Ex Parte Stone et al

Patent Trial and Appeal Board

May 16, 2018

13831680 (P.T.A.B. May. 16, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/831,680 03/15/2013
121974 7590 05/18/2018
KACVINSKY DAISAK BLUNI PLLC
America's Cup Building
50 Doaks Lane
Marblehead, MA 01945
FIRST NAMED INVENTOR
CORBETT W. STONE
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.
8150BSC0127C2 2321
EXAMINER
VAHDAT, KHADIJEHA
ART UNIT PAPER NUMBER
3739
NOTIFICATION DATE DELIVERY MODE
05/18/2018 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):
bbonneville@kdbfirm.com
docketing@kdbfirm.com
ehysesani@kdbfirm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CORBETT W. STONE, MICHAEL F. HOEY,
THOMAS A. STEINKE, RAPHAEL M. MICHEL,
ARTHUR G. BLANCK, MARLENE KAY TRUESDALE,
and BRET HERSCHER 1
Appeal2017-004489
Application 13/831,680
Technology Center 3700
Before FRANCISCO C. PRATS, ELIZABETH A. LA VIER, and
RYAN H. FLAX, Administrative Patent Judges.
FLAX, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) involving
claims directed to an apparatus for removing a solid object from a body
canal or vessel. Claims 1-32 are on appeal as rejected under 35 U.S.C.
§ 102, § 103, and§ 112, first and second paragraphs, double patenting for
duplicate claims, and statutory double patenting. We have jurisdiction under
35 U.S.C. § 6(b ).
We affirm and also enter a new ground of rejection under 35 U.S.C.
§ 103(a), pursuant to our authority under 37 C.F.R. § 41.50(b).
1 Appellants identify "Vessix Vascular, Inc." as the Real Party in Interest.
Appeal Br. 3.
Appeal2017-004489
Application 13/831,680
STATEMENT OF THE CASE
The Specification states "[t]he structures of the invention allow
guided eccentric atherosclerotic material analysis, remodeling and/or
removal, often using both electrical diagnostic signals and electrosurgical
energy." Spec. 1:30-32. 2 The Specification further states "[e]mbodiments
of the invention may employ electrical energy to selectively heat target
tissues and/or other structures." Id. at 4:10-11. The Specification describes
the invention to "expand[] radially within the blood vessel so as to engage a
plurality of electrodes against the vessel wall" and "[a]n eccentric subset of
the array ( optionally a single electrode or an adjacent pair of electrodes)
adjacent the target plaque may be energized to characterize tissues locally,
and/or to eccentrically remodel the characterized target plaque using a
remodeling electrical potential." Id. at 7:16-24.
An exemplary illustration of a device within the scope of the claimed
invention is provided in the Specification at Fig. 4, which is reproduced
( annotated to label relevant structures) below:
2 We herein refer to the Specification filed Mar. 15, 2013 ("Spec."); Final
Action mailed July 8, 2015 ("Final Action"); Appeal Brief filed Apr. 21,
2016 ("Appeal Br."); Examiner's Answer mailed Nov. 17, 2016 ("Answer");
and Reply Brief filed Jan. 17, 2017 ("Reply Br.").
2
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Application 13/831,680
~N=p,,,bbi,i ,~,tru,:tw,:l--·\,
26
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Figure 4 shows an expandable structure 26 mounted upon a catheter body
14. Upon the expandable structure 26 are mounted several electrodes 50,
distributed around an axis running along the length of the expandable
structure 26 and catheter body 14. Figure 4 shows two pairs of electrodes
50, provided in a "zig-zag" fashion (see dotted arrow) so that each electrode
50 is distributed at a varied position lengthwise along the expandable
structure 26 with respect to and angularly off-set from their adjacent
electrodes 50. Each electrode 50 is connected to a dedicated conductor 52
running out the proximal end of the catheter body 14. The Specification
describes that the connections and arrangement of electrodes 50 in this
manner "allows bipolar energy to be directed between adjacent
circumferential (axially offset) electrodes, between adjacent distal
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Application 13/831,680
electrodes, between adjacent proximal electrodes, and the like." Id. at
20:25-21:2; see also Appeal Br. 5-17 (discussing such a structure, as
claimed).
Independent claims 1 and 17 are reproduced below:
1. An apparatus comprising:
a catheter configured for intravascular placement within a
blood vessel of a human patient;
an expandable balloon at a distal portion of the catheter,
wherein the expandable balloon is configured to vary between a
delivery configuration and a deployed configuration sized to fit
within the blood vessel;
a first pair of bipolar contacts attached to the expandable
balloon;and
a second pair of bipolar contacts attached to the
expandable balloon,
wherein the first pair of bipolar contacts and the second
pair of bipolar contacts are spaced apart lengthwise and angularly
offset from one another when the expandable balloon is in the
deployed configuration,
wherein each of the first pair of bipolar contacts and the
second pair of bipolar contacts is configured to deliver thermal
energy to less than a full circumference of the blood vessel of the
patient.
1 7. An apparatus for treating a patient, the apparatus
compnsmg:
a catheter configured for intravascular placement within a
blood vessel of a human patient;
an expandable balloon at a distal portion of the catheter,
wherein the expandable balloon is configured to vary between a
delivery configuration and a deployed configuration sized to fit
within the blood vessel;
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Application 13/831,680
a first electrode having a first pair of bipolar contacts
attached to the expandable balloon; and
a second electrode having a second pair of bipolar contacts
attached to the expandable balloon,
wherein the first electrode and the second electrode are
spaced apart lengthwise and angularly offset from one another
when the expandable balloon is in the deployed configuration,
wherein each of the first electrode and the second
electrode is configured to deliver thermal energy to less than a
full circumference of the blood vessel of the patient.
Appeal Br. 29, 33-34 (Claims App'x).
The following rejections are appealed:
Claims 17-32 stand rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement. Final Action 7.
Claims 11 and 12 stand rejected under 35 U.S.C. § 112, second
paragraph, as indefinite. Id. at 9.
Claims 17-32 stand rejected under 35 U.S.C. § 102(b) as anticipated
by Demarais. 3 Id. at 10.
Claims 1-10, 13, 14, and 16 stand rejected under 35 U.S.C. § I02(b)
as anticipated by Clayman. 4 Id. at 14.
Claims 1, 2, 4, 7, 8, 10, and 16 stand rejected under 35 U.S.C.
§ I02(e) and claims 17, 18, 20, 23, 24, 26, and 32 stand rejected under 35
U.S.C. § I02(b) as anticipated by Patel. 5, 6 Id. at 19.
3 US 2007 /0129720 Al (pub. June 7, 2007) ("Demarais").
4 US 5,779,698 (issued July 14, 1998) ("Clayman").
5 US 2007/0287994 Al (pub. Dec. 13, 2007) ("Patel").
6 The Examiner stated that the anticipation rejection of claims 13, 14, 29,
and 30 over Patel was an error and is withdrawn. Answer 3.
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Application 13/831,680
Claims 11 and 12 stand rejected under 35 U.S.C. § I03(a) over
Clayman, Steinke, 7 and Maguire. 8 Id. at 24.
Claim 15 stands rejected under 35 U.S.C. § I03(a) over Clayman and
Steinke. Id. at 25.
Claims 19, 21, 22, 25, and 27-31 stand rejected under 35 U.S.C.
§ I03(a) over Patel and Demarais. Id. at 26.
Claims 17-32 stand (provisionally) rejected for double patenting,
pursuant to MPEP § 706.03(k), over claims 1-16, if found allowable, as
being substantial duplicates. Id. at 28-29.
Claims 1-32 stand provisionally rejected under 35 U.S.C. § 101 for
statutory double patenting over claims 1-32 of co-pending application
13/831,634. Id. at 29.
DISCUSSION
Only those arguments made by Appellants in the Appeal Brief and
properly presented in the Reply Brief have been considered in this Decision.
Arguments not so presented in the Briefs are waived. See 37 C.F.R.
§ 4I.37(c)(l)(iv) (2015); see also Ex parte Borden, 93 USPQ2d 1473, 1474
(BP AI 2010) (informative) ("Any bases for asserting error, whether factual
or legal, that are not raised in the principal brief are waived."). Statements
in a brief that "merely mention [a] claim ... and lack any type of separate,
substantive argument concerning the claim" are not sufficient to constitute
separate argument regarding that claim under 37 C.F.R. § 4I.37(c)(l)(iv). In
re Kao, 639 F.3d 1057, 1065 (Fed. Cir. 2011).
7 US 2005/0096647 Al (pub. May 5, 2005) ("Steinke").
8 US 2002/0087156 Al (pub. July 4, 2002) ("Maguire").
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Application 13/831,680
"[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting aprimafacie case ofunpatentability. If
that burden is met, the burden of coming forward with evidence or argument
shifts to the applicant." In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
Priority and Written Description Requirement
There is a dispute whether claim 17 and its dependent claims should
be accorded priority to a filing date before their actual filing date. The
Examiner determined that the earlier-filed applications do not support the
subject matter of claim 17 and the claimed priority is not warranted. Final
Action 2--4. Similarly, claims 17-31 stand rejected as not supported by the
Specification, which is essentially the same as the prior applications and was
determined to not meet the written description requirement. Id. at 7-9.
Claim 17, in relevant part, recites:
a first electrode having a first pair of bipolar contacts
attached to the expandable balloon; and
a second electrode having a second pair of bipolar
contacts attached to the expandable balloon,
wherein the first electrode and the second electrode are
spaced apart lengthwise and angularly offset from one another
when the expandable balloon is in the deployed configuration
Appeal Br. 33-34 ( emphasis added).
"In order to gain the benefit of the filing date of an earlier application
under 35 U.S.C. § 120, each application in the chain leading back to the
earlier application must comply with the written description requirement of
35 U.S.C. § 112." Lockwood v. American Airlines, Inc., 107 F.3d 1565,
1571 (Fed. Cir. 1997). See also 35 U.S.C. § 119(e)(l) (benefit of
provisional application's filing date requires disclosure of claimed invention
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Application 13/831,680
"in the manner provided by the first paragraph of section 112"). "In order to
satisfy the written description requirement [of 35 U.S.C. § 112, first
paragraph], the disclosure as originally filed does not have to provide in
haec verba support for the claimed subject matter at issue." Purdue Pharma
L.P. v. Faulding, Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000). Nonetheless,
the disclosure must convey with reasonable clarity to those skilled in the art
that the inventor was in possession of the invention. See id. "A disclosure
in a parent application that merely renders the later-claimed invention
obvious is not sufficient to meet the written description requirement; the
disclosure must describe the claimed invention with all its limitations."
Tronzo v. Biomet, Inc., 156 F.3d 1154, 1158 (Fed. Cir. 1998).
We have considered Appellants' arguments on priority and the written
description requirement, but find them unpersuasive. See Appeal Br. 7-17,
19-20. Nothing in the Specification, the identified-parent application, or
identified-provisional application(s) discloses an electrode having a pair of
bipolar contacts, much less two such electrodes, configured in the fashion
claimed. Appellants point to nothing in the Specification or the other
applications' disclosures that describes such subject matter.
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Application 13/831,680
We interpret the disputed claim language to define a structure as
illustrated by the following illustration:
"spaced apart lengthwise"
"first electrode having a first _#f!i!i,-&&&ISl~--1&.
pair of bipolar contacts"
"angularly offset":,",,
,,.,:,
..... :,,, .... , ..., ..... ::::., .. :;:;.,., .. ,., .. ,.,., .. ,., .. ,.,.,., .. ,.,., .... ,.,.,., .... ,.,.,.,.:,::::::::::::::::•:•:•:•:•:;:i;\~~~~~~~~~~~~:;:;~,
·-,,•••••••••••••••••••••,,-... "second··~;~~-~·;::·:·····~:·:;~·~···:·····
···:::::::-:•.. . . ,,
·.·.,,,,....,••t,,., ... second pair of bipolar contacts
We generically show by illustration above a catheter (thick black line) and
an expandable balloon (in grey perspective outline) of claim 17, upon which
are provided two electrode structures ( dark and light gray shaded
rectangles), which are spaced apart lengthwise ( shown by the red bracket)
and are angularly offset from one another ( shown by the red arrows-the
angular offset could also reasonably be accomplished by other angles of
offset in any direction and is not limited to the precise angle and direction
illustrated; the Specification is not explicit on this element). Each of the
electrode structures has a respective pair of bipolar contacts (shown as the
dark and light grey shaded squares of each respective electrode rectangle-
their specific orientation here is exemplary and is not a claim requirement).
Each bipolar contact is labeled with "+/-" indicating its bipolar nature. We
interpret the relevant claim elements in the above-illustrated fashion per the
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Application 13/831,680
claim's ordinary language. The Specification provides no express definition
of a structure of an electrode or of a bipolar contact, as claimed, which could
serve to direct our claim interpretation in a way contrary to what we set forth
above as the broadest reasonable interpretation.
The electrodes described consistently throughout the Specification
(the cited prior applications' disclosures are essentially the same), which are
given reference numbers, e.g., 50, 174, 230, 232, 234, 330, 346, 348, 380,
722 ( 1---6), are never described therein as having more than one contact per
electrode, i.e., not a "pair." No figure of the Specification illustrates an
electrode having more than one contact, i.e., not a "pair." Therefore, neither
the Specification nor the applications to which Appellants claim priority
disclose, describe, or illustrate the relevant elements/limitations of claim 1 7,
as set forth immediately above; they do not convey that the inventors were in
possession of an apparatus having an electrode ( or a first and second
electrode) having a respective pair of bipolar contacts.
For the reasons set forth above, we agree with the Examiner's
determinations on priority and the written description requirement and
affirm the rejection under 35 U.S.C. § 112, first paragraph.
Indefiniteness
"[A] claim is indefinite when it contains words or phrases whose
meaning is unclear," i.e., "ambiguous, vague, incoherent, opaque, or
otherwise unclear in describing and defining the claimed invention." In re
Packard, 751 F.3d 1307, 1310-13 (Fed. Cir. 2014); see also MPEP
§ 2173.02(1) (Rev. 07.2015, Nov. 2015) (advising examiners that a rejection
for indefiniteness is appropriate "after applying the broadest reasonable
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Application 13/831,680
interpretation to the claim, if the metes and bounds of the claimed invention
are not clear").
Claim 11 recites "[t]he apparatus of claim 1 wherein the first pair of
bipolar contacts further comprises at least one sensor configured to
monitor a parameter of the apparatus or of tissue within the patient." Appeal
Br. 32 ( emphasis added to highlight disputed language). In rejecting claim
11 as indefinite, the Examiner determined, "[i]t is unclear how a pair of
bipolar contacts that are naturally separated from one another to provide
bipolar energy could comprise a single sensor. It is at most unclear if each
of the conductive contacts includes a sensor or if there is a sensor between
the two contacts." Final Action 9.
Independent claim 1 does not require that the first pair of bipolar
contacts are spaced apart lengthwise and angularly offset from one another,
but requires that the first and second pairs of bipolar contacts are spaced
apart lengthwise and angularly offset from one another. Thus, the
Examiner's inquiry as to how a pair of naturally separated contacts can
comprise a single sensor is not relevant. Further, we do not understand the
limitation of claim 11 to require that a sensor must be a structural part of two
contacts, as interpreted by the Examiner, but only to require that somehow
the first pair of bipolar contacts, as a set, has a sensor therewith.
The claim language is not unclear. We reverse the indefiniteness
rejection.
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Anticipation
"Anticipation requires that all of the claim elements and their
limitations are shown in a single prior art reference." In re Skvorecz, 580
F.3d 1262, 1266 (Fed. Cir. 2009).
1. Claims 17-32 and Demarais
The Examiner determined Demarais disclosed each element of the
rejected claims. Final Action 10-14 (citing Demarais ,r,r 9, 26, 31, 34--42,
55-58, 60, 73, Figs. 2A-2J, 3, 5A, 5B, and claim 8).
Appellants argue only that, because Demarais was filed November 14,
2006, and its relevant disclosed subject matter can claim priority to no
earlier date, the reference does not constitute prior art to claims 17-32,
which should be accorded a priority date of October 18, 2006 (i.e., the filing
date of provisional application 60/852,787). Appeal Br. 21.
This is not persuasive. As we concluded above, claims 17-32 do not
benefit from the earlier filing date of the cited provisional application
because that provisional, which is substantially similar to the Specification,
does not provide a supporting disclosure for the claims. Demarais is prior
art to claims 17-32, filed March 15, 2013. Therefore, we affirm the
rejection.
2. Claims 1-10, 13, 14, and 16 and Clayman
The Examiner determined that each element of the rejected claims
was disclosed by Clayman. Final Action 14--18 ( citing Clayman abstract,
9:50-10:7, 10:66-11 :4, 11:22-35, and Figs. 4--8, 12).
Appellants argue Clayman's disclosure of conductive pads on a
balloon (for angioplasty), that can be energized ( electrified) does not
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Application 13/831,680
necessarily (inherently) teach two pairs of such pads configured to be
energized in a bipolar fashion as claimed. Appeal Br. 22-23.
In response, the Examiner stated:
Please note that the recitation of "a first pair of bipolar contacts
attached to the expandable balloon; and a second pair of bipolar
contacts attached to the expandable balloon, wherein the first
pair of bipolar contacts and the second pair of bipolar contacts
are spaced apart lengthwise and angularly offset from one
another when the expandable balloon is in the deployed
configuration", only requires having separate electrodes with
separate contacts such that they would desirably be connected to
bipolar energy, but the actual bipolar energy is not positively
claimed.
Answer 8.
We conclude the balance of evidence favors Appellants' position.
While Clayman discloses a device that is, in most ways, structurally the
same as the claimed invention, Clayman is silent as to any polar nature of its
electrodes. According to Clayman's disclosure, the electrodes are either on
or off. We agree with the Examiner that bipolar energy is not positively
claimed, but disagree with the Examiner's determination that an electrode
that is merely capable of being charged positively or negatively will suffice
to disclose the claimed bipolar contacts because such claim language
indicates how the claimed contacts are connected to an electrical energy
source. See, e.g., Spec. 20:31-21:2, 27:7-28:8. For this reason, we reverse
the anticipation rejection over Clayman.
3. Claims 1, 2, 4, 7, 8, 10, 16--18, 20, 23, 24, 26, and 32 and Patel
The Examiner determined each element of the rejected claims was
disclosed by Patel. Final Action 19-23 ( citing Patel ,r,r 26, 32, 83-91, Figs.
1, 5, 6, and 9); see also Patel ,r,r 2, 36-38, 43, 44, 96, 98, and Figs. 11, 13.
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Appellants argue, because the claims are to be accorded priority to
October 18, 2006, Patel, which was filed June 12, 2006 and published
December 13, 2007, is only prior art under 35 U.S.C. § 102(e), if at all.
Appeal Br. 23-24.
This argument is not persuasive because, as discussed above, claims
17-32 are not accorded an earlier priority date. Patel is § 102( e) prior art to
claim 1 and is § 102(b) prior art to claim 17.
Appellants also argue Patel fails to disclose the claimed catheter and
balloon. Appeal Br. 24--25. Appellants argue Patel's balloon and electrodes
are configured to deliver energy to a full circumference of the balloon, rather
than to less than the full circumference of the blood vessel, as claimed. Id.
at 24. Appellants also argue the device of Patel is not intended to be used
inside a blood vessel, but only from outside a blood vessel. Id.
These arguments are not persuasive. The claims require "each of the
first pair of bipolar contacts and the second pair of bipolar contacts is
configured to deliver thermal energy to less than a full circumference of the
blood vessel of the patient," not that the entire device is configured in this
way. Patel discloses such pairs of bipolar contacts, as shown by Patel's
Figure 9, reproduced ( annotated to highlight contact pairs) below:
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304
Patel's Figure 9 shows a balloon upon which are a plurality of
electrodes/contacts 302, 304. As shown by the figure, these contacts are
bipolar and span the entirety of the balloon's surface. However, any two
pairs of the contacts ( annotated by boxes above) would only be capable of
delivering electrical energy to a portion of the entire circumference of the
balloon or of a blood vessel into which the balloon was inserted. Further,
Patel discloses "a balloon at the distal end of the catheter shaft 104 covered
with circumferential, parallel and spirally disposed bipolar electrodes 302
and 304," and "sidewise [i.e., less than circumferential] applications of the
probe results in at least a bipolar contact." Patel ,r,r 89, 90, 96, 98.
Further, Patel's catheter and balloon are, respectively, "configured for
intravascular placement within a blood vessel of a human patient" and
"configured to vary between a delivery configuration and a deployed
configuration sized to fit within the blood vessel." Based on the dimensions
disclosed in the Specification, i.e., balloons having diameter sizes ranging
from about 3 mm to about 8 mm, the dimensions of the Patel balloon and
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Application 13/831,680
catheter of approximately 3-5 mm (the balloon is around the catheter) would
be configured for intravascular placement and deployment, as claimed.
Spec. 52:3-5; Patel ,r,r 84--85, Figs. 1, 9.
For the reasons set forth above, we affirm the anticipation rejection.
Obviousness
"The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results."
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,416 (2007). "[T]he analysis
need not seek out precise teachings directed to the specific subject matter of
the challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ." Id. at
418. "In determining whether the subject matter of a patent claim is
obvious, neither the particular motivation nor the avowed purpose of the
patentee controls. What matters is the objective reach of the claim. If the
claim extends to what is obvious, it is invalid under§ 103." Id. at 419.
1. Claims 11 and 12 and Clayman-Steinke-Maguire Combination
The Examiner determined that claims 11 and 12, which depend from
claim 1, would have been obvious over the Clayman-Steinke-Maguire
combination. Final Action 24--25 ( citing Clayman as cited for the
anticipation rejection of claim 1; citing Steinke ,r,r 26, 93, 116; citing
Maguire ,r 359, Fig. 35); see also Steinke ,r,r 22, 26, 29, 80-82, 96-101, 107,
109-112, 116-117, 126-129, Figs. 3, 6A, 6B, lOA-lOD, 22-25, 28A-30B,
38A-38H, 40 (disclosing the subject matter of the claimed invention, using
the same illustrations, almost verbatim).
Appellants renew their arguments over Clayman as presented over the
anticipation rejection. Appeal Br. 25. Appellants argue Maguire "does not
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Application 13/831,680
provide what Clayman lacks," i.e., "the first pair of bipolar contacts," which
comprise "at least one sensor." Id. at 25-26. Appellants declined to
comment on the Steinke reference as prior art. Id. at 26.
Appellants' arguments are not persuasive. The portions of Maguire
the Examiner cites do not make up for Clayman's not teaching a pair of
bipolar contacts nor are they intended to. Maguire is cited for its disclosure
of pairing a temperature sensor with a pair of electrodes, which it teaches.
Appellants decline to comment on Steinke; however, the disclosure of
Steinke appears largely identical to that of the Appellants' Specification ( as
noted supra), including, inter alia, Steinke' s Fig. 3, which is identical to
Appellants' Fig. 4; Steinke's Fig. 6A/B, which are identical to Appellants'
Figs. 5/6; Steinke's Figs. lOB/C, which are identical to Appellants' Figs.
7B/C; Steinke's Figs. 22-25, 28A, which are identical to Appellants' Figs.
8-11, and so on. It is apparent that, if Appellants' Specification discloses
the invention of the claims, so does Steinke. However, here, Steinke is cited
by the Examiner for teaching pairing sensors with electrodes, which it does
teach.
Further, Steinke was published May 5, 2005 (filed Sept. 10, 2004;
claiming priority to Sept. 12, 2003). Therefore, even were all of Appellants'
claims given their earliest requested priority date of October 18, 2006,
Steinke' s publication would still be § 102(b) prior art.
For the reasons set forth above, we affirm the obviousness rejection.
2. Claim 15 and Clayman-Steinke Combination
The Examiner determined the rejected claim would have been obvious
over the Clayman-Steinke combination. Final Action 25-26 ( citing
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Clayman as it was cited for the anticipation rejection; citing Steinke ,r,r 26,
95).
Appellants bundle this rejection with the preceding obviousness
rejection and renew their arguments over Clayman as presented over the
anticipation rejection. Appeal Br. 25. Appellants, as noted above, declined
to comment on the Steinke reference as prior art. Id. at 26.
As discussed above, Steinke' s disclosure is essentially the same as
(and more extensive than) Appellants' Specification and it is prior art to the
appealed claims. For the reasons above, we affirm this obviousness
rejection.
3. Claims 19, 21, 22, 25, and 27-31 and Patel-Demarais
Combination
The Examiner determined the rejected claims would have been
obvious over the Patel-Demarais combination. Final Action 26-28 ( citing
Patel as applied in the anticipation rejection; citing Demarais ,r,r 26, 31, 34--
42, 55-58, 60, Figs. 5A, 5B).
Appellants renew their arguments over the Patel reference, as made
addressing the anticipation rejection. Appeal Br. 27. Appellants also argue
Demarais is not prior art.
These arguments are not persuasive, as discussed above. For the
reasons set forth above we affirm this obviousness rejection.
Duplicate Claims Double Patenting
The Examiner, despite rejecting claims 17-32 as directed to subject
matter not sufficiently described in the Specification, while determining the
same was not so for claims 1-16, rejected claims 17-32 as substantial
duplicates of claims 1-16. Final Action 28-29 (citing MPEP § 706.03(k)).
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Appellants do not address this rejection in their brief. See, e.g.,
Appeal Br. 27. However, the Examiner's determination that the
Specification's disclosure supports the invention of claim 1 under§ 112,
first paragraph, but does not do so for claim 17, is incompatible with this
rejection. Having affirmed the written description rejection, we conclude
there is some not-insubstantial difference between the subject matter of the
independent claims. We reverse this rejection.
Statutory Double Patenting Under 35 U.S.C. § 101
The Examiner makes a provisional double patenting rejection over
claims 1-32 of U.S. Patent Application No. 13/831,634, which the Examiner
finds are directed to the same invention as Appellants' claims. Appellants
do not contest the substance of the provisional double patenting rejection.
Appeal Br. 27.
Because Appellants do not contest the substance of this rejection, we
affirm it. See MPEP § 1205.02 (Arguments and evidence not presented in
an appeal brief "are waived for purposes of the appeal and the Board may
summarily sustain any grounds of rejections not argued.").
NEW GROUNDS OF REJECTION UNDER 35 U.S.C. § 103(a)
As we noted above discussing the reversal of the anticipation rejection
of claims 1-10, 13, 14, and 16 over Clayman, although the device disclosed
by Clayman is substantially similar to the device of claim 1, the reference
does not identify its electrodes/contacts as bipolar contacts. As we also
noted above in discussing the obviousness rejection of claims 11 and 12 over
the Clayman-Steinke-Maguire combination, the disclosure of Steinke is
substantially similar to, if not more extensive than, Appellants' Specification
describing the claimed invention. Therefore, we enter a new ground of
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rejection for claims 1-10, 13, 14, and 16 under 35 U.S.C. § 103(a) as
obvious over Clayman and Steinke.
We apply Clayman as did the Examiner in the respective anticipation
rejection. We conclude that Steinke, besides disclosing that its
electrodes/contacts (similar to those of Clayman) are bipolar, also discloses
the subject matter of these claims, in their entirety, essentially on its own.
See Steinke ,r,r 22, 26, 29, 80-82, 96-101, 107, 109-112, 116-117, 126-129,
Figs. 3, 6A, 6B, lOA-lOD, 22-25, 28A-30B, 38A-38H, 40 (disclosing the
subject matter of the claimed invention, using the same illustrations and
almost verbatim). We rely on the Examiner's rationale for combining
Clayman and Steinke as set forth in the Final Action. See Final Action 24--
26. Based thereon, we conclude there would have been motivation for a
skilled artisan to combine the disclosures of Clayman and Steinke, in any
fashion, because the references are directed to the same goals and achieve
them by substantially similar means and devices; the references are directed
to analogous art. Furthermore, we conclude the skilled artisan would have
reasonably expected to successfully combine the references because doing
so would amount to combining and using well-known features in their
customary ways.
SUMMARY
The rejection of claims 17-32 under 35 U.S.C. § 112, first paragraph,
as failing to comply with the written description requirement is affirmed.
The rejection of claims 11 and 12 under 35 U.S.C. § 112, second
paragraph, as indefinite is reversed.
The rejection of claims 17-32 under 35 U.S.C. § 102(b) as anticipated
by Demarais is affirmed.
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The rejection of claims 1-10, 13, 14, and 16 under 35 U.S.C. § 102(b)
as anticipated by Clayman is reversed.
The rejection of claims 1, 2, 4, 7, 8, 10, and 16 under 35 U.S.C.
§ 102(e) and claims 17, 18, 20, 23, 24, 26, and 32 under 35 U.S.C. § 102(b)
as anticipated by Patel is affirmed.
The rejection of claims 11 and 12 under 35 U.S.C. § 103(a) over
Clayman, Steinke, and Maguire is affirmed.
The rejection of claim 15 under 35 U.S.C. § 103(a) over Clayman and
Steinke is affirmed.
The rejection of claims 19, 21, 22, 25, and 27-31 under 35 U.S.C.
§ 103(a) over Patel and Demarais is affirmed.
The rejection of claims 17-32 for double patenting, pursuant to MPEP
§ 706.03(k), over claims 1-16, if found allowable, as being substantial
duplicates is reversed.
The rejection of claims 1-32 under 35 U.S.C. § 101 for statutory
double patenting over claims 1-32 of co-pending application 13/831,634 is
affirmed.
Claims 1-10, 13, 14, and 16 are herein rejected under 35 U.S.C.
§ 103(a) as unpatentable over Clayman and Steinke, as set forth above.
TIME PERIOD FOR RESPONSE
This Decision contains a new ground of rejection pursuant to
37 C.F.R. § 4I.50(b), which provides, "[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review."
37 C.F.R. § 4I.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
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one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
( 1) Reopen prosecution. Submit an appropriate amend-
ment of the claims so rejected or new Evidence relating to the
claims so rejected, or both, and have the matter reconsidered by
the examiner, in which event the prosecution will be remanded
to the examiner. The new ground of rejection is binding upon
the examiner unless an amendment or new Evidence not
previously of Record is made which, in the opinion of the
examiner, overcomes the new ground of rejection designated in
the decision. Should the examiner reject the claims, appellant
may again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
AFFIRMED
37 C.F.R. § 4I.50(b)
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