Ex Parte Topaz et al

Board of Patent Appeals and Interferences

Aug 29, 2011

10935500 (B.P.A.I. Aug. 29, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte STEPHEN R. TOPAZ, PETER A. TOPAZ and
DEMIN SHEN
________________

Appeal 2010-001923
Application 10/935,500
Technology Center 3700
________________

Before JENNIFER D. BAHR, FRED A. SILVERBERG and
MICHAEL L. HOELTER, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL

Appeal No. 2010-001923
Application No. 10/935,500

2

STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134(a), from a final
rejection of claims 1, 2, 4-14, 28-36 and 57-59. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

References Relied on by the Examiner
Madurski US 3,606,592 Sep. 20, 1971
Thoma US 4,034,742 Jul. 12, 1977
Kolff US 4,902,291 Feb. 20, 1990
Isaacson US 5,066,300 Nov. 19, 1991
Yamazaki US 5,147,388 Sep. 15, 1992
Gealow US 5,222,980 Jun. 29, 1993
Rottenberg US 6,007,479 Dec. 28, 1999
Maianti US 2004/0001766 A1 Jan. 1, 2004
Riebman US 2005/0148810 A1 Jul. 7, 2005

The Claimed Subject Matter
The claimed subject matter is directed to a cardiac device that is
inserted within a body to support a weak vascular system. Independent
claim 1 is illustrative of the claims on appeal and is reproduced below:
1. A cardiac system, comprising:
a body including a first chamber and a second chamber
separated by a flexible diaphragm;
said first chamber including a single opening to access an
interior thereof; and
said second chamber including a single opening to access an
interior thereof,
wherein an exterior of said body is coated with a material that
reduces human tissue growth thereto.

Appeal No. 2010-001923
Application No. 10/935,500

3

The Rejections on Appeal1,2
1. Claims 1, 6-9, 12, 28 and 30 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Thoma and Yamazaki (Ans. 10).
2. Claim 2 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Thoma, Yamazaki and Gealow (Ans. 12).
3. Claims 5 and 31 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Thoma, Yamazaki and Madurski (Ans. 13).
4. Claim 10 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Thoma, Yamazaki and Riebman (Ans. 14).
5. Claims 11, 32, 33, 35 and 36 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Thoma, Yamazaki and Kolff (Ans. 14-15).
6. Claim 13 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Thoma, Yamazaki and Rottenberg (Ans. 16).
7. Claim 14 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Thoma, Yamazaki, Madurski, Kolff and Isaacson (Ans. 16).
8. Claim 34 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Thoma, Yamazaki, Kolff and Maianti (Ans. 17).

1 The Examiner has withdrawn the rejection of claims 4 and 29 under 35
U.S.C. § 112, second paragraph (Ans. 3).
2 The Examiner’s Answer included new grounds of rejection regarding
claims 4, 11, 29 and 57-59 (Ans. 4-9). No reply by Appellant has been filed
to avoid sua sponte dismissal of the appeal as to these claims (37 C.F.R. §
41.39 (b). “[T]he dismissal of the appeal as to those claims operates as an
authorization to cancel those claims and the appeal continues as to the
remaining claims” (MPEP § 1207.03(V)(C) (8th ed., Rev. 8, Jul. 2010)). As
a consequence, any further rejection(s) of claims 4, 11, 29 and 57-59 are
deemed to be cumulative and will not be treated in this Decision (37 C.F.R.
§ 41.50 (a)(1) and MPEP § 706.02, I (p. 700-22) (8th ed., Rev. 7, Jul.
2008)).
Appeal No. 2010-001923
Application No. 10/935,500

4

ISSUE
Has the Examiner established that the combined teaching of Thoma
and Yamazaki describe a body coated with material that reduces human
tissue growth as claimed?

ANALYSIS
Rejection of claims 1, 6-9, 12, 28 and 30 over Thoma and Yamazaki
Independent claims 1 and 28 require an exterior coating on the
implanted device that reduces or inhibits “human tissue growth thereto.”
Dependent claims 6-9, 12 and 30 are not separately argued but instead are
argued along with independent claims 1 and 28 (App. Br. 19-30).
The Examiner relied upon Thoma for all the features of claims 1 and
28 with the exception that Thoma “fails to teach that the body is coated with
a material that reduces human tissue growth thereto” (Ans. 10-11). The
Examiner relied upon Yamazaki for teaching “that it is known to coat the
exterior of a blood pump with a material that reduces human tissue growth
thereto” (Ans. 11). The Examiner specifically referenced Yamazaki column
7, lines 25-30 and these lines in Yamazaki state that a “heparin coating is
applied to their parts which are contacted with blood so as to make them
antithrombogenic” (Ans. 11). The Examiner concluded that it would have
been obvious to one skilled in the art to modify Thoma by providing Thoma
with Yamazaki’s coating that “reduces human tissue growth thereto”
because such modification would provide “the predictable results of
minimizing blood clotting and tissue growth on the exterior of the body and
thus allowing the device to be easily removed in the case of temporary usage
of the device” (Ans. 11).
Appeal No. 2010-001923
Application No. 10/935,500

5

Appellants contend that “Yamazaki teaches an anti-blood clotting
coating on the exterior” of an implanted device and that the claims do not
“recite an anti-blood clotting coating but instead recites an anti-tissue growth
coating” which neither Thoma nor Yamazaki teach or suggest (App. Br. 20,
see also 21-30). Appellants contend that claims 1 and 28 are patentable
because the use of heparin as an anti-tissue growth coating provides
“unpredicted benefit” since the “use of heparin as an anti-tissue growth
coating was not known by one skilled in the art at the time of the filing of
this application in 2004” (App. Br. 21, see also 26). Appellants also contend
that Appellants’ device “may be utilized to ‘exercise’ a patient’s heart”
(App. Br. 23-24). Appellants further address Thoma and Yamazaki
separately and conclude that “the devices function differently” (App. Br. 27-
28, see also 20, 24-25).
Appellants’ argument that the use of heparin as an anti-tissue growth
coating provides a benefit because its use as such was unknown prior to the
filing of their application is not supported by any affidavit, declaration or
other credible evidence and as such, we decline to credit this argument (see
In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974); In re Geisler, 116 F.3d
1465, 1470 (Fed. Cir. 1997); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir.
1984); and Estee Lauder, Inc. v. L’Oreal, S.A., 129 F.3d 588, 595 (Fed. Cir.
1997)). We also decline to credit arguments regarding the ability to
“exercise” a patient’s heart as this is not a claimed element. Further, it has
long been settled that claims must be distinguished from the prior art in
terms of structure rather than function (see In re Schreiber, 128 F.3d 1473,
1477 (Fed. Cir.1997)).
Appeal No. 2010-001923
Application No. 10/935,500

6

Appellants’ broad assertions that Thoma and Yamazaki do not teach
or suggest Appellants’ claim limitations do not disprove, outweigh or show
that the Examiner’s finding that “anti-blood clotting coating would also be
considered a coating that reduces or inhibits human tissue growth” was in
error (see Ans. 21). Indeed, at least the portion of Christopherson (col. 9, ll.
1-6) cited by the Examiner support the Examiner’s finding that heparin has
such capability. The Examiner’s rationale for combining Thoma and
Yamazaki, i.e., that “[i]t would have been obvious to one having ordinary
skill in the art at the time the invention was made to modify the exterior of
the blood pump as taught by Thoma with a coating that reduces human
tissue growth thereto, as taught by Yamazaki” to allow “the device to be
easily removed,” provides sufficient reason for their combination which we
adopt (Ans. 11, see also 20-22).
We find that the record reasonably shows that providing a coating of
heparin could have been reasonably predicted to yield the result of an anti-
tissue growth coating. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417
(2007) (holding that “if a technique has been used to improve one device,
and a person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is obvious
unless its actual application is beyond his or her skill.”)
Accordingly, and based on the record presented, we sustain the
Examiner’s rejection of claims 1, 6-9, 12, 28 and 30 as being unpatentable
over Thoma and Yamazaki.
Rejection of claim 2 over Thoma, Yamazaki and Gealow; claims 5 and 31
over Thoma, Yamazaki and Madurski; claim 10 over Thoma, Yamazaki and
Riebman; claim 13 over Thoma, Yamazaki and Rottenberg; and claim 14
over Thoma, Yamazaki, Madurski, Kolff and Isaacson
Appeal No. 2010-001923
Application No. 10/935,500

7

Appellants do not present any separate arguments for the patentability
of claims 2, 5, 10, 13, 14 and 31 apart from those previously presented with
respect to claims 1 and 28 (App. Br. 30, 32-33, 36, 37). For the reasons
provided in our analysis of claims 1 and 28, we find the arguments asserted
with respect to claims 1 and 28 equally unpersuasive of Examiner error for
claims 2, 5, 10, 13, 14 and 31. As such, we affirm the Examiner’s rejection
of claims 2, 5, 10, 13, 14 and 31.
Rejection of claims 32, 33, 35 and 36 over Thoma, Yamazaki and
Kolff; claim 34 over Thoma, Yamazaki, Kolff and Maianti
Appellants do not present any separate arguments for the patentability
of claims 32-36 apart from those previously presented with respect to claims
1 and 28 (App. Br. 33-36, 38). For the reasons provided supra in our
analysis of claims 1 and 28, we find the arguments asserted with respect to
claims 1 and 28 equally unpersuasive of Examiner error for claims 32-36.
As such, we affirm the Examiner’s rejection of claims 32-36.

CONCLUSION OF LAW
The Examiner has established that the combined teaching of Thoma
and Yamazaki describe a body coated with material that reduces human
tissue growth as claimed.

Appeal No. 2010-001923
Application No. 10/935,500

8

DECISION
The rejection of claims 1, 2, 5-10, 12-14, 28 and 30-36 is affirmed.
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

MP