Ex Parte Scholl et al

Patent Trial and Appeal Board

Apr 15, 2013

11717273 (P.T.A.B. Apr. 15, 2013)

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