Ex Parte Farra

Patent Trials and Appeals Board

Jun 26, 2019

13595492 - (D) (P.T.A.B. Jun. 26, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/595,492 08/27/2012
29052 7590 06/28/2019
Eversheds Sutherland (US) LLP
999 PEACHTREE STREET, N.E.
Suite 2300
ATLANTA, GA 30309
FIRST NAMED INVENTOR
Robert Farra
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.
17509-0280 4842
EXAMINER
SCHMIDT, EMILY LOUISE
ART UNIT PAPER NUMBER
3783
NOTIFICATION DATE DELIVERY MODE
06/28/2019 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@eversheds-sutherland.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT FARRA
Appeal2017-005776 1
Application 13/595,492
Technology Center 3700
Before: JENNIFER D. BAHR, EDWARD A. BROWN, and
BRENT M. DOUGAL, Administrative Patent Judges.
DOUGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 1-11, 13, 14, and 34--38. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM-IN-PART.
1 Appellant identifies Microchips Biotech, Inc., as the real party in interest.
Appeal2017-005776
Application 13/595,492
CLAIMED SUBJECT MATTER
The claims are directed to a space-efficient containment devices.
Claims 1, 34, and 3 8 are independent. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A containment device comprising:
a first microchip element which comprises a containment
reservoir that can be electrically activated to open; and
a first electronic printed circuit board (PCB) which
comprises a biocompatible substrate, wherein the first PCB has
a first side on which one or more electronic components are fixed
and an opposed second side on which the at least one microchip
element is fixed in electrical connection to the one or more
electronic components,
wherein the biocompatible substrate of the first PCB
comprises a hermetic material and defines part of a hermetically
sealed enclosure containing the one or more electronic
components.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Sheppard
Prescott
Coppeta
US 2002/0187260 Al
US 2004/0247671 Al
US 2006/0115323 Al
REJECTIONS
Dec. 12, 2002
Dec. 9, 2004
Jun. 1,2006
Claims 1-6 and 14 are rejected under 35 U.S.C. § I03(a) as being
unpatentable over Sheppard and Coppeta.
Claims 7-13 and 34--38 are rejected under 35 U.S.C. §I03(a) as being
unpatentable over Sheppard, Coppeta, and Prescott.
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Application 13/595,492
OPINION
Claims 1-6 and 14
Appellants argue the rejection of claims 1---6 and 14 together. We
select independent claim 1 as representative. See 3 7 C.F .R. § 41.3 7 ( c )( 1)
(iv).
Appellant first argues that Sheppard does not teach "a PCB that
comprises a biocompatible substrate or that comprises a hermetic material"
as required by claim 1. Appeal Br. 6. However, Appellant's argument is not
addressed to the rejection, as the Examiner does not assert that Sheppard
teaches a PCB with a biocompatible or hermetic substrate. See 37 C.F.R.
§ 4I.37(c)(l)(iv) (Arguments presented in an appeal must address the
grounds of rejection set forth by the Examiner.).
In the rejection of claim 1, the Examiner finds that Sheppard
"teach[ es] ceramic carriers are suitable materials for use" and determines
that "[i]t would have been obvious ... to use ceramic for the material for the
PCB because Sheppard [] teach[ es] such is a suitable material for a
microchip carrier." Final Act. 3. The Examiner further finds and determines
that "Sheppard further discloses ceramic carriers are suitable for attachment
to the microchip element, though the specific material of the PCB may not
be disclosed[,] the Examiner maintains that as Sheppard explicitly teaches
ceramic is a suitable material for implantation into the body one of ordinary
skill would reasonably look to such a material for the PCB." Ans. 2.
Appellant next argues that Sheppard's "generic disclosure of
'ceramic' does not teach that the ceramic is biocompatible or hermetic. For
example, some ceramic materials would not be considered biocompatible,
and a porous ceramic substrate would not be hermetic." Appeal Br. 7.
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Application 13/595,492
Appellant also argues that Sheppard does not suggest a "need for the PCB
substrate to be biocompatible or hermetic" because it teaches coating the
entire package. Appeal Br. 7 ( citing Sheppard ,r 65).
The Examiner responds that the "material [ of the PCB in Sheppard]
would necessarily need to be biocompatible as the device is implanted into
the body to release medication." Ans. 2. We agree with Appellant that this
is not necessarily the case. Appeal Br. 7. Sheppard teaches applying a
coating over the entire package in order to make the package, which could
include a PCB, biocompatible and/or hermetic. Sheppard ,r 65. Thus,
according to Sheppard there does not appear to be a problem using a PCB
material that is not biocompatible or hermetic.
However, in response, the Examiner also cites Coppeta as teaching
alumina as a suitable material for a substrate as originally discussed with
regard to claim 3. Ans. 2. In the rejection of claim 3, the Examiner found
that "Coppeta [] teach[ es] alumina is a suitable biocompatible substrate
material for use with a microchip." Final Act. 3. The Examiner determined
that "[i]t would have been obvious ... to use alumina in [the PCB ofJ
Sheppard [] because Coppeta [] teach[ es] such is an art effective
biocompatible ceramic." Id. at 3--4.
Appellants disagree that there is any relationship between the
substrate of a microchip and that of a PCB, arguing "[ o ]ne skilled in the art
reading Sheppard clearly understands that the microchip element and the
PCB are two different components. One skilled in the art therefore
understands that the substrate of the PCB and the substrate of the microchip
element are also clearly not the same in structure or function." Appeal Br. 9.
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Application 13/595,492
However, Appellants' statement is merely attorney argument, with no
supporting evidence. See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974)
("Attorney's argument in a brief cannot take the place of evidence."). In
contrast, the teachings of Coppeta support the Examiner's position of a
known relationship between different types of substrates (PCB and
microchip). For example, Coppeta teaches that "the two substrates may
optionally contain one or more of reservoirs [implying a microchip], sensors,
drugs, and electronics [implying a PCB]." Coppeta ,r 61. Coppeta also
teaches that the substrates can be used to provide "hermetic seals" for "an
array of containment reservoirs loaded with reservoirs contents, such as
drugs for controlled release and/or biosensors, and/or to package associated
electronic components for operating the device." Id. ,r 56. Thus,
Appellant's argument does not inform us of error in the Examiner's
rejection.
Appellant also argues that the teachings of Coppeta are limited to
microchips with reservoirs. Appeal Br. 3; see also Reply Br. 4---6. However,
in making this assertion, Appellant does not address the teachings of
Coppeta identified by the Examiner (see e.g. Ans. 5), such as those
discussed above (i.e. Coppetta ,r,r 56, 61) specifically addressing substrates
and electronic components, among other types of substrate uses. As we do
not agree that Coppeta is as limited as asserted by Appellant, we are not
informed of error in the Examiner's rejection.
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Appeal2017-005776
Application 13/595,492
Claims 7-13 and 34-38
Claim 7 depends from claim 1 and requires:
a second electronic printed circuit board (PCB) which
comprises a biocompatible substrate, wherein the second PCB
has a first side on which one or more electronic components are
fixed and an opposed second side; and
a housing ring securing the first PCB together with the
second PCB,
wherein the first side of the first PCB is oriented in a facing
relationship toward the first side of the second PCB.
The Examiner finds that Prescott "teach[ es a] microchip reservoir
device can be used on the interior and exterior of a stent." Final Act. 4
( citing Prescott ,r 43). The Examiner then determines that:
It would have been obvious ... to use pairs of two microchips on
two PCBs ... in which one microchip would face outward and
deliver drug to the exterior of the stent and the other to face
inward to deliver drug to the interior of the stent because Prescott
[] teach this is an effective system for providing the reservoir for
drug delivery to the body
Id. at 4--5.
The Examiner then determines that it would have been obvious based
on Coppeta to form a housing ring around those two PCBs and to seal the
electronic components of the two PCBs with the PCBs themselves and the
housing ring. Id. at 5.
Appellant argues that "[ t ]he Examiner mischaracterizes paragraph
[0043] of Prescott" because the disclosed stent embodiment "has no
microchip or electronics. Instead, drug release is by passive diffusion from
the reservoirs that are defined in the stent itself. It therefore would have
no PCB." Appeal Br. 12. Appellant further argues that "[t]he Examiner's
conjecture is based on trying to fuse together completely different
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embodiments." Id. at 13. Still further, Appellant argues that "[i]n the
Examiner's hypothetical device, the PCBs are on opposing sides of a stent
and therefore cannot be and would not be secured together with a housing
ring." Id.
The Examiner responds by summarizing the teachings of Prescott.
Ans. 3--4. At the same time, the Examiner, at most, only implicitly
addresses Appellant's arguments. We determine that the Examiner's
rejection is not supported.
We agree with Appellant that the Examiner overstates the teachings of
Prescott. Prescott does not teach or reasonably suggest a two-faced system
with microchips on either side of two PCBs. It is not clear whether the
embodiment relied upon by the Examiner with reservoirs on a stent includes
microchips. The reference cited by the Examiner as showing microchips on
a stent does clearly show microchips attached to the sidewall of the stent.
Ans. 4 (citing Figs. 9A-9B of U.S. 6,491,666). However, it does not appear
to show the use of PCBs. Thus, the Examiner appears to rely on hindsight
reasoning, while combining multiple different embodiments in Prescott
without providing reasons why such a combination is reasonable or fully
explaining which teachings in the prior art the Examiner is relying on.
For these reasons, we do not sustain the rejection of claim 7 or claims
8-13 which depend therefrom. Claims 34--38 include limitations similar to
claim 7, thus we do not sustain the rejection of these claims for similar
reasons.
DECISION
The Examiner's rejection of claims 1---6 and 14 is affirmed.
The Examiner's rejection of claims 7-13 and 34--38 is reversed.
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Appeal2017-005776
Application 13/595,492
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-IN-PART
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