Ex Parte Scholl et alDownload PDFPatent Trial and Appeal BoardApr 15, 201311717273 (P.T.A.B. Apr. 15, 2013) Copy Citation 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. 11/717,273 03/12/2007 John A. Scholl END-5450USCNT2 8331 21884 7590 04/15/2013 WELSH FLAXMAN & GITLER LLC 2000 DUKE STREET, SUITE 100 ALEXANDRIA, VA 22314 EXAMINER PEFFLEY, MICHAEL F ART UNIT PAPER NUMBER 3739 MAIL DATE DELIVERY MODE 04/15/2013 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte JOHN A. SCHOLL, DUANE W. MARION, GEORGE A. MORRISON, and JEFFREY A. SMITH __________ Appeal 2012-002164 Application 11/717,273 Technology Center 3700 __________ Before TONI R. SCHEINER, JACQUELINE WRIGHT BONILLA, and SHERIDAN K. SNEDDEN, Administrative Patent Judges. SNEDDEN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims to a method for controlling the movement of an electrosurgical electrode of an electrosurgical device within a target tissue. The Examiner has rejected the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal 2012-002164 Application 11/717,273 2 STATEMENT OF THE CASE Appellants’ invention “provides a system that includes a means for monitoring the appropriate time to initiate movement of the cutting device” (Specification 3, ¶[0006]). “Of specific concern in a procedure requiring the cutting or excision of tissue is the creation of an arc at the electrode, since an arc permits the vaporization of tissue, which is the phenomenon that creates the cut” (id. at 2, ¶ [0003]). The method of the invention is summarized in the following passage: An electrical characteristic associated with the electrosurgical electrode is monitored while the electrode is moved. The speed of the electrosurgical electrode can be adjusted based on the monitoring step in order to maintain an effective arc. The electrical characteristic being monitored may be any one, or a combination, of the following: electrical impedance, a change in electrical impedance, voltage, a change in voltage, current, or a change in current. (Id. at 8, ¶ [0019].) Claims 1-19 are on appeal. Claim 1, the only independent claim on appeal, is representative and reads as follows (emphasis added): 1. A method for controlling the movement of an electrosurgical electrode of an electrosurgical device within a target tissue comprising: inserting the electrosurgical electrode into the target tissue; moving the electrosurgical electrode to a radially extended, outwardly bowed, operational state; initiating the delivery of energy to the electrosurgical electrode to create a cutting arc for cutting a target tissue; rotating the electrosurgical electrode; monitoring an electrical characteristic associated with the electrosurgical electrode while rotating the electrosurgical electrode; and Appeal 2012-002164 Application 11/717,273 3 adjusting the energy delivered to the electrosurgical electrode based upon the monitoring step so to at least help maintain an effective cutting arc. The claims stand rejected as follows: I. Claims 1-19 under 35 U.S.C. § 103(a) over the combination of Burbank 1 and Ein-Gal. 2 The Examiner has also rejected claims 1-19 under the judicially- created doctrine of obviousness-type double patenting as being unpatentable over claims 1-20 of US 7,189,232 and claims 1-53 of US 7,060,063. Appellant has not traversed the merits of these rejections. We therefore summarily affirm them. See MANUAL OF PATENT EXAMINING PROCEDURE § 1205.02 (“If a ground of rejection stated by the examiner is not addressed in the appellant’s brief, that ground of rejection will be summarily sustained by the Board.”). Issue - Obviousness The Examiner finds that Burbank “fails to disclose the step of monitoring an electrical characteristic of the electrode and adjusting the energy delivered to the electrode based on the measured characteristic” (Ans. 4.) The Examiner relies on the disclosure of Ein-Gal for the missing element. Here, the Examiner finds that Ein-Gal discloses the use of sensed characteristics (e.g., temperature or impedance) “in a closed feedback loop in concert with a moving electrode to control RF energy and/or speed of rotation to control cutting of tissue,” where “the feedback is provided to 1 Burbank et al., US 6,676,658 B2, issued Jan. 13, 2004. 2 Ein-Gal, US 6,497,704 B2, issued Dec. 24, 2002. Appeal 2012-002164 Application 11/717,273 4 ensure the rotating electrode is provided with optimal RF energy and/or speed to provide effective treatment” (Ans. 7). In reaching a conclusion of obviousness, the Examiner reasons that To have provided the Burbank et al device with a means to monitor electrical characteristics, such as impedance, for providing feedback to control the delivery of RF energy to a rotating electrode would have been an obvious modification for the skilled artisan since Ein-Gal fairly teaches it is known to provide such a feedback mechanism for a rotating electrode. (Id. at 5.) Appellants contend that “the application of RF energy in Ein-Gal is concerned with the ablation of tissue in the creation of thermal lesions during surgical procedures” and “not for the purpose of maintaining an effective cutting arc in a cutting member” (App. Br. 8). “[T]he electrode of Ein-Gal rotates and has a controlled level of RF energy based upon sensed characteristics,” but this does not relate to or suggest the step of monitoring an electrical characteristic associated with an electrosurgical electrode that has been energized to form a cutting arc while rotating the surgical electrode and adjusting the energy delivered to the electrosurgical electrode based upon the monitoring step so as to at least help maintain an effective cutting arc. (Reply Br. 2.) The issue presented is: Does the evidence of record support the Examiner’s finding that the combined prior art discloses a method requiring adjusting the energy Appeal 2012-002164 Application 11/717,273 5 delivered to the electrosurgical electrode based upon a monitoring step so to at least help maintain an effective cutting arc as recited in claim 1? Findings of Fact The following findings of fact (“FF”) are supported by a preponderance of the evidence of record. FF1. Burbank relates to a treatment process that includes “the step of applying a tool charged with radio frequency energy to the tissue specimen” (Burbank col. 2, ll. 63-65). FF2. Figure 1 of Burbank is reproduced below: “FIG. 1 shows a side view tissue specimen isolating and damaging device using radio frequency energized wires” (id. at col. 3, ll. 30-33). With reference to Figure 1, Burbank discloses as follows: Located at the distal end 16 of the wand 12 is an operational portion 20 of the device 10. The operational portion 20 is involved with both isolating and damaging the tissue specimen. In the shown embodiment, an outwardly radially bowed wire 22 isolates the tissue specimen. The wire 22 is disposed at the operational portion 20 and rotationally connected to the wand 12. In the shown embodiment of the invention, the wire 22 is initially in a retracted position against the wand 12 (not shown) to reduce trauma to surrounding tissue during placement of the device 10. The wire 22 is extended outward radially after the operational portion 20 is disposed in or proximate to the tissue specimen. Appeal 2012-002164 Application 11/717,273 6 (Id. at col. 4, ll. 9-21.) FF3. Burbank further discloses as follows: Continuing to refer to FIG. 1, radio frequency wires 28 that extend from the operational portion 20 of the device 10 are used to damage the tissue specimen. The wires 28 are initially in a retracted position in wand 12 or disposed on the wand 12. Either before, during, or after the isolation of the tissue specimen, the wires 28 are extended as shown and enter the tissue specimen. In a preferred embodiment of the invention, the wires 28 are disposed in the wand 12 and are extended prior to isolation of the tissue specimen. The extended wires 28 anchor the device 10 in the tissue specimen, resulting in a more precise isolation of the specimen. Other embodiments of the invention may have other methods or mechanisms for anchoring the device 10 in the tissue specimen. (Id. at col. 4, l. 60, to col. 5, l. 6.) FF4. Burbank discloses as follows: When energized, the radio frequency wires 28 damage the tissue specimen by causing the water molecules in the tissue specimen to vibrate and rapidly vaporize. The rapid vaporization results in the destruction of cells in the tissue specimen, thus damaging the specimen. The rapid vaporization is a form of thermal treatment. The radio frequency wires may be mono- or bi-polar. (Id. at col. 5, ll. 16-22.) FF5. Ein-Gal discloses an electrosurgical apparatus that “comprises a manipulator that moves electrodes in a controlled manner while RF power is delivered to the electrodes” (Ein-Gal, col. 4, ll. 49-54). FF6. “[T]he RF electrode may ablate during controlled motion thereof,” where the “motion helps prevent tissue-electrode adhesion” (id.). Appeal 2012-002164 Application 11/717,273 7 FF7. Ein-Gal discloses an “[e]lectrosurgical apparatus including a plurality of electrodes adapted to deliver radio frequency (RF) energy to a tissue” (Ein-Gal, Abstract). FF8. Figure 5 of Ein-Gal is reproduced below: Figure 5 “illustrates a central rod 70 passed through the helix of electrode 52” (id. at col. 9, ll. 50-51). FF9. Ein-Gal discloses as follows: As seen in FIG. 5, a sensor 72 may be placed at a distal portion of electrode 52 (or electrode 12 of FIG. 1). Sensor 72, which may be in communication with controller 34 via a wire 74 running through electrode 52, may be used in a closed-loop control of apparatus 50 (or 10), by feeding back information to controller 34. For example, sensor 72 may be a temperature sensor, such as a thermocouple or thermistor, and controller 34 controls RF energy levels or movement of the electrode in accordance with the sensed temperature so as to avoid over- ablation or tissue adherence. (Id. at col. 9, ll. 58-67.) FF10. Ein-Gal discloses as follows: Controller 34 may control RF energy levels or movement of the electrode in accordance with the sensed electrical parameters so as to avoid over-ablation or tissue adherence. For example, the velocity of the electrode motion may be controlled in a closed- loop fashion with an impedance measurement made by sensor 72. (Id. at col. 10, ll. 4-9.) Appeal 2012-002164 Application 11/717,273 8 Principles of Law “[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR Int’l v. Teleflex Inc., 550 U.S. 398, 418 (2007). However, a prima facie conclusion of obviousness may be supported by a showing that a combination of familiar elements according to known methods yields no more than predictable results. Id. at 401; citing United States v. Adams, 383 U.S. 39, 50-52 (1966). Furthermore, the Supreme Court has emphasized that “the [obviousness] analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” Id. at 418. “If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability.” Id. at 417. An attorney argument is not evidence unless it is an admission, because “[a]n assertion of what seems to follow from common experience is just attorney argument and not the kind of factual evidence that is required to rebut a prima facie case of obviousness.” In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (citations omitted). See also, In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s argument in a brief cannot take the place of evidence.”) Analysis We find that the Examiner has set forth a prima facie case of obviousness that has not been adequately rebutted by Appellants. The Examiner has provided a rational basis for combining the cited references, Appeal 2012-002164 Application 11/717,273 9 where the proposed modifications address each disputed element of claim 1 and are supported by the findings of fact. The fact that Ein-Gal discloses monitoring and adjusting radio frequency (RF) energy delivered to an ablation instrument does not persuade us that this component could not be adapted for use with the device of Burbank, which discloses a tool charged with RF energy for the purpose of cutting tissue. Appellants have not presented any evidence to establish that the references are incapable of being combined as set forth by the Examiner to achieve the method of claim 1. In re Pearson, 494 F.2d at 1405 (“Attorney’s argument in a brief cannot take the place of evidence.”) We thus find that the Examiner has expressed a proper reason for the combination of the cited references, namely, the combination of familiar elements in a manner that yields no more than predictable results. KSR, 550 U.S. at 401. Conclusion of Law The preponderance of the evidence of record supports the Examiner’s conclusion that the combined teachings of the cited prior art disclose a method having all limitations of independent claim 1. Claims 2-19 fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii). SUMMARY We affirm the rejection of claims 1-19 under 35 U.S.C. § 103(a) over the combination of Burbank and Ein-Gal. We affirm the rejection of claims 1-19 on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-20 of US 7,189,232. Appeal 2012-002164 Application 11/717,273 10 We affirm the rejection of claims 1-19 on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-53 of US 7,060,063. AFFIRMED cdc Copy with citationCopy as parenthetical citation