Ex Parte Mauch

Patent Trial and Appeal BoardMar 6, 2019

14203826 (P.T.A.B. Mar. 6, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/203,826 03/11/2014 Kevin Mauch 28390 7590 03/08/2019 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. P0042035.USU1 8210 EXAMINER OUYANG,BO ART UNIT PAPER NUMBER 3794 NOTIFICATION DATE DELIVERY MODE 03/08/2019 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 KEVIN MAUCH Appeal2018-000060 Application 14/203,826 Technology Center 3700 Before JOSEPH A. FISCHETTI, CYNTHIA L. MURPHY, and AMEE A. SHAH, Administrative Patent Judges. SHAH, Administrative Patent Judge. DECISION ON APPEAL 1 The Appellant2 appeals under 35 U.S.C. Â§ 134(a) from the Examiner's final decision rejecting claims 1--4 and 6-25. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We REVERSE. 1 Throughout this Decision, we refer to the Appellant's Appeal Brief ("Appeal Br.," filed Apr. 6, 2017), Reply Brief ("Reply Br.," filed Sept. 28, 2017), and Specification ("Spec.," filed Mar. 11, 2014), and to the Examiner's Answer ("Ans.," mailed July 28, 2017) and Final Office Action ("Final Act.," mailed Sept. 9, 2016). 2 According to the Appellant, the real party in interest is "Medtronic Ardian Luxembourg S.a.r. l." Appeal Br. 1. Appeal2018-000060 Application 14/203,826 STATEMENT OF THE CASE The Appellant's invention relates generally to catheters and particularly to "neuromodulation catheters including neuromodulation elements configured to deliver energy to nerves at or near a treatment location within a body lumen." Spec. ,r 1. Claims 1, 15, and 22 are the independent claims on appeal. Claim 1 (App. Br. 17 (Claims App.)) is illustrative of the subject matter on appeal and is reproduced below: 1. A neuromodulation catheter, comprising: an elongate shaft; and a neuromodulation element operably connected to the shaft, the neuromodulation element including - an elongate support member, and a plurality of bow springs operably connected to the support member, the individual bow springs including a distal leg and a proximal leg, the distal and proximal legs of the plurality of bow springs being longitudinally interdigitated, wherein the individual bow springs are configured to independently expand radially outward from the support member when the neuromodulation element transitions from a low-profile delivery state to a deployed state. REJECTIONS Claims 1, 2, 6-10, 12-17, 19, 20, and 22-25 stand rejected under 35 U.S.C. Â§ 103 as being unpatentable over Hill et al. (US 2013/0231659 Al, pub. Sept. 5, 2013) ("Hill"). Claims 3 and 4 stand rejected under 35 U.S.C. Â§ 103 as being unpatentable over Hill in view of Katoh et al. (US 2008/0306499 Al, pub. Dec. 11, 2008) ("Katoh"). 2 Appeal2018-000060 Application 14/203,826 Claims 11 and 18 stand rejected under 35 U.S.C. Â§ 103 as being unpatentable over Hill in view of Just et al. (US 2014/0088591 Al, Mar. 27, 2014) ("Just"). Claim 21 stands rejected under 35 U.S.C. Â§ 103 as being unpatentable over Hill in view of Esposito (US 2006/0058598 Al, pub. Mar. 16, 2006). ANALYSIS We agree with the Appellant's contention that the Examiner's rejection under 35 U.S.C. Â§ 103 of the independent claims is in error because the Examiner has not adequately shown that Hill renders obvious the individual bow springs or radial-expansion members configured to expand radially outward from the support member independently of each other, as recited in independent claims 1, 15, and 22. See Appeal Br. 10-11; Reply Br. 2--4. The Examiner finds that Hill's embodiment as depicted in Figure I IA teaches the catheter comprising an elongate shaft and a neuromodulation element including a support member and plurality of bow springs/radial expansion members. See Final Act. 2-3, 6-7, 10. The Examiner acknowledges that this embodiment of Hill does not teach the springs or members expanding independently of each other. Id. at 3, 8, 10. The Examiner relies on a separate embodiment of Hill's, as described in paragraph 45, to cure this deficiency, determining that "[i]t would have been obvious to one of ordinary skill in the art to modify Hill with the independently expanding struts, replacing the pulling mechanism of Hill" as "a known alternative to expand struts to reach tissue to be treated" that "would work equally well to treat the target tissue" and "would allow the 3 Appeal2018-000060 Application 14/203,826 struts to contact tissue without additional input from the user, reducing complexity of the procedure." Id. at 3, 8; see also id. at 11. Hill discloses an ablative catheter system embodiment comprising, in relevant part, pairs of struts 1102, 1104 and 1110, 1112 "fixed proximally and distally and by rings 1106, 1108 [and 1114, 1116]." Hill ,r 72 ( describing Figure 1 lA). The struts may be positioned opposite one another so that when the vessel is expanded, such as by pulling a pull wire, alternating apexes are created. Id. In another embodiment, a nerve modulation assembly may be self-expandable. Id. ,r 45 ( describing Figure 2B). Self-expandable members are formed of material, such as Nitonol, that allows for compression when force is applied and expansion when force is released. Id. Although Hill teaches a catheter system whereby struts/bow springs or radial members may be expanded radially outward from the support member, we do not see, and the Examiner does not adequately explain, how Hill teaches that the struts/members are expanded independently of each other, as required by the claims. As the Appellant points out (Reply Br. 3), Hill is silent about the expansion of the struts or members independently of each other. We disagree with the Examiner's determination that "it is clear to one of ordinary skill in the art that the struts would be independently expandable." Ans. 2-3. Rather, we agree with the Appellant that Hill teaches expanding the vessel of assembly as a whole, but does not discuss or teach expanding the individual members independently. See Reply Br. 3. The Examiner does not adequately show how Hill's discussion of the expansion of the vessel/assembly shows the struts/members expanding, or 4 Appeal2018-000060 Application 14/203,826 are capable of expanding, independently of each other. Cf Ans. 3 ( discussing how/why Hill teaches the struts expanding independently). Accordingly, based on the record before us, we do not sustain the rejection of independent claims 1, 15, and 22, and dependent claims 2, 6-10, 12-14, 16, 17, 19, 20, and 23-25, under 35 U.S.C. Â§ 103 as obvious over Hill. We also do not sustain the rejections under 35 U.S.C. Â§ 103 of dependent claims 3, 4, 11, 18, and 21, which rely on the same findings regarding Hill. See Final Act. 12-14. The additional references used by the Examiner in rejecting these claims do not remedy the deficiencies noted above in Hill. DECISION The Examiner's rejections of claims 1--4 and 6-25 under 35 U.S.C. Â§ 103 are REVERSED. REVERSED 5