Truckai, Csaba et al.

Patent Trials and Appeals BoardNov 15, 2019

15091402 - (D) (P.T.A.B. Nov. 15, 2019)

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. 15/091,402 04/05/2016 Csaba Truckai 48428-704.301 1059 21971 7590 11/15/2019 WILSON, SONSINI, GOODRICH & ROSATI 650 PAGE MILL ROAD PALO ALTO, CA 94304-1050 EXAMINER BEHRINGER, LUTHER G ART UNIT PAPER NUMBER 3793 NOTIFICATION DATE DELIVERY MODE 11/15/2019 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): patentdocket@wsgr.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CSABA TRUCKAI and BENEDEK ORCZY-TIMKO Appeal 2019-001767 Application 15/091,402 Technology Center 3700 BEFORE PHILLIP J. KAUFFMAN, JEREMY M. PLENZLER, and ALYSSA A. FINAMORE, Administrative Patent Judges. PLENZLER, 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 1–16, 18–20, and 22–27. Claim 17 has been withdrawn from consideration. Claims 21 and 28–30 are cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 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 Cirrus Technologies Ltd. Appeal Br. 3. Appeal 2019-001767 Application 15/091,402 2 CLAIMED SUBJECT MATTER Claim 1 is independent, with claims 2–16, 18–20, and 22–27 depending from claim 1. Claim 1 is reproduced below: 1. An electrosurgical device comprising: an elongate shaft having an axis and a window in a distal portion thereof; a wire-like electrode having an axially aligned centerline and an axially aligned spine radially offset from the centerline; and a motor operatively connected to the centerline of the wire-like electrode to rotationally oscillate the spine of the wire- like electrode in an arc back and forth between opposing sides of the window to abut the opposing sides at the end of each arc to cut tissue received in the window. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Germain US 2013/0296847 A1 Nov. 7, 2013 Crow US 5,662,647 Sept. 2, 1997 Robertson US 2011/0196401 A1 Aug. 11, 2011 Goble US 2004/0102770 A1 May 27, 2004 REJECTIONS 1. Claims 1–4, 8–15, 18–20, and 22–27 are rejected under 35 U.S.C. § 103 as being unpatentable over Germain and Crow. Final Act. 3. 2. Claims 5–7 are rejected under 35 U.S.C. § 103 as being unpatentable over Germain, Crow, and Robertson. Final Act. 8. 3. Claim 16 is rejected under 35 U.S.C. § 103 as being unpatentable over Germain, Crow, and Goble. Final Act. 9. Appeal 2019-001767 Application 15/091,402 3 OPINION The Examiner finds that Germain teaches the majority of elements recited in claim 1, “but fails to disclose the wire-like electrode having an axially aligned centerline and an axially aligned spine radially offset from the centerline.” Final Act. 3. The Examiner finds that “Crow teaches the wire-like electrode, 60/62, having an axially aligned centerline, 30, and an axially aligned spine radially offset from the centerline,” and proposes modifying Germain’s teachings accordingly. Id. at 4 (emphasis omitted). Although the Examiner finds that Germain teaches the recited motor, generally, the Examiner determines, without further explanation, that [t]he phrase “to rotationally oscillate the spine of the wire-like electrode in an arc back and forth between opposing sides of the window to abut the opposing sides at the end of each arc to cut tissue received in the window” is considered a statement of intended use and fails to impart further structural elements to the claim. Id. The Examiner finds that “[t]he device of Germain in view of Crow is considered capable of performing as claimed.” Id. Appellant contends that “the language imparts clear structure, e.g. as illustrated in Figs 12A and l2B” (i.e., it defines the configuration of the motor, albeit in functional terms). Appeal Br. 9. Appellant further contends Germain does not disclose an electrode that oscillates within a window and which abuts the opposing sides of the window at each end of the oscillary arc to cut tissue. Id. at 8. Appellant’s argument is persuasive. The claim requires a device that causes the electrode to “abut the opposing sides [of the window] at the end of each arc.” The dispositive issue before us is whether the electrode in Germain abuts the opposing sides of its window. The dispute focuses on the meaning of the term “abut.” Appeal 2019-001767 Application 15/091,402 4 The Examiner cites a dictionary definition of the verb “abut,” which defines “abut” as “to be adjacent to; border on; end at.” Ans. 3 (citing Dictionary.com). According to the Examiner, Germain’s tissue-cutting device satisfies the quoted limitation when “abut” is defined in this manner. Id. In response, Appellant cites an alternative definition of the verb “abut,” namely, “to cause to touch or lean for support.” Reply Br. 2 (citing https://www.merriam-webster.com/dictionary/abut). Unlike the definition proposed by the Examiner, the definition proposed by Appellant is consistent with Appellant’s Specification. See Spec. ¶ 55, Fig. 12A. Based on the record before us, we determine that the broadest reasonable interpretation of the phrase “to abut the opposing sides at the end of each arc,” as used in claim 1, requires that the wire-like electrode touches or leans on the opposing sides at the end of each arc of rotation. The Examiner makes no finding that Germain’s device abuts its window, as required under the correct interpretation of that term. Rather, the Examiner’s rejection requires that “abut” merely requires “adjacent.” See Ans. 2 (“As the term ‘abutting’ is a broad term, encompassing being adjacent, the rotation of the electrode 725 of Germain is considered to ‘abut’ the window.”). The Examiner’s reliance on Crow in the rejection of claim 1 does not remedy the deficiency in the teachings of Germain noted above. Therefore, we do not sustain the rejection of claims 1–4, 8–15, 18–20, and 22–27 under 35 U.S.C. § 103 as being unpatentable over Germain and Crow. Robertson and Goble, as applied to claims 5–7 and 16, respectively, also fail to remedy the deficiency in the teachings of Germain. Therefore, we do not sustain the rejection of claims 5–7 under 35 U.S.C. § 103 as Appeal 2019-001767 Application 15/091,402 5 unpatentable over Germain, Crow, and Robertson; or the rejection of claim 16 under 35 U.S.C. § 103 as unpatentable over Germain, Crow, and Goble. CONCLUSION The Examiner’s rejections are reversed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–4, 8–15, 18–20, 22– 27 103 Germain, Crow 1–4, 8–15, 18–20, 22– 27 5–7 103 Germain, Crow, Robertson 5–7 16 103 Germain, Crow, Goble 16 Overall Outcome 1–16, 18– 20, 22–27 REVERSED