Ex Parte Smith et alDownload PDFPatent Trial and Appeal BoardFeb 22, 201713470631 (P.T.A.B. Feb. 22, 2017) Copy Citation 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. 13/470,631 05/14/2012 William A. Smith CCF-6723 US DIV 2 4155 26294 7590 02/24/2017 TAROLLI, SUNDHEIM, COVELL & TUMMINO L.L.P. 1300 EAST NINTH STREET, SUITE 1700 CLEVELAND, OH 44114 EXAMINER MORALES, JON ERIC C ART UNIT PAPER NUMBER 3766 NOTIFICATION DATE DELIVERY MODE 02/24/2017 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): rkline @ tarolli. com docketing@tarolli.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte WILLIAM A. SMITH, MARKUS LORENZ, DAVID DUDZINSKI, HSIANG MING CHEN, PETER A. CHAPMAN JR., CHARLES J. PRISCO, NICHOLAS G. VITALE, and STEPHAN WEBER Appeal 2015-005811 Application 13/470,631 Technology Center 3700 Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and TIMOTHY G. MAJORS, Administrative Patent Judges. PER CURIAM. DECISION ON APPEAL1 This Appeal under 35 U.S.C. § 134(a) involves claims 1—5, 11, 12, 16—51, 53—56, and 62—652 (App. Br. 5). Examiner entered rejections under 1 Appellants identify “[t]he real parties in interest [as] The Cleveland Clinic Foundation of Cleveland, Ohio, and Foster-Miller, Inc. of Waltham, Massachusetts, which is a subsidiary of QinetiQ, Ltd. of the United Kingdom” (see App. Br. 3). 2 We note that the Examiner did not present a rejection of claims 6—10, IS IS, 52, and 57—61 (see App. Br. 10; Ans. 2—10). Appeal 2015-005811 Application 13/470,631 obviousness-type double patenting, 35 U.S.C. § 102(b), and 35 U.S.C. § 103(a). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. STATEMENT OF THE CASE Appellants’ “invention relates to an implantable intravascular or intracorporeal extravascular blood pump that may be used as a ventricular assist device” (Spec. 13). Independents claims 1 and 45 are representative and reproduced in the Claims Appendix of Appellants’ Appeal Brief. Claims 1—5, 11, 12, 16—50, and 53—56 stand rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1, 3—24, 26—29, 32, and 51—57 of Smith.3 Claims 1, 12, 27, 34—36, 45, 50, 51, and 62—65 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Jarvik.4 Claims 16—24, 26, and 53—56 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Jarvik and Locke.5 Nonstatutory obviousness-type double patenting'. ISSUE Should the rejection on the ground of nonstatutory obviousness-type double patenting be summarily affirmed? 3 Smith et al., US 8,177,703 B2, issued May 15, 2012. 4 Jarvik et al., US 5,851,174, issued Dec. 22, 1998. 5 Locke, US 2003/0193252 Al, published Oct. 16, 2003. 2 Appeal 2015-005811 Application 13/470,631 ANALYSIS and CONCLUSION Appellants do not contest the merits of the rejection on the ground of nonstatutory obviousness-type double patenting. Therefore, we are compelled to summarily affirm this rejection. Anticipation'. ISSUE Does the preponderance of evidence on this record support Examiner’s finding that Jarvik teaches Appellants’ claimed invention? FACTUAL FINDINGS (FF) FF 1. Appellants’ Figure 8A is reproduced below: ,320 Mb y ,,20 Si ,# MOO ,,304 302 ................... ' -........................ .......................J.............. ........................... I ..... . $... .. , JR.,i,^v ...„-.,.v,,,....vSy-. " ■; U' ivoj ^2..v, ,,r, __ -V ..... ... . . . . . . . . . . . . . . . . . . . .] . : » -26b \ Ya 5 Fig. 8A Figure 1 shows that the pump 20b is fit with an outflow sheath 300 for directing the primary mixed flow along the outside of the pump. The outflow sheath 300 has a flexible construction that allows the sheath to be wrapped around an outer surface 302 of the pump 20b during implantation. This is shown in dashed lines at 300’. . . . During operation of the pump 20b, the flow expands and unwraps the sheath 300 to the position shown in solid lines at 300. . . . This 3 Appeal 2015-005811 Application 13/470,631 allows the flow to pass through a radial space 304 defined between the pump 20b and the sheath 300.. . . [T]he sheath 300 may include means 320, such as wire bands or a helical coil, that helps limit expansion of the sheath to a desired diameter. The means 320 could, for example, be molded or extruded with the sheath 300 or bonded to the sheath. (Spec. 1 85; see also App. Br. 13—14.) FF 2. Jarvik suggests An apparatus for pumping blood includes an elongated housing dimensioned to be at least partially positioned within the heart of a patient, a rotating member supported for rotational movement within the elongated housing and a drive mechanism for imparting rotational movement to the rotating member. The elongated housing includes an outer wall, a first inlet port for permitting blood to enter the elongated housing through a first end of the elongated housing and a second inlet port defined in the outer wall of the elongated housing for permitting blood to enter through the outer wall. The rotating member is rotatable to impart pumping energy to the blood entering through the first and second inlet ports to direct the blood through an outlet opening of the elongated housing. The rotating member preferably includes first and second blood pumping blade arrangements. The first blade arrangement is dimensioned to impart pump energy to the blood entering the elongated housing through the first inlet port. The second blade arrangement is dimensioned to at least impart pump energy to the blood entering the elongated housing through the second inlet port. The electric motor stator and rotor define a space therebetween through which blood entering the first inlet passes. The motor is an ironless core copper electromagnetic windings which provides a sufficiently large air space for blood flow. (Jarvik Abstract; see also Ans. 5—6.) 4 Appeal 2015-005811 Application 13/470,631 FF 3. Jarvik’s Figure 2 is reproduced below: Figure 2 shows that that the intermediate section 18 of cannula housing 12 accommodates the drive mechanism or electric motor unit of the device 10 and includes an outer tube 32 and an inner tube 34 coaxially mounted within the outer tube 32. Outer tube 32 and inner tube 34 define a generally annular space therebetween which accommodates and effectively seals the electromagnetic wire windings 36 of the motor unit. (Jarvik 3:59—66; see also Ans. 5—6.) FF 4. Jarvik suggests that “[e]xit section 20 also defines an axial opening or outlet port 50 to permit the pumped blood which entered through side ports 40 as well through openings 30 to exit cannula housing 12” (Jarvik 4:26—29; see also Ans. 5—6.) ANALYSIS Appellants’ independent claim 1 recites, a stator assembly comprising a motor stator, a fluid inlet, and a fluid outlet; a rotor assembly comprising a motor rotor and an impeller rotatable about an axis to move fluid from the inlet to the outlet; and 5 Appeal 2015-005811 Application 13/470,631 an outflow sheath for directing the flow along the outside of the pump. (See Appellants’ claim 1.) Independent claim 45 similarly recites “an outflow sheath for directing the fluid that has been discharged from the outlet to flow along an outside surface of the housing” (see Appellants’ claim 45). Examiner finds that Jarvik suggests a stator assembly 42 comprising motor stator 46, a fluid inlet 16, 30 and fluid outlet 20, 50 (Figs. 1—3, column 3 lines 41—57, column 4 lines 20—22), a rotor assembly 64 comprising a motor rotor 14, impeller 66 rotatable about an axis to draw fluid into the pump through the inlet 16, 30 and discharge the fluid from the pump to the outlet 20, 50 (column 4 lines 52—64) the outlet 20 is on the sidewall of the housing, the pump having an outflow sheath 32 being configured to direct a primary flow from the fluid that has been discharged from the outlet 20, 50 over and along an outside diameter of the pump (Figs. 2—3, 15, column 4 lines 26—29, column 5 lines 42—67), and the pump being configured to direct a primary flow from the fluid inlet 30, 40 to the fluid outlet 50 over an outside diameter of the motor and being configured to direct a wash flow through the motor gap 13 (Figs. 1—3, 15, column 5 lines 42—67). (Ans. 5—6.) We recognize, but are not persuaded by, Examiner’s assertion that [Jarvik’s] pump [has] an outflow sheath (outer tube) 32 being configured to direct a primary flow from the fluid inlets 30, 40, to the fluid outlet 20, 50 over an outside diameter of the pump and to direct a wash flow through the motor gap 13 (Figs. 1—3, 15, column 4 lines 26—29, column 5 lines 42—67). Jarvik shows inlets 30, 40 (Fig. 1) for blood to enter, then the blood is directed by sheath 32 surrounding pump (stator and rotor assemblies) to flow outside the diameter of the pump 44, 46, 52, 64, 66, 70, and 72 (Fig. 3, components listed as stator and rotor assemblies on appellants[’] arguments page 19) to the fluid outlet 6 Appeal 2015-005811 Application 13/470,631 port 20, 50 (Figs. 1, 3 . . .). The claim language makes no mention of sheaths placement being downstream. (Ans. 10; see also Ans. 12.) The Specification teaches that pump 20b is fit[ted] with an outflow sheath 300 for directing the primary mixed flow along the outside of the pump. The outflow sheath 300 has a flexible construction that allows the sheath to be wrapped around an outer surface 302 of the pump 20b during implantation. This is shown in dashed lines at 300. (FF 1.) In referring to Appellants’ Figures 8—9 and the Specification, Appellants explain that the meaning of “an outflow sheath for directing the fluid that has been discharged from the outlet to flow along the outside of the pump,” as recited in claim l,6 is clear to one having ordinary skill in the art. Blood flows into the pump inlet and out of the pump outlet; and the fluid discharged from the outlet is directed by the sheath along the outside of the pump. (App. Br. 13; FF 1.) Appellants explain that Jarvik does not disclose a sheath that directs fluid that has been discharged from the pump outlet to flow along the outside of the pump. Claim 1 recites that the fluid directed by the sheath is fluid that has already been discharged through the pump outlet. This effectively places the sheath downstream of the pump outlet. It is impossible to redirect fluid that has been discharged from the outlet until after it has been so discharged. Thus, it is impossible to read structure that defines or is located upstream 6 We note that this language is more closely recited in independent claim 45 instead of claim 1. 7 Appeal 2015-005811 Application 13/470,631 of the pump outlet as being equivalent to the sheath recited in claim 1. (App. Br. 13; FF 2-4.) Appellants further explain that The official action identifies item 32 in Jarvik as being an outflow sheath (see Official Action - Item 3). Examination of the disclosure in Jarvik reveals that this is not true. Item 32 is clearly described as an outer tube portion of the cannula housing 12 that, together with inner tube 34, defines a space in which the motor windings 36 are stored and sealed (see column 3, lines 58— 66). The outer tube 32 is clearly described and shown as being part of the housing 12 that defines the motor stator, and there is absolutely no description or illustration that would lead one having ordinary skill in the art to consider it an outflow sheath that directs fluid that has been discharged from the outlet to flow along an outside of the pump. The only reference to item 32 in the entire specification of Jarvik states that it is a portion of the motor stator housing that houses the motor windings. (App. Br. 14; FF 2-4.) In regard to Examiner’s assertion that “[t]he claim language makes no mention of sheaths placement being downstream” (Ans. 10; see also Ans. 12), as Appellants explain, Appellants’] argument is not that the word “downstream” is recited in the claim, it is merely that the claim language itself precludes an interpretation in which the sheath is located anywhere but downstream from the pump outlet. . . . Appellants are simply making the point that it is impossible to consider any structure located upstream from the pump outlet to be a sheath as recited in claim 1. Appellants reiterate that Jarvik does not disclose this structure. (Reply Br. 5; see also Reply Br. 6.) On this record, the Examiner failed to establish an evidentiary basis to support a finding that Jarvik teaches “an outflow sheath for directing the flow along the outside of the pump” as 8 Appeal 2015-005811 Application 13/470,631 required by claim 1 and “an outflow sheath for directing the fluid that has been discharged from the outlet to flow along an outside surface of the housing” as required by claim 45. We thus reverse the rejection of claims 1 and 45. Because they depend from either claim 1 or claim 45, we reverse the rejection of claims 12, 27, 34—36, 50, 51, and 62—65 as well. Obviousness: The combination of Jarvik and Locke'. Based on the combination of Jarvik and Locke, Examiner concludes that, at the time Appellants’ invention was made, it would have been obvious to “modify the device of Jarvik by adding permanent magnetic bearings as taught by Locke in order to facilitate compact blood pump, while reducing manufacturing and operating costs and provide proper pumping of the blood of a patient with minimal power consumption” (Ans. 8). Examiner, however, failed to establish that Locke, makes up for the deficiency of Jarvik as discussed above. CONCLUSION OL LAW The rejection of claims 1—5, 11, 12, 16—50, and 53—56 on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1, 3—24, 26—29, 32, and 51—57 of Smith is affirmed. The preponderance of the evidence relied upon by Examiner fails to support a finding of anticipation and a conclusion of obviousness. The rejection of claims 1, 12, 27, 34—36, 45, 50, 51, and 62—65 under 35 U.S.C. § 102(b) as being anticipated by Jarvik is reversed. 9 Appeal 2015-005811 Application 13/470,631 The rejection of claims 16—24, 26, and 53—56 under 35 U.S.C. § 103(a) as unpatentable over the combination of Jarvik and Locke is reversed. 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-IN-PART 10 Copy with citationCopy as parenthetical citation