Ex Parte Tegg et al

Patent Trials and Appeals BoardJun 28, 2019

14070998 - (D) (P.T.A.B. Jun. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/070,998 11/04/2013 67337 7590 07/02/2019 DYKEMA GOSSETT PLLC (STJ) 4000 Wells Fargo Center 90 South Seventh Street Minneapolis, MN 55402 FIRST NAMED INVENTOR Troy T. Tegg 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. OB-0535USD11/065513-00872 9125 EXAMINER PARK, PATRICIA JOO YOUNG ART UNIT PAPER NUMBER 3793 NOTIFICATION DATE DELIVERY MODE 07/02/2019 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 TROY T. TEGG, SAURA VP AUL, RICHARD E. STEHR, and REED R. HEIMBECHER Appeal2018-009202 Application 14/070,998 1 Technology Center 3700 Before MICHAEL C. ASTORINO, BRADLEY B. BA YAT, and ROBERT J. SILVERMAN, Administrative Patent Judges. ASTORINO, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. Â§ 134(a), the Appellants appeal from the Examiner's decision rejecting claims 24, 25, and 39--42. We have jurisdiction over the appeal under 35 U.S.C. Â§ 6(b ). We REVERSE. 1 "St. Jude Medical, Atrial Fibrillation Division, Inc. is the assignee of all rights in this invention ... and is the real party in interest." Br. 1. Appeal2018-009202 Application 14/070,998 STATEMENT OF THE CASE Claimed Subject Matter Claim 24, the sole independent claim on appeal, is representative of the claimed subject matter and reproduced below. 24. A method for sensing contact force exerted by an electrode on a tissue comprising: directing light energy along at least a portion of a tubular body of a catheter, wherein a distal end of the tubular body comprises a coupling member; emitting the light energy across a spaced gap for interacting with an optically-interactive surface provided by a base portion of an electrode, wherein the base portion of the electrode is disposed within the coupling member; receiving the light energy returning from the optically- interactive surface at an optical sensor, wherein the light energy is processed by a processor to determine a change between the initially emitted light energy and the reflected light energy that is returned from the optical interactive surface. Rejections The Examiner maintains, and the Appellants appeal, the following rejections: I. Claims 24, 25, and 39 are rejected under pre-AIA 35 U.S.C. Â§ I03(a) as unpatentable over Leo et al. (US 2007/0060847 Al, pub. Mar. 15, 2007) ("Leo"), Fischer et al. (GB 2,331,580 A, pub. May 26, 1999) ("Fischer") and McGee et al. (US 2007/0191829 Al, pub. Aug. 16, 2007) ("McGee"); and II. Claims 40-42 are rejected under pre-AIA 35 U.S.C. Â§ I03(a) as unpatentable over Leo, Fischer, McGee, Degertekin et al. (US 2007/0012094 Al, pub. Jan. 18, 2007) ("Degertekin") and Iida et al. (GB 2,189,638 A, pub. Oct. 28, 1987) ("Iida"). 2 Appeal2018-009202 Application 14/070,998 ANALYSIS The Examiner finds that Leo's Figures 14 and 19 show a configuration of optical sensors having reflectors that "reside within" a base portion of an electrode. See Ans. 7 (citing Leo ,r,r 128, 137-138); Final Act. 4--5 (citing Leo ,r,r 65, 131, 137-138, 151-154). The Examiner finds that this configuration corresponds to "an optically-interactive surface provided by a base portion of an electrode," as recited in independent claim 24. The Appellants argue that the Examiner's rejection is improper because it relies on an errant finding that Leo teaches "an optically- interactive surface provided by a base portion of an electrode." Br. 7. The Appellants further argue that the rejection fails to include additional findings and/or reasoning to adequately support the rejection. See id. at 7-8. The Appellants' argument is persuasive. In view of the positions taken by the Examiner in the Final Office Action and Examiner's Answer, and the Appellants taken in the Appeal Brief, it appears that the primary issue is the proper interpretation of the phrase "provided by" in the claimed limitation "an optically-interactive surface provided by a base portion of an electrode." At the outset, we determine the scope of the claims in patent applications not solely on the basis of the claim language, but upon giving claims their broadest reasonable construction in light of the specification as it would be interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). In this case, the Specification describes, "Overall, the optical sensors are positioned to interact with optically interactive surface 30 as provided by electrode 14. Figure 5B provides an embodiment, wherein optically 3 Appeal2018-009202 Application 14/070,998 interactive surface 30 is provided on or is a part ofbase portion 26 of electrode 14." Spec. ,r 34; see id. ,r 35 (emphasis added). Here, the Specification instructs one of ordinary skill in the art that the phrase "provided by" includes a construction whereby "optically interactive surface 30 is provided on or is a part ofbase portion 26 of electrode 14." The foregoing is consistent with the definition of "provide," i.e., "to make available; furnish: to provide employees with various benefits" and "to supply or equip: to provide the army with new fighter planes." Provide Definition 1, 2, DICTIONARY.COM, https://www.dictionary.com/browse/ provided (last visited June 25, 2019). In view of the foregoing, we determine that the Examiner's construction of "provided by," as recited in claim 24, as "reside within" to be inadequate. Turning to the Examiner application of Leo's disclosure to the claimed invention, we fail to understand how the catheter assemblies shown in Leo's Figures 14 and 19 correspond to "an optically-interactive surface provided by a base portion of an electrode," as recited in claim 24, when properly interpreted. By example, Leo's Figure 14 shows optical fiber (i.e., Bragg gating) 10, which may be received within front end electrode 33. See Leo ,r 138. However, in this configuration, optical fiber 10 is not provided on, a part of, made available by, furnished by, or supplied or equipped by, front end electrode 33. Therefore, the Examiner's finding that Leo teaches "an optically-interactive surface provided by a base portion of an electrode" 1s improper. Furthermore, the Examiner's rejection does not rely on the teachings of Fischer, McGee, or Degertekin in any manner which would remedy the deficiency discussed above. Therefore, we are persuaded by the Appellants' argument that the Examiner's rejection is improper. 4 Appeal2018-009202 Application 14/070,998 Thus, we do not sustain the Examiner's rejections of independent claim 24 and dependent claims 25 and 39 as unpatentable over Leo, Fischer, McGee, and dependent claims 40-42 as unpatentable over Leo, Fischer, McGee, and Degertekin. DECISION We REVERSE the Examiner's decision rejecting claims 24, 25, and 39--42. REVERSED 5