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UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte SCOTT E. JAHNS, GARY S. OEHME,
MATTHEW D. BONNER, and JAMES R. KEOGH
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Appeal 2009-000620
Application 10/341,743
Technology Center 3700
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Decided: September 18, 2009
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Before TONI R. SCHEINER, LORA M. GREEN, 1 and
FRANCISCO C. PRATS, Administrative Patent Judges.
SCHEINER, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appellants have requested rehearing of the decision entered March 11,
2009 (“Decision”), in which we affirmed the Examiner’s rejections of the
claims under 35 U.S.C. § 103(a). The request for rehearing is denied.
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APJ Green is replacing APJ McCollum on the panel, as APJ McCollum is
unavailable.
Appeal 2009-000620
Application 10/341,743
DISCUSSION
In affirming the Examiner’s rejections of the claims, we determined
that the Examiner had established that it would have been obvious for one
skilled in the art to inject a substance through the epicardial surface and into
the myocardium of a beating heart, sensing contractions of the heart and
injecting the substance between contractions, given Chiu’s disclosure of a
method of injecting a substance into the myocardium of a stabilized heart
and Duchon’s disclosure of a number of conventional ways of sensing
contractions during a procedure involving a living, beating heart.
Appellants contend that we “misapprehend[ed] the disclosure[s]” of
the Chiu and Duchon references in reaching our decision (Req. Reh’g. 4).
Appellants contend that Chiu “makes absolutely no representation . . . as to
any matter of control with respect to the advancement of the needles into the
heart tissue or the actual injection of substance from the needles into the
heart tissue” (Req. Reh’g. 5). Appellants contend that Chiu merely
“disclose[s] that one may move the disc and its needles perpendicularly
away from the heart, after the puncturing or injecting process, to avoid
myocardial tear” (id.).
This argument is not persuasive. Chiu does discuss controlling the
process of advancing the needles and injecting a substance into the
myocardium. Specifically, Chiu teaches that the myocardium should be
stabilized using manual traction, and the disc holding the needles should be
pressed firmly against the surface of the heart during injection (Decision
FF2, FF3). In other words, the heart should be held still during injection
and there should be minimal relative movement between the myocardium
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Appeal 2009-000620
Application 10/341,743
and the disc when the trigger exposing the needles is pulled. Moreover,
Chiu teaches that the needles should be removed perpendicularly to avoid
tearing the myocardium. Even though Chiu doesn’t explicitly say so, it
logically follows that the needles should go in perpendicularly as well to
avoid unnecessarily tearing the myocardium, as opposed to simply
puncturing it. As we explained in our opinion, one of skill in the art would
understand that this would be easiest to do, and the myocardium would be
least susceptible to tearing, when the heart is at its most relaxed, i.e., most
still, during diastole, the period between contractions.
Appellants contend that “[t]iming is rendered irrelevant” in Chiu’s
method because the heart is stabilized by manual traction, while Duchon
senses contractions of the heart for an entirely different purpose. Appellants
contend that Duchon only senses diastole in order to time the injection of
contrast fluid into a blood vessel during angiography (Req. Reh’g. 6).
Appellants contend that Duchon’s disclosure “is no more relevant to the
disclosure of the Ch[iu] reference than any method of monitoring a person’s
heart beat” (id. at 5-6).
This argument is not persuasive. We have already acknowledged that
“Chiu’s and Duchon’s methods are distinct, and elicit different concerns”
(Decision 7). However, as we concluded previously, “[o]ne of skill in the
art would understand that damage to the myocardium would be easiest to
avoid between contractions, when the heart muscle is relaxed and relatively
quiescent” (id. at 8). Duchon’s relevance to Chiu’s method is simply that it
provides evidence that it is conventional to use a sensor to determine
whether the heart is in systole or diastole.
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Appeal 2009-000620
Application 10/341,743
Appellants’ Request for Rehearing does not persuade us that we
misapprehended the disclosures of the references in reaching the conclusions
set forth in the Decision. We therefore decline to modify our decision.
REHEARING DENIED
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