Ex Parte Foertsch et alDownload PDFPatent Trial and Appeal BoardJun 16, 201613016087 (P.T.A.B. Jun. 16, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/016,087 01/28/2011 26574 7590 06/20/2016 SCHIFF HARDIN, LLP PA TENT DEPARTMENT 233 S. Wacker Drive-Suite 6600 CHICAGO, IL 60606-6473 FIRST NAMED INVENTOR Stefan Foertsch 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. Pl0,0337 3878 EXAMINER FAIRCHILD, AARON BENJAMIN ART UNIT PAPER NUMBER 3779 NOTIFICATION DATE DELIVERY MODE 06/20/2016 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): patents-CH@schiffhardin.com jbombien@schifthardin.com PTOL-90A (Rev. 04/07) U-NITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte STEP AN FOERTSCH and HENRIK KELLER Appeal2014-006730 Application 13/016,0871 Technology Center 3700 Before LYNNE H. BROWNE, ERIC C. JESCHKE, and JASON W. MELVIN, Administrative Patent Judges. MELVIN, Administrative Patent Judge. DECISION ON APPEAL This appeal arises under 35 U.S.C. § 134(a), from a rejection of claims 9-17. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 Appellants identify Siemens Aktiengesellschaft, a German corporation, as the real party in interest. Appeal Br. 1. Appeal2014-006730 Application 13/016,087 BACKGROUND The claims are directed to a method for contact-free magnetic navigation. Claim 9, reproduced below, is illustrative of the claimed subject matter: 9. A system for contact-free magnetic navigation, comprising: a magnetic body configured for introduction in vivo into a workspace of a living subject that is at least partially filled with a fluid; a thickening agent added in vivo to said fluid that thickens said fluid to increase a braking effect that said fluid exerts on said magnetic body; and a magnet system that generates a magnetic field in said fluid thickened by said thickening agent with which said magnetic body interacts to navigate said magnetic body in vivo in said workspace in a contact-free manner. REJECTIONS Appellants seek our review of the following rejections: 1. Claims 9-14 and 16-17 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Ueda (U.S. Pat. No. 5,681,260, iss. Oct. 28, 1997) and Bagnall (U.S. Pat. No. 4,564,363, iss. Jan. 14, 1986). 2. Claim 15 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Ueda, Bagnall, and Boyden (U.S. Pat. Pub. 2009/0112190, pub. Apr. 30, 2009). DISCUSSION The Examiner relies on Ueda as disclosing "a system for contact-free magnetic navigation" and states that "Ueda does not positively disclose a thickening agent added in vivo to" the fluid in which the magnetic body is 2 Appeal2014-006730 Application 13/016,087 introduced. Final Act. 4. For the claimed "thickening agent," the Examiner finds that Bagnall teaches "a thickening agent is added in vivo" and that "this is done for the purpose of delayed release of pharmaceutical agents." Id. Appellants argue that the rejection is improper in part because Bagnall does not support "adding a thickening agent ... to increase the braking effect" as claimed. Appeal Br. 4. Further, Appellants argue that Bagnall "is not concerned with solving problems in the technology of the claims on appeal." Id. at 5; accord id. ("It is even less likely that a person of ordinary skill in the field of designing magnetically guided intracorporeal magnetic bodies would consult a drug-delivery system for ingestion by a ruminant animal in the expectation of finding beneficial solutions to problems associated with the technology of the claims on appeal."); Reply Br. 5 ("[T]here is no teaching, guidance or motivation in either of the references to combine those teachings in a manner that results in a system as set forth in claim 9. "). We understand Appellants to challenge the Examiner's articulated reason for combining the teachings of Bagnall with Ueda. The Examiner's stated reason-" delayed release of pharmaceutical agents" (Final Act. 4; accord Ans. 5)-is an example of improper hindsight reasoning because the Examiner fails to explain why one skilled in the art would modify Ueda to release a pharmaceutical. Because Ueda relates to navigation of a magnetic body and does not contemplate the release of pharmaceutical agents, it does not provide one skilled in the art with a reason to use a delayed-release pharmaceutical. See generally Ueda. Further, the Examiner has provided no other reason that a person of ordinary skill in the art would have sought to use Bagnall's thickening agent to 3 Appeal2014-006730 Application 13/016,087 improve Ueda's magnetic body and render obvious the claimed subject matter. Cf KSR Int'! v. Teleflex, Inc., 550 U.S. 398, 417 (2007) ("[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill."). Thus, the Examiner has not provided "articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). Accordingly, we do not sustain the rejections. DECISION For the above reasons, the Examiner's rejection of claims 9-17 is reversed. REVERSED 4 Copy with citationCopy as parenthetical citation