MINERVA SURGICAL, INC.

Patent Trials and Appeals Board

Mar 2, 2022

2021003070 (P.T.A.B. Mar. 2, 2022)

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. 15/268,027 09/16/2016 EUGENE SKALNYI 37646-725.201 4256 21971 7590 03/02/2022 WILSON SONSINI GOODRICH & ROSATI 650 PAGE MILL ROAD PALO ALTO, CA 94304-1050 EXAMINER DELLA, JAYMI E ART UNIT PAPER NUMBER 3794 NOTIFICATION DATE DELIVERY MODE 03/02/2022 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 EUGENE SKALNYI ____________ Appeal 2021-003070 Application 15/268,027 Technology Center 3700 ____________ Before DANIEL S. SONG, ANNETTE R. REIMERS, and BRANDON J. WARNER, Administrative Patent Judges. WARNER, 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, 3-12, and 16-21.2 Appeal Br. 3; Non-Final Act. 1 (Office Action Summary). We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to the “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Minerva Surgical, Inc. Appeal Br. 3. 2 We note that pending claim 13 does not appear to presently stand rejected. See infra note 3. Appeal 2021-003070 Application 15/268,027 2 CLAIMED SUBJECT MATTER Appellant’s disclosed invention “relates to electrosurgical methods and devices for global endometrial ablation in a treatment of menorrhagia.” Spec. ¶ 3. Claims 1 and 12 are independent. Claim 1, reproduced below with emphasis added, is illustrative of the subject matter on appeal. 1. A gynecologic method performed by a user having an energy applicator and a controller, said method comprising: introducing a working end of the energy applicator through a patient’s endocervical canal and into the patient’s uterine cavity; introducing via the controller a gas into the uterine cavity through a shaft of the energy applicator while the working end of the energy applicator is being introduced through the patient’s endocervical canal and into the patient’s uterine cavity; and deploying via the controller a sealing member on the shaft proximal to the working end in the endocervical canal after the working end of the energy applicator has been introduced into the patient’s uterine cavity and while the gas continues to be introduced through the shaft into the uterine cavity; wherein the user visually monitors a flow meter on the controller that indicates a gas flow rate into the uterine cavity while the gas continues to be introduced into the uterine cavity through the shaft; and wherein the user manually expands the working end of the energy applicator within the uterine cavity only after first observing that the [gas] flow rate indicated by the flow meter exceeds a minimum threshold flow rate and thereafter observing that the [gas] flow rate indicated by the flow meter falls to approximately zero while the gas continues to be introduced into the uterine cavity through the shaft. Appeal 2021-003070 Application 15/268,027 3 EVIDENCE The Examiner relies on the following evidence in rejecting the claims on appeal: Sampson US 6,554,780 B1 Apr. 29, 2003 Muller US 2003/0097130 A1 May 22, 2003 Stout US 2012/0316460 A1 Dec. 13, 2012 Truckai US 2013/0304060 A1 Nov. 14, 2013 Toth US 2013/0310705 A1 Nov. 21, 2013 Filloux US 10,213,151 B2 Feb. 26, 2019 REJECTIONS The following rejections are before us for review:3 I. Claims 1, 3-5, 11, 12, and 16-18 stand rejected under 35 U.S.C. § 103 as being unpatentable over Toth, Sampson, and Truckai. Non-Final Act. 3-9. 3 We note that the Non-Final Office Action (dated June 16, 2020) includes a rejection of claims 1, 3-13, and 16-21 on the ground of nonstatutory obviousness-type double patenting. Non-Final Act. 13. Appellant subsequently filed a Terminal Disclaimer (dated Jan. 27, 2021), which was entered into the record, seemingly obviating this rejection. However, the Examiner’s Answer (dated Feb. 23, 2021) does not formally withdraw this rejection. As this rejection is not contested in the appeal (it is not identified as a ground of rejection to be reviewed on appeal by Appellant (Appeal Br. 6) and it is not included in the grounds of rejection applicable to the appealed claims in the Examiner’s Answer (Ans. 3)), we consider it effectively withdrawn and conclude that it is not before us for review as part of the instant appeal. Should there be further prosecution of this application, the Examiner may wish to enter a formal withdrawal of this rejection. As a result of the effective withdrawal of this rejection, pending claim 13 does not appear to presently stand rejected, as this claim is not currently subject to a prior art rejection. See Non-Final Act. 3-11. Appeal 2021-003070 Application 15/268,027 4 II. Claims 6 and 19 stand rejected under 35 U.S.C. § 103 as being unpatentable over Toth, Sampson, Truckai, and Muller. Id. at 10. III. Claims 7-10, 20, and 21 stand rejected under 35 U.S.C. § 103 as being unpatentable over Toth, Sampson, Truckai, Muller, and Stout. Id. at 10-11. ANALYSIS Rejection I - Claims 1, 3-5, 11, 12, and 16-18 Appellant presents argument against the rejection of independent claims 1 and 12 together, and does not set forth any additional arguments for the other claims subject to Rejection I. See Appeal Br.6-8. We select claim 1 as representative of the issue that Appellant presents in this appeal, with claims 3-5, 11, 12, and 16-18 standing or falling therewith. See 37 C.F.R. § 41.37(c)(1)(iv). Appellant argues that the rejection is improper based on a contention that the claim recitations emphasized above (the user visually monitoring and expanding only after observing certain gas flows) are “entirely absent in Toth and the other art of record.” Appeal Br. 7; see id. at 7-8. After careful consideration of the record before us, Appellant’s argument does not apprise us of error in the Examiner’s factual findings from the cited references, which are supported by a preponderance of the evidence, or the Examiner’s reasonable conclusion of obviousness, which is rationally articulated based on prior art teachings. In short, we sustain the Examiner’s rejection of claim 1 based on the reasoned positions set forth therein, and in light of the Examiner’s thorough responses to Appellant’s arguments. See Non-Final Appeal 2021-003070 Application 15/268,027 5 Act. 3-6; Ans. 4-7.4 We address Appellant’s principal contention below simply as a matter of emphasis. To reiterate, Appellant’s contention is that the disclosure relied on from Toth is insufficient to render obvious to a person of ordinary skill in the art that the user would visually monitor a flow meter displayed on the controller and expand the working end of the energy applicator only after observing certain gas flows. See Appeal Br. 7-8. But, as the Examiner explains, Toth teaches a user performing the same tasks under the same conditions with a controller that includes a display of gas flow information. See Ans. 5-6 (citing, inter alia, Toth ¶¶ 48, 52, 59). Appellant’s position, which insists that the user would not monitor or observe this displayed data absent an explicit instruction to do so, is not credible. Indeed, if not for observation by the user, it is difficult to imagine what purpose would be served by displaying the data in Toth. In this regard, Appellant’s position seemingly disregards that “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). It must be appreciated that the obviousness analysis under 35 U.S.C. § 103 presumes not only common sense, but also skill in the art. See In re Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985). 4 In addition to noting our agreement with the reasonable explanation provided in the Examiner’s Answer, we note the lack of any identification of error with regard to that explanation. Although Appellant ostensibly filed a Reply Brief (dated Apr. 5, 2021), and page 1 thereof appears to be directed to this application, pages 2-4 thereof appear to be directed to a different application. See Reply Br. 1-4. As the filing of a Reply Brief is optional, we simply disregard the substance of the seemingly erroneous filing and decide the issue disputed by Appellant on the basis of the argument presented in the Appeal Brief. Appeal 2021-003070 Application 15/268,027 6 We note that any other arguments not specifically addressed in detail herein have been thoroughly considered by the panel but are not persuasive for the reasons discussed supra and those well expressed in the Examiner’s Answer. After careful consideration of all the evidence of record, Appellant’s contention does not apprise us of error in the Examiner’s findings or reasoning in support of the conclusion of obviousness. Accordingly, we sustain the rejection of independent claim 1, and claims 3-5, 11, 12, and 16-18 falling therewith, under 35 U.S.C. § 103. Rejections II and III - Claims 6-10 and 19-21 With respect to the rejections of claims 6-10 and 19-21, which depend directly or indirectly from one of independent claims 1 and 12, Appellant does not set forth any additional substantive arguments separate from that discussed above with respect to Rejection I. Appeal Br. 8. For the same reasons that Appellant’s argument does not apprise us of error in Rejection I, we are likewise not apprised of error in Rejections II and III. Accordingly, we sustain the rejections of claims 6-10 and 19-21 under 35 U.S.C. § 103. DECISION We AFFIRM the Examiner’s decision rejecting claims 1, 3-5, 11, 12, and 16-18 under 35 U.S.C. § 103 as being unpatentable over Toth, Sampson, and Truckai. Appeal 2021-003070 Application 15/268,027 7 We AFFIRM the Examiner’s decision rejecting claims 6 and 19 under 35 U.S.C. § 103 as being unpatentable over Toth, Sampson, Truckai, and Muller. We AFFIRM the Examiner’s decision rejecting claims 7-10, 20, and 21 under 35 U.S.C. § 103 as being unpatentable over Toth, Sampson, Truckai, Muller, and Stout. 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). CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3-5, 11, 12, 16-18 103 Toth, Sampson, Truckai 1, 3-5, 11, 12, 16-18 6, 19 103 Toth, Sampson, Truckai, Muller 6, 19 7-10, 20, 21 103 Toth, Sampson, Truckai, Muller, Stout 7-10, 20, 21 Overall Outcome 1, 3-12, 16-21 AFFIRMED