Ex Parte Pederson

Patent Trial and Appeal Board

Dec 23, 2016

12057729 (P.T.A.B. Dec. 23, 2016)

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.
12/057,729 03/28/2008 Brian Pederson P39757.01 1874
28390 7590 12/28/2016
MEDTRONIC VASCULAR, INC.
IP LEGAL DEPARTMENT
3576 UNOCAL PLACE
SANTA ROSA, CA 95403
EXAMINER
DINGA, ROLAND
ART UNIT PAPER NUMBER
3766
NOTIFICATION DATE DELIVERY MODE
12/28/2016 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):
rs. vasciplegal @ medtronic .com
medtronic_c v_docketing @ cardinal-ip. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRIAN PEDERSON
Appeal 2015-001398
Application 12/057,729
Technology Center 3700
Before BENJAMIN D. M. WOOD, GEORGE R. HOSKINS, and
LEE L. STEPINA, Administrative Patent Judges.
HOSKINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Brian Pederson (“Appellant”)1 appeals under 35 U.S.C. § 134 from
the Examiner’s decision rejecting claims 1, 2, 4—8, 10-14, 17—19, 21, and 24
under 35 U.S.C. § 103(a) as unpatentable over Opie (US 2005/0021134 Al,
pub. Jan. 27, 2005) and Sawyer (US 4,038,702, iss. Aug. 2, 1977). See Final
Act. (mailed Oct. 25, 2013), at 2-4. The Board has jurisdiction over the
appeal under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 The Appeal Brief identifies Medtronic ATS Medical, Inc. as the real party
in interest. Appeal Br. 3.
Appeal 2015-001398
Application 12/057,729
CLAIMED SUBJECT MATTER
Claims 1, 4, 8, 11, 13, 17, and 24 are independent. Claim 1 illustrates
the subject matter on appeal, and it recites:
1. A method for passivating a biomaterial surface, said
method comprising:
exposing said biomaterial surface to therapeutic electrical
energy in the presence of blood or plasma prior to implantation
within a human body of an object on which said biomaterial
surface is located; and
causing proteinaceous material in the blood or plasma to
adhere to said biomaterial surface.
Appeal Br. 14 (Claims App.).
ANALYSIS
Claims 1, 2, and 7
In rejecting claim 1, the Examiner finds Opie substantially discloses
the recited method, but Opie’s method exposes the implanted object surface
to electrical energy after implantation, rather than prior to implantation as
claimed. Final Act. 2—3. The Examiner finds Sawyer discloses treating a
surface prior to implantation. Id. at 3 (citing Sawyer, Figs. 1—5, 5:3—10,
6:49—55, 9:15—16). The Examiner determines it would have been obvious to
modify Opie to treat the surface prior to implantation because “Sawyer states
at [Col.5, lines 3-7] that such modification would prepare a prosthetic device
so that the same will be particularly suitable for use in a blood containing
environment wherein the implantation of the prosthetic device will not result
in thrombus.” Ans. 3—4, 5, 6.
Appellant argues Sawyer’s pre-implantation treatment process does
not teach or suggest “passivating in the presence of blood or plasma to cause
proteinaceous material in the blood or plasma to adhere to the biomaterial
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Application 12/057,729
surface.” Appeal Br. 9. In support, Appellant contends Sawyer’s polishing
and cleaning processes “would cause any proteinaceous material in the ‘dirty
valve’ to be removed from the surface of the implant.” Id. at 8—9; Reply
Br. 2. Appellant therefore further asserts “it cannot be said that the cited
references, alone or in combination, disclose a process that includes ah of
the claimed elements.” Appeal Br. 9. Appellant also contends the Examiner
has not provided any valid reason for combining Opie and Sawyer to reach
the invention of claim 1. Id.
We are persuaded of Examiner error, for two reasons. First, the
Examiner fails to address the claim limitation requiring “causing
proteinaceous material in the blood or plasma to adhere to” the surface
(emphasis added), before or after implantation.2 See Final Act. 2—\\ Ans. 2—
6. In particular, there is no finding that either Opie or Sawyer expressly or
inherently discloses that claim limitation. The only findings concerning
proteinaceous material are that Opie’s paragraph 4 discloses two such
materials: fibrinogen and albumin. Final Act. 4. That disclosure, however,
discusses “the coagulation process” that Opie’s electrification is designed to
suppress. Opie Tflf 4, 14. The Examiner has not established that
proteinaceous material would still adhere to the implanted device surface
during application of Opie’s anti-coagulation electrification.
Second, the Examiner has not provided an articulated reasoning with
rational underpinning to support the legal conclusion of obviousness. See In
2 Appellant appears to suggest claim 1 requires this adherence to occur
during application of the electrical energy, prior to implantation. Appeal
Br. 9; Reply Br. 2. We disagree with that claim construction. Claim 1 is
open to the adherence occurring before or after implantation.
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Appeal 2015-001398
Application 12/057,729
re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited with approval in KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)). Claim 1 recites that the
implanted device is exposed “to therapeutic electrical energy in the presence
of blood or plasma prior to implantation.” Appeal Br. 14 (Claims App.).
The Examiner has not provided any rational underpinnings to support the
notion that performing Opie’s electrification prior to implantation would
provide any anti-thrombogenic properties that would continue to be present
after implantation. See, e.g., Opie 16—17, 23 (“substantially constant”
electrification after implantation achieves anti-coagulation benefits). The
Examiner further has not provided any reason why Sawyer’s pre­
implantation process would be modified to be performed in the presence of
blood or plasma.
For the foregoing reasons, we do not sustain the rejection of claim 1.
The Examiner’s additional consideration of claims 2 and 7, each of which
depends from claim 1, does not cure the deficiencies as to claim 1. See Final
Act. 2-4. Thus, we likewise do not sustain the rejection of claims 2 and 7.
Claims 4—6, 8, and 10
Appellant submitted, contemporaneously with the Appeal Brief, an
Amendment seeking to cancel claims 4, 8, and 10, and to amend claim 5 to
depend from claim 1 instead of claim 4. See Appeal Br. 3^4 & Claims App.;
Amendment filed Apr. 18, 2014 (hereafter “Amendment on Appeal”).
Appellant requested entry of the Amendment on Appeal “under MPEP 1206
because this Amendment presents the claims in better form for consideration
on appeal.” Appeal Br. 4; Amendment on Appeal 5.
The MPEP provides “Examiners must respond to all amendments
filed after an appeal has been taken and prior to transfer of jurisdiction to the
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Appeal 2015-001398
Application 12/057,729
Board under 37 CFR 41.35(a),” such as the Amendment on Appeal at issue
in this case. MPEP § 1206. The MPEP further provides any denial of entry
“should use form PTOL-304, ‘Advisory Action After the Filing of an
Appeal Brief, ’ to notify the applicant of the non-entry and the reason for
non-entry.” Id. In this case, the Examiner’s only response to the
Amendment on Appeal is that the Answer maintains the rejection of
claims 4, 8, and 10, thus suggesting by implication that the Amendment was
not entered. Ans. 2-4. Appellant does not address the Amendment on
Appeal in the Reply Brief. From this record, we understand the Amendment
on Appeal not to have been entered by the Examiner.3
As a result, the claims on appeal are as presented in the Amendment
dated July 2, 2013. These claims differ from Appellant’s Claim Appendix in
that they include independent claim 4 and claims 5 and 6 depending
therefrom, and independent claim 8 and claim 10 depending therefrom.
Appellant does not address the merits of the Examiner’s rejection as to those
claims, so we summarily sustain the rejection of claims 4—6, 8, and 10.
3 We additionally note this is consistent with the standard for admitting
entry of amendments on appeal. Such amendments “may be admitted:
(1) To cancel claims, where such cancellation does not affect the scope of
any other pending claim in the proceeding, or (2) To rewrite dependent
claims into independent form.” 37 C.F.R. § 41.33(b) (emphasis added).
Absent one of those conditions applying, an amendment filed on the same
day as an Appeal Brief “will not be admitted except as permitted by” certain
provisions which do not apply here. Id. § 41.33(c). The proposed
cancellation of claim 4 would affect the scope of claim 5, which depends
from claim 4. This can be seen, for example, by Appellant’s need to amend
claim 5 to depend from claim 1, leading to inconsistent preambles in those
claims. See Appeal Br. 14 (Claims App.) (claim 1 recites “A method,”
whereas Appellant’s proposed amendment to claim 5 would recite “A
passivated biomaterial surface as in Claim 1”).
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Appeal 2015-001398
Application 12/057,729
Claims 11 and 12
Claim 11 recites: “A method for passivating a biomaterial surface,
said method comprising depositing modified proteinaceous material at said
biomaterial surface prior to implantation with a human body of an object on
which said biomaterial surface is located.” Appeal Br. 15 (Claims App.).
The Examiner’s rejection of claim 11 is identical to the rejection of claim 1.
Final Act. 2—3. For the reasons provided in relation to claim 1, that analysis
is in error, and we do not sustain the rejection of claim 11. The Examiner’s
additional consideration of claim 12, which depends from claim 11, does not
cure the error, so we likewise do not sustain the rejection of claim 12.
Claims 13 and 14
Claim 13 recites, in part, “(a) exposing a quantity of blood or plasma
to therapeutic electrical energy; (b) subsequent to step (a), depositing
proteinaceous material from said quantity of blood or plasma on said
biomaterial surface; [and] (c) subsequent to step (b), implanting in a human
body an object on which said biomaterial surface is located.” Appeal Br. 15
(Claims App.). The Examiner’s rejection of claim 13 is identical to the
rejection of claim 1. Final Act. 2—3. For the reasons provided in relation to
claim 1, that analysis is in error, and we do not sustain the rejection of
claim 13. The Examiner’s additional consideration of claim 14, which
depends from claim 13, does not cure the error, so we likewise do not
sustain the rejection of claim 14.
Claims 17—19 and 21
Claim 17 recites, in part, “exposing [a] biomaterial surface to
therapeutic electrical energy in the presence of blood or plasma prior to
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Application 12/057,729
implantation” and “causing proteinaceous material in the blood or plasma to
adhere to said biomaterial surface.” Appeal Br. 16 (Claims App.). The
Examiner’s rejection of claim 17 is identical to the rejection of claim 1.
Final Act. 2—3. For the reasons provided in relation to claim 1, that analysis
is in error, and we do not sustain the rejection of claim 17. The Examiner’s
additional consideration of claims 18, 19, and 21, which depend directly or
indirectly from claim 17, does not cure the error, so we likewise do not
sustain the rejection of those claims.
Claim 24
Claim 24 recites: “A method for passivating a biomaterial surface,
said method comprising modulating the preferential adsorption of blood
proteins to said biomaterial surface by exposing said blood proteins to
therapeutic electrical energy prior [to] implantation within a human body of
an object on which said biomaterial surface is located.” Appeal Br. 16
(Claims App.). The Examiner’s rejection of claim 24 is identical to the
rejection of claim 1. Final Act. 2—3. For the reasons provided in relation to
claim 1, that analysis is in error, and we do not sustain the rejection of
claim 24.
DECISION
The Examiner’s decision to reject claims 1, 2, 4—8, 10-14, 17—19, 21,
and 24 is affirmed as to claims 4—6, 8, and 10, and reversed as to claims 1, 2,
7, 11-14, 17-19, 21, and 24.
No time period for taking any subsequent action in connection with
this appeal maybe extended, under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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