Ex Parte Hyde et al

Patent Trial and Appeal Board

May 27, 2016

12462789 (P.T.A.B. May. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/462,789 08/07/2009
138951 7590 06/01/2016
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.
0705-004-002E-OOOOOO
1016
CONFIRMATION NO.
9891
EXAMINER
CUEVAS, PEDRO J
ART UNIT PAPER NUMBER
2831
NOTIFICATION DATE DELIVERY MODE
06/01/2016 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
Appeal2014-001467
Application 12/462,789 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, 3---6, 9, 12-15, 18-21, 24--26, 29-31, 34, 37--40,
43--46 and 49-53. We have jurisdiction under 35 U.S.C. § 6.
The '789 Application describes an intraluminal power generation
device. Spec. 4. Independent claim 1 is representative of the subject matter
on appeal and is reproduced below:
1 According to Appellants, the real party in interest is Searete LLC. App.
Br. 4.
Appeal2014-001467
Application 12/462,789
1. A device comprising:
an intraluminal piezoelectric generator including a
deformable intraluminal pressure change-receiving structure, the
deformable intraluminal pressure change receiving structure (i)
includes a piezoelectric material, (ii) includes a surface that is
configured to be exposed to a fluid in a luminal environment,
and (iii) is configured to generate electricity under deformation
of the surface in response to receipt by the surface of a force
from an intraluminal pressure change in the luminal
environment; and
an energy storage apparatus, selected from at least one of:
an ultracapacitor, a mechanical energy storage apparatus,
a pressure energy storage apparatus, a chemical energy storage
apparatus and a fuel cell.
App. Br. 52 (Claims App.).
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1, 4, 5, 9, 12, 13, 26, 29, 30, 34, 37, 38, 49, and 51-53 are
rejected under 35 U.S.C. § 102(b) as anticipated by Gelbart
(US 2007/0293904 Al, published Dec. 20, 2007).2 Final Act. 3.
2. Claim 3 is rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Gelbart and Tiemann (US 6,291,900 B 1, issued
Sept. 18, 2001). Final Act. 5.
2 The Examiner inadvertently excluded claims 6, 24, and 31 from the
statement of the rejection. We find this exclusion to be harmless error
because claims 6, 24, and 31 were specifically discussed in the body of this
rejection. (Final Act. 4).
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Application 12/462,789
3. Claims 14, 25, 39 and 50 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Gelbart and Bugge (US
6,827,682 B2, issued Dec. 7, 2004). Final Act. 6.
4. Claims 18-20 and 43--45 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Gelbart and Tolkoff (US
2004/0039242 Al, published Feb. 26, 2004). Final Act. 6.
5. Claims 18, 21, 43 and 46 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Gelbart and Gianchandani
(US 2005/0080346 Al, published Apr. 14, 2005). Final Act. 7.
6. Claims 15 and 40 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Gelbart and Ayazi (US
2006/0044078 Al, published Mar. 2, 2006). Final Act. 8.
OPINION
Anticipation rejection
Rejection 1.
The Examiner rejected claims 1, 4, 5, 9, 12, 13, 26, 29, 30, 34, 37, 38,
49, and 51-53 under 35 U.S.C. § 102(b) as anticipated by Gelbart.
Claim 1
We sustain the rejection of claim 1. Appellants argue the
Examiner has not established that Gelbart discloses a deformable
intraluminal pressure change-receiving structure configured to
generate electricity as recited in independent claim 1. (App. Br. 16-
19). Appellants specifically argue: The Examiner failed to establish
the two surfaces (3 and 23) are equivalent to "the deformable
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Application 12/462,789
intraluminal pressure change-receiving structure ... includes!!.
surface" ... as recited in independent claim 1. (Reply Br. 5-6).
Appellants further argue "the Examiner also failed to establish how
one of ordinary skill in the art would interpret 'bellows 3' as
disclosing an equivalent to the surface recited in Appellant's [sic]
claim." (Reply Br. 6).
Appellants' arguments are not persuasive of reversible error in the
stated rejection. Appellants have not disputed that Gelbart describes an
intraluminal piezoelectric generator that generates electricity resulting from
intraluminal pressure change. (See App. Brief generally; Gelbart i-f 31 ).
Gelbart discloses this device can be placed in an artery wherein the blood
pressure acts on the device such that the cover 23 compresses the bellows 3.
(Gelbart i-f 31 ). The bellows 3 deform in response to receipt of force
resulting from intraluminal pressure change. As depicted in Gelbart, the
bellows 3 are exposed to fluid in the artery. Consequently, the intraluminal
pressure change functions on both surfaces 3 and 23.
Claim 4. 5, 9 and 533
We sustain the rejection of claim 53. Appellants argue the Examiner
has not established that Gelbart Figure 2 discloses an equivalent to "the
intraluminal piezoelectric generator defines a stent-type structure" as recited
in claim 53. (App. Br. 23-24).
3 Appellants have provided a heading allegedly presenting arguments for
dependent claims 4, 5, 9 and 53. (App. Br. 22). Appellants have failed to
provide substantive arguments addressing claims 4, 5, and 9. These claims
are not patentable for the reasons discussed above when discussing claim 1.
We will separately address claim 53.
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Application 12/462,789
The Examiner has identified the medical device depicted in Figure 8
as corresponding to a stent-type structure. (Ans. 3; Gelbart i-f 48, Fig. 8).
The language "stent-type structure" appears a single time in the present
specification without identification of particular devices. (Spec. i-f 16).
Appellants have not explained why a person of ordinary skill in the art
would have recognized the medical devices that are delivered to arteries
through a catheter as described by Gelbart are not "stent-type structures."
Claims 26, 29, 30, and 34
We sustain the rejection of claims 26, 29, 30, and 34. Appellants have
provided a heading allegedly presenting arguments for dependent claims 26,
29, 30, and 34. However, Appellants have failed to provide substantive
arguments addressing the specific limitations of claims 26, 29, 30, and 34
and relied on the arguments presented for independent claim 1. (App. Br.
24--27). These claims are not patentable for the reasons discussed above
when discussing claim 1.
Claims 12, 13, and 514
We sustain the rejection of claim 51. Appellants argue the Examiner
has not properly addressed the "a coupling between the intraluminal
piezoelectric generator and the energy storage apparatus selected from at
least one of: a mechanical coupling, a fluid coupling, an acoustical coupling
4 Appellants have provided a heading for dependent claims 12 and 13. (App.
Br. 31 ). Appellants have failed to provide substantive arguments addressing
claims 12 and 13. Instead, Appellants rely on the arguments presented for
independent claim 51. (App. Br. 31 ). Consequently, these claims will stand
or fall with independent claim 51.
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Appeal2014-001467
Application 12/462,789
and an electromagnetic radiation coupling" recitations of claim 51. (App.
Br. 29-30). The Examiner has identified elements in Gelbart's figures that
establish coupling between the piezoelectric generator and the energy
storage apparatus as required by the recitations of claim 51. (Ans. 5; Gelbart
i-fi-1 31, 32 and 57). Appellants have not provided a technical explanation
demonstrating that the claimed invention excludes coupling as described in
Gelbart.
Claims 37, 38, 49 and 525
We sustain the rejection of claim 52. Appellants argue the Examiner
has not properly addressed the "intraluminal piezoelectric generator
including a deformable intraluminal pressure change-receiving structure"
recitations of claim 52. (App. Br. 33). Appellants' argument is not
persuasive because this is the same limitation that we discussed above
regarding independent claim 1. Consequently, for the reasons set forth
above we do not find this argument persuasive of reversible error.
For the reasons presented above, the § 102 rejection based on Gelbart
of claims 1, 4, 5, 9, 12, 13, 26, 29, 30, 34, 37, 38, 49, and 51-53 is affirmed.
5 Although Appellants have provided a heading for dependent claims 37, 38,
and 49. (App. Br. 34), Appellants rely on the arguments presented for
independent claim 52. (App. Br. 31 ). Consequently, these claims will stand
or fall with independent claim 51.
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Application 12/462,789
Rejection 2.
Obviousness rejections
We sustain the rejection of claim 3 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Gelbart and Tiemann.
Appellants argue that claim 3 is patentable because Tiemann fails to
overcome Gelbart's shortcomings regarding independent claim 1. (App. Br.
35-36).
As stated above, we do not find Appellants' arguments regarding the
patentability of claim 1 persuasive. Consequently we sustain the rejection
for the reasons presented by the Examiner and stated above.
Rejection 3.
We reverse the rejections of claims 14, 25, 39, and 50 under 35 U.S.C.
§ 103 (a) as unpatentable over the combination of Gelbart and Bugge.
Claims 14 and 39 require "a fluid coupling" between the intraluminal
piezoelectric generator and the energy storage apparatus. Claim 25 requires
"a coupling between the intraluminal piezoelectric generator and an at least
partially extraluminal energy storage apparatus." Claim 50 requires "means
for providing the energy to an at least partially extraluminal energy storage
apparatus."
The Examiner relied on Bugge Figure 6 to describe a fluid coupling
and Figure 12 to describe the coupling between a generator configured for
intraluminal disposal and a partially extra luminal energy storage apparatus.
(Final Act. 6). Appellants correctly argue that Bugge's depiction in Figures
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Application 12/462,789
6 and 12 as well as the accompanying description appearing in the disclosure
do not support the Examiner's position. (App. Br. 38--40).
Rejection 4.
We sustain the rejection of claims 18-20 and 43--45 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Gelbart and Tolkoff.
Appellants have failed to provide substantive arguments addressing
claims 19-20 and 43--45. Appellants rely on the arguments presented for
independent claims 51 and 52. (App. Br. 42--43). Consequently, we sustain
the rejection of claims 19-20 and 43--45 for the reasons presented by the
Examiner and set forth above.
We also sustain the rejection of claim 18. Appellants did not dispute
the Examiner's finding that Tolkoff teaches optically coupling
electromagnetic radiation through a light guide and directionally coupling
electromagnetic radiation from the light guide to a location. (App. Br. 44;
Ans. 6-7; Tolkoffi-fi-f 14, 145). Appellants rely on the arguments presented
for independent claim 51 as the basis for patentability of claim 18. (App. Br.
44). As set forth above, we found this argument unpersuasive of
patentability.
Rejection 5.
We sustain the rejection of claims 18, 21, 43, and 46 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Gelbart and Gianchandani.
Appellants have failed to provide substantive arguments addressing
claims 18, 21, 43, and 46. Appellants rely on the arguments presented for
independent claims 51 and 52. (App. Br. 45--46). Consequently, we sustain
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Appeal2014-001467
Application 12/462,789
the rejection of claims 18, 21, 43, and 46 for the reasons presented by the
Examiner and set forth above.
Rejection 6.
We reverse the rejection of claims 15 and 40 under 35 U.S.C. § 103(a)
as unpatentable over the combination of Gelbart and Ayazi. Claims 15 and
40 require "an acoustical coupling" between the intraluminal piezoelectric
generator and the energy storage apparatus.
The Examiner has failed to direct us to evidence to support the
position that it would have been obvious to modify the teachings of Gelbart
in view of Ayazi's description of"the construction of a capacitive vertical
silicon bulk acoustic resonator, comprising a transmitter/receiver system
providing acoustical coupling of energy." (Final Act. 8). The Examiner has
failed to adequately explain how the teachings of Ayazi would have been
combined with Gelbart.
ORDER
The Examiner's prior art rejections are affirmed-in-part.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED-IN-PART
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