Pacestter, Inc.

Patent Trials and Appeals Board

Sep 2, 2021

2021000785 (P.T.A.B. Sep. 2, 2021)

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.
15/233,782 08/10/2016 Conrad Juergens A16P1018USO
(013-0355US1)
5180
152583 7590 09/02/2021
Pacesetter, Inc.
The Small Patent Law Group, LLC
1423 Strassner Dr.
Suite 100
Brentwood, MO 63144
EXAMINER
PREMRAJ, CATHERINE C
ART UNIT PAPER NUMBER
3794
NOTIFICATION DATE DELIVERY MODE
09/02/2021 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
docket@splglaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CONRAD JUERGENS
Appeal 2021-000785
Application 15/233,782
Technology Center 3700
Before BRETT C. MARTIN, LISA M. GUIJT, and LEE L. STEPINA,
Administrative Patent Judges.
MARTIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–11 and 20. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Pacesetter, Inc.
Appeal Br. 2.
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CLAIMED SUBJECT MATTER
The claims are directed to “methods and apparatuses for denervation
of the genicular nerves to reduce chronic pain in the knee.” Spec. ¶ 1.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A method of treating chronic pain in the knee, the method
comprising:
puncturing a target site of a patient with a distal portion of
a radiofrequency denervation probe to allow access to at least
one genicular nerve;
advancing the radiofrequency denervation probe towards
the at least one genicular nerve;
activating a steering mechanism of the radiofrequency
denervation probe to cause a distal portion of a shaft of the
radiofrequency denervation probe to bend at a bend joint in the
shaft in a desired direction relative to a proximal portion of the
shaft;
advancing the bent radiofrequency denervation probe
adjacent to the at least one genicular nerve; and
creating one or more lesions on the at least one genicular
nerve;
wherein the distal portion of the shaft includes at least one
directional ablation electrode located distal to the bend joint in
the shaft.
REFERENCES
The prior art relied upon by the Examiner is:
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Name Reference Date
Daniel US 2002/0133148 A1 Sept. 19, 2002
Godara US 2006/0259026 A1 Nov. 16, 2006
Rittman US 2008/0200972 A1 Aug. 21, 2008
Ku US 2012/0116382 A1 May 10, 2012
Pellegrino US 2012/0330300 A1 Dec. 27, 2012
Choi, Woo-Jong et al., Radiofrequency treatment relieves chronic knee
osteoarthritis pain: A double-blind randomized control trial, International
Association for the Study of Pain, Sept. 29, 2010.

REJECTIONS
Claims 1–5 and 7–11 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Choi, Pellegrino, Rittman, and Godara. Final Act. 2.
Claim 6 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Choi, Pellegrino, Rittman, Godara, and Daniel. Final Act. 10.
Claim 20 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Choi, Pellegrino, Rittman, Godara, and Ku. Final Act. 11.
OPINION
Obviousness
Appellant argues generally that the Examiner cobbles together
allegedly unrelated prior art references to make up for the deficiencies of
Choi. See generally Appeal Brief. For example, Appellant points out
various operations of claim 1 and then asserts that “Choi does NOT DO
ANY of these operations” and asserts that the Examiner “goes on to pick and
choose features from three additional references to reconstruct all of the
operations of claim 1,” and thus “is using improper hindsight reconstruction
and has not established a prima facie case of obviousness.” Appeal Br. 13.
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Appellant is correct that Choi does not teach the specific method
found in claim 1, but fails to acknowledge that Pellegrino does teach almost
all of the method steps found therein. Although the Examiner used Choi as
the base reference, the rejection could just as easily have been constructed as
Pellegrino in view of Choi. In that case, Pellegrino would teach most of the
method steps, but would lack the specific treatment or target location being
the genicular nerve of the knee. Then Choi would simply have been used for
the teaching that treating chronic pain was also known to be performed on
the knee.
Regardless, the result is the same. The prior art teaches that it is
known to treat chronic pain by performing therapeutic RF treatment at the
genicular nerve as taught in Choi. Choi teaches a different manner of
treating such pain, but Pellegrino teaches that one may also treat pain using
RF at a particular nerve, spinal nerves in the case of Pellegrino, using a
method very similar to that found in Appellant’s claims. Appellant does not
offer persuasive evidence or argument that one of ordinary skill in the art
would not have looked to Pellegrino as an alternative RF method for treating
pain in the genicular nerve. Appellant, for example, provides no evidence
that those of skill in the art had tried, but failed in using Pellegrino’s method
for genicular nerve pain, nor does Appellant offer any evidence that there
would have been particular hurdles in adapting Pellegrino’s method for use
at nerve locations other than the spine.
Regarding Rittman, Appellant argues that “Choi and Rittman are
directed to methods and systems to treat fundamentally different anatomies
and utilize fundamentally different treatment structures.” Appeal Br. 18.
Although this may be true, Appellant overlooks the applicability of Rittman
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to the Choi/Pellegrino combination. The advantage of Rittman is that by
using a trocar, a practitioner need not have additional tools for creating an
opening to the treatment site. Choi and/or Pellegrino would require a
separate step of excising tissue to create a path for the treatment device to
arrive at the treatment site. Appellant does not offer a persuasive argument
against the Examiner’s finding that “the modification would diminish the
need for any introducer assembly in inserting the probe, which would reduce
the bulk of the system and complexity of the method.” Final Act. 4.
Further, regarding the combination, Appellant argues that the
Examiner’s modification by way of the teachings of Rittman “would have no
use in Choi’s knee.” Appeal Br. 23. The Examiner, however, does not use
the method of Choi, but merely uses Choi to teach that it was known to
target the genicular nerve for pain therapy. The modification being
proposed is actually to Pellegrino’s method, for which Rittman’s
modification would be suitable. Appellant provides no argument as to why
Rittman is not combinable with Pellegrino, which would have been the
proper course for the proposed combination.
Lastly, as to Godara, Appellant again argues against its combination
with Choi. See Appeal Br. 26. As shown in Pellegrino, however, a flexible,
curved device is deployed using a straight sheath, wherein the sheath
maintains the curved portion in a straight configuration until the treatment
site is reached by the device. At that point, the curved portion is deployed
from the end of the sheath. In Pellegrino, there is no ability to steer the
curved portion as it relies on shape memory. Godara, however, teaches the
ability to utilize a straight device with the ability to curve on demand. As
such, Godara is an improvement in maneuverability over what is taught in
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Pellegrino. As with Rittman, Appellant argues against the combination of
Choi with Godara, but does not address the actual modification, which is the
improvement of Pellegrino’s curved portion with Godara’s ability to steer
the tip rather than relying on shape memory alone. Accordingly, we are not
persuaded of error in the Examiner’s rejection of claim 1.
As to claim 2, Appellant mischaracterizes the Examiner’s rejection by
stating that Pellegrino fails to teach the claimed steering mechanism.
Appeal Br. 28–29. As the Examiner points out, however, “Pellegrino is
specifically cited here in order to show that the radiofrequency denervation
probe is advanced towards the target nerve until the distal portion of the
probe has passed a lateral-most aspect of a bone adjacent to the at least one
target nerve ([0110]–[0112]).” Ans. 20. The Examiner has already found
that the steering mechanism of claim 1 is taught in Godara. The Examiner
finds the necessary teaching for the specifics of the deployment of the distal
end in Pellegrino found in claim 2, which is not the steering as argued by
Appellant.
Appellant likewise argues that Pellegrino fails to teach steering, which
is not what the Examiner is using for teaching the subject matter of claim 3.
As with claim 2, the steering is found in Godara, which Appellant does not
argue with regard to claim 3, and the Examiner merely uses Pellegrino for
the specific angle of curvature. Pellegrino teaches that the curvature may be
from a few degrees up to 180 degrees, which encompasses the claimed 15–
20 degrees. Accordingly, we are not persuaded of error.
Regarding claims 4, 5, and 7–9, Appellant relies on the arguments
above with respect to claim 1, which we have already found unpersuasive.
See Appeal Br. 30–31. As to claim 10, Appellant merely reiterates the same
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arguments as discussed above with claim 1. Likewise, Appellant reiterates
the arguments with respect to claim 3 in arguing claim 11. Similarly,
Appellant argues claim 6 as allowable for the same reasons as claim 1.
Appeal Br. 42. Accordingly, we are not apprised of error in the rejection of
these claims for the reasons already stated.
Appellant relies on the same arguments as discussed above with
respect to the rejection of claim 20 as to Choi, Pellegrino, Rittman, and
Godara. As to Ku, Appellant again argues Ku’s incompatibility with Choi
rather than Pellegrino. Appellant does not dispute Ku’s teaching as it
applies to claim 20, merely that one of skill in the art would not combine Ku
with Choi. As with claim 1, we find this argument unpersuasive.
CONCLUSION
The Examiner’s rejections are affirmed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–5, 7–11 103 Choi, Pellegrino,
Rittman, Godara
1–5, 7–11
6 103 Choi, Pellegrino,
Rittman, Godara,
Daniel
6
20 103 Choi, Pellegrino,
Rittman, Godara,
Ku
20
Overall
Outcome
1–11, 20

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TIME PERIOD FOR RESPONSE
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