Ex Parte Lewis et al

Patent Trial and Appeal Board

Aug 30, 2017

13920501 (P.T.A.B. Aug. 30, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/920,501 06/18/2013 Thomas G. Lewis H-KN-00481 (1) 7412
149863 7590 09/01/2017
CARDINAL HEALTH INC.
ATTN: DANIEL C. STELTER
300 South Riverside Plaza
Suite 2010
Chicago, IL 60606
EXAMINER
BOBISH, CHRISTOPHER S
ART UNIT PAPER NUMBER
3746
NOTIFICATION DATE DELIVERY MODE
09/01/2017 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):
C AH @ cardinal-ip. com
karen.dangelo @ cardinalhealth.com
patent@cardinalhealth.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte COVIDIEN LP1
Appeal 2016-007046
Application 13/920,501
Technology Center 3700
Before DANIEL S. SONG, KEN B. BARRETT, and ANTHONY KNIGHT,
Administrative Patent Judges.
SONG, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134 the Examiner’s final
rejection of claims 1—6, 8—11, and 13—20 in the present application. Claims
7, 12, and 21—27 have been previously canceled (App. Br. 2). We have
jurisdiction under 35 U.S.C. §§ 6(b) and 134.
We AFFIRM.
1 Referred to as “Appellant” herein. The real party in interest is Medtronic
pic, the parent entity of Covidien LP (Appeal Brief (hereinafter “App. Br.”)
1).
Appeal 2016-001746
Application 13/920,501
The claimed invention is directed to a medical pumping apparatus
having a rotatable assembly and an electromagnetic radiation emitter-
detector pair (Abstract). Representative independent claim 1 reads as
follows (App. Br. 18, Claims App’x, emphasis added):
1. A medical pumping apparatus comprising:
a pump rotor including a surface having a reflective
portion for reflecting electromagnetic radiation and a non-
reflective portion that does not reflect electromagnetic radiation,
the nonreflective portion of the surface of the pump rotor is at
least one of the following: hatched, scratched, pitted, and
roughed, such that said non-reflective surface diffuses
electromagnetic radiation incident thereon;
a motor for rotating the pump rotor;
an emitter for emitting electromagnetic radiation, said
emitter positioned to emit electromagnetic radiation sequentially
on the reflective and non-reflective portions of the surface of the
pump rotor as the pump rotor rotates; and
a detector for receiving electromagnetic radiation reflected
by the surface of the pump rotor and providing a detection
signal indicative of the received electromagnetic radiation for
monitoring rotation of the pump rotor.
The Examiner rejects various claims as unpatentable under 35 U.S.C.
§ 103(a)2 as follows:
2 Throughout the Final Office Action and the Answer, the Examiner states
that the various claims are “rejected under 35 U.S.C. 102(b) as being
anticipated.” It is clear from the texts of the rejections and the Appellant’s
response that the actual rejection is that of obviousness under 35 U.S.C.
§ 103(a).
2
Appeal 2016-001746
Application 13/920,501
1. Claims 1—2, 6, 8—9, 11, 133, 15—16, and 19 as obvious over
Dumas (US Patent No. 5,531,680, issued July 2, 1996) in view of Abe
(US Patent No. 4,806,751, issued February 21, 1989) (Final Office
Action (hereinafter “Final Act.”) 2).
2. Claims 3 and 17 as obvious over Dumas in view of Abe and
Olliffe (US Patent No. 3,982,162, issued September 21, 1976) (Final
Act. 5).
3. Claims 4, 10, and 18 as obvious over Dumas in view of Abe
and Hamburg (US Patent No. 3,673,476, issued June 27, 1972).
4. Claims 5, 14, and 20 as obvious over Dumas in view of Abe
and Wolfberg (US Patent No. 5,533,453, issued July 9, 1996) (Final
Act. 7).
ANALYSIS
Only those arguments actually made by the Appellant have been
considered in this decision. Arguments that the Appellant could have made
but chose not to make have not been considered and are deemed to be
waived. See 37 C.F.R. § 41.37(c)(l)(iv).
3 The Examiner appears to have made another typographical error in that
claim 13 is not identified in the heading of this rejection (Final Act. 2; Ans.
2), but is identified in the body of the rejection (Final Act. 4; Ans. 4). It is
clear from the text of the rejection and the Appellant’s response that the
actual rejection encompasses claim 13.
3
Appeal 2016-001746
Application 13/920,501
Rejection 1
Claim 1
The Examiner finds that Dumas discloses claim 1 except for marring
the surface of a rotor so as to provide a non-reflective surface on the rotor
(Final Act. 3; see also Ans. 12). The Examiner explains that “Dumas does
not specify a manner in which the non-reflective portions (64) are formed,”
and that Abe “is relied upon to teach such a feature.” (Ans. 9). Specifically,
the Examiner finds that Abe discloses the limitation reciting that the non-
reflective portion be hatched, scratched, pitted, or roughed (Final Act. 3,
citing Abe, col. 3,1. 44—col. 4,1. 2; see also Final Act. 8—9). Indeed, Abe
teaches a non-reflective portion satisfying the noted limitation by
specifically disclosing that
in order to further increase the difference in light reflectivity as
described above, surfaces of the non-reflective portions 4 of the
code wheel 2 may be treated to provide a satin crape like
appearance by sand-blasting or the like to improve the irregular
reflectivity of the same.
(Abe, col. 3,1. 44—col. 4,1. 2).
Based on the teachings of Dumas and Abe, the Examiner concludes
that “[i]t would have been obvious to one of ordinary skill in the art of rotary
sensors at the time of the invention to mar the non-reflective surfaces of the
pumping apparatus of Dumas as taught by Abe in order to increase the non­
reflectivity of the surfaces.” (Final Act. 4). We agree with the Examiner,
and address the Appellant’s arguments below.
The Appellant disagrees with the Examiner and argues that “claim 1
requires the actual surface material of the pump rotor form the non-reflective
portion. In particular, it is the actual surface of the pump rotor that is one of
4
Appeal 2016-001746
Application 13/920,501
hatched, scratched, pitted, or roughed.” (App. Br. 7). Hence, the Appellant
interprets the limitations of the claim to exclude any other material or feature
other than the material of the “pump rotor” from providing, or otherwise
satisfying, the recited non-reflective portion limitation. The Appellant
further asserts that the prior art “do[es] not show or suggest the actual
surface material of a pump rotor that forms a non-reflective portion.” (Reply
Br. 2). According to the Appellant,
The cited references teach non-reflective components that are
completely separate surfaces from the pump rotor, and
attaching the separate components to the rotor or to a
component of the device other than the rotor. A separate piece
of material applied over a surface of the rotor to form the non-
reflective portion is not included in the scope of claim 1.
(App. Br. 7-8).
However, even presuming that the Appellant’s interpretation of the
claim is correct, its argument is unpersuasive because Dumas already
discloses the non-reflective surface 64 provided on platen 22 (Dumas, Fig.
1). While this non-reflective surface 64 of Dumas is not disclosed as being
one of “hatched, scratched, pitted, and roughed,” the Examiner has relied
upon Abe for disclosing that such intentional marring of non-reflective
surfaces is known in rejecting the claim (Final Act. 4, 9).
The Appellant argues that Dumas discloses “coloring the platen
surface to produce the non-reflective properties.” (App. Br. 8; referring to
Dumas, col. 3,11. 62—64; see also App. Br. 10). In this regard, the Appellant
appears to assert that there is some type of color coating on the platen
surface, and further argues that “Abe does not teach a non-reflective portion
5
Appeal 2016-001746
Application 13/920,501
that cannot be disassembled from a rotor/motor after manufacture which is
an advantage of Applicant's claimed pumping apparatus.” (Reply Br. 4).
However, we agree with the Examiner that “[t]here is no teaching [in
Dumas] of either coloring or an ‘attaching’ of any surfaces,” and that
“Dumas is at best silent regarding the formation of non-reflective portions of
the rotor.” (Ans. 10). The portion of Dumas cited by the Appellant is in
reference to the schematic illustration of Figure 3 that shows “three light
reflective surfaces 62 and three dark, non-reflective surfaces 64.” (Dumas,
col. 2,11. 17—19; col. 3,11. 62—64; Fig. 3). The disclosure of a “dark surface”
does not imply that there is a coating on the platen. The platen must be
made of a material, and most materials (and objects) have color. At best,
this portion of Dumas teaches that the non-reflective surfaces are darker than
the light reflective surfaces, and are sufficiently dark to be non-reflective.
The Appellant also observes that Abe discloses code wheel, which is a
separate structure/component from a pump rotor (App. Br. 8—10), and as
such, “when sandblasting is used to form a non-reflective surface, a part...
separate from the components of the pump is used” (Reply Br. 3) so that a
separate encoder would be attached to the platen of Dumas (App. Br. 10).
According to the Appellant, “[t]he disclosure in Abe does not broadly teach
the use of marring any surface (and certainly not for use on the material of
the pump rotor) for producing non-reflective properties. . . . The only
teaching of sand-blasting a surface is in the context of a material distinct
from the rotor suitable for sandblasting (i.e„ a code wheel).” (App. Br 10;
see also Reply Br. 3).
6
Appeal 2016-001746
Application 13/920,501
However, not only does the Appellant unpersuasively argue Abe
individually, its argument does not address the basis upon which the
Examiner relies on Abe. In this regard, contrary to the Appellant’s assertion,
Abe does broadly establish that it was well-known to sandblast non-
reflective portions in sensors systems that detect light (i.e., electromagnetic
radiation) reflected off of non-reflective and reflective surfaces, and to use
sandblasting to increase the difference in the amount of light reflected by
these surfaces (Abe, col. 3,1. 44—col. 4,1. 2).
Therefore, in view of the above considerations, we agree with the
Examiner that claim 1 would have been obvious to one of ordinary skill in
the art, and affirm the rejection of claim 1.
Claim 6
Claim 6 depends from claim 1, and further recites that “wherein the
reflective portion of the surface of the pump rotor comprises a smooth
portion of the pump rotor produced when forming the pump rotor.” (App.
Br. 19, Claims App’x). The Examiner finds that Abe already satisfies this
limitation (Final Act. 4).
The Appellant disagrees and argues that “claim 6 requires the actual
surface material of the pump rotor form both the non-reflective and the
reflective portions.” (App. Br. 11; see also Reply Br. 4). Hence, the
Appellant interprets the limitations of the claim to exclude any other
material or feature, other than the material of the “pump rotor,” from
providing, or otherwise satisfying, the recited reflective portion limitation.
The Appellant asserts that Dumas discloses strips of reflective surfaces are
7
Appeal 2016-001746
Application 13/920,501
attached to the surface of the platen, and thus, the reflective surfaces are “not
formed from the actual material surface of the platen 22.” (App. Br. 11). In
support of this assertion, the Appellant points to Figure 1 of Dumas as
showing a difference between reflective surface 62 and non-reflective
surfaces 64, and that the thicker line of reflective surface 62 represents a
reflective strip, which “separate pieces attached to the rotor.” (Reply Br. 4—
5).
These arguments are unpersuasive. Firstly, as noted, Dumas already
discloses the non-reflective portion of the rotor. Secondly, as to the
reflective portion, the Appellant’s assertion that the thicker line of reflective
surface 62 represents a reflective strip it is speculative. While the
Specification of Dumas does disclose that reflective surfaces “may be
strips,” such a strip is not enumerated or discussed in describing Figure 1. In
contrast, in an alternative embodiment of Dumas of Figure 6 that actually
utilizes light reflective strip made from a “material, such as paper, with an
adhesive backing,” which is then attached to the surface of the platen, the
adhered “reflective surface 266” is specifically enumerated, discussed, and
clearly illustrated utilizing a narrow, rectangular box (instead of a thick line)
(Dumas, col. 5,11. 34-40; Fig. 6). Moreover, Dumas specifically
distinguishes this embodiment of Figure 6 as being “unlike the embodiment
shown in FIG. 1” in that the platen is made flat so as to allow for use of such
adhesively attached reflective strip (Dumas, col. 5,11. 28—31). Accordingly,
we find that upon preponderance of the evidence, it is more probable than
not, that reflective surface 62 is rendered with a thicker line to distinguish it
from non-reflective surface 64 in the cross sectional view illustrated in
8
Appeal 2016-001746
Application 13/920,501
Figure 1, and does not represent some unidentified strip that is attached to
the platen.
Thirdly, as noted above, the Appellant’s arguments are based on a
narrow interpretation of the claim. However, the claim language fails to
define what constitutes the recited pump rotor and whether the recited rotor
is a unitary component or an assembly of components. In that regard, the
Appellant’s Specification states “[i]t is also contemplated that the pump
rotor 106 may be composed of multiple pieces of material that are fastened,
glued, or otherwise attached to one another to form the complete pump rotor
106.” (Spec. 123). In addition, claim 1 and claim 6 depending therefrom
merely recite that the pump rotor “includ[es] a surface having a reflective
portion ... and a non-reflective portion.” As such, the broadest reasonable
interpretation in view of the specification would not preclude adhered
reflective (or non-reflective) strips from being considered to be part of “a
surface” the pump rotor. Accordingly, even if the embodiment shown in
Figure 1 of Dumas did include an attached reflective strip, in our view, such
an implementation can reasonably be considered to be the surface of the
pump rotor and thus, satisfy the claim language. Hence, the Appellant’s
arguments are unpersuasive for this alternative reason as well.
Therefore, in view of the above, we are not persuaded that the
Examiner erred and affirm the rejection of claim 6.
Claim 9
As to independent claim 9, the Appellant points to language therein,
which is similar to that of claim 1, and relies on arguments submitted with
9
Appeal 2016-001746
Application 13/920,501
respect to claim 1 (App. Br. 12). Accordingly, because the Appellant’s
arguments are unpersuasive for the reasons discussed supra, we likewise
affirm the rejection of claim 9.
Claim 13
Claim 13 depends from independent claim 9, and recites that “the
reflective portion of the surface of the pump rotor comprises a polished
portion of the surface of the pump rotor.” (App. Br. 21, Claims App’x).
The Examiner finds that Abe already discloses this limitation (Final Act. 4).
The Appellant argues that the claim requires both the non-reflective
and the reflective portions be formed on the surface of the pump rotor, and
that Dumas discloses reflective strips, which are attached to the platen (App.
Br. 12—13). However, these arguments are unpersuasive for the reasons
already discussed relative to claim 6, and thus, the rejection of claim 6 is
affirmed.
Claim 15
Independent claim 15 recites a method including the step of “marring
a portion of the surface of the rotor” (App. Br. 20—21, Claims App’x). The
Appellant relies on the same unpersuasive arguments submitted with respect
to claim 1 (App. Br. 13). Accordingly, the rejection of claim 15 is also
affirmed.
10
Appeal 2016-001746
Application 13/920,501
Claim 19
Claim 19 depends from claim 15 and recites the step of “providing the
reflective portion of the surface comprises forming the rotor with a mold
having a smooth area corresponding to the reflective portion of the surface
of the rotor.” (App. Br. 21, Claims App’x). The Appellant submits
substantially the same unpersuasive arguments as those submitted with
respect to claims 6 and 13 (App. Br. 14—15). Accordingly, the rejection of
claim 15 is also affirmed.
The Appellant does not separately argue any of the remaining
dependent claims subject to Rejection 1. Therefore, these remaining claims
fall with claims from which they depend, and the Examiner’s rejection of
claims 1—2, 6, 8—9, 11, 13, 15—16, and 19 is affirmed.
Rejections 2, 3, and 4
As to the remaining rejections, the Appellant argues that the cited
secondary references do not cure the deficiencies of Dumas and Abe as
discussed relative to the various independent claims (App. Br. 15—16).
Accordingly, having found no deficiencies in the combination of Dumas and
Abe, we affirm these rejections of the remaining claims on appeal.
CONCLUSIONS
The Examiner’s rejections of claims 1—6, 8—11, and 13—20 are
AFFIRMED.
11
Appeal 2016-001746
Application 13/920,501
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
12