Ex Parte Raatikka et al

Patent Trials and Appeals Board

Jan 31, 2019

14258388 - (D) (P.T.A.B. Jan. 31, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/258,388 04/22/2014
94678 7590 02/04/2019
Armstrong Teasdale LLP (32736)
7700 Forsyth Boulevard
Suite 1800
St. Louis, MO 63105
FIRST NAMED INVENTOR
Amy Rochelle Raatikka
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.
CD-783US2 6731
EXAMINER
OUYANG,BO
ART UNIT PAPER NUMBER
3794
NOTIFICATION DATE DELIVERY MODE
02/04/2019 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):
USpatents@armstrongteasdale.com
ASJM_Patents@abbott.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AMY ROCHELLE RAATIKKA, PAUL AARON BELK, and
MANUEL TOBIAS CAJAMARCA
Appeal 2018-003334
Application 14/258,388
Technology Center 3700
Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and
BRANDON J. WARNER, Administrative Patent Judges.
WARNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
St. Jude Medical, Cardiology Division, Inc. ("Appellant") 1 appeals
under 35 U.S.C. § 134(a) from the Examiner's decision rejecting
claims 1-14, 25, and 27. See Appeal Br. 1. Claims 15-21 have been
withdrawn, and claims 22-24 and 26 have been canceled. See id. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
St. Jude Medical, Cardiology Division, Inc., a subsidiary of Abbott
Laboratories, is the applicant, as provided in 37 C.F.R. § 1.46, and is
identified as the real party in interest. Appeal Br. 1.
Appeal2018-003334
Application 14/258,388
CLAIMED SUBJECT MATTER
Appellant's disclosed subject matter "relates generally to a catheter
system for use in a human body." Spec. ,r 2. Claims 1 and 8 are
independent. Claim 1, reproduced below, is illustrative of the subject matter
on appeal.
1. An electrode assembly for an electrode catheter system,
the electrode assembly having a longitudinal axis, a proximal
end and a distal end, the electrode assembly comprising:
a plurality of struts each extending from the proximal end
to the distal end of the electrode assembly, each strut at least in
part spiraling about the longitudinal axis of the electrode
assembly intermediate the proximal end and the distal end of
the electrode assembly and having a corresponding electrode
disposed thereon intermediate said proximal and distal ends of
the electrode assembly, wherein the electrode assembly is
configurable between a collapsed configuration and an
expanded configuration, the electrodes being transversely
spaced from the longitudinal axis of the electrode assembly a
greater distance in the expanded configuration than in the
collapsed configuration, in the expanded configuration the
electrodes being transversely equally spaced from the
longitudinal axis of the electrode assembly, each strut of the
plurality of struts having cutouts that define a plurality of
hinges in the strut, wherein for each hinge of the plurality of
hinges, two cutouts are formed on opposite sides of the strut.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Daulton
Danaek
US 6,322,559 B 1
US 2003/0233099 Al
2
Nov. 27, 2001
Dec. 18, 2003
Appeal2018-003334
Application 14/258,388
Steinke
Forster
de la Rama
Ku
US 2005/0096647 Al
US 2009/0099554 Al
US 2010/0076426 Al
US 2014/0276748 Al
REJECTIONS
The following rejections are before us for review: 2
May 5, 2005
Apr. 16, 2009
Mar. 25, 2010
Sept. 18, 2014
I. Claims 1-3, 7, 8, 10, 11, 14, 25, and 27 stand rejected under
35 U.S.C. § 103 as being unpatentable over Ku, de la Rama,
and Forster. Ans. 2.
II. Claims 4 and 9 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Ku, de la Rama, Forster, and Steinke. Id.
III. Claims 5 and 12 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Ku, de la Rama, Forster, and Daulton. Id.
IV. Claims 6 and 13 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Ku, de la Rama, Forster, and Danaek. Id.
2 In the Advisory Action dated July 7, 2017, the Examiner entered
Appellant's after-final claim amendment, which canceled claim 26 and
added its limitation to independent claims 1 and 8, and indicated that
independent claim 1 would be rejected as unpatentable over a combination
of Ku, de la Rama, and Forster. See Advisory Act. 1-2; compare
Amendment dated June 2, 2017, with Amendment dated March 9, 2017. In
the Answer, the Examiner lists the grounds of rejection, as modified by the
Advisory Action, that are applicable to the appealed claims. See Ans. 2.
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Appeal2018-003334
Application 14/258,388
ANALYSIS
Rejection I- Claims 1-3, 7, 8, 10, 11, 14, 25, and 27
as unpatentable over Ku, de la Rama, and Forster
Claims 1-3. 7. 8. 10. 11. 14. and 27
Appellant presents arguments for independent claim 1 (see Appeal
Br. 4--5), and relies on the same arguments for independent claim 8 and
dependent claims 2, 3, 7, 10, 11, 14, and 27 (see id. at 6). We select
claim 1 as representative of the issues that Appellant presents together, and
claims 2, 3, 7, 8, 10, 11, 14, and 27 stand or fall therewith. See 37 C.F.R.
§ 4I.37(c)(l)(iv).
In rejecting claim 1, the Examiner found that Ku discloses an
electrode assembly that includes, in relevant part, "a plurality of struts ...
spiraling about the longitudinal axis of the electrode assembly intermediate
the proximal end and the distal end of the electrode assembly (struts 26a
and 26b between the distal end and proximal end of the electrode
assembly)." Final Act. 3. The Examiner acknowledged that "Ku is silent
regarding each strut of the plurality of struts having cutouts that define a
plurality of hinges in the strut," but found that de la Rama discloses "struts
having cutouts defining hinges in the strut (par. [0041 ], smaller cross
sectional area)." Id. The Examiner concluded that, given the teachings of
the prior art, it would have been obvious "to modify Ku with the hinges of
[d]e [l]a Rama at points where the struts of Ku (26a-b) are most flexed, in
order to allow for facilitated bending of the struts to assume an expanded
shape (as in par. [0041] of [d]e [l]a Rama)." Id. at 4.
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Appeal2018-003334
Application 14/258,388
With respect to the amended language in claim 1 that previously
appeared in canceled claim 26, 3 the Examiner acknowledged that "Ku is
silent regarding wherein for each hinge of the plurality of hinges, two
cutouts are formed on opposite sides of the strut." Id. at 11. However, the
Examiner found that Forster discloses "a variety of hinges that have cutouts
on either side of a material (spaces 608 are cutouts that allow for flexibility
as shown in Fig. 6B and par. [0058]) in order to create a hinge for
flexibility." Id. The Examiner concluded that, given the teachings of the
prior art, it would have been obvious "to modify Ku and [de] [l]a Rama such
that the hinges have the hinge cutouts of Forster, in order to allow for living
hinges to increase the flexibility of the hinge (par. [0058])." Id. at 11-12.
Appellant argues that "Forster clearly does not teach or suggest
cutouts formed on opposite sides of an electrode strut, as recited in amended
claim 1," because "gaps 608 in Forster are formed in a tubular torque
shaft 600." Appeal Br. 5 (boldface omitted). This argument against Forster
alone is not persuasive because it attacks Forster individually when the
rejection, as modified by the Advisory Action, is predicated upon a
combination of prior art disclosures. See In re Merck & Co., 800 F.2d 1091,
1097 (Fed. Cir. 1986) (citing In re Keller, 642 F.2d 413,425 (CCPA 1981))
(nonobviousness cannot be established by attacking references individually
when the rejection is predicated upon a combination of prior art disclosures).
Here, as discussed supra, the Examiner's rejection is based on the
combined teachings of Ku, de la Rama, and Forster. See Final Act. 4,
11-12; Advisory Act. 2. The Examiner relied on Ku and de la Rama, not
3 See footnote 2, supra.
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Appeal2018-003334
Application 14/258,388
Forster, for disclosing electrode struts. See Final Act. 3--4; Advisory Act. 2.
The Examiner relied on Forster only for disclosing the use of living hinges
formed by cutouts on the sides of a material. See Final Act. 11-12. Thus,
Appellant's allegation of differences or shortcomings of Forster alone is not
responsive to the rejection as articulated by the Examiner.
Appellant also argues that "Forster is wholly unrelated to expandable
electrode assemblies, but is instead directed to a torque shaft for delivering
an implant." Appeal Br. 5 (boldface omitted). According to Appellant,
"Forster describes devices featuring curves, but not hinges, wherein the cuts
facilitate the curvature of a device in torsion." Reply Br. 2 ( emphasis
omitted). This line of argument is unpersuasive.
The Examiner explains that "Forster is concerned with hinges and
improving flexibility of tubular shafts for surgery, especially elongate
flexible instruments for a variety of applications (par. [0003]), not just
torque instruments." Ans. 2. In particular, Forster "relate[s] generally to
elongate flexible instruments, and more particularly, to the manufacture and
use of such elongate flexible instruments, which may be configured to be
extension tools for a variety [ of] deployment, placement, installation,
maintenance, repair, or removal type of functions, procedures, operations, or
applications." Forester ,r 3.
Forster also discloses an embodiment having "a plurality of sections
or segments (402a, 402b, and 402c) physically connected together by
living hinges (404)." Id. ,r 53 (boldface omitted). These "living hinge
elements (404) allow adjacent segments (402a, 402b, 402c) to flex, bend, or
pivot relative to each [other]." Id. ,r 54 (boldface omitted). The positioning
of the living hinge elements "allows the torque shaft ( 400) to flex, bend, or
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Appeal2018-003334
Application 14/258,388
pivot in a substantially smooth, fluid, or substantially unencumbered manner
in various directions, e.g., X, Y, and Z directions." Id. (boldface omitted).
The embodiment of Figure 6 "provides similar benefits to the torque shaft
construction previously discussed." Id. ,r 57. In this regard, Appellant does
not persuasively refute the Examiner's position that"[ o ]ne of ordinary skill
in the art would look to a reference such as Forster to determine details of
hinge mechanisms to apply to the electrodes to result in the flexibility
required, given that Forster is similarly concerned with creating flexibility in
metal elongate surgical devices." Ans. 3.
After careful consideration of the evidence of record, Appellant's
arguments do not apprise us of error in the Examiner's findings or reasoning
in support of the conclusion of obviousness. Accordingly, we sustain the
rejection of claim 1, and of claims 2, 3, 7, 8, 10, 11, 14, and 27 falling
therewith, under 35 U.S.C. § 103 as unpatentable over Ku, de la Rama, and
Forster.
Claim 25
In contesting the rejection of claim 25, Appellant initially relies on the
arguments set forth with respect to independent claim 1, from which
claim 25 depends. See Appeal Br. 5. For the same reasons that Appellant's
arguments do not apprise us of error in the rejection of claim 1, these
arguments likewise do not apprise us of error in the rejection of claim 25.
In addition, Appellant asserts that "claim 25 recites a V-shaped cutout,
not a V-shaped hinge." Id. (boldface and italics omitted). According to
Appellant, "the shape formed by the folded spine segments in [d]e [l]a Rama
... is distinct and different from the shape of any cutouts used to form a
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Appeal2018-003334
Application 14/258,388
hinge between the folded spine segments." Id. (boldface and italics
omitted). This argument is unpersuasive because it is not responsive to the
rejection presented, as modified by the Advisory Action.
Here, the Examiner found that "Forster teaches u[-]shaped cutouts as
in Figs. 6a-b, where the cutouts have au shape in taking an arc-length of the
tube." Advisory Act. 2; see also Ans. 3 (explaining that "Forster is used to
teach U[-]shaped cutouts[,] as in Figs. 6a-b, where the cutouts have a U
shape taking an arc-length of the tube, as a way to improve the flexibility of
the electrode strut of Ku"). Appellant's allegation of differences or
shortcomings within de la Rama individually is not responsive to the
rejection articulated by the Examiner and thus does not apprise us of error.
See Merck, 800 F.2d at 1097 (citing Keller, 642 F.2d at 425).
For the foregoing reasons, Appellant's arguments do not apprise us of
error in the Examiner's determination that the subject matter of claim 25
would have been obvious. Accordingly, we sustain the rejection of claim 25
under 35 U.S.C. § 103 as unpatentable over Ku, de la Rama, and Forster.
Rejections II-IV - Claims 4-6, 9, 12, and 13
as unpatentable over Ku, de la Rama, Forster,
and one of Steinke, Daulton, and Danaek
With respect to the rejections of claims 4---6, 9, 12, and 13, which
depend directly or indirectly from one of independent claims 1 and 8,
Appellant does not set forth any additional substantive arguments separate
from those discussed supra with respect to Rejection I. See Appeal Br. 6-7.
For the same reasons that Appellant's arguments do not apprise us of error in
Rejection I, these arguments likewise do not apprise us of error in
Rejections II-IV.
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Application 14/258,388
Accordingly, for the foregoing reasons, we sustain the rejections of
claims 4--6, 9, 12, and 13 under 35 U.S.C. § 103.
DECISION
We AFFIRM the Examiner's decision rejecting claims 1-3, 7, 8, 10,
11, 14, 25, and 27 under 35 U.S.C. § 103 as being unpatentable over Ku,
de la Rama, and Forster.
We AFFIRM the Examiner's decision rejecting claims 4 and 9 under
35 U.S.C. § 103 as being unpatentable over Ku, de la Rama, Forster, and
Steinke.
We AFFIRM the Examiner's decision rejecting claims 5 and 12 under
35 U.S.C. § 103 as being unpatentable over Ku, de la Rama, Forster, and
Daulton.
We AFFIRM the Examiner's decision rejecting claims 6 and 13 under
35 U.S.C. § 103 as being unpatentable over Ku, de la Rama, Forster, and
Danaek.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a). See 3 7 C.F .R.
§ 1.136(a)(l )(iv).
AFFIRMED
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