Ex Parte Soltani et al

Patent Trial and Appeal Board

Jan 29, 2019

13219403 (P.T.A.B. Jan. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/219,403 08/26/2011
20995 7590 01/31/2019
KNOBBE MARTENS OLSON & BEAR LLP
2040 MAIN STREET
FOURTEENTH FLOOR
IRVINE, CA 92614
FIRST NAMED INVENTOR
Azita Soltani
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.
EKOS.261A 9774
EXAMINER
NGUYEN, HIEN NGOC
ART UNIT PAPER NUMBER
3793
NOTIFICATION DATE DELIVERY MODE
01/31/2019 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):
j ayna.cartee@knobbe.com
efiling@knobbe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AZIT A SOLTANI,
RAYMOND M. WOLNIEWCZ III, BRENTON NIST AL,
CURTIS GENSTLER, ROBERT L. WILCOX, and
RONALD L. HAAS
Appeal2018-003226
Application 13/219 ,403
Technology Center 3700
Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and
BRANDON J. WARNER, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Azita Soltani et al. (Appellants) 1 appeal under 35 U.S.C. § 134 from
the Examiner's decision rejecting claims 1, 3-16, and 18-25. We have
jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
1 According to Appellants, the real party in interest is EKOS Corporation.
Appeal Br. 3.
Appeal2018-003226
Application 13/219,403
THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. An ultrasound catheter for treatment of a blood clot resulting
from an intracranial hemorrhage comprising:
an elongate tubular body having a distal portion and a
proximal portion, the elongate tubular body comprising an inner
surface defining a lumen and an outer surface;
a plurality of ultrasound radiating elements positioned in
the distal portion of the elongate tubular body between the inner
and outer surfaces of the tubular body;
a surface configured to form an electrical connection on
the proximal portion of the tubular body comprising annular
rings in electrical connection with the plurality of radiating
elements and a proximal port located on the proximal portion of
the tubular body, the proximal port adjacent and distal to the
electrical connection,
wherein the lumen includes a plurality of ports on
the distal portion of the elongate tubular body configured
to allow fluid to flow therethrough; and
a stylet configured to be received within the lumen.
REJECTIONS
I. Claims 1, 3---6, 9, 14, 15, and 22-25 stand rejected under
35 U.S.C. § I03(a) as unpatentable over Wilson '296
(US 2007/0112296 Al, published May 17, 2007), Khanna
(US 2007/0005121 Al, published Jan. 4, 2007), Saadat
(US 2003/0088187 Al, published May 8, 2003), and
Wilson '189 (US 2004/0068189 Al, published Apr. 8, 2004).
II. Claims 7 and 8 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Wilson '296, Khanna, Saadat, Wilson '189,
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Application 13/219,403
and Dala-Krishna (US 2008/0312536 Al, published Dec. 18,
2008).
III. Claims 10-13 and 16 stand rejected under 35 U.S.C. § I03(a)
as unpatentable over Wilson '296, Khanna, Saadat,
Wilson '189, and Abrahamson (US 2005/0215942 Al,
published Sept. 29, 2005).
IV. Claim 21 stands rejected under 35 U.S.C. § I03(a) as
unpatentable over Wilson '296, Khanna, Saadat, Wilson '189,
and Morris (US 2003/0199831 Al, published Oct. 23, 2003).
V. Claims 18 and 20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Wilson '296, Khanna, Wilson '189, Morris,
and Ackerman (US 2002/0133081 Al, published Sept. 19,
2002).
VI. Claim 19 stands rejected under 35 U.S.C. § I03(a) as
unpatentable over Wilson '296, Khanna, Wilson '189, Morris,
Ackerman, and Wemeth (US 2006/0106375 Al, published May
18, 2006).
DISCUSSION
Rejection I
Independent claim 1 recites, in relevant part, "a proximal port located
on the proximal portion of the tubular body, the proximal port adjacent and
distal to the electrical connection." Appeal Br. 14 (Claims App.).
Appellants contest the Examiner's finding that Wilson '189 discloses this
feature. See Appeal Br. 8-9 (asserting that they "respectfully disagree[] with
the Final Office Action's characterization of Wilson ['189]"); Reply Br. 2-3.
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Application 13/219,403
\Ve agree with Appellants that a sustainable case of obviousness has not
been established.
In rejecting claim 1, the Examiner finds that Wilson '296 does not
disclose, inter alia, "a proximal port located on the proximal portion of the
tubular body, the proximal port adjacent and distal to the electrical
connection." Final Act. 5. However, the Examiner finds that Wilson' 189
"discloses a proximal port located on the proximal portion of the tubular
body, the proximal port adjacent and distal to the electrical connection (see
Fig. 1, [0045] and [0051]; 116-117 are proximal ports that are adjacent and
distal to the electrical control box connector 120)." Id. On the basis of this
finding, the Examiner determines that it would have been obvious to modify
Wilson '296 "to have a proximal port located on the proximal portion of the
tubular body, the proximal port adjacent and distal to the electrical
connection as taught by Wilson [' 189] because port allow physician to inject
drug to the patient and electrical connector provide power to device [sic]."
Id. ( citing Wilson '189 ,r,r 45, 51 ).
Wilson '189 discloses ultrasound catheter 100 including multi-
component tubular body 102 having proximal end 104 and distal end 106.
See Wilson '189 ,r 40, Fig. 1. Wilson '189 also discloses that tubular body
102 includes outer sheath 108 and inner core 110, which defines, in part,
delivery lumen 112. See id. ,r,r 43, 45. Delivery lumen 112 continues
through back end hub 118 attached to proximal end 104 of outer sheath 108
and has proximal access port 116, which is defined by drug inlet port 117 of
back end hub 118. See id. ,r 45; Fig. 1. Back end hub 118 attaches to
control box connector 120. Id. ,r 45.
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Application 13/219,403
Proximal port 116/117 is located on back end hub 118, not on tubular
body 102, of Wilson '189. Similarly, control box connector 120 is attached
to back end hub 118, not located on the proximal portion of tubular body
102. Even considering back end hub 118 to be a proximal portion of the
tubular body, such that proximal port 116/117 and control box connector
120 would be considered to be located on the proximal portion of the tubular
body, control box connector 120 is on back end hub 118 (and thus on the
proximal portion of the tubular body) at a location distal to proximal port
116/117. See Wilson '189, Fig. 1. In other words, proximal port 116/117 is
located proximal (not distal) to control box connector 120 on back end hub
118.
Appellants interpret "control box connector 120" of Wilson '189 to be
the actual connector located at the very end of the long coiled cord shown
attached to back end hub 118 in Figure 1. See Appeal Br. 9 ( arguing that
"the proximal access port 116 and the inlet port 11 7 are not adjacent to the
control box connector 120 which is located at the very end of a long cord");
Reply Br. 3 (arguing same). The Examiner appears to accept Appellants'
interpretation. See Ans. 14 (stating that proximal port 116/117 "is in contact
with 120 through the cord" and "lies just before element 120"). Applying
this interpretation of "control box connector 120," proximal port 116/117
may be distal to control box connector 120, but cannot reasonably be
considered to be adjacent to control box connector 120, which is separated
from back end hub 118 and proximal port 116/117 by a cord depicted as
having a length similar to that of tubular body 102.
For the above reasons, the Examiner has not established by a
preponderance of the evidence that Wilson '189 discloses "a proximal port
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Application 13/219,403
located on the proximal portion of the tubular body, the proximal port
adjacent and distal to the electrical connection," as recited in claim 1, nor
has the Examiner adequately explained why one of ordinary skill in the art
would have been prompted to modify Wilson '296 to include this feature.
Accordingly, based on the record before us, the Examiner has not met
the burden of establishing a proper case that claim 1 is unpatentable based
on the cited references. On this basis, we do not sustain the rejection of
independent claim 1, or its dependent claims 3-6, 9, 14, 15, and 22-25, as
unpatentable over Wilson '296, Khanna, Saadat, and Wilson '189.
Re} ections II-IV
In the rejections of claims 7, 8, 10-13, 16, and 21, which depend
directly or indirectly from independent claim 1, the Examiner does not
articulate any findings or reasoning, or rely on any teachings of Dala-
Krishna, Abrahamson, or Morris that would remedy the aforementioned
deficiency in the combination of Wilson '296, Khanna, Saadat, and
Wilson '189. See Final Act. 6-9. Accordingly, for the same reasons, we do
not sustain the rejections of claims 7, 8, 10-13, 16, and 21 under 35 U.S.C.
§ 103(a).
Re} ections V and VI
Independent claim 18 recites, in pertinent part, "a surface configured
to form an electrical connection on the proximal portion of the elongate
tubular body and a proximal port located adjacent and distal to the electrical
connection." Appeal Br. 15-16 (Claims App.). In rejecting independent
claim 18, and its dependent claims 19 and 20, the Examiner relies on the
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Application 13/219,403
same purported finding regarding 'Nilson '189 discussed above in
connection with the rejection of independent claim 1. See Final Act. 12
(finding that Wilson '189 "discloses a proximal port located on the proximal
portion of the tubular body, the proximal port adjacent and distal to the
electrical connection (see Fig. 1, [0045] and [0051]; 116-117 are ports that
are adjacent and distal to the electrical control box connector 120)"). The
Examiner does not articulate any additional findings or reasoning, or rely on
any teachings of lvforris, Ackerman, or Wemeth that would remedy the
aforementioned deficiency in the Examiner's finding with respect to
\Vilson '189. See id. at 9-13. Accordingly, we also do not sustain the
rejections of claims 18-20 under 35 U.S.C. § 103(a).
DECISION
The Examiner's decision rejecting claims 1, 3-16, and 18-25 is
REVERSED.
REVERSED
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