Ex Parte Lewis et al

Patent Trial and Appeal Board

Jan 3, 2018

13920501 (P.T.A.B. Jan. 3, 2018)

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 01/05/2018
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
01/05/2018 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 LP
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 REQUEST FOR REHEARING
In the Request for Rehearing (hereinafter “Rehr’g Req.”), the
Appellant requests reconsideration under 37 C.F.R. § 41.52 of our Decision
mailed September 1, 2017 (hereinafter “Original Decision” or “Orig. Dec.”)
affirming the Examiner’s various rejections of claims 1-6, 8-11, and 13-20.
In particular, the Appellant seeks reconsideration of claims 6, 13, and 19.
The Appellant argues (Rehr’g Req. 3) that in the Original Decision,
the Board incorrectly interpreted Dumas in finding that Figure 1 of Dumas
discloses both reflective surface 62 and non-reflective surface 64 on the
surface of platen 22 based partly on its disclosure relative to Figures 1 and 6.
The Appellant argues that:
Appeal 2016-001746
Application 13/920,501
the difference between the Fig. 6 and Fig. 1 embodiment is not
that the surface 266 is a separate material attached to the platen
while strips 62 are “likely” formed from the platen material.
Rather, the difference is that the underside of the platen 222 is
flat which allows a single strip like 266 that has both reflective
and nonreflective portions to be attached to the platen. This is
contrary to the embodiment of Fig. 1 where the underside of the
platen 22 is not flat. Therefore, multiple strips 62 of material
must be attached to the bottom of the platen 22.
(Rehr’g Req. 5).
The Appellant argues that “|T|n both embodiments, however, the
reflective portions 62, 266 are being formed by attaching a separate piece of
material to the platen 22, 222,” and that “the difference in representation
between a thick line in Fig. 1 versus and open rectangle in Fig. 6 can be
understood as a difference in scale (the surface for the reflective material is
much smaller in Fig. 1) rather than indicating a difference in kind.” (Rehr’g
Req. 5).
The Appellant’s arguments are unpersuasive. As set forth in the
Decision, the finding that Figure 1 of Dumas discloses both reflective
surface 62 and non-reflective surface 64 on the surface of platen 22, was not
merely based on comparing Figure 1 with Figure 6, but also in considering
how the textual disclosure of Dumas described these figures (Orig. Dec. 8-
9). In addition to the significant difference in the embodiment of Figure 6
(which is in clear contrast to the embodiment of Figure 1) illustrates a
rectangular strip, the Specification of Dumas specifically identifies and
discusses the strip relative to Figure 6, while distinguishing this embodiment
from that shown in Figure 1 (Orig. Dec. 8-9; Dumas, col. 5,11. 28^40; Fig.
2
Appeal 2016-001746
Application 13/920,501
6). In light of this, the evidence does not indicate that the Appellant’s
interpretation of Dumas’ Figure 1 is correct.
The Appellant also asserts that claims 6, 13, and 19 require the actual
surface material of the pump rotor form both the non-reflective and the
reflective portions (Rehr’g Req. 5). In particular, the Appellant argues that:
Claims 1,13, and 15 recite a pump rotor including a surface
having a reflective portion ... and a non-reflective portion.
Thus, a single surface must include both portions. Claims 6,
13, and 19 recite further details of how that surface is formed to
produce the reflective portions. In particular, claim 6 recites
that the reflective portion is a “smooth portion of the pump
rotor produced when forming the pump rotor, [”] claim 13
recites that the reflective portion is “a polished portion of the
surface of the pump rotor” and claim 19 recites that the
reflective portion is formed by a mold having a smooth area
corresponding to the reflective portion.
(Rehr’g Req. 5-6).
The Appellant essentially argues that the claimed invention is
patentable because the reflective and non-reflective portions are integral to a
surface of the rotor whereas Dumas uses an adhered strip for one or both of
the portions (Rehr’g Req. 4-5). However, the Appellant’s argument has
already been addressed, the Original Decision finding that Dumas discloses
forming its device with both reflective surface 62 and non-reflective surface
64 on the surface of platen 22 (Orig. Dec. 8-9).1
1 Although not relied upon in affirming the Examiner’s rejection, we observe
that making elements of a device integral or separable is considered to be an
obvious design choice and does not render an invention patentable unless
such construction is for an unobvious purpose or results in an unobvious
effect. See In re Larson, 340 F.2d 965, 968 (CCPA 1965); In re Fridolph,
309 F. 2d 509, 512 (CCPA 1962). As the Appellant notes (Rehr’g Req. 4),
3
Appeal 2016-001746
Application 13/920,501
The Appellant also argues that the Original Decision improperly
applied the preponderance of the evidence standard to support the Board’s
interpretation of Dumas (Rehr’g Req. 6). Specifically, the Appellant argues
that the Board’s interpretation of Dumas as to the disclosure of reflective
and non-reflective surfaces amounts to an inherency finding that is incorrect
because:
it does not necessarily flow that strips 62 are not strips of
material attached to the platen 22. Rather, there is a reasonable
interpretation that the strips 62 are strips of material attached to
the platen 22 and the difference between strips 62 and surface
266 is that surface 266 includes both reflective and
nonreflective portions.
(Rehr’g Req. 6).
The Appellant’s arguments are unpersuasive. Firstly, we observe that
inherency was not the basis of the affirmed obviousness rejection because
Dumas discloses integral reflective and non-reflective surfaces in the
embodiment of Figure 1. Moreover, contrary to the mischaracterization of
Dumas by the Appellant, as to the embodiment of Figure 1, Dumas discloses
“reflective surface 62,” not “strips” as asserted (Dumas, col. 2,11. 60-66).
The term “strips” is used to discuss an alternative to the embodiment shown
Dumas further discloses with respect to Figure 6 that both the reflective and
non-reflective surfaces may be provided on the partially reflective surface
266 and attached to platen 222 (Dumas, col. 5,11. 28-34). Even if the claims
were narrowly interpreted to require the reflective and non-reflective
surfaces to be integral to the pump, and even if Dumas did not disclose both
integral reflective and non-reflective surfaces on the platen (it does), making
such surfaces integral with the platen would have been obvious to one of
ordinary skill in the art.
4
Appeal 2016-001746
Application 13/920,501
Figure 3, and is used to refer to the shape and size of the reflective surface,
not to describe that the reflective surface is separately manufactured and
adhered to the platen (Dumas, col. 3,1. 62-col. 4,1. 2). Such separate
manufacturing and adhering of reflective and non-reflective surfaces are
explicitly discussed in Dumas relative to Figure 6, wherein the partially
reflective surface 266 is formed on “a material, such as paper, with an
adhesive backing,” which is “applied” or “attached” to the underside of the
platen (Dumas, col. 5,11. 32-39).
Therefore, for the reasons discussed in the Original Decision and
above, the Appellant’s arguments are unpersuasive.
DECISION
While we have considered the Original Decision in view of the
Request for Rehearing, we decline to modify the Original Decision in any
respect.
DENIED
5