Ex Parte Couvillon

Board of Patent Appeals and Interferences

May 11, 2010

10262829 (B.P.A.I. May. 11, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte LUCIEN ALFRED COUVILLON, JR.
____________

Appeal 2009-005606
Application 10/262,829
Technology Center 3700
____________

Decided: May 11, 2010
____________

Before LINDA E. HORNER, MICHAEL W. O’NEILL, and
KEN B. BARRETT, Administrative Patent Judges.

O’NEILL, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Lucien Alfred Couvillon, Jr. (Appellant) seeks our review under 35
U.S.C. § 134 of the final rejection of claims 1 and 3-39. We have
jurisdiction under 35 U.S.C. § 6(b).
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The Invention
The claimed invention is to a thrombolysis catheter whose shape can
be tailored to reflect the natural contours of blood vessels. Spec. 1, para.
[0002].
Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A thrombolysis catheter apparatus, comprising:
(a) an elongated thrombolysis catheter portion
comprising a plurality of independently controllable
electroactive polymer actuators which are disposed upon a
flexible substrate layer that is wrapped into a cylinder, said
actuators providing a curvature for said thrombolysis catheter
portion based upon received control signals;
(b) a control unit coupled to said plurality of actuators
and sending said control signals to said plurality of actuators;
and
(c) an occlusion removal device, which comprises a laser
and a light guide, said laser being optically coupled to said light
guide.

The Prior Art
The Examiner relies upon the following as evidence of
unpatentability:
Takehana US 4,930,494 Jun. 5, 1990
Wilk US 5,368,015 Nov. 29, 1994
Maseda US 6,514,237 B1 Feb. 4, 2003
Laser Thrombolysis, Dec. 12, 1996, http://omlc.ogi.edu/projects/lt
(hereinafter “OD5”).
Della Santa and De Rossi, Intravascular Microcatheters Steered by
Conducting Polymer Actuators, 18th Annual International Conference of the
IEEE Engineering in Medicine and Biology Society, 1-2 (1996) (hereinafter
“Della Santa”).
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Bar-Cohen, Electroactive Polymer (EAP) Actuators as Artificial Muscles,
SPIE Press, Chapter 1, pp. 3-44 (March 2001). (hereinafter “Bar-Cohen”).

The Rejections1
The following Examiner’s rejections are before us for review:
A.) Claims 1, 3-7, 11, 16-20, 22, 28, 31-36, 38, and 39 stand rejected
under 35 U.S.C. § 103(a) as unpatentable over the combined teachings
Maseda, OD5, and Della Santa.
B.) Claims 8-10, 14, 15, 29 and 30 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combined teachings of Maseda, OD5, and
Della Santa, and further in view of Bar-Cohen.
C.) Claims 12, 13, 21, and 23-27 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over the combined teachings of Maseda, OD5,
and Della Santa, and further in view of Wilk.

1 The rejection of claims 1 and 3-39 under the judicially created doctrine of
obviousness-type double patenting, set forth on page 6 of the Final Office
Action of July 31, 2007, appears to be withdrawn as the Examiner has
articulated the rejection as to claims 28-33 is withdrawn in the Answer on
page 2, and fails to set forth any obviousness-type double patenting rejection
of the remaining claims 1, 3-27, and 34-39 in the Grounds of Rejection
section of the Answer. While the Examiner responds to Appellant’s remarks
concerning an obviousness-type double patenting rejection in the Response
to Arguments section, the Examiner’s ostensible omission of any
obviousness-type double patenting rejection in the Answer is deemed as a
withdrawal of the obviousness-type double patenting rejection as to claims 1
and 3-39. The Board is primarily a body of review, not of examination or
prosecution. Since no obviousness-type double patenting rejection is
articulated in the Answer, we conclude that the Examiner has withdrawn the
obviousness-type double patenting rejection for all claims on appeal and not
just claims 28-33 listed in the withdrawn section of the Answer.
Accordingly, an obviousness-type double patenting rejection is not before us
for review.
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D.) Claim 37 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combined teachings Maseda, OD5, and Della Santa,
and further in view of Takehana.

SUMMARY OF DECISION
We AFFIRM.

OPINION
Issues
In light of Appellant’s contentions, the issues before us are as follows:
(1) Whether selectively activated electroactive polymer (EAP)
actuators render obvious independently controllable EAP actuators.
(2) Whether the claimed feature of the EAP actuators being disposed
upon a flexible substrate layer implies a structural characteristic or a process
used to obtain the combination of a flexible substrate layer and actuators.
(3) Whether the claimed feature of the flexible substrate layer being
wrapped into a cylinder implies a structural characteristic or a process used
to obtain the shape of the layer.
(4) Whether Appellant has shown error in the Examiner’s conclusion
that the claimed subject matter is obvious.
Issue (1)
Pertinent Facts
1. Maseda discloses a flexible medical probe device (e.g., a catheter,
guidewire, cannula, or endoscope) having strategically embedded
EAP strands or strips that are selectively activated via a controller to
permit the probe to perform specific movements or states of rigidity
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such that the device is capable of navigating through tortuous
passages where precise control of the device is desired. Abstract; col.
2, ll. 41-46; col. 3, ll. 44-50; col. 6, ll. 26-36; col. 8, ll. 24-32.
2. Maseda discloses that the EAP strands “may be incorporated into or
replace any portion of the flexible probe medical devices, including
the tips, inner body, outer body or any other component of the devices
to develop smart devices that can be controlled with a high degree of
precision.” Col. 2, ll. 63-67.
Analysis
Appellant acknowledges that Maseda’s embodiments shown in
Figures 6 through 8 have individually controllable EAP actuators; however,
Appellant argues that these EAP actuators are not in the catheter shaft, but at
the distal end of the catheter. Reply Br. 2. While Figures 6 through 8 have
the EAP actuators at the distal end, Figures 1 through 5 have the EAP
actuators located along the catheter shaft. We disagree with Appellant’s
contention that it would not have been obvious to make the EAP actuators of
the embodiments of Figures 1 through 5 independently controllable. Maseda
discloses that the EAP actuators are strategically placed and selectively
controlled in order to provide precise movement or rigidity to the catheter.
Fact 2. Strategic placement of the EAP actuators to provide precise
movement and rigidity as disclosed within Maseda would require the
actuators to be placed not only at the distal end, but also along the catheter
shaft. Selective control of the EAP actuators would require controlling each
actuator independently, as Appellant acknowledges such transpires at the
distal end. Further, in order for Maseda to provide specific movements to
the catheter via the controller, the actuators strategically placed along the
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catheter shaft would also have to be independently controlled or activated,
i.e., activation allows either that portion to be controllably flexed or
controllably rigid. One of ordinary skill in the art would recognize that
Maseda’s teachings are applicable to various flexible probe devices,
including thrombolysis catheters. See Fact 1. Therefore, Maseda’s
description of selective activation of the EAP actuators renders obvious the
claimed feature of having independently controllable EAP actuators along
the length of thrombolysis catheters in order to attain controlled movement
of the catheters with a high degree of precision.
Issue (2)
Pertinent Facts
3. Claim 1 recites that the electroactive polymer actuators are disposed
upon a flexible substrate layer.
4. Appellant’s Specification discloses the EAP actuators can be disposed
within the catheter portion in a number of ways. For example, the
actuators can be disposed on a substrate layer, e.g., a polymeric sheet
that is intrinsic to the structure of the catheter. Spec. 9-10, para.
[0049].
5. Appellant’s Specification does not provide a definition for “disposed.”
Spec., passim.
6. An ordinary and customary meaning of “disposed” is “to arrange.”
See, e.g., WEBSTER’S THIRD NEW INTERNATIONAL DICTIONARY 654
(1961).
Principles of Law
If the words of limitation can connote with equal force a structural
characteristic of the product or a process used to obtain it, then the limitation
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is commonly interpreted in its structural sense. See 3M Innovative Props.
Co. v. Avery Dennison Corp., 350 F.3d 1365, 1371 (Fed. Cir. 2003), cert.
denied 542 U.S. 920 (2004).
Claims define the subject matter Appellant regards to be the
invention. In re Moore, 439 F.2d 1232, 1235 (CCPA 1971). In addition,
claims are given the broadest reasonable construction consistent with the
Specification. In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). The
Appellant has the burden to precisely define the invention, not the PTO. Id.
at 1056. Appellant always has the opportunity to amend the claims during
prosecution; a broad interpretation by the Examiner reduces the possibility
that the claim, once issued, will be interpreted more broadly than is justified.
In re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969).
Where no explicit definition for a term is given in the specification,
the term should be given its ordinary or plain meaning and the broadest
reasonable interpretation. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d
1364, 1368 (Fed. Cir. 2003).
When the Specification fails to assign or suggest a particular
definition to a claim term, it is appropriate to consult a general dictionary
definition of the word for guidance in determining the ordinary and
customary meaning of the claim term as viewed by a person of ordinary skill
in the art. Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1348 (Fed. Cir.
2010) (citing to Phillips v. AWH Corp., 415 F.3d 1303, 1322-23 (Fed. Cir.
2005) (en banc)) (using WEBSTER’S THIRD NEW INTERNATIONAL
DICTIONARY to provide guidance concerning the claim term “case”). See
also Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1382
(Fed. Cir. 2008) (construing the term “partially hidden from view”).
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Analysis
The claimed invention recites that the EAP actuators are disposed
upon a layer. Fact 3. The Specification discloses the EAP actuators can be
disposed upon the catheter a number of ways; one of which is disposing the
actuators on a polymeric sheet that is intrinsic to the structure of the catheter.
Fact 4. The Specification does not provide a lexicographic definition for the
term “disposed.” Fact 5. As such, it is appropriate to consult a general
dictionary for guidance in order to determine the ordinary and customary
meaning of the term as understood by a person of ordinary skill in the art
when interpreting the claim term in light of the Specification. An ordinary
and customary meaning of “disposed” is “to arrange.” Fact 6. As such, the
claimed invention requires the actuators to be arranged on a substrate layer
that is flexible. Items that are arranged on a layer can connote both a
structural characteristic and a process to obtain that characteristic. When
such a connotation occurs, the claim limitation should be construed in the
structural sense. Accordingly, the proper claim construction for the
actuators being disposed upon a flexible substrate layer as set forth in the
claim is a structural relationship where the actuators are physically arranged
(disposed) on the flexible substrate layer such that the arrangement yields a
combination of a layer and the actuators placed on one side of the layer.
Issue (3)
Pertinent Facts
7. Claim 1 recites that the flexible substrate layer is wrapped into a
cylinder.
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8. Appellant’s Specification discloses that a series of EAP actuators 610
are printed on a substrate layer 605. Spec. 12, para. [0060] and fig.
6A.
9. Appellant’s Specification discloses that the substrate layer 605 is then
wrapped around a structural element 602, and the edges of the layer
605 are either joined or overlapped to form a tubular substrate layer
and thus “provid[e] the cylindrical assembly 620 illustrated in Fig.
6B.” Spec. 12, para. [0061] and fig. 6B.
Principles of Law
Certain apparent “process” words in claims can be interpreted as
structural limitations when these words are used in an adjective non-process
sense and adequately define a physical characteristic of the product. See
Norian Corp. v. Stryker Corp., 432 F.3d 1356, 1362 (Fed. Cir. 2005); 3M
Innovative Props. Co., 350 F.3d at 1371-1372. The same can be said when
the apparent “process” words in claims are utilized as past-tense verbs. See
In re Garnero, 412 F.2d 276, 278-279 (CCPA 1969). We determine the
scope of the claims in patent applications not solely on the basis of the claim
language, but upon giving claims “their broadest reasonable interpretation
consistent with the specification” and “in light of the specification as it
would be interpreted by one of ordinary skill in the art.” In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Accordingly,
“process” words in claims are interpreted as defining a physical
characteristic when: (1) the Specification shows that the words are used to
describe the product, and not as a designation of a specific manufacturing
process and (2) the words do not limit the claim to the manufacturing
process set forth in the Specification.
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Analysis
Claim 1 requires that the flexible substrate layer be wrapped into a
cylinder. Fact 6. As such, the question becomes whether “wrapped” imparts
a physical characteristic or is a designation of how the cylinder product is
formed.
The Specification sets forth a set of steps for forming the embodiment
shown in Figures 6A and 6B that are disclosed as “schematic perspective
views, before and after assembly, of a structural element and a substrate
layer with associated components [(EAP actuators disposed upon a flexible
substrate layer)], in accordance with an embodiment of the present
invention.” Spec. 5, para. [0024]. In particular, the Specification discloses
that after the actuators are disposed upon the substrate layer, the layer is then
wrapped around a cylindrical element, shown in Fig. 6A, and the edges of
the layer are either joined or overlapped to form a tubular substrate layer.
Facts 7 and 8. As such, the Specification discloses a process of
manufacturing the product that is a cylindrical flexible substrate layer by
wrapping the substrate layer around the structural element and either joining
the edges or permitting the edges to overlap.
Accordingly, the term “wrapped” does not describe a physical
characteristic of the final cylinder product, but instead designates that the
final cylinder product is manufactured by wrapping the substrate layer
around the structural element as disclosed within the Specification. As such,
the proper claim construction for the claim limitation of the flexible
substrate layer that is wrapped into a cylinder is as a process used to obtain
the shape of the layer product, viz., a cylindrical flexible substrate layer.
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Issue (4)
Pertinent Facts
The Examiner’s findings of fact are adopted for the scope and content
of the prior art that is used to reject the claims as obvious. The Examiner’s
findings of fact are adopted with respect to the differences between the
claimed subject matter and the prior art’s teachings. When needed, further
findings of fact will be added concerning the scope and content of the prior
art in order to address the particular contentions Appellant argues to
demonstrate error in the Examiner’s rejections with respect to the claimed
subject matter being obvious over the various combined teachings of the
prior art used in the different grounds of rejection.
Principles of Law
“Both anticipation under § 102 and obviousness under § 103 are two-
step inquiries. The first step in both analyses is a proper construction of the
claims. . . . The second step in the analyses requires a comparison of the
properly construed claim to the prior art.” Medichem, S.A. v. Rolabo, S.L.,
353 F.3d 928, 933 (Fed. Cir. 2003) (citations omitted).
In KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007), the Supreme
Court emphasized “the need for caution in granting a patent based on the
combination of elements found in the prior art,” id. at 415, and discussed
circumstances in which a patent claim might be determined to be obvious.
One of these circumstances is when the claim is directed to a simple
arrangement of old elements with each element performing the same
function as the element had been known to perform before and the
arrangement yields no more than a person of ordinary skill in the art would
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expect from such an arrangement. Id. at 417 (citing Sakraida v. Ag Pro,
Inc., 425 U.S. 273, 282 (1976)).
Analysis
Rejection A
Appellant separately argues claims 1, 22, 35, 36, 38, and 39 for the
Examiner’s rejection of claims 1, 3-7, 11, 16-20, 22, 28, 31-36, 38, and 39
based on the combined teachings Maseda, OD5, and Della Santa. Claim 1 is
representative of claims 3-7, 11, 16-20, 28, and 31-34, which are not
separately argued.
Claim 1
As stated above, in order to determine whether a claimed invention is
obvious over the combined teachings of the prior art, first a proper claim
construction must be determined. In this case, it appears the Examiner and
Appellant disagree with respect to whether the claimed subject matter of
“independently controllable electroactive polymer actuators” is rendered
obvious by the combined teachings of Maseda, OD5, and Della Santa,
wherein Maseda discloses that the electroactive polymer actuators are
selectively activated. Further, in this case, it also appears the Examiner and
Appellant disagree on whether the actuators being disposed upon a flexible
substrate layer that is wrapped into a cylinder as required by claim 1 should
be construed as structure as Appellant contends or product-by-process as the
Examiner posits.
For the reasons addressed in Issue (1) supra, Maseda’s description of
selective activation of the EAP actuators renders obvious the claimed feature
of having independently controllable EAP actuators.
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Concerning the difference in claim construction between the
Examiner and Appellant with respect to the claim language of the “actuators
which are disposed upon a flexible substrate that is wrapped into a cylinder,”
the difference is resolved when the claim limitation is properly construed in
light of the Specification which has been done in addressing Issues (2) and
(3) supra. For the reasons addressed in Issue (2) supra, the proper claim
construction for the actuators being disposed upon a flexible substrate layer
as set forth in the claim is a structural relationship where the actuators are
physically arranged (disposed) on the flexible substrate layer such that the
arrangement yields a combination of a layer and the actuators. For the
reasons addressed in Issue (3) supra, the proper claim construction for the
claim limitation of the flexible substrate layer that is wrapped into a cylinder
is a process used to obtain the shape of the layer product. Accordingly, the
proper claim construction for the claim limitation at issue between the
Examiner and Appellant is that the actuators are arranged upon a flexible
substrate that forms a cylindrical layer.
Maseda discloses that multiple composite strand 306 (EAP actuator,
Appellant’s nomenclature) is attached by any means suitable for attachment
to the outer tubular body 114. Col. 5, ll. 56-64. Maseda discloses that the
outer tubular body 114 (catheter portion, Appellant’s nomenclature) and the
composite strand 306 are placid when voltage is not applied. Col. 5, ll. 64-
67. Maseda discloses as an alternative that instead of one strand being
incorporated into the outer tubular shaft 114, multiple strands may be
incorporated into selected sections of the outer tubular shaft 114 and
selectively activated such that some sections would remain pliable and other
sections would become rigid and pushable when a voltage would be applied
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across the selected strands. Col. 6, ll. 7-11. Outer tubular body 114 is
cylindrical as Maseda discloses that the outer tubular body and inner tubular
shaft 116 together define lumen 130 between both shafts. Col. 4, ll. 18-21.
Maseda discloses that this outer tubular body is placid and as such a person
of ordinary skill in the art would consider that this outer tubular body
contains a flexible substrate layer. Maseda discloses that the EAP actuators
are arranged on this substrate such that when the actuators are selectively
activated certain sections of the catheter become rigid while others are
placid.
Accordingly, Maseda’s disclosure of its selectively activated EAP
actuators that are arranged on the outer tubular shaft of the catheter satisfies
the claim limitation of a catheter portion comprising a plurality of
independently controllable EAP actuators which are disposed upon a flexible
substrate that is formed as a cylindrical layer such that the actuators will
provide a curvature of the catheter portion upon receiving control signals.
Appellant’s argument alleging a patentable difference between Maseda and
the claimed cylindrical layer because the claimed layer is wrapped and the
outer shaft of Maseda is supposedly extruded is of no moment because
“[t]he patentability of a product does not depend on its method of
production” when the difference between the prior art structure and the
claimed structure is how the final structure is fabricated. SmithKline
Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1317 (Fed. Cir. 2006).
The Examiner articulated that there appears to be “no unexpected
result” when the teachings of Maseda, OD5, and Della Santa are combined
to reach the claim language set forth in claim 1. Ans. 4. Claim 1 appears to
fall into a circumstance that the Supreme Court considered would be obvious
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to a person of ordinary skill in the art unless evidence of nonobviousness
outweighed the conclusion of obviousness based on the circumstance. The
particular circumstance at issue here is when the claim is directed to a simple
arrangement of old elements with each element performing the same
function as the element had been known to perform before and the
arrangement yields no more than a person of ordinary skill in the art would
expect from such an arrangement, the claim is obvious. All elements within
the arrangement set forth in the claim are old as shown by the findings of the
Examiner and the findings above. It appears uncontested that the elements
in the arrangement as set forth in the claim perform the same function that
they had been known to perform before in an individual capacity. Appellant
has not argued that the claimed arrangement does more than what a person
of ordinary skill in the art would expect from such an arrangement, viz.,
being able to advance through neurovasculature blood vessels. As such,
claim 1 appears to be simply an arrangement of old elements with each
element performing the same function as the element had been know to
perform before and the arrangement appears to yield no more than a person
of ordinary skill in the art would expect from such an arrangement.
Accordingly, the evidence demonstrates that a person of ordinary skill
in the art would conclude that the invention of claim 1 is obvious unless it
can be shown that the arrangement yields more than a person of ordinary
skill in the art would expect from such an arrangement or that the evidence
of nonobviousness, such as in the form of secondary considerations,
outweighs the evidence of obviousness found supra when all of the evidence
is weighed anew.
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In view of the foregoing, Appellant’s arguments directed to showing
that the Examiner erred: 1) by attacking the Examiner’s claim construction,
2) arguing that the prior art does not reveal certain claimed features, 3)
alleging improper hindsight was used by the Examiner, and 4) that the
Examiner’s responses to Appellant throughout the prosecution have been
unconvincing with respect to alleged deficiencies in the Examiner’s position
identified by Appellant, do not demonstrate that the Examiner erred in
concluding that the subject matter within claim 1 is obvious over the
combined teachings of Maseda, OD5, and Della Santa. Claims 3-7, 11, 16-
20, 28, and 31-34 fall with claim 1.
Claim 22
For the reasons supra, Appellant’s reliance on the arguments made
against the rejection of claim 1 to show error on the part of the Examiner in
the rejection of claim 22 is unconvincing.
This claim further defines the catheter portion comprising a metallic
tubular structural component. The Examiner interpreted “metallic” as
“made of or containing a metal.” Ans. 12. The Examiner found that certain
composite strand embodiments arranged, in Maseda, on the catheter portion,
can cause the catheter portion to become rigid when a voltage is applied
across the strands. Id. The Examiner then concluded that this disclosure
“clearly fall[s] within the broadest reasonable interpretation of the term
‘structural elements’ and thus one or more of the composite elements of
Maseda can be read on this feature of the claim.” Id. Appellant contends
that the noble metals of Maseda are not associated with the structural
elements as claimed in the claims, but are rather dispersed within the strands
of Maseda; and thus “are not ‘structural’ elements at all.” App. Br. 9.
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Appellant’s additional contentions concerning claim 22 are
unconvincing to show error on the Examiner’s part. The Examiner
determined the scope and content of Maseda’s teachings, interpreted the
claim language in dispute, and analyzed how the Maseda teachings satisfy
the claim language when the claim is interpreted and the interpreted claim is
compared to the prior art. Appellant’s contentions appear neither to argue
that the Examiner’s claim interpretation is not the broadest reasonable
interpretation in light of the Specification, nor to argue that the Examiner’s
analysis when applying the teachings of Maseda to the broadest reasonable
interpretation of the claim limitation is flawed. Instead, Appellant’s
contentions focus on the particular chemical composition of Maseda’s
strands to conclude that the strands cannot be considered a “structural”
element. However, the Examiner has determined the broadest reasonable
interpretation of “metallic” is at least “containing a metal,” and clearly
Maseda’s strands contain a metal, or else an applied voltage would not
activate the strands. Further, as the Examiner found, Maseda has
embodiments where the strands are structural by permitting portions of the
catheter to become at least rigid when a voltage is applied. As such,
Maseda’s disclosure of certain composite strand embodiments satisfies the
claimed feature of the catheter portion comprising a metallic tubular
structural element as set forth in the claim as the Examiner articulated within
the Answer.
Claim 35
For the reasons supra, Appellant’s reliance on the arguments made
against the rejection of claim 1 to show error on the part of Examiner in the
rejection of claim 35 is unconvincing. Appellant’s further arguments with
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respect to claim 35 are unconvincing to demonstrate error on the part of the
Examiner.
The claim language within claim 35 is directed to the flexible
substrate layer that is wrapped around a cylindrical structural element in
order to form a cylindrical flexible substrate layer with actuators disposed
upon the layer. Appellant’s contention baldly states this feature is neither
taught nor suggested by Maseda, OD5, and Della Santa, that the metallic
components in Maseda are not structural elements, and that wrapping around
the structural element is not taught by the references. App. Br. 10. The
Examiner states that it is the combined teachings of Della Santa, teaching
that the actuators can be placed on the inside or outside of the catheter, along
with Maseda, teaching that the EAP strands can replace or be incorporated
into any portion of the flexible medical device, that would satisfy the
structure and the process recited to fabricate the final product.
As seen, Appellant’s arguments do not directly address the
Examiner’s proffered findings of fact concerning the combined teachings of
Maseda and Della Santa as set forth in the Answer. Further, for the reasons
given above, the process of fabricating the final product of a cylindrical
flexible substrate layer with actuators arranged thereon and supported by a
cylindrical structural element does not patentably distinguish the final
product from the combined teachings of Maseda and Della Santa as the
Examiner has explained in the Answer.
Claim 36
For the reasons supra, Appellant’s reliance on the arguments made
against the rejection of claim 1 to show error on the part of Examiner in the
rejection of claim 36 is unconvincing. Appellant’s further contentions are
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unpersuasive to show error on the part of the Examiner because they
paraphrase the claim language and baldly conclude none of the references
relied upon disclose or suggest anything remotely corresponding to such a
structure. Essentially, Appellant’s contention is a general statement which
merely points to what the claim recites. Such a statement is not considered
an argument for the separate patentability of claim 36. 37 C.F.R. §
41.37(c)(1)(vii)(2007).
Claim 38
For the reasons supra, Appellant’s reliance on the arguments made
against the rejection of claim 1 to show error on the part of Examiner in the
rejection of claim 38 is unconvincing. Appellant’s further contentions are
unpersuasive to show error on the part of the Examiner because, similar to
the arguments for patentability concerning claim 36, they paraphrase the
claim language and baldly conclude none of the references relied upon
disclose or suggest anything remotely corresponding to such a structure.
Essentially, again, Appellant’s contention is a general statement which
merely points to what the claim recites. Such a statement is not considered
an argument for the separate patentability of claim 38. 37 C.F.R. §
41.37(c)(1)(vii).
Claim 39
For the reasons supra, Appellant’s reliance on the arguments made
against the rejection of claim 1 to show error on the part of Examiner in the
rejection of claim 39 is unconvincing. Additionally, Appellant’s contention
that the further feature of overlapping the edges imparts a distinctive
structural characteristic that should be considered by the Examiner when
assessing patentability of a product-by-process claim is acknowledged;
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however, it does not demonstrate error on the part of the Examiner because
it appears the Examiner considered this claimed feature when assessing
patentability and found it did not patentably distinguish the claimed
invention from the prior art. See Ans. 14. Further, Appellant has not
provided reasons why such a distinction concerning the fabrication
technique of the final product should patentably distinguish the claimed
product from the prior art product.
Rejection B
Appellant’s contentions concerning this rejection are unpersuasive to
show error on the part of the Examiner. The contentions baldy conclude
Bar-Cohen (OD17) is only an invitation to experiment and the reference
does not remedy the insufficiency of Maseda, OD5, and Della Santa. App.
Br. 11. The contentions do not allege that the Examiner made an error in
either (1) an underlying finding of fact upon which the conclusion of
obviousness was based, or (2) the reasoning used to reach the conclusion of
obviousness. Finding no deficiency in the combination of Maseda, OD5,
and Della Santa, we find the Appellant’s arguments unpersuasive for the
reasons provided supra.

Rejection C
Appellant’s contentions concerning this rejection are unpersuasive to
show error on the part of the Examiner. The contentions baldy conclude that
the Examiner selected a teaching from alleged non-analogous art and
utilized improper hindsight reconstruction to conclude the claimed invention
is obvious. App. Br. 11. The Examiner has persuasively explained that
Wilk is utilized to demonstrate the obviousness of the additional feature of
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wireless control set forth in the claims, and that the addition of another
reference in order to meet further claim language “is not in and of itself
illustrative of improper hindsight.” Ans. 15. Moreover, Appellant’s
contentions do not allege that the Examiner made an error in either (1) an
underlying finding of fact upon which the conclusion of obviousness was
based, or (2) the reasoning used to reach the conclusion of obviousness.
Rejection D
Appellant’s contentions concerning this rejection are unpersuasive to
show error on the part of the Examiner. The contentions baldly conclude
that Takehana does not remedy the fundamental flaws concerning the
combined teachings of Maseda, OD5, and Della Santa with respect to the
rejection of claim 1, paraphrase the claim language, and baldly conclude that
the addition of Takehana does not render obvious the additional claimed
features set forth in claim 37. App. Br. 12. Appellant’s contentions
individually address Takehana and fail to address the combined teachings of
Takehana, Maseda, OD5, and Della Santa as the Examiner set forth in the
ground of rejection. As such, the contentions are insufficient to demonstrate
that the Examiner made an error in either (1) an underlying finding of fact
upon which the conclusion of obviousness was based, or (2) the reasoning
used to reach the conclusion of obviousness. Finding no deficiency in the
combination of Maseda, OD5, and Della Santa, we find the Appellant’s
arguments unpersuasive for the reasons provided supra

CONCLUSIONS
(1) Selectively activated electroactive polymer (EAP) actuators taught
in Maseda render obvious independently controllable EAP actuators.
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(2) The claimed feature of the EAP actuators being disposed upon a
flexible substrate layer implies a structural characteristic for the claimed
combination of a flexible substrate layer and actuators.
(3) The claimed feature of the flexible substrate layer being wrapped
into a cylinder implies a process used to obtain the shape of the layer.
(4) Appellant has not shown error in the Examiner concluding that the
claimed subject matter set forth in the claims is obvious.

DECISION
The Examiner’s decision to reject claims 1, 3-7, 11, 16-20, 22, 28, 31-
36, 38, and 39 under 35 U.S.C. § 103(a) as unpatentable over the combined
teachings of Maseda, OD5, and Della Santa is affirmed.
The Examiner’s decision to reject claims 8-10, 14, 15, 29 and 30
under 35 U.S.C. § 103(a) as unpatentable over the combined teachings of
Maseda, OD5, and Della Santa, and further in view of Bar Cohen is
affirmed.
The Examiner’s decision to reject claims 12, 13, 21, and 23-27 under
35 U.S.C. § 103(a) as being unpatentable over the combined teachings of
Maseda, OD5, and Della Santa, and further in view of Wilk is affirmed.
The Examiner’s decision to reject claim 37 under 35 U.S.C. § 103(a)
as being unpatentable over the combined teachings Maseda, OD5, and Della
Santa, and further in view of Takehana is affirmed.
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) (2007).

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AFFIRMED

mls

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