Gayane Voskanyan et al.

Patent Trials and Appeals Board

May 8, 2020

13008723 - (D) (P.T.A.B. May. 8, 2020)

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.
13/008,723 01/18/2011 Gayane R. Voskanyan 130.100-US-I1 9316
12813 7590 05/08/2020
Gates & Cooper LLP - Minimed
6060 Center Drive
Suite 830
Los Angeles, CA 90045
EXAMINER
PATEL, SHEFALI DILIP
ART UNIT PAPER NUMBER
3783
NOTIFICATION DATE DELIVERY MODE
05/08/2020 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):
docketing-us@gates-cooper.com
gates-cooper@blackhillsip.com
rs.patents.one@medtronic.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte GAYANE R. VOSKANYAN, KATHERINE T. WOLFE,
BRIAN CHUNG, ERIC ALLAN LARSON,
JOSE J. RUELAS, and RAJIV SHAH

Appeal 2019-005768
Application 13/008,723
Technology Center 3700
____________

Before JOHN C. KERINS, JILL D. HILL, and
LEE L. STEPINA, Administrative Patent Judges.

KERINS, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s decision to reject claims 1–9, 11, 13–19, 21, and 22.1 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 The term “Appellant” is used herein to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Medtronic MiniMed, Inc., as the real
party in interest. Appeal Br. 2.
Appeal 2019-005768
Application 13/008,723

2
THE CLAIMED SUBJECT MATTER
Appellant’s invention relates to an apparatus for inserting a sensor and
an infusion cannula into the skin of a patient. Claim 1 is illustrative, and is
reproduced below:
1. An apparatus for inserting a sensor and an infusion
cannula into skin of a patient, the apparatus comprising:
a combined sensor and fluid infusion device including:
a base adapted to secure the combined sensor and fluid
infusion device to the skin of the patient;
the infusion cannula for infusing a fluid to an infusion site,
coupled to and extending from the base;
the sensor having a sensor electrode for determining at
least one body characteristic of the patient at a sensor
placement site, wherein the sensor is coupled to and
extending from the base;
a piercing device for piercing the skin of the patient, the piercing
device including:
a hub;
a first piercing member connected to the hub and
operatively coupled to the infusion cannula;
a second piercing member connected to the hub and
operatively connected to the sensor; and
an insertion device for inserting the infusion cannula and the
sensor into the skin of the patient, the insertion device including:
a housing;
a hub recess disposed in the housing and operatively
coupled to the hub of the piercing device so that:
(a) the housing of the insertion device disengages
from the patient after the first piercing member and
the second piercing member are inserted into the
skin of the patient and
Appeal 2019-005768
Application 13/008,723

3
(b) the housing of the insertion device is disengaged
from the patient during fluid infusion to an insertion
site;
an opening covering at least a portion of the combined
sensor and fluid infusion device; and
a button operable to exert a force on the piercing device
sufficient to drive the first piercing member and the second
piercing member into the skin of the patient, wherein the
infusion cannula has a coating on a tip of the infusion
cannula that has force resistant properties sufficient to
prevent the infusion cannula from bending during
insertion into the skin of the patient.

THE REJECTION
The Examiner rejects claims 1–9, 11, 13–19, 21 and 22 under 35
U.S.C. § 103(a) as being unpatentable over Van Antwerp (US 2009/0062767
A1, published Mar. 5, 2009)2 in view of Funderburk (US 6,093,172, issued
July 25, 2000) and Edwards (US 5,720,719, issued Feb. 24, 1998).

ANALYSIS
Appellant presents common arguments directed to independent claims
1 and 13, and presents no separate arguments for any of dependent claims 2–

2 The Examiner acknowledges that Van Antwerp is the parent application to
the application on appeal (denominated as a continuation-in-part of Van
Antwerp), but that, due to certain claim limitations being present in the
claims on appeal, and due to Van Antwerp and the present application
having different inventive entities, Van Antwerp qualifies as prior art against
the claims on appeal. Final Act. 4. Appellant does not contest the
Examiner’s position.
Appeal 2019-005768
Application 13/008,723

4
9, 11, 14–19, 21, and 22. We take independent claim 1 as representative,
and claims 2–9, 11, 13–19, 21, and 22 stand or fall with claim 1.
The Examiner finds that Van Antwerp discloses a combined sensor
and fluid infusion device, and a piercing device, meeting the claim
limitations directed to these aspects of the invention, but fails to disclose that
the insertion device, which is part of the piercing device, has a housing as
claimed. Final Act. 4–5. The Examiner relies on Funderburk as disclosing
an insertion device having all elements set forth in claim 1 relative to the
claimed housing. Id. at 5–6. The Examiner concludes that it would have
been obvious to modify Van Antwerp so as to include a housing of the type
disclosed in Funderburk. Id. at 6.
The Examiner additionally finds that Van Antwerp is silent regarding
whether the infusion cannula therein has a coating on its tip that has force
resistant properties. Final Act. 6. The Examiner cites to Edwards as
disclosing a cannula having coating 36 disposed on tip 18 of the cannula, the
coating having force-resistant properties sufficient to prevent the cannula
from bending during insertion into a patient. Id. at 6–7. The Examiner
concludes that it would have been obvious to provide a coating on the tip of
the Van Antwerp device, as modified by Funderburk, so as to prevent undue
bending or stress, and therefore plastic deformation, in the cannula, as well
as to prevent blood or other liquid from entering the cannula and causing
possible clotting. Id. at 7.
Appellant does not traverse the Examiner’s conclusion that it would
have been obvious to modify Van Antwerp in view of Funderburk. See
Appeal Br. 4–7; Reply Br. 4–5. Appellant argues only that the further
reliance on Edwards is in error, because the Examiner allegedly incorrectly
Appeal 2019-005768
Application 13/008,723

5
analyzes the Edwards disclosure, and because Edwards allegedly teaches
away from the Examiner’s proposed combination. Id.
As to the former contention, Appellant argues that the Examiner’s
position that Edwards teaches providing coating 36 on its entire cannula 14,
including both slotted and non-slotted portions, misinterprets Edwards.
Appeal Br. 4. Appellant argues that “Figure 2 in Edwards shows the entire
cannula having slotted portions.” Id. (emphases omitted). Appellant
maintains that “because the Examiner is mistaken in believing that Edwards
teaches the coating on non-slotted portions of a catheter, and not just on a
slotted catheter,” the rejection fails to articulate a reason to modify Van
Antwerp that is supported by rational underpinnings. Id. at 4–5 (emphasis
omitted).
Appellant appends an annotated version of Figure 2 of Edwards to its
Appeal Brief, to illustrate that the entire Edwards cannula is slotted, and we
reproduce the same below:

Depicted above is an Appellant-annotated version of Figure 2 of Edwards,
which is a “top plan view, partially cut away, of the catheter portion of the
device of FIG. 1.” Edwards, col. 4, ll. 5–6.
The Examiner correctly notes that, in the Appellant-annotated version
of Figure 2 of Edwards, the lead lines added by Appellant to point to
Appeal 2019-005768
Application 13/008,723

6
purported slots are actually pointing to portions of the cross-hatching used
for the coating material, and are not slots at all. Ans. 4–5. The Examiner
provides an excerpt from MPEP 608.02, illustrating the conventional graphic
drawing symbol for a “section of synthetic resin or plastic,” which are
alternating thin and thicker lines, as are used as well in Figure 2 of Edwards.
Id. at 5. Appellant’s lead lines point to the thicker lines that are part of the
graphic drawing symbol. In contrast, the Examiner accurately identifies the
position of the slots in Figure 2 as being the lines extending part way across
the section of “flexible tube 32” of Edwards, whereas tube portions 30 and
tip tube portion 34 do not have slots. Id. at 4.
Because Appellant misconstrues the disclosure of Edwards, and
because, contrary to Appellant’s argument, the Examiner correctly construes
the disclosure of Edwards, Appellant’s argument does not point to Examiner
error.
Appellant’s “teaching away” argument begins with an assertion that
Edwards “is directed to a completely different type of medical device as
compared to the claimed invention.” Appeal Br. 5. Appellant maintains
that, because the Edwards catheter is slotted, it is not designed to infuse
liquids such as insulin in the skin “because the liquid would leak out of the
slots.” Id. at 6. According to Appellant, the use in Edwards of a slotted
catheter teaches away from the claimed invention, because the ability to
deliver liquid infusate is compromised by potential leakage through the slots.
Id. As explained above, however, Edwards’ catheter is not slotted.
Appellant’s arguments not only fail to apprise us of a teaching away
from the proposed combination by Edwards, they do not respond to the
rejection as articulated by the Examiner. The principle involved in a
Appeal 2019-005768
Application 13/008,723

7
“teaching away” analysis is not whether a single reference alone “teaches
away” from an applicant’s invention, but rather whether a reference “teaches
away” from a particular proposed modification of references. See In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004); In re Gurley, 27 F.3d 551,
553 (Fed. Cir. 1994) (reference may be said to teach away when it criticizes,
discredits, or discourages a proposed modification).
The Examiner relies on Edwards not for the provision of a slotted
catheter, but rather for the coating disposed on the Edwards catheter.
Appellant does not explain how the proposed modification of Van Antwerp,
as modified by Funderburk, to additionally include a coating of the type
disclosed in Edwards, is taught away from by Edwards, or, for that matter,
by either Van Antwerp or Funderburk. As such, we are not apprised of
Examiner error by this line of argument.
Appellant’s Reply Brief continues the same theme, focusing on the
provision of slots along a portion of the Edwards catheter, and how such a
construction would not be suitable for an infusion cannula for infusing a
fluid to “an” infusion site. Reply Br. 4. Again, the infusion cannula in the
Examiner’s rejection is that of Van Antwerp, and not the Edwards catheter.
Appellant maintains that when Edwards is considered as a whole, a
person of ordinary skill in the art would be led in a direction divergent from
Appellant’s claimed invention, due to Edwards disclosing a catheter having
a slotted section. Reply Br. 5. Appellant’s point might have merit were the
rejection of claim 1 based on Edwards alone, or based on Edwards in
combination with other references not before us, with Edwards being relied
on for the construction of its catheter. However, the argument does not
account for the teachings of Van Antwerp and Funderburk, with Edwards
Appeal 2019-005768
Application 13/008,723

8
being relied on only for its teaching of providing a coating on a tip of a
catheter or other similar structures having similar tips, such as Van
Antwerp’s infusion cannula.
None of Appellant’s arguments point to Examiner error in rejecting
claim 1. The rejection of claim 1 over Van Antwerp, Funderburk, and
Edwards, is sustained. Claims 2–9, 11, 13–19, 21, and 22 fall with claim 1.

DECISION
The rejection of claim 1–9, 11, 13–19, 21, and 22 over Van Antwerp,
Funderburk, and Edwards, is affirmed.

CONCLUSION
In summary:
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1–9, 11,
13–19,
21, 22
103(a) Van Antwerp,
Funderburk,
Edwards
1–9, 11,
13–19, 21,
22

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED