Ex Parte Judy et al

Patent Trial and Appeal Board

Sep 28, 2016

13164587 (P.T.A.B. Sep. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/164,587 06/20/2011
8156 7590 09/30/2016
JOHN P. O'BANION
O'BANION & RITCHEY LLP
400 CAPITOL MALL SUITE 1550
SACRAMENTO, CA 95814
FIRST NAMED INVENTOR
JackW. Judy
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.
UC-2010-175-2-LA 2068
EXAMINER
TOWNSEND, GUY K
ART UNIT PAPER NUMBER
3761
NOTIFICATION DATE DELIVERY MODE
09/30/2016 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):
docketing@intellectual.com
jpo@intellectual.com
sek@intellectual.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JACK W. JUDY, HYOWON LEE,
and MARVIN BERGSNEIDER1
Appeal2015-000352
Application 13/164,587
Technology Center 3700
Before DONALD E. ADAMS, JEFFREY N. FREDMAN,
and TIMOTHY G. MAJORS, Administrative Patent Judges.
PER CURIAM
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to an
apparatus for self-clearing a flow pore in a human implant which have been
rejected as obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 Appellants identify the Real Party in Interest as The Regents of the
University of California. (App. Br. 1.)
Appeal2015-000352
Application 13/164,587
STATEMENT OF THE CASE
Appellants' invention relates "generally to implantable catheters, and
more particularly to self-clearing catheters." (Spec. i-f 6.) "[A] self-clearing
actuator [is] configured to be positioned in a pore providing fluid
communication into the central lumen of the ventricular catheter body." (Id.
at ,-r 22.)
Claims 1-3 and 5-10 are on appeal. Claim 1 is illustrative:
1. An apparatus for self-clearing a flow pore in a human
implant, comprising:
a housing configured to be disposed in a flow pore of the
implant;
said housing comprising a central bore spanning between
an upper surface and a lower surface of the housing, the central
bore providing fluid communication into said flow pore; and
an actuator plate extending from the upper surface of the
housing into the central bore via a cantilever beam;
the cantilever beam having a first end emanating at the
central bore and a second end terminating at the actuator plate;
the actuator plate configured to reciprocate within the
central bore between a first position extending downward at an
angle into the central bore and a second position substantially at
or above the upper surface of the housing;
wherein the cantilever beam is stressed such that it is
preloaded to nominally curve downward to extend the actuator
plate in the first position;
wherein the actuator plate comprises a magnet responsive
to magnetic field such that the magnetic field drives the actuator
plate toward the second position;
wherein in the cantilever beam comprises a composite
material having a first low-stress layer and a second compressed
layer; and
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Appeal2015-000352
Application 13/164,587
wherein the second compressed layer preloads the
cantilever beam to nominally curve in the first position.
(App. Br. 13 (Claims App'x) (emphases added).)
Claims 1-3 and 5-10 are rejected under 35 U.S.C. § 103(a) over
Bergsneider2 and Lee. 3
DISCUSSION
As shown in the Examiner's annotations to Figure 4 of Bergsneider
(Ans. 4), the Examiner finds that Bergsneider discloses
the cantilever beam (70) having a first end (70a) emanating at
the central bore (CB) and a second end (70b) terminating at the
actuator plate (30); the actuator plate (30) configured to
reciprocate within the central bore (CB) between a first position
(P 1) extending downward at an angle into the central bore (CB)
(140); and a second position substantially at (P2A) (130) or
above (P2A) (150) the upper surface of the housing.
(Id.) The Examiner finds that Bergsneider discloses that
the cantilever beam is made of a composite material, the layers
of which would be interpreted to include a first low stress layer
and a second compressed layer [0052]L12, 17-24, since they
include the same structures as claimed by [Appellants], such as
silicon nitride [0052]L24 including layers or coatings
[0052]L30-31, such that the cantilever beam (70) can act as a
torsional element[,] Fig.4, [0029]L 14 that extends downward at
an angle into the central bore (CB)(140), to extend the actuator
plate (30) in the first position as a preloaded torsional position
that would include nominally curving downward to extend the
2 Bergsneider et al., US 2008/0281250 Al, published Nov. 13, 2008.
3 Lee et al., US 5,771,902, issued June 30, 1998.
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Appeal2015-000352
Application 13/164,587
actuator plate m the first position[] (140) [0029]L5-7,[]14,
[0032]L3-5.
(Id. at 4--5.)
The Examiner finds that Bergsneider "thus provid[ es] the motivation
to change the structural dimensions and materials to alter the mechanical
properties so as to optimize performance [0052]Ll---6." (Id. at 5-6.)
The Examiner finds that Lee discloses
micromachined actuators for intratubular positioning[,] Figs.
10A/10B,C2L28---C10L64 including cantilevered beams having
low stress and compression layers[,] C5L28-33[,]C11Ll-34
using silicon nitride[,] C9L 1 [,] that can be used as a cantilever
beam as a microactuator[,] Figs. IOA/IOB, CIOL47---Cl 1L34; in
order to open and close open and close the layered
microcantilever that function as bending mechanisms for
catheters and the like C9L43-53.
(Id. at 6.)
(Id.)
The Examiner concludes that it would have been obvious to
provide the claimed low-stress layer and compressed layer of Lee
sized with thickness to control the angle and preload the
cantilever beam to curve in the downward first position of
Bergsneider, using the teachings of Lee and Bergsneider, and one
of skill would have been motivated to do so, in order to change
the structural dimensions and materials to alter the mechanical
properties to optimize performance, as taught by Bergsneider;
and in order to open and close the layered microcantilever that
function as bending mechanisms for catheters and the like, as
taught by Lee, and where known types of chemical vapor
deposition (CVD) include silicon nitride, including PECVD or
LPCVD silicon nitride.
We are not persuaded that the Examiner has established by a
preponderance of the evidence that claim 1 would have been obvious.
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Appeal2015-000352
Application 13/164,587
Claim 1 requires the "cantilever beam is stressed such that it is
preloaded to nominally curve downward to extend the actuator plate in the
first position." In other words, the claim requires that the beam is naturally
biased in a first position, which is downward at an angle into the central
bore. (See, e.g., Spec. i-fi-1 44, 51; Ans. 4.) As claim 1 makes clear, upon the
application of a force (i.e., magnetic field), the beam and thus the actuator
plate move to a "second position substantially at or above the upper surface
of the housing." (App. Br. 13 (Claims App'x).) The Examiner has not
explained clearly where Bergsneider or Lee teach or suggest these
limitations. (Compare, e.g., Spec. Fig. 8B (showing preloaded downward
curve of cantilever beams 214 in the absence of a magnetic field) with
Bergsneider, Fig. 4 (showing horizontal position of torsional element and/or
cantilever in the absence of a magnetic field (H =O) ). )
We further agree with Appellants that
the Examiner has failed to show [a] teaching or suggestion in Lee
for a cantilever beam [that] comprises a composite material
having a first low-stress layer and a second compressed layer;
and particularly wherein the second compressed layer preloads
the cantilever beam to nominally curve in the first position
downward into the central bore.
(App. Br. 7.)
The Examiner has not provided sufficient "articulated reasoning with
some rational underpinning" - based on Lee or otherwise - why the
skilled artisan would make the changes necessary to arrive at an apparatus
for self-clearing a flow pore in a human implant with the claimed features.
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn,
441F.3d 977, 988 (Fed. Cir. 2006). As the Examiner notes, Bergsneider
teaches "[a] moveable element ... [that] act[s] as a torsion element"
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Appeal2015-000352
Application 13/164,587
(Bergsneider if 29; see also Ans. 10). Lee teaches that "the curling of the
cantilever beam is the result of the tensile residual stress in the polypyrrole
of the conductive layer" (Lee 5:30-33; see also Ans. 10).4 And the
Examiner emphasizes that silicon nitride may be used in both Bergsneider
and Lee, as well as the claimed invention. (Ans. 5---6). But the Examiner
has not sufficiently explained how these disclosures in the prior art teach or
suggest the specific orientation of low stress and compressed layers, much
less that this orientation preloads the cantilever beam to curve downward
into the central bore as claimed. The fact that the claimed invention and the
prior art may use the same chemical compounds does not make up for the
reasoned explanation that is wanting in the Examiner's rejection.
We are further not persuaded on the present record that a desire "to
optimize performance" would have predictably caused the skilled artisan to
make the structural changes necessary to transform the prior art into the
claimed apparatus. (Ans. 6.) As Appellants point out, "the supposed
benefits, or 'advantages' of the modification (e.g. optimizing performance)
are the only rationale provided in the Office Action in support of the instant
rejection." (App. Br. 8.) We agree with Appellants that the Examiner's
rationale, in this particular fact pattern, "does not provide the 'articulated
reasoning with some rational[] underpinning to support the legal conclusion
of obviousness."' (Id.)
4 In support of the rejection, the Examiner repeatedly cites to teachings in
column 11 of Lee, but Lee includes no column 11. (Ans. 6, 10; see also
App. Br. 7 (noting "Lee does not have a col. 11").)
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Appeal2015-000352
Application 13/164,587
For the reasons above, the rejection of independent claim 1 is
reversed. So too, we reverse the rejection of claims 2, 3, and 5-10 because
of their dependencies from claim 1.
CONCLUSION OF LAW
We reverse the rejection of claims 1-3 and 5-10 under 35 U.S.C.
§ 103(a) over Bergsneider and Lee.
REVERSED
7