Ex Parte MCCLURKEN et al

Patent Trials and Appeals BoardJun 19, 2019

14730925 - (D) (P.T.A.B. Jun. 19, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/730,925 06/04/2015 Michael E. MCCLURKEN 89554 7590 06/21/2019 Christopher & Weisberg, P.A. 1232 N. University Drive Plantation, FL 33322 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. 21819E-397CON2-C2620.USC2 2185 EXAMINER GOOD, SAMANTHA M ART UNIT PAPER NUMBER 3794 NOTIFICATION DATE DELIVERY MODE 06/21/2019 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): ptomail@cwiplaw.com rs.patents.five@medtronic.com cwdocketing@cardinal-ip. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MICHAELE. MCCLURKEN, DAVID LIPSON, ARNOLD E. OYOLA, JONATHAN E. WILSON, CHRISTOPHER W. MAURER, ROBERT LUZZI, and ROGER D. GREELEY Appeal2017-009190 Application 14/730,925 Technology Center 3700 Before EDWARD A. BROWN, NATHAN A. ENGELS, and BRENT M. DOUGAL, Administrative Patent Judges. DOUGAL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants1 appeal under 35 U.S.C. Â§ 134 from a final rejection of claims 138-158 under 35 U.S.C. Â§ 102(e) as being anticipated by Hofmann (US 6,210,411 Bl, iss. Apr. 3, 2001). We have jurisdiction under 35 U.S.C. Â§ 6(b). An oral hearing was held on June 13, 2019. We reverse. 1 According to the Appellants, the real party in interest is Medtronic Advanced Energy LLC. Appeal Br. 1. Appeal2017-009190 Application 14/730,925 CLAIMED SUBJECT MATTER The claims are directed to fluid-assisted medical devices. Claims 138, 150, 157, and 158 are independent. Claim 138, reproduced below, is illustrative of the claimed subject matter: 138. A medical device, comprising: a first shaft defining a first fluid perfusion lumen there through; a second shaft defining a second fluid perfusion lumen there through and immovably coupled to the first shaft, the second shaft being substantially parallel to the first shaft; the first shaft including a first at least partially porous electrode; and the second shaft including a second at least partially porous electrode, the distal end of the first at least partially porous electrode and the distal end of the second at least partially porous electrode defining a substantially co-planar surface. OPINION The Examiner rejects all of the pending claims as anticipated by Hofmann. Final Act. 3-5. Appellants argue and we agree that Hofmann does not teach two shafts that each define a fluid perfusion lumen therethrough, which are immovably coupled to each other and substantially parallel. Appeal Br. 4-11. Each of the independent claims includes one or more of these limitations. For example, each of the independent claims requires "the second shaft being substantially parallel to the first shaft." The Examiner reasons that "the claim does not require that the entire length of each shaft is parallel" and finds that "[p Joint 43 in Figure 6 shows the shafts of Hofmann in a parallel configuration." Ans. 3. 2 Appeal2017-009190 Application 14/730,925 Hofmann Figure 6 showing coagulating forceps is reproduced below, modified to highlight point 43 along one of the shafts 18. There is an identical point 43 on the other shaft 17. Modified Hofmann Figure 6 is a side view of coagulating forceps. As can be seen above, point 43 is a minor portion of shaft 18, as well as of shaft 3 Appeal2017-009190 Application 14/730,925 1 7. We are not persuaded that one skilled in the art would understand shaft 1 7 and shaft 18 to be substantially parallel to each other based on a single point at 43 on each shaft, as asserted by the Examiner. See In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (explaining that we give claims "their broadest reasonable construction 'in light of the specification as it would be interpreted by one of ordinary skill in the art."'). Further, Hoffman is directed to forceps with shafts 17 and 18 that are designed to be moveable with respect to one another. The shafts are coupled together, however, we are not persuaded that one skilled in the art would understand that the shafts 17, 18 of a pair of forceps are immovably coupled to each other as required by the claims. Rather, it is through movement of the shafts that the forceps operate. For these reasons we do not sustain the rejection of the claims. DECISION The Examiner's rejection of claims 13 8-15 8 is reversed. REVERSED 4