Ex Parte Young et al

Patent Trial and Appeal Board

Sep 27, 2012

10971373 (P.T.A.B. Sep. 27, 2012)

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.
10/971,373 10/22/2004 Kimbolt Young 28-7036822001 (03-473) 7016
23410 7590 09/27/2012
Vista IP Law Group LLP
2040 MAIN STREET, Suite 710
IRVINE, CA 92614
EXAMINER
PEFFLEY, MICHAEL F
ART UNIT PAPER NUMBER
3739
MAIL DATE DELIVERY MODE
09/27/2012 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 KIMBOLT YOUNG, STEVE M. ANDERSON,
PAUL DICARLO, and JEFFREY W. ZERFAS
____________

Appeal 2010-003060
Application 10/971,373
Technology Center 3700
____________

Before GAY ANN SPAHN, MICHAEL C. ASTORINO, and
WILLIAM A. CAPP, Administrative Patent Judges.

SPAHN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Kimbolt Young et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the Examiner’s final rejection of claims 1-9 and 11-33 under 35
U.S.C. § 103(a) as unpatentable over Behl (US 2004/0158239 A1, published
Aug. 12, 2004) and Mahvi (US 2002/0022864 A1, published Feb. 21, 2002).
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Appellants cancelled claims 10 and 34-55. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.

The Claimed Subject Matter
The claimed subject matter “relates to an electrosurgical system
having pairs of electrode arrays, which are deployed to treat large volumes
of tissue, particularly for the treatment of tumors in the liver and other
tissues and organs.” Spec. 1, para. [0001]. Claims 1, 9, 20, and 29 are
independent and claim 1, reproduced below, with emphasis added, is
illustrative of the subject matter on appeal.
1. A bipolar tissue ablation probe for
creating a lesion within a target tissue
comprising:
a proximal electrode array configured for
moving from a retracted configuration to a
deployed configuration by proximal retraction;
a distal electrode array configured for
moving from a retracted configuration to a
deployed configuration by distal advancement,
wherein proximal and distal electrode arrays have
distal termini that are separated from each other by
a first length when deployed;
a shaft carrying the proximal and distal
electrode arrays, wherein the shaft has an
electrically insulative portion that separates the
proximal and distal electrode arrays, the insulative
shaft portion spanning a second length greater
than seventy-five percent of the first length; and
wherein activation of proximal and distal
electrode arrays in a bipolar fashion creates a
lesion within the target tissue that necroses from an
outer region and progresses inwardly.
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OPINION
Claims 1-7, 29, and 31-33
Appellants argue claims 1-7, 29, and 31-33 as a group and we select
independent claim 1 as the representative claim. See App. Br. 7-10; see also
37 C.F.R. § 41.37(c)(1)(vii) (2011). Claims 2-7, 29, and 31-33 fall with
claim 1.
The Examiner finds that Behl substantially discloses the subject
matter of independent claim 1 (Ans. 3 (citing to Behl’s Fig. 51 embodiment))
including, inter alia, “a ‘non-conductive gap’ that is in the range of 0.25 to
0.75 of the distance between the electrode arrays” (Ans. 4). Behl discloses
that “[p]referably, the distance l2 between the inner termini 17 and 21 of the
axial conductors 16 and 20 will be in the range from 0.25 to 0.75 of the
distance l1 between the inner termini of the innermost portions of the
electrode arrays 24 and 26.” Behl, para. [0051], second to last sentence.
Emphasis omitted. In other words, the distance l2 between the stems of the
electrode arrays is 25% to 75% of the distance l1 between the tips of the
electrodes. See Behl, Fig. 1. Since Appellants acknowledge that proximal
and distal conductive tubes 84 and 86 effectively form a proximal and distal
electrode stem, respectively (Spec. 27, para. [0058]), the Examiner correctly
finds that Behl’s non-conductive gap 88 constitutes the distance l2 between
the stems.
The Examiner also finds that Behl “fail[s] to disclose an insulative
material covering a length of the intervening portion . . . and . . . any specific
length (i.e.[,] “greater than 75%”) for the non-conductive gap or any other
insulation layer formed in the intervening portion.” Ans. 3. To cure Behl’s

1 Behl’s Figure 5 is identical to Appellants’ Figure 12.
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deficiency of not having an insulative material covering a length of the
intervening portion, the Examiner turns to Mahvi for its teaching of an
electrode device having deployable proximal and distal arrays 22b, 22a with
an intervening portion of a support shaft therebetween which “may be
provided with an insulation coating to cause heating and necrosis to begin at
the array tips” and thus, “control the ablation profile such that necros[i]s
starts at the outer region of the array and inherently progress inwardly.”
Ans. 3-4 (citing to Mahvi, paras. [0048] and [0049]). The Examiner
concludes that it would have been obvious to one of ordinary skill in the art
to provide Behl’s electrode array device with an insulation layer over the
intervening portion of the support shaft between the electrode arrays as
taught by Mahvi in order “to control the ablation profile such that necroses
start at the outer periphery of the device and progresses inwardly.” Ans. 4.
Appellants first argue that Behl teaches away from an ablation probe
that is configured for creating a lesion that necroses from an outer region and
progresses inwardly, because Behl teaches to preferentially heat the center of
the treated region first prior to the heating and necrosis of the outer portions
of the treatment region and further, states that “‘[i]f the outer portions of the
treatment region were treated first, it might be more difficult to assure that
all portions, and in particular the inner portions, of the treatment region are
adequately treated.’” App. Br. 7 (quoting Behl, para. [0053]). Appellants
further argue that modifying Behl to include an insulation layer as proposed
by the Examiner would render Behl’s device “unsatisfactory for its intended
purpose of heating target tissue from the center outward and would change
the principle of operation of the Behl . . . device since such an insulation
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layer would cause tissue to be heated from the periphery inward rather than
from the center outward.” App. Br. 8. Emphasis omitted.
We are not persuaded by Appellants’ arguments that Behl teaches
away from an ablation probe configured for creating a lesion that necroses
from an outer region and progresses inwardly and that modifying Behl to
include an insulation layer would render Behl’s device unsatisfactory for its
intended purpose or change its principle of operation. First, Appellants
define Behl’s intended purpose and principle of operation too narrowly.
Instead of “heating target tissue from the center outward” as suggested by
Appellants, Behl’s intended purpose is more broadly to treat large tissue
regions using pairs of electrode arrays, particularly for the treatment of
tumors in the liver and other organs. Behl, Abstract and para. [0002]. In
addition, Behl’s principle of operation can broadly be defined as delivering
radiofrequency energy to treatment regions via the use of ablation probes
having electrode arrays regardless of whether the treatment begins at the
center and proceeds inwardly or begins at the outer periphery and proceeds
outwardly.
Second, prior art does not teach away from claimed subject matter
merely by disclosing a different solution to a similar problem unless the
prior art also criticizes, discredits or otherwise discourages the solution
claimed. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Behl
simply discloses a preference for heating from the center outward. See Behl,
p. 6, para. [0053], (stating “the center of the treated region, e.g., along the
axis line 18 between the tips 17 and 21 of the axial conductors 16 and 20,
will be preferentially heated prior to the heating and necrosis of the outer
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portions of the treatment region.”). Emphasis added. As stated in
Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006):
[O]bviousness must be determined in light of all the facts, and
there is no rule that a single reference that teaches away will
mandate a finding of nonobviousness. Likewise, a given course
of action often has simultaneous advantages and disadvantages,
and this does not necessarily obviate motivation to combine.
See [Winner Int'l Royalty Corp. v. Wang, 202 F.3d 1340, 1349
n. 8 (Fed. Cir. 2000)] (“The fact that the motivating benefit
comes at the expense of another benefit, however, should not
nullify its use as a basis to modify the disclosure of one
reference with the teachings of another. Instead, the benefits,
both lost and gained, should be weighed against one
another.”). Where the prior art contains “apparently
conflicting” teachings (i.e., where some references teach the
combination and others teach away from it) each reference must
be considered “for its power to suggest solutions to an artisan of
ordinary skill.... consider[ing] the degree to which one reference
might accurately discredit another.” In re Young, 927 F.2d 588,
591 (Fed.Cir.1991).

Appellants rely upon Behl’s disclosure that it would be more difficult
to assure that all portions of the treatment region, particularly the inner
portions, were adequately treated if the outer portions of the treatment region
were treated first. App. Br. 7 (quoting Behl, para. [0053], last sentence).
However, we see this as a mere factor to be weighed, but not one which
would nullify the use of Behl as a basis to be modified by the teachings of
Mahvi. Although the modification of Behl by the insulated coating 45, 46 of
Mahvi may lead to some negative consequences, as suggested by
Appellants, other advantages may be gained, such that it would have been
obvious to a person having ordinary skill in the art at the time of invention to
choose which advantages to pursue given the known tradeoffs stemming
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from those choices. Therefore, we find that the Examiner has adequately
articulated a reason with rational underpinning for combining Behl and
Mahvi because the Examiner's proposed modification of Behl's ablation
probe to include an insulated coating as taught by Mahvi would merely be
selecting among known designs resulting in known tradeoffs.
Appellants next argue that “even if Behl . . . does disclose a length
ratio of 75%, claim[] 1 . . . recite[s] that the length ratio is greater than
75%.” App. Br. 8.
The Examiner responds to Appellants’ argument by stating that “the
upper portion (i.e.[,] 0.75) of [Behl’s] range is extremely close to
[Appellants’] claimed and disclosed range of ‘greater than 75%’, and would
inherently yield a similar result.” Ans. 4-5. The Examiner continues by
stating that Behl “at the very least clearly suggests a non-conductive gap that
is inherently capable of creating a lesion that would begin at the outer
periphery of the electrodes,” and since Appellants have not disclosed “a
critical value necessary to create a lesion that begins at the outer periphery,”
and “the instant claimed value of ‘greater than 75%’ is essentially the same
as ‘up to 75’, at least as the lower portion of the range (e.g.[,] 75.1%), ” the
Examiner determines that “[t]here is every expectation that the Behl . . .
device would operate in a similar manner if provided with a non-conductive
gap that covers 75% of the gap as disclosed.” Ans. 5.
To the extent that the claim language of “greater than seventy-five
percent” can be construed to encompass a percentage of slightly greater than
seventy-five percent, e.g., 75.1% as suggested by the Examiner, then only a
minor difference exists between the upper end percentage of 75% disclosed
by Behl and the lower end of the claimed “greater than seventy-five percent”
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range. Such a minor difference renders the claimed invention prima facie
obvious. See In re Geisler, 116 F.3d 1465, 1469 (Fed. Cir. 1997) (citing
Haynes Int’l, Inc. v. Jessop Steel Co., 8 F.3d 1573, 1577 n. 3 (Fed. Cir.
1993) (“when the difference between the claimed invention and the prior art
is the range or value of a particular variable, then a prima facie rejection is
properly established when the difference in range or value is minor”)). “[A]
prima facie case of obviousness exists when the claimed range and the prior
art range do not overlap but are close enough such that one skilled in the art
would have expected them to have the same properties.” In re Peterson, 315
F.3d 1325, 1329 (Fed. Cir. 2003) (citing Titanium Metals Corp. v. Banner,
778 F.2d 775, 783 (Fed. Cir. 1985)).
We determine that one of ordinary skill in this art would have
expected similar results for a percentage of seventy-five percent (i.e., the
uppermost point of the range of 25% to 75% disclosed in Behl) and for a
percentage of 75.1% (approximately the lowermost point of Appellants’
claimed range of greater than 75%) as suggested by the Examiner. See Ans.
4-5. Accordingly, we sustain the Examiner’s rejection of independent claim
1, and claims 2-7, 29, and 31-33 which fall therewith, under 35 U.S.C.
§ 103(a) as unpatentable over Behl and Mahvi.
Claims 9, 11-14, 16, 20-24, and 26
Appellants argue claims 9, 11-14, 16, 20-24, and 26 as a group and we
select independent claims 9 and 20 as the representative claims. See App.
Br. 7-10; see also 37 C.F.R. § 41.37(c)(1)(vii) (2011). Claims 11-14 and 16
fall with claim 9 and claims 21-14 and 26 fall with claim 20.
Independent claim 9 is directed to a bipolar tissue ablation probe for
creating a lesion within a targeted tissue including, inter alia, “a separate
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electrically insulative material covering a length of the electrically
conductive proximal region, the electrically conductive distal region, and the
non-conductive gap.” App. Br., Clms. App’x. Independent claim 20 is
directed to a bipolar tissue ablation probe including, inter alia, “an
electrically insulative material covering at least portions of the proximal and
distal tubes adjacent to the non-conductive gap.” Id.
The Examiner makes the same findings for independent claims 9 and
20 as those discussed supra for claim 1. Ans. 3-4.
Appellants present many of the same arguments as those discussed
supra with respect to claim 1, e.g., teaching away, unsatisfactory for its
intended purpose, and change in principle of operation. App. Br. 7-9.
For the same reasons as discussed supra, we are not persuaded by
Appellants’ arguments.
Appellants also argue that neither Behl nor Mahvi “teach an insulative
layer that covers a non-conductive gap” and since Behl “already teaches that
the electrode arrays are insulated from each other by the non-conductive gap
88, there is no reason to cover the non-conductive gap with an insulative
material.” App. Br. 9.
We are not persuaded by Appellants’ argument that neither Behl nor
Mahvi teach an insulative layer covering a non-conductive gap, because
Appellants’ argument attacks the references individually and do not address
a combination of the references. One cannot show nonobviousness by
attacking references individually where the rejections are based on a
combination of references. See In re Merck & Co., 800 F.2d 1091, 1097
(Fed. Cir. 1986); In re Keller, 642 F.2d 413, 426 (CCPA 1981). Appellants
have failed to address the Examiner’s combination of Behl and Mahvi in
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which Behl’s Figure 5 embodiment is modified to include an insulated
coating 45, 46 as taught by Mahvi.
We are also not persuaded by Appellants’ argument that there is no
reason to cover the non-conductive gap with an insulative material, because
the Examiner has adequately articulated a reason with a rational
underpinning as to why one of ordinary skill in the art would modify Behl
by the teachings of Mahvi, namely, in order “to control the ablation profile
such that necroses start at the outer periphery of the device and progresses
inwardly.” Ans. 4. Appellants have failed to persuasively indicate why the
Examiner’s reasoning does not have a rational underpinning.
Accordingly, we sustain the Examiner’s rejection of claims 9 and 20,
and claims 11-14, 16, 21-24, and 26 which fall therewith, under 35 U.S.C.
§ 103(a) as unpatentable over Behl and Mahvi.
Claims 17 and 27
Similar to the language of claim 1, claims 17 and 27 call for the
insulative material to span a second length greater than seventy-five percent
of a first length between the distal termini of the proximal and distal
electrode arrays when deployed. App. Br., Clms. App’x.
Appellants argue with respect to claims 17 and 27 that “even if Behl .
. . does disclose a length ratio of 75%, claims . . . 17 and 27 recite[s] that the
length ratio is greater than 75%.” App. Br. 8. Emphasis omitted
For the same reasons as discussed supra with respect to claim 1, we
find that the minor difference between the claim language and Behl renders
the claimed subject matter prima facie obvious.
Accordingly, we sustain the Examiner’s rejection of claims 17 and 27
under 35 U.S.C. § 103(a) as unpatentable over Behl and Mahvi.
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Claims 8, 18, and 28
Claims 8, 18, and 28 call for the second length of the insulative shaft
portion to be “equal to or greater than the first length” between the distal
termini of the proximal and distal electrode arrays when deployed. App. Br.,
Clms. App’x.
Appellants argue that the Examiner has failed to point to any
disclosure in Behl or Mahvi “where the length of the insulative material is
equal to or greater than the length that separates the distal termini of the
deployed proximal and distal electrode arrays.” App. Br. 10.
We disagree with Appellants. The Examiner finds that Behl
“disclose[s] the insulated cap may extend up to 75% of the distance between
the electrode arrays.” Ans. 3. Thus, the Examiner pointed out that Behl
discloses “equal to” 75%.
Accordingly, we sustain the Examiner’s rejection of claims 8, 18, and
28 under 35 U.S.C. § 103(a) as unpatentable over Behl and Mahvi.
Claims 15 and 25
Claim 15 recites that “the insulative material covers the entirety of the
intervening shaft portion.” App. Br., Clms. App’x. Claim 25 recites that
“the insulative material covers the entirety of the proximal and distal tubes.”
Id.
Appellants argue that “[t]he Examiner has failed to point to any
disclosure in Behl . . . or Mahvi . . . where an insulative material covers the
entirety of the intervening shaft portion or of the proximal and distal tubes.”
App. Br. 10-11. Emphasis omitted.
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We disagree with Appellants. The Examiner finds that Mahvi
“clearly disclose[s] an insulation material that covers the entirety of the
space between the electrode arrays.” Ans. 6.
Appellants reply that modifying Behl to include such an insulative
covering as taught by Mahvi would cause Behl to heat tissue from an outer
region inwardly. Reply Br. 4. Appellants argue that Behl teaches away
from this and that such a change would cause Behl to be unsatisfactory for
its intended purpose and would change the principle of operation of Behl.
Id.
For the reasons discussed supra with respect to claim 1, we are not
persuaded by Appellants’ teaching away, unsatisfactory for intended
purpose, and change in principle of operation arguments.
Accordingly, we sustain the Examiner’s rejection of claims 15 and 25
under 35 U.S.C. § 103(a) as unpatentable over Behl and Mahvi.
Claim 19
Claim 19 recites that “the insulative material is closer to one of the
proximal and distal electrode arrays than the other.” App. Br., Clms. App’x.
Appellants argue that “[t]he Examiner has failed to point to any
disclosure in Behl . . . or Mahvi . . . where the insulative material is closer to
one of the proximal and distal electrode arrays than the other.” App. Br. 11.
Emphasis omitted.
The Examiner responds that “the specific location for the insulative
material would be an obvious selection for the skilled artisan,” “[Appellants’
S]pecification fails to provide any criticality or unexpected result associated
with the specific location of the insulation material (e.g. closer to one
array),” and “the lesion characteristics that would result from variously
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located insulation regions . . . would be readily discernible to the skilled
artisan.” Ans. 7. More particularly, the Examiner states that “one of
ordinary skill in the art would readily recognize the [e]ffects of the
insulation region between the electrode arrays of Behl . . . and would be
fully capable of creating a desired lesion pattern by modifying the relative
length and position of such an insulation region.” Id.
As the Examiner has articulated a reason with a rational underpinning
why it would have been obvious to a person of ordinary skill in the art to
modify the probe of the combination of Behl and Mahvi to have insulative
material closer to one of the proximal and distal electrode arrays than the
other, we sustain the Examiner’s rejection of claim 19 under 35 U.S.C.
§ 103(a) as unpatentable over Behl and Mahvi.
Claim 30
Claim 30 recites that “substantially all of the electrical energy
conveyed between the proximal and distal electrode elements is conveyed
between distal termini of the proximal and distal electrode arrays.” App.
Br., Clms. App’x.
Appellants argue that “[t]he Examiner has failed to point to any
disclosure in Behl . . . or Mahvi . . . where substantially all of the electrical
energy conveyed between the proximal and distal electrode elements is
conveyed between distal termini of the proximal and distal electrode arrays.”
App. Br. 12. Emphasis omitted. More particularly, Appellants argue that
Behl “teaches the opposite (i.e., that substantially all the electrical energy is
conveyed between the proximal and distal electrode stems).” Id. (citing to
Behl, paras. [0027], [0028], [0051], and [0053] and Figs. 1A-1C).
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The Examiner responds that Mahvi “clearly provides the suggestion
that a lesion should be created with a profile having the energy exit the distal
tips of the electrode arrays.” Ans. 7. The Examiner further states that since
the Behl “device provides substantially the same structure” and Mahvi
“provides the teaching of providing the insulation region extending
completely between the electrode arrays, the resulting structure is deemed to
react in a manner similar to that claimed by [Appellants].” Id.
Appellants reply that modifying Behl to include such an insulative
covering as taught by Mahvi would cause Behl to heat tissue from an outer
region inwardly. Reply Br. 5. Appellants argue that Behl teaches away
from this and that such a change would cause Behl to be unsatisfactory for
its intended purpose and would change the principle of operation of Behl.
Id.
For the reasons discussed supra with respect to claim 1, we are not
persuaded by Appellants’ teaching away, unsatisfactory for intended
purpose, and change in principle of operation arguments.
Accordingly, we sustain the Examiner’s rejection of claim 30 under
35 U.S.C. § 103(a) as unpatentable over Behl and Mahvi.

DECISION
We affirm the Examiner’s decision to reject claims 1-9 and 11-33.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED
Klh