, 1215 (CCPA 1981). The Examiner must consider the specific facts of the case and provide supporting reasoning. In re Smythe, 480 F.2d 1376, 1382 (CCPA 1973). The Examiner can meet his burden by analyzing factors such as the knowledge of one skilled in the art and the level of predictability in the field (see Bilstad v. Wakalopulos, 386 F.3d 1116, 1124--26 (Fed. Cir. 2004)), or by demonstrating that the specification reflects that the invention is no broader than what is disclosed in the specification, such as distinguishing 3 Appeal2018-001908 Application 15/098,494 over the broader disclosure (see Tronzo v. Biomet, Inc., 156 F.3d 1154, 1159 (Fed. Cir. 1998)). In the case before us, the Examiner's rejection rests simply on an assertion that the continuation claims are broader than the embodiment in the parent filing. See Final Act. 7; Ans. 6-7. There is no analysis sufficient to meet the burden as outlined above. Accordingly, the Examiner has not established sufficiently that Larson, which is required for each of the rejections before us, qualifies as prior art against the pending application. For at least these reasons, we do not sustain the Examiner's decision to reject claims 25--42. DECISION We REVERSE the Examiner's decision to reject claims 25--42. REVERSED 4