Ex Parte Ebert et al

Patent Trial and Appeal Board

Sep 20, 2016

12609628 (P.T.A.B. Sep. 20, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/609,628 10/30/2009 Michael J. Ebert
10723 7590 09/22/2016
Medtronic Inc. (CRDM/MRG)
710 Medtronic Parkway NE
MS LC-340
Minneapolis, MN 55432-5604
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
134.0318010l(P0034085.0l) 8781
EXAMINER
WILSON, LARRY ROSS
ART UNIT PAPER NUMBER
3763
NOTIFICATION DATE DELIVERY MODE
09/22/2016 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):
medtronicdocketing@mrgs.com
medtronic_crdm_docketing@cardinal-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL J. EBERT, STEVEN L. WALDHAUSER,
and MARK D. SCHNEIDER
Appeal2014-009258
Application 12/609,628
Technology Center 3700
Before LYNNE H. BROWNE, ANNETTE R. REIMERS, and
BRENT M. DOUGAL, Administrative Patent Judges.
DOUGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1,
3, 5-8, 21, 23, and 31-33. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal2014-009258
Application 12/609,628
CLAIMED SUBJECT MATTER
The claims are directed to medical devices with dual modality visible
segments. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A medical device comprising:
an inner layer comprising a radiopaque and echogenic
material, wherein the radiopaque and echogenic material
comprises tungsten and/ or tungsten carbide particles distributed
within a base polymeric material comprising a polyether block
amide; and
an outer layer comprising an additional polymeric material
that is a polyurethane.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Samson
Lange
Robot
Gosiengfiao
us 5,702,373
us 5,908,413
US 7,065,394 B2
US 7,713,259 B2
REJECTIONS
Dec. 30, 1997
June 1, 1999
June 20, 2006
May 11, 2010
Claims 1, 3, 7, 8, 21, 23, and 31-33 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Lange and Samson.
Claim 5 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Lange, Samson, and Robot.
Claim 6 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Lange, Samson, Robot, and Gosiengfiao.
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Appeal2014-009258
Application 12/609,628
OPfNION
Claims 1, 21, and 3 1 are independent. Appellants argue all three
independent claims together. In addition, Appellants rely on their arguments
over the rejection of the independent claims for reversal of all of the
rejections. Thus, claims 3, 5-8, 23, 32, and 33 stand or fall with the
rejection of claims 1, 21, and 31. See 37 C.F.R. § 41.37(c)(iv).
In rejecting the independent claims, the Examiner finds that Lange
teaches a medical device with the claimed features of the inner layer and
Samson teaches the claimed features of the outer layer. Final Act. 2. The
Examiner reasons:
It would have been obvious to one of ordinary skill in the art at
the time of the invention to have included the polyurethane outer
layer of Samson in the medical device of Lange to provide more
flexibility to the catheter (col. 10, lines 45-50) as taught by
Samson. Furthermore, Lange motivates altering the inner and
outer tubular members to optimize catheter performance
including an embodiment where the inner and outer tubular
members are made of different materials (col. 6, lines 21-39).
Final Act. 3.
Appellants admit that the teachings of Lange and Samson relied on by
the Examiner in the reason to combine are correct (Appeal Br. 5, 7), but they
reject the reasoning for the combination as not "credible" (id. at 4). They
argue that this is because Lange and Samson are not "specific" enough. Id.
at 5, 7.
Appellants argue that Lange doesn't suggest "what performance
characteristics of the catheter might be optimized by selecting a specific
plastic material." Id. at 5. Appellants argue that Samson "cannot provide
any specific guidance that would lead one of skill in the art to select
polyurethane as the polymeric material for the outer member of a catheter
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Appeal2014-009258
Application 12/609,628
having a polyether block amide as the polymeric material for the inner
member." Id. at 7.
Such specific "performance characteristics" and "specific guidance" is
not required to support a finding of obviousness. In KSR Int 'l Co. v. Teleflex
Inc., 550 U.S. 398 (2007) the Court rejected the rigid requirement of a
teaching or suggestion or motivation to combine known elements in order to
show obviousness. KSR, 550 U.S. at 415. The Court noted that an
obviousness analysis "need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ." Id. at 418.
In addition, Appellants' arguments focus on the references separately
and not on the combined teachings of references. Nonobviousness cannot be
established by attacking the references individually when the rejection is
predicated upon a combination of prior art disclosures. See In re Merck &
Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Rather, the relevant inquiry is
whether the Examiner has set forth "some articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness." See
In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006) cited with approval in KSR,
550 U.S. at 418. Appellants' arguments do not apprise us of error in the
Examiner's proffered reasons to combine.
Appellants also argue that they have discovered an advantage relating
to "reducing degradation of [the claimed] medical devices" that was
unpredictable. See Appeal Br. 7-9. Appellants further argue "absent the
present specification, the advantageous properties [] would not have been
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Appeal2014-009258
Application 12/609,628
viewed as predictable by one of skill in the art." Id. at 8-9. Appellants have
also submitted a declaration of Michael J. Ebert in support. Id. at 8.
The Examiner states:
the fact that applicant has recognized another advantage which
would flow naturally from following the suggestion of the prior
art cannot be the basis for patentability when the differences
would otherwise be obvious. In this instance, combining the
teachings of Lange and Samson would lead one of ordinary skill
in the art at the time the invention was made to have used
polyurethane as an outer layer for a PEBA inner layer when
desiring increased flexibility, as motivated by Samson.
Answer 3 (citation omitted).
It is not necessary for the prior art to serve the same purpose or to
have identified the same advantages as that disclosed in Appellants'
Specification in order to support the conclusion that the claimed subject
matter would have been obvious. See In re Linter, 458 F.2d 1013, 1016
(CCPA 1972); see also KSR, 550 U.S. at 419 ("[N]either the particular
motivation nor the avowed purpose of the [Appellants] controls'' in an
obviousness analysis.). Thus, Appellants' arguments fail to show why the
combination of Lange and Samson would not be obvious.
For the above reasons, we sustain the rejection of claims 1, 21, and
31. For these same reasons, we sustain the rejections of claims 3, 5-8, 23,
32, and 33, which each depend from one of claims 1, 21, and 31.
DECISION
The Examiner's rejection of claims 1, 3, 5-8, 21, 23, and 31-33 is
affirmed.
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Appeal2014-009258
Application 12/609,628
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)(l )(iv).
AFFIRMED
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