Ex Parte Scheckel

Patent Trial and Appeal Board

Nov 28, 2018

14985237 (P.T.A.B. Nov. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
14/985,237
145006 7590
White & Case, LLP
75 State St
Boston, MA 02109
FILING DATE FIRST NAMED INVENTOR
12/30/2015 Mario Scheckel
11/30/2018
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.
1846265-0017-110-304 8921
EXAMINER
TEJANI, ANKIT D
ART UNIT PAPER NUMBER
3792
NOTIFICATION DATE DELIVERY MODE
11/30/2018 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):
wcabiomedpatentsteam@whitecase.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARIO SCHECKEL 1
Appeal2017-008537
Application 14/985,237
Technology Center 3700
Before DEMETRA J.MILLS, RICHARD M. LEBOVITZ, and
JOHN E. SCHNEIDER, Administrative Patent Judges.
SCHNEIDER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal2 under 35 U.S.C. § 134 of the Examiner's rejection
of claims to a percutaneous pump which have been rejected as obvious. We
have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Appellant identifies the Real Party in Interest as ECP
ENTWICKLUNGSGESELLSCHAFT MBH. Appeal Br. 1.
2 We have considered and herein refer to the Specification of Dec. 30, 2015
("Spec."); Final Office Action of July 13, 2016 ("Final Act."); Appeal Brief
of Oct. 2, 2017 ("Br."); Examiner's Answer of Mar. 22, 2017 ("Ans."); and
Reply Brief of May 22, 2017 ("Reply Br.").
Appeal2017-008537
Application 14/985,237
STATEMENT OF THE CASE
Fluid pumps can be used to assist or partially replace the pumping
power of the heart. Spec. 1. The Specification describes a blood pump
having a deformable rotor blade. Spec. 2.
Claims 29--49 are on appeal. Claim 29 is illustrative and reads as
follows:
29. A percutaneous pump, comprising:
a rotor with a hub and a rotor blade for conveying fluid,
the rotor having a compressed state, a first expanded state, and
a second expanded state, wherein the rotor blade is connected to
the hub at a connection point on a surface of the hub, the rotor
blade being configured to pivot about the connection point on
the surface of the hub;
wherein the rotor is configured to increase in diameter
between the compressed state and the first expanded state;
wherein the rotor is configured to increase in diameter
between the first expanded state and the second expanded state
while the rotor blade conveys fluid in a first rotational direction,
said increase in diameter from the first expanded state due at
least in part to fluid counterpressure acting against a leading
side of the rotor blade in a second direction counter to the first
rotational direction; and
wherein, in the second expanded state, the rotor blade
forms a substantially straight line between a radially inner end
of the rotor blade and a radially outer end of the rotor blade.
The claims stand rejected as follows:
Claims 29-31, 35--42, and 46-49 have been rejected under 35 U.S.C.
§ I03(a) as unpatentable over Shifflette. 3
3 Shifflette, US 2008/0132748 Al, published June 5, 2008 ("Shifflette").
2
Appeal2017-008537
Application 14/985,237
Claims 32-34 and 43--45 have been rejected under 35 U.S.C. § I03(a)
as unpatentable over Shifflette in view of Grabau. 4
DISCUSSION
Issue
Because the rejections under 35 U.S.C. § I03(a) substantially rely
upon the same prior art and depend upon the same issues, and Appellant
does not separately argue any of the dependent claims (see Appeal Br. 7), we
will consider these rejections together.
The issue with respect to the rejection is whether the subject matter of
the claims would have been obvious over Shifflette alone or in combination
with Grabau.
The Examiner finds that Shifflette discloses a percutaneous pump
comprising a rotor having a hub wherein the rotor has a compressed state
and an expanded state whereon the rotor increases in diameter when the
rotor moves between the compressed state and the expanded state. Final
Act. 4--5. The Examiner finds that the rotor of Shifflette expands to a
second expanded state wherein the rotor form a substantially straight line.
Final Act. 5---6. The Examiner concludes that
Using Shifflette's teaching of expandable diameter blood
pumps, suggestion of varying the diameter of the pump
assembly, and motivation to minimize the blood pump
diameter, it would have been obvious to a person having
ordinary skill in the art at the time the invention was made to
modify the pump assembly embodied in figure 7 of Shifflette
by removing the blade stubs and having the blades pivot about a
connection point on the hub itself, as doing so would
4 Grabau et al., US 2005/0180854 Al, published Aug. 18, 2005 ("Grabau").
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Appeal2017-008537
Application 14/985,237
advantageously minimize the diameter of the pump assembly
even more, resulting in an expandable blood pump assembly
that can be deployed via even smaller cannulas and even
smaller blood vessels.
Final Act. 8 (reference number omitted).
Appellant contends that the Examiner has failed to set forth any
reason why one skilled in the art would modify the rotor of Shifflette to
delete the blade studs. Appeal Br. 8-9. Appellant argues that the
Examiner's proposed modification would not achieve the stated goal of
reducing the diameter of the compressed pump but would actually increase
the diameter of the pump in the compressed state. Appeal Br. 9-10.
Appellant asserts that the Examiner has engaged in impermissible hindsight
in making the rejection. Appeal Br. 11.
Appellant also argues that the Examiner's proposed modification of
the blades in Shifflette would render the blades unsuitable for their intended
purpose. Appeal Br. 12-13. Appellant contends that the blade studs act as a
back stop preventing the blades from falling flat against the hub. Id.
Appellant contends that without the stubs acting as a backstop, the blades
would not function as designed. Id.
Appellant argues that the Examiner's proposed modification would
require a substantial reconstruction and redesign of the blades of Shifflette.
Appeal Br. 13-14. Appellant contends that the Examiner's proposed
modification of Shifflette would require combining the embodiment calling
for the blades to retract into the hub as shown in Fig. 6B of Shifflette (shown
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Appeal2017-008537
Application 14/985,237
below) with the embodiment where the blades are attached to a blade stub as
shown in Fig. 7. (Shown below).
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Figures 6B and 7 of Shifflette showing different embodiments of impeller
blades.
Appellant argues that Shifflette offers no guidance as to how these
different embodiments can be combined and that doing so would require a
reconstruction or redesign of Shifflette. Appeal Br. 14.
5
Appeal2017-008537
Application 14/985,237
Principles of Law
[T]he examiner bears the initial burden, on review of the
prior art or on any other ground, of presenting a prim a f acie
case ofunpatentability. If that burden is met, the burden of
coming forward with evidence or argument shifts to the
applicant.
After evidence or argument is submitted by the applicant
in response, patentability is determined on the totality of the
record, by a preponderance of evidence with due consideration
to persuasiveness of argument.
In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
Any judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning, but so long as it
takes into account only knowledge which was within the level of
ordinary skill at the time the claimed invention was made and
does not include knowledge gleaned only from applicant's
disclosure, such a reconstruction is proper.
In re McLaughlin, 443 F.2d 1392, 1395, 170 USPQ 209,212 (CCPA
1971 ).
Analysis
We adopt the Examiner's findings of fact, reasoning on scope and
content of the prior art, and conclusions set out in the Final Action and
Answer regarding this rejection. Final Act. 4--9, Ans. 2-7. We find the
Examiner has established that the subject matter of the claims would have
been obvious to one of ordinary skill in the art at the time the invention was
made over Shifflette alone or in combination with Grabau. Appellant has
not produced evidence showing, or persuasively argued, that the Examiner's
determinations on obviousness are incorrect. Only those arguments made by
Appellant in the Briefs have been considered in this Decision. Arguments
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Appeal2017-008537
Application 14/985,237
not presented in the Briefs are waived. See 37 C.F.R. § 4I.37(c)(l)(iv)
(2015). We have identified claim 29 as representative; therefore, all claims
fall with claim 29. We address Appellant's arguments below.
Appellant contends that one skilled in the art would not have been
motivated to make the modification proposed by the Examiner because the
proposed modification would have increased the diameter of the compressed
pump not decreased the diameter as suggested by the Examiner. Appeal Br.
8-9. In support of this argument Appellant offers a pair of drawings
showing how the rotor blade would actually increase the diameter of the
pump in the collapsed state. Appeal Br. 9.
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