Ex Parte Zelickson et al

Patent Trial and Appeal Board

Oct 28, 2016

13658384 (P.T.A.B. Oct. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/658,384 10/23/2012
104919 7590 11/01/2016
Fay Kaplun & Marcin, LLP -- BSC
150 Broadway, suite 702
New York, NY 10038
FIRST NAMED INVENTOR
Brian D. ZELICKSON
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.
10121110409 (04-0004US9) 1002
EXAMINER
HANKINS, LINDSEY G
ART UNIT PAPER NUMBER
3762
NOTIFICATION DATE DELIVERY MODE
11/01/2016 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):
okaplun@fkmiplaw.com
fkmiplaw@yahoo.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRIAND. ZELICKSON and ROBERT A. GANZ
Appeal2015-000461
Application 13/658,3841
Technology Center 3700
Before JILL D. HILL, THOMAS F. SMEGAL, and
ERIC C. JESCHKE, Administrative Patent Judges.
SMEGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Brian D. Zelickson and Robert 1A. .. Ganz (1A..ppellants) seek our revie\v
under 35 U.S.C. § 134 of the Examiner's Final Rejection2 of claims 75-78,
80-83, 85-88, 90, 91, and 94--98 under 35 U.S.C. § 102(b) as anticipated by
Hull (US 5,056,532, iss. Oct. 15, 1991); ofclaim 79 under 35 U.S.C.
§ 103(a) as unpatentable over Hull and Reid (US 5,464,437, iss. Nov. 7,
1995); and of claims 84, 89, 92, and 93 under 35 U.S.C. § 103(a) as
1 According to Appellants, Boston Scientific Scimed, Inc., is the real party
in interest. Appeal Br. 2.
2 Appeal is taken from the adverse decision of the Examiner as set forth in
the Final Action (mailed October 25, 2013 ("Final Act.")).
Appeal2015-000461
Application 13/658,384
unpatentable over Hull and Hussein (US 4,470,407, iss. Sept. 11, 1984).3
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
Claims 75, 86, and 97 are independent. Claim 75 is reproduced below
and illustrates the claimed subject matter, with disputed limitations
emphasized.
75. A medical treatment system, comprising:
an elongate insertion device configured for insertion into
an opening of a body;
an energy source disposed outside the body;
an energy transmitting device located at a distal end of
the insertion device, the energy transmitting device comprising
an expandable portion which extends radially from the insertion
device, and an antenna located in an exterior surface of the
expandable portion, the antenna configured to transmit energy
generated by the energy source to a target tissue area in the
body; and
a manifold through which a transmission line of the
energy source passes, the transmission line coupled to the
energy transmitting device,
wherein the distal end of the insertion device is
controllable to position the energy transmitting device in
relation to the target tissue area.
3 Claims 1-74 are canceled. Final Act. 2 (see Preliminary Amendment,
filed October 23, 2012). In that an After Final Amendment (filed January
22, 2014) was not entered by the Examiner, a correct copy of the claims 75-
98 is found in the Amendment filed June 18, 2013.
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Application 13/658,384
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments in the Appeal Brief, the Examiner's Answer, and the Reply Brief.
We disagree with Appellants' conclusions, and agree with, and adopt as our
own, the Examiner's findings and conclusions of law set forth at pages 3-8
of the Examiner's Answer. Specific arguments are highlighted and
addressed below for emphasis.
Anticipation of Claims 75-78, 80--83, 85--88, 90, 91, and 94-98 by
Hull
The dispositive issue in this case is whether the Examiner correctly
construes Hull to disclose a medical treatment system having an energy
transmitting device located at a distal end of an insertion device, as recited
by the claims. Appellants argue claims 75-78, 80-83, 85-88, 90, 91, and
94--98 together in contesting the rejection of these claims as anticipated by
Hull. Appeal Br. 4--9; see also Reply Br. 2-11. We select claim 75 as the
representative claim for this group, and the remaining claims stand or fall
with claim 75. See 37 C.F.R. § 41.37(c)(l)(iv). We have considered
Appellant's arguments raised in the Appeal Brief, but do not find them
persuasive to demonstrate error in the Examiner's rejection of claim 75 as
being anticipated by Hull.
The Examiner finds that Hull anticipates claim 7 5 by teaching a
medical treatment system, including, inter alia:
( 1) an elongate insertion device, an energy source, and "an energy
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Application 13/658,384
transmitting device located at a distal end of the insertion device"4 (Final
Act. 2 (citing Hull, col. 4, 11. 45-56) (emphasis added));
(2) where "the energy transmitting device [comprises] an expandable
portion ... which extends radially from the insertion device [] and an
antenna located in an exterior surface of the expandable portion [is]
configured to transmit energy generated by the energy source to a target
tissue area in the body,"5 (id. at 2-3 (citing Hull, col. 2, 11. 20-39; and col. 4,
1. 45---col. 5, 1. 5)); and
(3) where "the distal end of the insertion device is controllable to
position the energy transmitting device in relation to the target tissue area,
such as via a control mechanism at a proximal portion of the elongate
insertion device controlling movement of the energy transmitting device"
(id. at 3 (citing Hull, col. 2, 11. 20-52, and col. 4, 11. 20-34)).
Appellants take issue with the analysis and conclusions presented in
the Final Action, first contending that "Hull fails to teach or suggest an
energy transmitting device located at a distal end of the insertion device,"
asserting that "[Appellants' claim] specifically recites a distal end, and not a
'distal portion' of the insertion device that is proximal to the distal terminus
of the device." Appeal Br. 5; see also Reply Br. 3---6.
4 At page 2 of the Advisory Action (mailed February 25, 2014), the
Examiner further explains "the area of Hull that includes the electrode
portions and balloons are considered to be on a distal end of the elongated
member," reasoning that claim 75 "does not [recite] the distal end to be a
distal tip or the distalmost point on the elongated member."
5 The Examiner also points out that "[f]igure 3 [of Hull] more clearly shows
the electrode portion located on an exterior surface of the balloon." Final
Act. 8.
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Application 13/658,384
In response, the Examiner points out having previously found that
"the area of Hull that includes the electrode portions and balloons are
considered to be on the distal end of the elongated member," and that "the
broadest reasonable interpretation of 'distal end' in the scope of the claims
as well as what is known in the art encompasses a 'distal portion' of the
elongated member, as the wording of the claim does not define this term
more specifically." Ans. 3.
We determine the scope of the claims in a patent application by giving
claims "their broadest reasonable interpretation consistent with the
[S]pecification" and "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) (citations omitted). "Construing claims
broadly during prosecution is not unfair to the applicant ... because the
applicant has the opportunity to amend the claims to obtain more precise
claim coverage." In re Am. Acad. of Sci. Tech Ctr., 367 F.3d at 1364.
Appellants have not pointed to any lexicographic definition in the
Specification of the term "a distal end" or identified any other disclosure
therein that precludes the Examiner from construing "all of the features as
shown in figure 1 [of Hull] are part of the 'distal end,'" and reasoning that
"it doesn't matter if a feature is 'proximal' or 'distal' to another feature, as
all of the features [in figure 1 of Hull] are located on a 'distal end.'" Ans. 4--
5. The Examiner also observes that claim 75 "does not specifically state a
'distal tip' or a 'distal terminus,' [but] merely a 'distal end' which the
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Application 13/658,384
Examiner interprets to be a general area rather that a fixed point on the
[insertion device]."6 Id. at 5. We agree.
Appellants next contend that "Hull does not teach or suggest that lead
24 or the electrodes 26, 28 are located in an exterior surface of an
expandable portion, whether in a collapsed or expanded configuration."
Appeal Br. 6 (emphasis added). However, Appellants' contention is
unavailing as it not commensurate with the scope of claim 75, which does
not recite electrodes located in an exterior surface of an energy transmitting
device whether in a collapsed or expanded configuration, but merely recites
"an antenna located in an exterior surface of the expandable portion."
Appeal Br. 11, Claims App. As we are instructed by our reviewing court,
"limitations are not to be read into the claims from the [S]pecification." In
re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (citing In re Zletz, 893
F.2d 319, 321 (Fed. Cir. 1989)).
After quoting extensively from the Final Action and Advisory Action,
Appellants continue by concluding that "Hull does not teach or suggest an
antenna located in an exterior surface of the expandable portion, as recited in
claim 75." Appeal Br. 6-7, see also Reply Br. 7-9. However, Appellants
misread Hull. See supra n.5. As the Examiner explains in the Final
rejection, "[ w ]hen inflated, the electrodes are pressed against the target
tissue." Final Act. 8 (citing Hull, col. 3, 11. 20-34).7 The Examiner also
6 Hull discloses that figure 1 "shows a plan view of the lower surface of the
distal end of an esophageal lead of the present invention." Hull, col. 2, 11.
20-22 (emphasis added).
7 Hull discloses that "[i]nflation of the balloon urges the aperture and the
electrodes located therein adjacent the anterior surface of the esophagus."
Hull, Abstract.
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Application 13/658,384
notes "that not only are the electrodes adjusted relative to the position of the
balloon, but also [adjusted relative to] the location of the target tissue[] via
contact between the electrodes and tissue through the aperture 22." Id.
(citing Hull, col. 2, 11. 39-52; col. 3, 11. 8-34; and col. 4, 11. 40-53).
Appellants have not apprised us that the Examiner's findings and
conclusions regarding Hull are in error.
Appellants rephrase their first contention, further asserting that "Hull
does not disclose or suggest a distal end of the insertion device [that is]
'controllable to position the energy transmitting device in relation to the
target tissue area,' as recited in claim 7 5." Appeal Br. 7. While
acknowledging that Hull describes "distal end 18 as facilitating passage of
the [insertion] device down the esophagus," and "lead [electrode] 24 as
being 'slidably mounted' within a lumen of the lead body 10," Appellants
contend that Hull "teaches separately moving lead [electrode] 24
independent of the distal end 18 of the lead body 10." Id. at 8. From the
foregoing, Appellants conclude that "Hull does not teach or suggest a distal
end of the insertion device being controllable to position the energy
transmitting device in relation to the target tissue area, as recited in claim
75." Id.; see also Reply Br. 9-11.
We disagree with Appellants for several reasons. First, the presence
of additional structure in Hull, such as separately movable lead electrode 24,
does not undermine a rejection where the claim uses an open-ended
transition "comprising." See Exergen Corp. v. Wal-Mart Stores, Inc., 575
F.3d 1312, 1319 (Fed. Cir. 2009) ("The claim uses the term 'comprising,'
which is well understood in patent law to mean 'including but not limited
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Application 13/658,384
to."' (citing CJAS, Inc. v. Alliance Gaming Corp., 504 F.3d 1356, 1360 (Fed.
Cir. 2007) ).
Furthermore, Appellants are not responding to the Examiner's final
rejection. See Final Act. 3. The Examiner again explains, inter alia, that
"Hull discloses control of the distal end of the insertion device to position
the electrodes relative to target tissue." Ans. 7 (citing Hull, col. 2, 11. 39-52;
col. 3, 11. 8-34). More specifically, the Examiner points to the cited
passages of Hull as describing that "proper placement of the electrodes ...
includes movement of the distal end of the insertion device to position the
[energy transmission device] relative to target tissue (the inner surface of the
esophagus)" and that "this initial placement of the insertion device is part of
positioning the energy transmitting device in relation to the target tissue
area." Id. at 7-8. The Examiner also finds that "[t]he movement of the lead
body to further position the electrodes is only to refine the location of the
electrodes." Id. at 8 (citing Hull, col. 4, 11. 40-53). Again, we agree with the
Examiner.
For the foregoing reasons, we discern no error in the Examiner's
findings and agree that Hull anticipates claims 75-78, 80-83, 85-88, 90, 91,
and 94-98.
Obviousness of Claim 79 over Hull and Reid
Other than observing that "Reid does not cure the deficiency of Hull,
as discussed above in regard to claim 76" (Appeal Br. 9; see also Reply Br.
11 ), we understand Appellants' appeal of the rejection of claim 79,
dependent on claim 7 6, rests on the arguments presented against the
rejection of claim 75, which we found not demonstrative of error in the
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Application 13/658,384
Examiner's rejection of claims 75-78, 80-83, 85-88, 90, 91, and 94--98, as
set forth supra.
Obviousness of Claims 84, 89, 92, and 93 over Hull and Hussein
Other than observing that "Reid [sic] does not cure the deficiency of
Hull, as discussed above in regard to claims 76 [sic] and 86" (Appeal Br. 10;
see also Reply Br. 12), we understand Appellants' appeal of the rejection of
claim 84, and the rejection of claims 89, 92, and 93, rests on the arguments
presented against the rejection of claim 75 and 86, which we found not
demonstrative of error in the Examiner's rejection of claims 75-78, 80-83,
85-88, 90, 91, and 94--98, as set forth supra.
DECISION
We affirm the Examiner's rejections.
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)(l )(iv).
AFFIRMED
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