Ex Parte Hyde et alDownload PDFPatent Trial and Appeal BoardJun 23, 201612386054 (P.T.A.B. Jun. 23, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/386,054 04/13/2009 138951 7590 06/27/2016 Advent, LLP/INTELLECTUAL VENTURES 3930 South 147th Suite 101 Omaha, NE 68144 FIRST NAMED INVENTOR Roderick A. Hyde 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. 0705-004-002C-OOOOOO 1016 CONFIRMATION NO. 4294 EXAMINER LEE,JOHNR ART UNIT PAPER NUMBER 2878 NOTIFICATION DATE DELIVERY MODE 06/27/2016 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): uspto@adventip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RODERICK A. HYDE, MURIEL Y. ISHIKAWA, ERIC C. LEUTHARDT, MICHAEL A. SMITH, LOWELL L. WOOD JR., and VICTORIA Y.H. WOOD Appeal2014-001699 Application 12/386,054 1 Technology Center 2800 Before BRADLEY R. GARRIS, JEFFREY T. SMITH, and JEFFREY W. ABRAHAM, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134 from the Examiner's final decision rejecting claims 1-50. We have jurisdiction under 35 U.S.C. § 6. The '054 Application describes a method comprising receiving an intraluminal pressure change with a deformable pressure change receiving structure and directly converting the intraluminal pressure change into energy with a piezoelectric intraluminal generator. Spec. 6. Independent 1 According to Appellants, the real party in interest is Searete LLC. App. Br. 4. Appeal2014-001699 Application 12/386,054 claim 1 is representative of the subject matter on appeal and is reproduced below: 1. A method comprising: receiving an intraluminal pressure change with a deformable pressure change receiving structure directly converting the intraluminal pressure change into energy with a piezoelectric intraluminal generator upon deformation of the deformable pressure change receiving structure, the piezoelectric intraluminal generator including the deformable pressure change receiving structure; and providing the energy to a power utilization device to at least partially power the power utilization device. App. Br. 39 (Claims App.). REJECTIONS On appeal, the Examiner maintains the following rejections: 1. Claims l; 2; and 50 rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Zenati et al. (US 2009/0171413 Al published July 2, 2009) in view of Estevez (US 6,822,343 B2, issued Nov. 23, 2004). Final Act. 5---6. 2. Claims 1, 2, 18, 19, 21, 22, 24, 26, 36, 37, 39--42, and 50 rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Zenati and Holzer (US 2005/0256549 Al, published Nov. 17, 2005). Final Act. 6-9. 3. Claims 3-17, 20, 23, 25, 27-35, 38, and 43--49 rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Zenati, Holzer, and Sheppard (US 2008/0172043 Al, published July 17, 2008). Final Act. 9-12. 2 Appeal2014-001699 Application 12/386,054 4. Claims 3, 4, 8-10, and 12-17 rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Zenati, Holzer, and Schulman et al. (US 6,564,807 Bl, issued May 20, 2003). Final Act. 12-13. 5. Claims 4--7 and 11 rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Zenati, Holzer, and Kuhn (US 2010/0030043 Al, published Feb. 4, 2010). Final Act. 13-14. 6. Claims 23, 25, 28, 34, and 38 rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Zenati, Holzer, and Estevez. Final Act. 14--15. 7. Claim 1 is provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claim 1 of copending Application No. 12/315,631 in view of over Holzer. Final Act. 16. 8. Claim 40 is provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claim 1 of copending Application No. 12/315,616 in view of over Holzer. Final Act. 17. OPINION Rejection 1. The Examiner rejected claims 1, 2, and 50 under 35 U.S.C. § 103(a) as unpatentable over the combination of Zenati and Estevez. (Final Act. 3; Ans 3) Appellants' arguments for reversal of this rejection are principally based on the discussion of independent claim 1. Appellants have not 3 Appeal2014-001699 Application 12/386,054 provided substantive arguments addressing claims 2 and 50, (App. Br. 18- 19) Appellants argue the Examiner has not established that Zenati's implantable device would have been suitable for intraluminal implantation. (App. Br. 15-16.) Appellants also argue "[t]he Examiner failed to provide the record with evidence of how one of ordinary skill in the art would interpret device 10 of Estevez, as shown in FIG. 1, as disclosing or suggesting 'an intraluminal generator'." (Id. at 16) We affirm the rejection of claim 1. The Examiner found Zenati teaches an implantation device 10 (power utilization device) that can be powered by a piezoelectric energy harvesting device. (Final Act. 5; Ans 2- 3). Zenati fails to provide details of how the piezoelectric energy harvesting device operates. (Zenati i-fi-1 45--46). The Examiner found Estevez describes an electric generator (16) that is placed in the lumen of blood vessels so as to harvest energy from blood flow (Final Act. 6; Ans 3; Estevez Fig. 2). 2 The Examiner concluded it would have been obvious to a skilled artisan to place Zenati' s piezoelectric generator into an anatomical lumen, such as a blood vessel or artery to generate energy. We agree with the Examiner that the claimed invention would have been obvious to a person of ordinary skill in the art that has reviewed the disclosures of Zenati and Estevez. Appellants have not disputed that Zenati describes a piezoelectric energy harvesting device and Estevez Fig. 2 describes an electric generator (16) that is placed in the lumen of blood vessels. A person of ordinary skill in the art would have sufficient skill to 2 Estevez column 5 provides the description of Figure 2. 4 Appeal2014-001699 Application 12/386,054 determine the appropriate arrangement of an intraluminal piezoelectric generator. Rejection 2. The Examiner rejected claims 1, 2, 18, 19, 21, 22, 24, 26, 36, 37, 39- 42, and 50 under 35 U.S.C. § 103(a) as unpatentable over the combination of Zenati and Holzer. Appellants argue "[t]he Examiner failed to establish, using objectively-verifiable evidence or detailed explanation based on evidence, why one of ordinary skill in the art would be motivated to modify Zenati with Holzer in an attempt to achieve Appellant's claim recitations." (App. Br. 25-26) In further support of this argument, Appellants argue the Examiner failed to establish that the device of Zenati is configured for generation of electrical power by utilizing blood friction within a blood vessel such as described by Holzer. (Id. at 26-27). "The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference. . . . Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art." In re Keller, 642 F.2d 413, 425 (CCPA 1981); see also In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) ("[I]t is not necessary that the inventions of the references be physically combinable to render obvious the invention under review."); and In re Nievelt, 482 F.2d 965, 968 (CCPA 1973) ("Combining the teachings of references does not involve an ability to combine their specific structures."). The Examiner has established that it was known to persons of ordinary skill in the art to generate energy by placing a generator within an 5 Appeal2014-001699 Application 12/386,054 anatomical lumen such as described by Holzer. (Final Act. 7; Ans 4). We agree with the Examiner that the claimed invention would have been obvious to a person of ordinary skill in the art that has reviewed the disclosures of Zenati and Holzer. Appellants have not disputed that Zenati describes a piezoelectric energy harvesting device and Holzer describes an energy harvesting device that is placed an anatomical lumen of blood vessels. A person of ordinary skill in the art would have sufficient skill to determine the appropriate arrangement of an intraluminal piezoelectric generator. Rejections 3--6. Appellants present the arguments for rejections 3-6 together. (App. Br. 32-33). However, Appellants have not provided substantive arguments for claims 3-17, 20, 23, 25, 27-35, 38, and 43--49. Appellants specifically state "[c]laims 3-17, 20, 23, 25, 27-35, 38, and 43--49 depend, directly or indirectly, from independent claim 1 and are allowable due to distinct subject matter and due to their dependence upon an allowable base claim." (Id. at 33). As stated above, we do not find Appellants' arguments regarding independent claim 1 persuasive of reversible error. Consequently, we sustain the rejections of claims 3-17, 20, 23, 25, 27-35, 38, and 43--49 for the reasons presented by the Examiner and stated above. Rejections 7-8. The Examiner provisionally rejected claim 1 on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claim 1 of copending Application No. 12/315,631 in view of Holzer. The Examiner also provisionally rejected claim 40 on the ground of 6 Appeal2014-001699 Application 12/386,054 nonstatutory obviousness-type double patenting as being unpatentable over claim 1 of copending Application No. 12/315,616 in view of over Holzer. (Final Act. 16-17). In rebuttal to the rejections Appellants argue "it is wholly improper for the Examiner to rely on a third-party reference in making a rejection under obviousness-type double patenting. See, Geneva Pharmaceuticals v. GlaxoSmithKline PLC, 349 F.3d 1373, 68 USPQ2d 1865 (Fed. Cir. 2003)." (App. Br. 36). Contrary to Appellants' assertions, the disclosures from secondary prior art references that are useable in a 35 U.S.C § 103 obviousness determination are useable in an analogous manner in an obviousness-type double patenting determination. The test of double patenting is whether differences between inventions claimed in instant application and in a copending reference application are such that subject matter sought to be patented would have been obvious to one of ordinary skill in the art, in view of any prior art additionally relied on. In re Wetterau, 356 F.2d 556, 558- 559 (CCPA 1966). Consequently, we sustain the nonstatutory obviousness-type double patenting rejections for the reasons presented by the Examiner and stated above. ORDER The Examiner's prior art rejections and nonstatutory obviousness-type double patenting rejections are affirmed. 7 Appeal2014-001699 Application 12/386,054 TIME PERIOD No time period for taking any subsequent action in connection with this appeal maybe extended under 37 C.F.R. § 1.136(a)(l). AFFIRMED 8 Copy with citationCopy as parenthetical citation