Ex Parte Sobe

Patent Trials and Appeals Board

Feb 27, 2019

12843095 - (D) (P.T.A.B. Feb. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/843,095 07/26/2010
67337 7590 03/01/2019
DYKEMA GOSSETT PLLC (STJ)
4000 Wells Fargo Center
90 South Seventh Street
Minneapolis, MN 55402
FIRST NAMED INVENTOR
Lior Sobe
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.
OK-042300US/065513-000232 5493
EXAMINER
TON, MARTIN TRUYEN
ART UNIT PAPER NUMBER
3771
NOTIFICATION DATE DELIVERY MODE
03/01/2019 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):
ASJM_Patents@abbott.com
MN-IPMail@dykema.com
Patents@dykema.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LIOR SOBE
Appeal2018-003185
Application 12/843,095
Technology Center 3700
Before KEVIN F. TURNER, DANIELS. SONG, and BRETT C. MARTIN,
Administrative Patent Judges.
MARTIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner's
rejection of claims 1-5, 9, 10, 12, 13, 16-21, 24, and 26-36, which are the
only claims currently pending. Final Act. 2. We have jurisdiction under 35
U.S.C. § 6(b).
We REVERSE.
Appeal2018-003185
Application 12/843,095
THE INVENTION
Appellant's claims are directed generally "to a removable navigation
system for a medical device and a navigation method for a medical device
within a body." Spec. ,r 1. Claim 24, reproduced below, is illustrative of the
claimed subject matter:
24. A medical navigation device, comprising:
a sheath comprising a material, the sheath configured to
cover at least a portion of a medical device configured for
navigation in a body lumen of a patient, wherein the sheath
comprises a first opening, a second opening, and a lumen
therebetween, wherein the first opening, the second opening, and
the lumen are each sized and configured such that a portion of
the medical device may removably pass therethrough; and
a positioning sensor comprising an electromagnetic coil
affixed within the material of the sheath so that the sheath and
the positioning sensor are removable from the medical device
and from the body lumen while the medical device remains in
the body lumen, wherein the electromagnetic coil is sized and
configured such that a portion of the medical device may
removably pass therethrough, and wherein the electromagnetic
coil is electrically coupled to conductors extending
longitudinally along the sheath from the electromagnetic coil to
a sheath proximal end located outside of the body lumen and
patient while the medical device remains in the body lumen so as
to enable connection of the conductors to a navigation and
tracking system, and
wherein the electromagnetic coil is sized and configured
to produce a signal that can be interpreted by a signal processing
unit and such that a portion of the medical device may pass
therethrough.
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Application 12/843,095
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Frassica
Atalar
Bell
Gettman
us 5,318,532
US 6,628,980 B2
US 2008/0171989 Al
US 2011/0282144 Al
REJECTIONS
The Examiner made the following rejections:
Jun. 7, 1994
Sep.30,2003
Jul. 17, 2008
Nov. 17, 2011
Claims 2, 5, 24, and 27-35 stand rejected under 35 U.S.C. § I02(b) as
being anticipated by Atalar. Final Act. 5.
Claims 1, 9, 12, 13, 16-20, and 26 stand rejected under 35 U.S.C.
§ I03(a) as being unpatentable over Atalar and Frassica. Final Act. 8.
Claims 3, 4, and 36 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over Atalar and Gettman. Final Act. 11.
Claims 10 and 21 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over Atalar, Frassica, and Bell. Final Act. 12.
ANALYSIS
Appellant argues that "nothing in Atalar teaches or suggests that the
sleeve may be removed from the body while the medical device remains
within the body." Br. 9-10. The Examiner asserts that the claim language at
issue is merely functional and so Atalar's device need only be capable of
performing the limitation. Ans. 2. The Examiner also asserts that "the
device may be used in a variety of other methods of operation in addition to
the procedure described in the Atalar reference such as in an open surgery,
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Appeal2018-003185
Application 12/843,095
where the sheath and sensor may be manually removed from the patient
while leaving the medical device within the patient." Ans. 3. While it may
be true that Atalar's device is usable in other types of surgery, the claim
specifically states that "the sheath and the positioning sensor are removable
from the medical device and from the body lumen while the medical device
remains in the body lumen." As such, use in open surgery would not meet
the claim language at issue.
The Examiner further asserts that because the medical device at issue
has not been positively recited, and the fact that Atalar teaches that the
device may have a smaller diameter than the sheath, thus allowing coaxial
movement between the two, depending on the medical device, it may still be
possible to remove the sheath from the patient while the medical device
remains in the body lumen. Ans. 4. This appears to be mere speculation on
the Examiner's part. The Examiner has offered no evidence that this is
possible with the device disclosed in Atalar, nor does the Examiner provide
any detailed explanation as to how this removal would occur.
Appellant argues that "it is not possible to remove Atalar' s sleeve
from a body while leaving the medical device in place within the body." Br.
10. On balance, we agree with Appellant that "the Examiner fails to provide
any support or rationale as to how the system of Atalar could accomplish the
claimed removal of the sheath while a medical device extending through a
lumen of the sheath remains in a body lumen." Br. 11. Without some better
explanation as to how Atalar' s sheath could be removed while still in the
body lumen as claimed, the rejection lacks proper support for this assertion.
Being an anticipation rejection, the Examiner must do more than merely
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Appeal2018-003185
Application 12/843,095
speculate as to a possible manner of use that supposedly meets that claim
limitations at issue.
Additionally, regarding the "position sensor comprising a magnetic
coil" and "a navigation system, wherein the electromagnetic coil is sized and
configured to produce a signal," we agree with Appellant that the
Examiner's interpretation of Atalar is deficient. According to the Examiner,
because an MRI device would detect Atalar' s coil, it "must interpret the
signal produced by the electromagnetic coil in space." Ans. 5. First, the
Examiner's interpretation essentially ignores the language that the coil is
"configured to produce a signal" for tracking purposes. While the MRI does
detect the coil it does so in the same way that it detects any tissue or other
object.
Furthermore, as Appellant states, "the sheath is electrically coupled to
an external signal processing unit via a conductor that extends the length of
the sheath shaft." Br. 18. The Examiner does not point to any element of
Atalar that would meet the claimed conductor for connecting the coil to the
navigation and tracking system. Additionally, while the tracking system is
not specifically detailed in the claims, the Examiner's interpretation of the
claim to encompass an MRI system is over-broad and unreasonable. While
it is improper to read limitations into the claims, Appellant's disclosure of
specific tracking systems does narrow the universe of applicable systems to
those that operate in some way similar to those disclosed. They also must
include conductors to connect to the system, which the Examiner has
completely ignored.
For the above reasons, we do not sustain the Examiner's rejection of
claim 24. All of the rejections rely on the Examiner's flawed interpretation
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Application 12/843,095
and/or incomplete explanation of Atalar's apparatus to meet the claims. As
such, we do not sustain any of the other rejections for the same reasons.
DECISION
For the above reasons, we REVERSE the Examiner's decision to
reject claims 1-5, 9, 10, 12, 13, 16-21, 24, and 26-36.
REVERSED
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