Ex Parte Ostrovsky et al

Patent Trial and Appeal Board

Aug 22, 2017

13608613 (P.T.A.B. Aug. 22, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/608,613 09/10/2012 Isaac OSTROVSKY 10124/08004(08-00006US3) 8780
104919 7590 08/24/2017
Fay Kaplun & Marcin, LLP — BSC
150 Broadway, suite 702
New York, NY 10038
EXAMINER
NGUYEN, HIEN NGOC
ART UNIT PAPER NUMBER
3777
NOTIFICATION DATE DELIVERY MODE
08/24/2017 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):
okaplun@fkmiplaw.com
fkmiplaw @ yahoo. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ISAAC OSTROVSKY, VICTOR SHUKHAT, and JAMIE LI
Appeal 2016-0053041
Application 13/608,613
Technology Center 3700
Before RICHARD J. SMITH, JOHN E. SCHNEIDER,
and DEVON ZASTROW NEWMAN, Administrative Patent Judges.
SCHNEIDER, Administrative Patent Judge.
DECISION ON APPEAL
This is an Appeal under 35 U.S.C. § 134(a) involving claims to a
device for thermally treating tissue which have been rejected as obvious.
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
STATEMENT OF THE CASE
Heated fluids have been employed for thermal treatment of tissue such
as ablation. Spec. 12. To ensure even temperature distribution, the fluid
used is often agitated and circulated using an external heater and pump. Id.
1 Appellants identify Boston Scientific Scimed, Inc., as the real party in
interest. Appeal Br. 2.
Appeal 2016-005304
Application 13/608,613
During operation, however, the external pump or heater may become
clogged with tissue, reducing the circulation of the fluid and the uniformity
of the ablation. Id. The Specification discloses a device for delivering heat
and agitation to a liquid. Spec. 13.
Claims 19—38 are on Appeal. Claim 19 below is representative of the
rejected claims and reads as follows:
19. A device for thermal treatment of tissue, comprising:
an elongated member extending from a proximal end to a
distal end insertable to a target position within a body;
a housing coupled to the distal end of the elongated
member sized and shaped for insertion to a target organ within
a living body, the housing including an opening permitting fluid
surrounding the housing to enter the housing, the housing
further including first and second deflecting elements mounted
therein and shaped to diffuse pulses of fluid directed
thereagainst;
and
a piezoelectric element mounted within the housing
between the first and second deflecting elements, the
piezoelectric element being oriented to generate pulses in liquid
received within the housing toward the first and second
deflecting elements.
The claims stand rejected as follows:
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Appeal 2016-005304
Application 13/608,613
Claims 19—23, 25, 26, 28—36,2 and 38 have been rejected under 35
U.S.C. § 103(a) as unpatentable over Crowley,3 in view of Toda,4 and in
further view of Hanesian.5
Claims 24 and 37 have been rejected under 35 U.S.C. § 103(a) as
unpatentable over Crowley in view of Toda and in further view of Hanesian
and Babaev.6
Claim 27 has been rejected under 35 U.S.C. § 103(a) as unpatentable
over Crowley in view of Toda and in further view of Hanesian, Sliwa,7 and
Quan.8
THE FIRST OBVIOUSNESS REJECTION
Issue
The issue with respect to this rejection is whether a preponderance of
the evidence supports the Examiner’s conclusion that claims 19—23, 25, 26,
28—36, and 38 would have been obvious over Crowley combined with Toda
and Hanesian.
The Examiner finds that Crowley discloses an ultrasound device with
an elongated body that can be inserted into a target position in a body. Final
Act. 3. The Examiner finds that Crowley teaches that the device has a
2 On page 2 of the Final Action, the Examiner does not include claim 29 in
the rejection. Final Act. 2 (mailed [date]). However, later, the Examiner
applies the combined references to claim 29. Id. at 4. We therefore treat
claim 29 as included in this rejection.
3 Crowley, US 5,655,537, issued Aug. 12, 1997 (“Crowley”).
4 Toda, US 2008/0007142 Al, published Jan. 10, 2008 (“Toda”).
5 Hanesian et al., US 5,984,578, issued Nov. 16, 1999 (“Hanesian”)
6 Babaev, US 2009/0014550 Al, published Jan. 15, 2009 (“Babaev”).
7 Sliwa, Jr. et al., US 5,771,896, issued June 30, 1998 (“Sliwa”).
8 Quan et al., US 2003/0062056 Al, published Apr. 3, 2003 (“Quan”).
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Application 13/608,613
housing with openings that permit the flow of fluids into the housing. Id.
The Examiner finds that Crowley teaches a deflecting element within the
housing. Id. The Examiner finds that Toda teaches the use of two deflecting
elements shaped to diffuse pulses of fluid directed against the deflecting
elements and a piezoelectric element placed between the two deflecting
elements. Id. The Examiner finds that Hanesian discloses locating
deflecting elements within a housing. Id. at 3^4. The Examiner concludes
that
[i]t would have been obvious to one of ordinary skill in the art
at the time of the invention to modify Crowley to include a
housing having first and second deflecting elements mounting
therein as taught by Toda and Hanesian because the reflector
enable the device to control or focus energy onto the treatment
area.
Id. at 4.
Appellants contend that neither Crowley nor Toda teach the use of
two deflectors mounted within a housing. Appeal Br. 5. Appellants also
argue that there is no motivation to combine the teachings of Hanesian with
Toda and Crowley because Hanesian is nonanalogous art. Id. Appellants
contend that one skilled in the art of thermal treatment of tissue would not
look to a reference like Hanesian that relates to removal of contaminants
from soil and rock formations. Id.
Principles of Law
“Obviousness requires more than a mere showing that the prior art
includes separate references covering each separate limitation in a claim
under examination.” Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352,
1360 (Fed. Cir. 2011). “Rather, obviousness requires the additional showing
that a person of ordinary skill at the time of the invention would have
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Application 13/608,613
selected and combined those prior art elements in the normal course of
research and development to yield the claimed invention.” Id..
“Two criteria have evolved for determining whether prior art is
analogous: (1) whether the art is from the same field of endeavor, regardless
of the problem addressed; and (2) if the reference is not within the field of
the inventor’s endeavor, whether the reference still is reasonably pertinent to
the particular problem with which the inventor is involved.” In re Clay, 966
F.2d 656, 658-59 (Fed. Cir. 1992).
“A reference is reasonably pertinent if, even though it may be in a
different field from that of the inventor's endeavor, it is one which, because
of the matter with which it deals, logically would have commended itself to
an inventor's attention in considering his problem.” Id. at 659.
Analysis
Appellants have the better position. While each of the elements in the
claims can be found in the references, the Examiner has not shown how
Hanesian would have come to the inventor’s attention in considering the
problem addressed by the present invention. As Appellants point out, the
present invention is directed to thermal treatment of body tissues and
Hanesian is directed to removal of contaminants from rock formations.
Appeal Br. 5.
The situation is analogous to that in In re Oetiker, 977 F.2d 1443
(Fed. Cir. 1992). In Oetiker, the claims were directed to a metal hose clamp.
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Application 13/608,613
Id. at 1446. The cited art was to a fastener for apparel. Id. The Board
affirmed the rejection finding that the art addressed similar problems. Id.
Our reviewing court reversed, holding that the Examiner had not shown why
one skilled in the art “would reasonably be expected or motivated to look to
fasteners for garments to solve a problem with hose clamps.” Id. at 1447.
In the present case, the Examiner has not shown why one skilled in
the art would have been motivated to combine the teachings of the
references — specifically including Hanesian — to make the device recited in
the claims. The Examiner’s position is that the references teach all of the
elements of the claims. Ans. 9. We are unpersuaded. The fact that the
individual elements are present in the art is not enough.
An invention “composed of several elements is not proved obvious
merely by demonstrating that each of its elements was, independently,
known in the prior art. Although common sense directs one to look with
care at a patent application that claims as innovation the combination of two
known devices according to their established functions, it can be important
to identify a reason that would have prompted a person of ordinary skill in
the relevant field to combine the elements in the way the claimed new
invention does.” KSR Inti Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
To avoid hindsight reconstruction, the Examiner must also show some
motivation to combine the references including why one skilled in the art
would look to Hanesian to solve the problem considered by the inventor. In
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Application 13/608,613
the present case, the Examiner has offered no evidence or reasoning to
support the combination of the references.
Conclusion of Law
We conclude that a preponderance of the evidence does not support
the Examiner’s conclusion that claims 19—23, 25, 26, 28—36, and 38 would
have been obvious over Crowley combined with Toda and Hanesian.
THE REMAINING OBVIOUSNESS REJECTIONS
The remaining rejections rely on the combination of Crowley, Toda,
and Hanesian as well as additional references. For the reasons stated above,
we find that the Examiner has failed to adequately explain the reasoning for
combining Crowley, Toda, and Hanesian. Therefore, we reverse the
rejections of claims 24, 27, and 37.
SUMMARY
We reverse the rejections under 35 U.S.C. § 103(a).
REVERSED
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