Ex parte Wei Li Fan

• Docket Number: 2023-001396,Application 14/012,320,Technology Center 3700
• Decision Date: 28 December 2023
• Parties: Ex parte WEI LI FAN, RAFAEL CORDERO, STEPHEN GRIFFIN, BENEDICT SHIA, SERGEI BABKO-MALYI, STEPHEN M. MCCARTIN, and BRIAN M. HANLEY
• Court: Patent Trial and Appeal Board

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Ex parte WEI LI FAN, RAFAEL CORDERO, STEPHEN GRIFFIN, BENEDICT SHIA, SERGEI BABKO-MALYI, STEPHEN M. MCCARTIN, and BRIAN M. HANLEY

No. 2023-001396

Application 14/012,320

Technology Center 3700

United States Patent and Trademark Office, Patent Trial and Appeal Board

December 28, 2023

FILING DATE 08/28/2013

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Before JOSEPH A. FISCHETTI, KENNETH G. SCHOPFER, and BRADLEY B. BAYAT, Administrative Patent Judges.

DECISION ON APPEAL

KENNETH G. SCHOPFER, Administrative Patent Judge.

STATEMENT OF THE CASE

Pursuant to 35 U.S.C. § 134(a), Appellant^[1] appeals from the Examiner's decision to reject claims 2, 9, 15, 19, 56, 58-81, 83-86, 89-98. See Non-Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b).

We REVERSE.

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CLAIMED SUBJECT MATTER

The Specification describes that "[t]he present invention relates generally to cryospray systems, cryogenic spray ablation and cryosurgery systems, and more particularly to an assortment of improved cryogen delivery catheters for use in cryospray and cryosurgery systems." Spec. ¶ 1. The claims are directed to cryospray catheters. Claim 2, reproduced below, illustrates the claimed subject matter:

2. A catheter for use with an endoscope comprising a multilayer construction for delivering low pressure cryogen spray to a treatment area, wherein said catheter comprises a proximal end configured to connect to a cryospray apparatus and an open-ended distal end configured for the output of cryogen spray, said distal end having a blunt tip geometry and a pre-formed curve, whereby a central axis of the distal end outside of the endoscope during use is co-axial with a central axis of the endoscope, wherein said catheter is configured to retroflex during delivery of the cryogen spray to the treatment area

Appeal Br. 26 (Claims App.).

REFERENCES

The Examiner relies on the following references to reject the claims:

Name	Reference	Date
Naderlinger	US 5,720,764	Feb. 24, 1998
Li	US 6,237,355 B1	May 29, 2001
Little et al.	US 6,306,129 B1	Oct. 23, 2001
Dobak, III et al.	US 6,464,716 B1	Oct. 15, 2002
Johnston et al.	US 2002/0143323 A1	Oct. 3, 2002
Lewis et al.	US 2004/0024392 A1	Feb. 5, 2004
Castellano et al.	US 2005/0027289 A1	Feb. 3, 2005
Deem et al.	US 2007/0123852 A1	May 31, 2007
Fourkas et al.	US 2008/0312644 A1	Dec. 18, 2008
Boveda	US 2010/0191232 A1	July 29, 2010

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Gnanashanmugam et al.	US 2013/0204068 A1	Aug. 8, 2013
Engelman et al.	US 2014/0018788 A1	Jan. 16, 2014
Lynch	Polyimide Tubing: Dispelling the Myths, Microlumen, https://www.microlumen.com/ news/articles/polyimide-tubing-dispelling-myths/	Nov. 2, 2011

REJECTIONS

The Examiner maintains the following rejections:

Claim(s) Rejected	35 U.S.C. §	Reference(s)/ Basis
2, 9, 15, 58-60, 62-69	103	Johnston, Castellano
56	103	Johnston, Castellano, Li, Engelman
61	103	Johnston, Castellano, Lynch
19, 71, 74-81, 83, 84, 92, 93	103	Johnston, Castellano, Naderlinger, Lewis
70, 73, 94	103	Johnston, Castellano, Naderlinger, Lewis, Gnanashanmugam
72	103	Johnston, Castellano, Naderlinger, Lewis, Li
85, 86	103	Johnston, Castellano, Naderlinger, Lewis, Little
89-91	103	Johnston, Castellano, Naderlinger, Lewis, Boveda, Deem
95, 96, 98	103	Johnston, Castellano, Naderlinger, Lewis, Dobak
97	103	Johnston, Castellano, Naderlinger, Lewis, Dobak, Fourkas

DISCUSSION

We are persuaded of error in the rejection of each of the independent claims by Appellant's argument that the Examiner has not established that it

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would have been obvious to modify Johnston to including a pre-formed curve as claimed.

Regarding each of the independent claims, the Examiner finds that Johnston teaches a catheter as claimed except for the claim requirement that the distal end of the catheter has a preformed curve "whereby a central axis of the distal end outside of the endoscope during use is co-axial with a central axis of the endoscope" as recited in claim 2. See Non-Final Act. 3. The Examiner relies on Castellano as teaching a catheter with a preformed curve, and the Examiner determines that it would have been obvious to modify Johnston with a preformed curve as taught by Castellano. Id. (citing Castellano ¶ 46); see also Ans. 3-4 (citing Castellano Fig. 6, 9; ¶ 42). The Examiner finds that Castellano is capable of performing the function of the "whereby" clause. Non-Final Act. 3-4. The Examiner explains that "the pre-formed bend may be formed to position the cryogen for optimal delivery according to a user, and as such, this functional language does not structurally define the instant claim over the teaching in Castellano." Id. at 4.

Independent claim 2, for example, recites a catheter for use with an endoscope and including a distal end having a pre-formed curve such that "a central axis of the distal end outside of the endoscope during use is co-axial with a central axis of the endoscope." Appeal Br. 26 (Claims App.). The Specification discloses that the invention is directed to "a catheter apparatus that allows for evenly distributed cryospray treatment of a tissue cavity within the human body." Spec. ¶ 5. The Specification describes that most cryoablation procedures are performed using bronchoscopes with a cryospray catheter inserted therethrough and that the catheter is often

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inserted through a working channel of the bronchoscope that is offset from the center. Id. The invention "allows for centering of...