Pacestter, Inc.Download PDFPatent Trials and Appeals BoardSep 2, 20212021000785 (P.T.A.B. Sep. 2, 2021) Copy Citation 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. Appeal 2021-000785 Application 15/233,782 2 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: Appeal 2021-000785 Application 15/233,782 3 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. Appeal 2021-000785 Application 15/233,782 4 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 Appeal 2021-000785 Application 15/233,782 5 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 Appeal 2021-000785 Application 15/233,782 6 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 Appeal 2021-000785 Application 15/233,782 7 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 Appeal 2021-000785 Application 15/233,782 8 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 Copy with citationCopy as parenthetical citation