Ex Parte Zachman

Patent Trial and Appeal BoardOct 26, 2017

13074731 (P.T.A.B. Oct. 26, 2017)

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. 13/074,731 03/29/2011 Andrew K. ZACHMAN 21819A-331U-P0039924.01 1356 89554 7590 10/30/2017 Christopher & Weisberg, P.A. 200 East Las Olas Boulevard Suite 2040 Fort Lauderdale, EL 33301 EXAMINER KIM, EUN HWA ART UNIT PAPER NUMBER 3739 NOTIFICATION DATE DELIVERY MODE 10/30/2017 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): ptomail @ c wiplaw. com medtronic_crdm_docketing @ c ardinal-ip .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ANDREW K. ZACHMAN Appeal 2016-004686 Application 13/074,7311 Technology Center 3700 Before JEFFREY N. FREDMAN, RICHARD J. SMITH, and DEVON ZASTROW NEWMAN, Administrative Patent Judges. NEWMAN, Administrative Patent Judge. DECISION ON APPEAL This appeal under 35 U.S.C. § 134 involves claims to a medical probe. The Examiner entered final rejections for obviousness.2 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 Appellant identifies the Real Party in Interest as Medtronic ATS Medical, Inc. App. Br. 3. 2 The Examiner withdrew the rejection of claims 1, 2, 5, 10, 11, 16, 17, and 21 under 35 U.S.C. § 112(a). Ans. 4. Appeal 2016-004686 Application 13/074,731 STATEMENT OF THE CASE Background The Specification discloses that “atrial fibrillation (AF), either alone or as a consequence of other cardiac disease, continues to persist as the most common type of cardiac arrhythmia.” Spec. 14. “An alternative to open heart or open chest surgery [to treat AF] is a minimally invasive ‘cryomaze’ procedure in which a cryosurgical catheter is used to form ablative scars in various locations in the atrial tissue. Id. 17. “However, a significant problem with cryosurgical catheters is that when extreme cold is applied to the heart tissue the thermally-transmissive region adheres to the tissue and the surgeon must apply warm saline other fluid to release it.” Id. 1 8. The Specification discloses a “system for warming the thermally- transmissive region of a medical device.” Id. 110. Claims 1—5, 7—17, and 21 are pending and on appeal.3 Final Act. 1. Claim 1 is illustrative and reads as follows, with emphasis on the claim limitation at issue: 1. A medical device comprising: an elongate probe defining a proximal end, a distal end having a distal tip, and a flexible member in the distal end, the flexible member including a thermally-transmissive region, the elongate probe including a fluid supply line in fluid communication with the thermally-transmissive region, the fluid supply line being bifurcated at a bifurcation point into a first linear portion and a second linear portion, the first linear portion and second linear portion extending from the 3 Claims 3, 4, 7—9, and 12—15 are withdrawn from consideration. Examiner’s Final Action, mailed April 1, 2015, 1 (“Final Act.”). Claims 6 and 18—20 are cancelled. Id. at 2. 2 Appeal 2016-004686 Application 13/074,731 bifurcation point and through the entirety of the flexible member, and an exhaust line in fluid communication with the first and second portions of the fluid supply line. App. Br. 13 (Claims Appendix). Appellant seeks our review of the Examiner’s rejection of claims 1, 2, 5, 10, 11, 16, and 21 under pre-AlA 35 U.S.C. § 103(a) as obvious over Nahon,4 Heiner,5 and Lehmann.6 DISCUSSION The Examiner finds that the combination of Nahon, Heiner, and Lehmann discloses all of the limitations of claim 1. Final Act. 6—8. Specific to the issue on appeal, the Examiner finds that Lehmann discloses an elongate probe (catheter 14 in Fig. 1) defining a flexible member including a thermally-transmissive region (thermally-transmissive flexible region 44 as shown in Figs. 3— 5, [0055]). The internal view of the distal end of the elongate probe is shown in Fig. 25. Lehmann teaches a first linear portion (proximal-most portion of an injection tube 215) and second linear portion (proximal-most portion of an injection tube 216) that would extend through the entirety of the flexible member (proximal-most region 44 of any of the embodiments of Figs. 3-5, [0095]). Id. at 8. The Examiner concludes that the skilled artisan would have found it obvious to have incorporated the teachings of Lehmann, “the first linear portion and the second linear portion extending from the bifurcation point 4 US 7,044,946 B2, issued May 16, 2006 (“Nahon”). 5 US 2001/0037081 Al, published Nov. 1, 2001 (“Heiner”). 6 US 2002/0062122 1, published May 23, 2002 (“Lehmann”). 3 Appeal 2016-004686 Application 13/074,731 and through the entirety of the flexible member,” with those of Nahon and Heiner to allow for flexibility, greater aggregate cooling power, and “reduction in the overall size of the distal end of the elongate probe.” Id. Appellant argues that “FIG. 25 of the Lehmann reference clearly shows that the ‘inner flexible members 210, 211, and 212’ do not extend through the entirety of the flexible member” as required by claim 1. App. Br. 9. We agree with Appellant that Lehmann does not disclose that “the first linear portion and second linear portion extending from the bifurcation point and through the entirety of the flexible member.” Figure 25 of Lehman, which illustrates a catheter, is reproduced below: Figure 25 illustrates “another embodiment of the catheter.” Lehmann 132. As seen in Figure 25, the linear portions of the inner flexible members identified by the Examiner, 210, 211, and 212, do not extend “through the entirety of the flexible member.” Rather, they are “arranged in a ‘staggered’ configuration within the outer flexible member 200” as disclosed at Lehmann 178. We do not disagree with the Examiner that the inner flexible members extend past a portion of the flexible member. See Ans. 3 (‘TTlhe flexible member is correlated to the segment of the outer flexible member 200 that is disposed between the electrode ring members 207 and 208.”) But 4 Appeal 2016-004686 Application 13/074,731 we, like Appellant, read “the entirety of the flexible member” to require that the flexible member would extend through substantially the entire length of the outer flexible member 200 to meet the limitation at issue. At best, only inner flexible member 212, terminating in opening 216, reasonably extends through the entire length of the flexible member. Figure 25 depicts inner flexible members 210 and 211 terminating well before the entire length of the flexible member 200. However, the Examiner has not pointed us to any teaching in Lehmann showing an embodiment in which at least two of the inner flexible members are extended “through the entirety of the flexible member” or a teaching or reason in Lehmann to extend the first and second inner flexible members as claimed. We therefore reverse the rejection under 35U.S.C. § 103(a). SUMMARY We reverse the rejection of claims 1, 2, 5, 10, 11, 16, and 21 under pre-AIA 35 U.S.C. § 103(a) as obvious over Nahon, Heiner, and Lehmann. REVERSED 5