Ex Parte Martinek

Board of Patent Appeals and Interferences

Apr 26, 2012

10972464 (B.P.A.I. Apr. 26, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte JONATHAN MARTINEK
__________

Appeal 2011-001199
Application 10/972,464
Technology Center 3700
__________

Before TONI R. SCHEINER, JEFFREY N. FREDMAN, and
ERICA A. FRANKLIN, Administrative Patent Judges.

SCHEINER, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims 1-13, 21-28, 30-34, 44-46, and 51-55, directed to a surgical device.
The claims have been rejected as obvious. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.
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STATEMENT OF THE CASE
Claims 1-13, 21-28, 30-34, 44-46, and 51-55 are pending and on
appeal. Claims 16, 29, 35-43, and 47-50 were previously canceled (App. Br.
2), while claims 14, 15, and 17-20 have been canceled in an amendment
submitted concurrently with Appellant‟s Appeal Brief “to place the
application in better form for consideration on appeal” (id. at 3).
Appellant presents arguments directed to claims 1, 2, 24, 25, and 44.
Accordingly, we select these claims as representative, and the remaining
claims will stand or fall accordingly. 37 C.F.R. ¶ 41.37(c)(1)(vii).
Claim 1 is as follows:
1. A surgical device comprising first yarns and multifilament second
yarns in a braided construction wherein
the first yarns are made from a polymeric material; and
the second yarns comprise a plurality of filaments made from a shape
memory alloy.
The Examiner relies on the following evidence:
Kobayashi et al. US 5,128,197 Jul. 7, 1992
Barker, Jr. et al. US 5,540,703 Jul. 30, 1996
Schmitt et al. US 2002/0052612 A1 May 2, 2002
Grafton et al. US 6,716,234 B2 Apr. 6, 2004
The claims stand rejected as follows:
Claims 1, 3-13, 21-24, 26-28, and 30-34 under 35 U.S.C. § 103(a) as
unpatentable over Schmitt and Kobayashi (Ans. 3-5);
claims 2 and 25 as unpatentable over Schmitt, Kobayashi, and Barker,
Jr. (id. at 5-6); and
claims 44-46 and 51-55 as unpatentable over Schmitt, Kobayashi, and
Grafton (id. at 6-7).
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FINDINGS OF FACT
1. According to Appellant‟s Specification, “[a] plurality of
filaments is used to form a yarn” (Spec. 5: 5), while, “[a] plurality of yarns is
used to form a braid, knit or weave” (id. at 5: 5-6).
2. The Specification teaches that “[f]ilaments made from shape
memory alloy [e.g., nitinol] are used . . . to prepare yarns that can be
incorporated into a braided, knitted, woven or other structure to provide a
surgical device” (Spec. 5: 1-4, 6: 1). In addition, “the surface of a filament,
yarn or braid can be coated with a bioabsorbable or nonabsorbable coating to
further improve the performance of the braid . . . [by] immers[ing] [it] in a
solution of a desired coating polymer” (id. at 10: 14-17).
3. The claimed invention is broadly directed to a surgical device
comprising first yarns made from a polymeric material, and second yarns
made from a shape memory alloy, or heterogeneous yarns made from a
polymeric material and a shape memory alloy (see e.g., claims 1, 24, and
30). In addition, all of the claims, except 24-28, require the device to have a
braided construction.
4. Schmitt discloses “a soft and pliable multifilament surgical
support mesh” (Schmitt ¶ 1), “produced by knitting, weaving, braiding, or
otherwise forming a plurality of yarns into a support trellis” using
“multifilament yarns made of materials such as polypropylene and
polyester” (id. at ¶ 3).
5. Schmitt teaches that multifilament yarns are “composed of a
plurality of filaments . . . intermingled or bundled together to form the yarn”
(Schmitt ¶ 34), and “[t]he use of multifilament yarns . . . provides a mesh
having greater pliability and suppleness than the use of monofilament yarns”
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because of the “smaller diameter of the individual filaments and the
interstitial spaces or voids that are located between such filaments” (id. at ¶
32). In addition, Schmitt teaches that “the interstitial voids located between
adjacent filaments . . . [can be] enclosed within an infection-impervious
matrix . . . without significant loss of flexibility” (id. at ¶ 36).
6. Finally, Schmitt teaches that “the mesh may have a shape
memory imparted thereto” by “includ[ing] individual threads having a
shape-memory imparted thereto, such as nitinol threads” (Schmitt ¶ 60).
According to Schmitt,
The mesh could therefore be designed to assume an unfurled
configuration when the mesh reaches body temperature
subsequent to deployment. Imparting shape-memory to the
mesh would allow the mesh, even after having been stored
within the delivery device, e.g. the cannula of a needle, to
assume an unfurled configuration once deployed . . .
facilitat[ing] orientation in the body.
(Id.)
7. Kobayashi discloses;
[A] woven fabric of shape memory polymer which is formed by
weaving yarns of shape memory polymer fibers alone or by
weaving said yarns and yarns of ordinary natural or synthetic
fibers, and also . . . a woven fabric of shape memory polymer
which is formed by weaving blended yarns of shape memory
polymer fibers and ordinary natural or synthetic fibers.
(Kobayashi, col. 1, ll. 49-56.)
8. One of Kobayashi‟s objectives in incorporating shape memory
polymer yarns into otherwise conventional woven fabric is “to provide a
woven fabric having the shape memory property” of “remembering the
desired shape” (Kobayashi, col. 1, ll. 46-48; col. 2, l. 5) at body temperature,
or after laundering, e.g. (id. at col. 7, l. 15 - col. 8, l.2).
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PRINCIPLES OF LAW
Two separate tests define the scope of analogous prior art: (1)
whether the art is from the same field of endeavor, regardless of
the problem addressed and, (2) if the reference is not within the
field of the inventor's endeavor, whether the reference still is
reasonably pertinent to the particular problem with which the
inventor is involved.
In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004).
A reference is reasonably pertinent if, even though it may be in
a different field from that of the inventor‟s endeavor, it is one
which, because of the matter with which it deals, logically
would have commended itself to an inventor‟s attention in
considering his problem.
In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992).
OBVIOUSNESS
Each of the three rejections of the claims is based, in whole or in part,
on the Examiner‟s proposed combination of Schmitt and Kobayashi, so we
will discuss the rejections together.
The Examiner finds, in relevant part, that “Schmitt discloses a surgical
device comprising first [polymeric] yarns and multifilament second yarns in
a braided configuration” (Ans. 3), but “does not expressly disclose that the
shape memory yarn includes a plurality of filaments made from a shape
memory alloy as opposed to a single filament of shape memory alloy
incorporated into the multifilament yarn” (id.).
However, the Examiner finds that Kobayashi provides evidence that
“it is well known to construct a woven fabric out of yarns made from a
plurality of shape memory filaments woven with yarns of ordinary natural or
synthetic filaments” (id.). The Examiner concludes that it would have been
obvious to one of ordinary skill in the art to use a shape memory yarn made
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from a plurality of filaments made from a shape memory alloy, rather than
individual filaments of shape memory alloy, in Schmitt‟s surgical mesh, at
least in part because Kobayashi teaches that it is known to weave yarns
made from ordinary natural or synthetic fibers together with shape memory
yarns , or to weave together blended yarns containing both shape memory
polymers and ordinary fibers, in order to produce fabrics which will
preferentially “remember” a desired shape (Ans. 4, 5, 8).
We agree with the Examiner that the invention of claim 1 would have
been obvious over the combined disclosures of Schmitt and Kobayashi, and
are not persuaded otherwise by Appellant‟s arguments.
With respect to claim 1, Appellant contends that “Schmitt fails to
disclose or even suggest that the shape memory threads are in a braided
configuration or that the shape memory threads are added to the yarns as
required by Appellant‟s claims” (App. Br. 10), and further contends that
Kobayashi cannot be combined with Schmitt to cure the deficiency.
Specifically, Appellant contends that “Kobayashi is a non-analogous
art reference” (id. at 12), thus, “the combination of Schmitt and Kobayashi is
improper” (id. at 11). Appellant contends that “[t]he woven fabric of
Kobayashi remembers creases, and does not wrinkle or give an unpleasant
feel when in contact with human skin” (id. at 11-12), while “the mesh of
Schmitt (as well as the device embodied in the present disclosure) is adapted
for surgical applications” (id. at 12). Appellant contends that “surgical
implants and clothing technology are clearly different fields” (id.).
Moreover, Appellant contends that “Kobayashi is not reasonably
pertinent to the problem solved by the Appellant” (id.), because Kobayashi
is directed to woven fabric “which „does not wrinkle and deform . . . [and]
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can be favorably applied to the creases of slacks and the pleats of skirts . . .
[and] the collars, cuffs, and shoulder pads of utility shirts[,]‟” while “the
problem the present disclosure attempts to solve . . . [is] shape
transformation of surgical implants to aid in wound repair” (id. at 13).
Appellant‟s argument is not persuasive. We do not agree that one of
ordinary skill in the art would have viewed Kobayashi‟s teachings as
narrowly as Appellant proposes. Rather, we agree with the Examiner that
Kobayashi‟s disclosure is relevant to the present invention, and to Schmitt,
because it is “pertinent to the problem of imparting shape memory to a
device comprising yarns joined together” (Ans. 9), and “logically would
have commended itself to an inventor[ ]” concerned with imparting shape
memory to a device made of woven or braided yarns (see Clay, 966 F.2d at
659), like the claimed devices, or like Schmitt‟s surgical mesh (FF6),
regardless of the use intended for the end products.
Appellant also contends that “Schmitt cannot be properly combined
with Kobayashi as Schmitt requires encapsulation of the mesh to produce a
„membrane-like feel‟ and Kobayashi requires that the fabric have „the same
hand as the cloths of ordinary natural or synthetic fibers[ ]‟” (App. Br. 14).
This argument is not persuasive. First, the fact that Schmitt discloses
encapsulating its mesh to make it resistant to contamination is irrelevant to
the shape memory properties of the mesh, especially as Schmitt teaches that
the mesh can be encapsulated without significant loss of flexibility (FF5). In
any case, Kobayashi does not “require” its fabric to have the same hand as
fabrics without shape memory yarns, rather, Kobayashi discloses some
fabrics with a “soft hand like an ordinary cloth” and some with a “hard hand
at normal temperature” (Kobayashi, col. 2, ll. 6, 18).
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Finally, Appellant contends that even if one were to combine Schmitt
and Kobayashi, the result would merely be “a woven article made from
yarns including a shape memory polymer” (App. Br. 11), rather than
“multifilament yarns containing a plurality of filaments made from a shape
memory alloy being braided with yarns containing filaments made from a
polymeric material” (id.).
We are not persuaded. As discussed above (FFs 4-6), Schmitt
discloses a “multifilament surgical support mesh” (Schmitt ¶ 1), “produced
by knitting, weaving, braiding, or otherwise forming a plurality of yarns into
a support trellis” using “multifilament yarns made of materials such as
polypropylene and polyester” (id. at ¶ 3), and “individual threads having a
shape-memory imparted thereto, such as nitinol threads” (Schmitt ¶ 60).
Thus, Schmitt discloses a braided device that meets all the limitations of
claim 1, except that the shape memory properties of the device are imparted
by “individual threads” (id.), rather than multifilament shape memory yarns,
like those disclosed by Kobayashi, which multifilament yarns the Examiner
concludes would have been an obvious, and predictable substitution for the
individual filaments of Schmitt‟s device.
With respect to claims 24 and 30, Appellant reiterates the arguments
discussed above in connection with claim 1 (App. Br. 15-19). In addition,
Appellant notes that “claim 24 recites a multifilament surgical device having
first and second sets of continuous and discrete heterogeneous yarns” (id. at
15), each of which heterogeneous yarns “contains continuous and discrete
filaments made from a polymeric material and continuous and discrete
filaments made from a shape memory alloy” (id.). Appellant contends that
“Kobayashi is completely devoid of any disclosure relating to the use of a
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shape memory alloy in a braid configuration, nevermind . . . heterogeneous
yarn . . . made from a polymeric material and . . . a shape memory alloy” (id.
at 16).
Appellant‟s arguments are not persuasive for the reasons discussed
above, and because, as noted by the Examiner (Ans. 5), Kobayashi provides
evidence that shape memory fabrics woven out of blended yarns made from
shape memory filaments and ordinary filaments were known in the art
(FF3). In any case, we note that claim 24 does not require a braided
configuration.
With respect to the rejection of claims 2 and 25 as unpatentable over
Schmitt, Kobayashi, and Barker, Jr., Appellant reiterates the previous
arguments made in connection with claim 1, and asserts that “Barker[,] Jr.
fails to cure the deficiencies of Schmitt and Kobayashi” (App. Br. 20).
Similarly, with respect to the rejection of claims 44-46 and 51-55 as
unpatentable over Schmitt, Kobayashi, and Grafton, Appellant reiterates the
previous arguments, and asserts that Grafton “does not teach or suggest any
of the above-noted deficiencies of Schmitt or Kobayashi” (id. at 23).
Nevertheless, as discussed above, we are not persuaded that the
Examiner‟s proposed combination of Schmitt and Kobayashi is deficient in
any way.

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SUMMARY
The obviousness rejections of claims 1-13, 21-28, 30-34, 44-46, and
51-55, whether based in whole or in part on the combined teachings of
Schmitt and Kobayashi, are affirmed.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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