ADVANCED BIONICS AG et al.

Patent Trials and Appeals Board

Dec 4, 2020

2020001785 (P.T.A.B. Dec. 4, 2020)

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.
15/568,469 10/21/2017 Jeryle L. Walter 2000-148 (15-00004-01) 1031
67074 7590 12/04/2020
HENRICKS SLAVIN LLP
ADVANCED BIONICS AG
PO Box 341689
Austin, TX 78734
EXAMINER
FLORY, CHRISTOPHER A
ART UNIT PAPER NUMBER
3792
MAIL DATE DELIVERY MODE
12/04/2020 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JERYLE L. WALTER and SUNG JIN LEE

Appeal 2020-001785
Application 15/568,469
Technology Center 3700
____________

Before KEVIN F. TURNER, JAMES P. CALVE, and
JILL D. HILL, Administrative Patent Judges.

HILL, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellant1 requests rehearing under 37 C.F.R. § 41.52 of our Decision
of July 27, 2020 (“Decision” or “Dec.”), wherein we affirmed the
Examiner’s rejection of claims 1–4, 6–18, and 20–24 under 35 U.S.C.
§ 103(a). See Request for Rehearing filed September 26, 2020 (“Request”
or “Req. Reh’g”).
The Request is DENIED.

1 We use the word Appellant to refer to the “applicant” as defined in 37
C.F.R. § 1.42. Appellant identified Advanced Bionics AG as the real party
in interest. Dec. 1.
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DISCUSSION
A request for rehearing must state with particularity the point(s)
believed to have been misapprehended or overlooked. 37 C.F.R.
§ 41.52(a)(1) (2018). According to Appellant, the Board misapprehended
and misapplied In re Applied Materials, 692 F.3d 1289, 1297 (Fed. Cir.
2012) in agreeing with the Examiner that the Ekvall reference established
particle size and free space percentage as result-effective variables.
According to Appellant, the Decision takes a position that “in view of
Applied Materials, a statement in a reference that a particular variable may
be any value so long as the associated element is able to function as
intended establishes that variable as [a] result-effective variable that is
obvious to optimize.” Req. Reh’g 2. Appellant argues that this position
(1) conflicts with the actual holding of Applied Materials and with “a
plethora of relevant recent [PTAB] decisions that cite Applied Materials,”
(2) conflicts with portions of the MPEP citing Applied Materials, and
(3) would render rebuttal of an established result-effective variable
meaningless. Id. at 2–3.
In Applied Materials, three claimed variables –– depth, width, and
pitch –– associated with grooves on polishing pads were determined to be
result-effective variables. Applied Materials, 692 F.3d at 1297. The prior
art references in Applied Materials, unlike in the present case, disclosed
specific numerical values or ranges for the depth, width, and pitch of their
grooves. Applied Materials, 692 F.3d at 1293. In addition, the prior art
references in Applied Materials disclosed values and ranges that overlapped
with the claimed ranges. Applied Materials, 692 F.3d at 1293. Further,
Applied Materials had “admitted” that one skilled in the art, after reviewing
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the teachings of the prior art references, “‘would have understood that
polishing pads with grooves can be formed where at least the groove
dimensions . . . could have been modified [to change] the polishing rate and
pad characteristics. . . .’” Applied Materials, 692 F.3d at 1297 (citations
omitted).
In Applied Materials, the Federal Circuit noted that one of the prior
art references, Breivogel, disclosed that “pitch affects the polishing rate and
uniformity, and further indicates that one of ordinary skill in the art can alter
the pitch to achieve the desired polishing properties.” Applied Materials,
692 F.3d at 1296. The Federal Circuit also noted that the PTAB “found that
a person of ordinary skill in the art would have recognized that changing the
groove width would affect the polishing rate and uniformity,” and
determined that this was “a reasonable conclusion” because groove pitch and
width are related variables. Applied Materials, 692 F.3d at 1296. These
variables were optimized to achieve “desired polishing properties,” further
defined as polishing rate and uniformity. Id. Regarding the “depth”
variable, the Federal Circuit agreed with the PTAB that depth would have
been “recognized by one of ordinary skill to affect a particular result,
making it a result-effective variable.” Id. That particular result was
reasoned by the Examiner to be the polishing pad having a longer service
life. Id.
The Federal Circuit noted that, in cases where the prior art disclosure
was insufficient to establish a variable as result-effective, there was
“essentially no disclosure of the relationship between the variable and the
result in the prior art.” Applied Materials, 692 F.3d at 1297 (citing In re
Antonie, 559 F.2d 618, 619–20 (CCPA 1977) (finding variable not result-
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effective because the prior art neither disclosed the claimed ratio nor
recognized that a variable in the ration was relevant to the desired property)
and In re Yates, 663 F.2d 1054 (CCPA 1981) (finding variable not result-
effective because there was no evidence of the claimed relationship in the
prior art)). According to the Federal Circuit, “[w]hile the absence of any
disclosure regarding the relationship of the variable and the affected
property may preclude a finding that the variable is result-effective, the prior
art need not provide the exact method of optimization for the variable to be
result effective,” and the prior art’s recognition “that a property is affected
by the variable is sufficient to find the variable result effective.” Id.
Appellant contends that Applied Materials does not support a finding
that the claimed “mesh size” and percentage of “free space” were “known
result-effective variables that it would have been obvious to optimize.” Req.
Reh’g 4. Appellant also discusses treatment of Applied Materials in the
MPEP and various PTAB decisions, none of which is factually on-point or
binding on this panel. Id. at 4–6.
The facts of this case lie somewhere between the facts of Applied
Materials and the facts of In re Antonie and In re Yates cited therein. While
Ekvall indeed does not provide any values for its particle size/“mesh size”
and housing size/percentage of “free space,” neither is Ekvall silent on the
effect of magnetic particle size and the necessity for free space in its magnet
apparatus. Indeed, as set forth in the Decision, Ekvall discloses freely
floating magnetic elements in a case and, like Appellant, the desirability of
the particle and housing size being selected to “allow the magnetic elements
to rotate freely with respect to each other to align with a strong external
magnetic field, such as an MRI scanner.” Dec. 4; Ekvall ¶ 5 (“the magnetic
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elements and/or housings can be of any shape and size so long as the
magnetic elements are allowed to float or rotate within the casing” and “any
number of magnetic elements can be used within a single housing so long as
the magnetic elements are allowed to float or align with whatever external
magnetic field is strongest”).
Thus, in Ekvall, the size of the housing and the magnetic particle(s)
therein are directly linked to performance of its medical implant, because
allowing the implanted magnetic particle(s) to align with a magnetic field
prevents undesired stress on a patient’s body tissue around the implant and
allows the implant to continue functioning when in the presence of a
magnetic field such as an MRI. See Ekvall ¶¶ 4–5, 34, 39. Thus, while
Ekvall does not provide any values for its “mesh size” and percentage of
“free space,” it indeed establishes performance-based reasons for having the
housing and the magnetic particles therein sized and spaced so that the
magnetic particles can rotated in the housing. Further, like Applied
Materials’ pitch-width relationship, a skilled artisan would understand that
the size of Ekvall’s housing is directed to its ability to allow rotation of the
magnetic particles therein –– i.e., the housing size determines the amount of
free space around the particles. Thus, Ekvall also establishes performance-
based reasons for having a certain amount of (percentage of) free space
within its housing. See Dec. 9–10. The performance-based reasons for
varying Ekvall’s magnetic particle size and free space amount are, as
explained above, preventing stress on patient body tissue around the implant
and allowing the implant to continue functioning when in the presence of a
magnetic field such as an MRI.
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We disagree with Appellant that Ekvall’s statement that the magnetic
particles and housing can have “any shape and size so long as the magnetic
elements are allowed to float or rotate within the casing,” prevents its
particle size/mesh size and housing size/free space from being result-
effective variables. A skilled artisan, having read Ekvall, would have
understood the relevance of sizing magnetic particles and the housing
surrounding those particles to achieve the desired magnetic particle rotation.
That numerical values were not provided for the skilled artisan does not
prohibit the artisan from understanding that each value is result-effective,
nor does it prevent the skilled artisan from determining workable ranges —
such as the claimed ranges — via routine experimentation.
Again, according to Applied Materials, “the prior art need not provide
the exact method of optimization for the variable to be result effective,” and
the prior art’s recognition “that a property is affected by the variable is
sufficient to find the variable result effective.” 692 F.3d at 1297. We
determine that, although Ekvall does not provide numerical values for
magnetic particle size and free space percentage, it establishes that the
ability of the magnetic particle to rotate, and the benefits thereof to the
medical implant’s performance, is affected by both the magnetic particle size
and the housing size/percentage of free space therein. Thus, we discern no
misapprehension and misapplication of Applied Materials in our Decision.
For the foregoing reasons, Appellant’s Request is denied.

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SUMMARY
Outcome of Decision Rehearing:

Claims
Rejected
35 U.S.C § Reference(s)/Basis Denied Granted
1–4, 6–18, 20–
24
103 Zimmerling, Ekvall 1–4, 6–18, 20–
24

Final Outcome of Appeal after Rehearing:

Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–4, 6–18, 20–
24
Nonstatutory Double
Patenting
1–4, 6–18, 20–
24

1–4, 6–18, 20–
24
103 Zimmerling, Ekvall 1–4, 6–18, 20–
24

Overall
Outcome
1–4, 6–18, 20–
24

DENIED