Ex Parte Eder

Board of Patent Appeals and Interferences

Jul 16, 2012

10850995 (B.P.A.I. Jul. 16, 2012)

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.
10/850,995 05/20/2004 Joseph C. Eder 00-0270 (US02) 2105
41696 7590 07/17/2012
VISTA IP LAW GROUP LLP
12930 Saratoga Avenue
Suite D-2
Saratoga, CA 95070
EXAMINER
BUI, VY Q
ART UNIT PAPER NUMBER
3773
MAIL DATE DELIVERY MODE
07/17/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOSEPH C. EDER
____________

Appeal 2010-000182
Application 10/850,995
Technology Center 3700
____________

Before JOHN C. KERINS, CHARLES N. GREENHUT and
PATRICK R. SCANLON, Administrative Patent Judges.

KERINS, Administrative Patent Judge.
DECISION ON APPEAL

Appeal 2010-000182
Application 10/850,995

2
STATEMENT OF THE CASE
Joseph C. Eder (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s final rejection of claims 1, 3 and 6-13. Claims 2, 4
and 5 are canceled and claim 14 has been withdrawn. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

THE INVENTION
Appellant’s invention is directed to an implantable device and
detaching an implantable device from a delivery mechanism. Independent
claim 1, reproduced below, is illustrative:
1. An assembly comprising:

(a) an implantable device;

(b) a deployment mechanism; and

(c) a junction member linking the implantable device and
deployment mechanism, wherein the junction member
comprises a thermoplastic polymer and further wherein the
thermoplastic polymer is melted by application of direct
current, thereby detaching the implantable device from the
deployment mechanism.

THE REJECTIONS
The Examiner has rejected:
(i) claims 1, 6, 7 and 9-13 under 35 U.S.C. § 102(e) as being
anticipated by Gandhi (US 6,478,773 B1, issued Nov. 12, 2002);
(ii) claim 3 under 35 U.S.C. § 103(a) as being unpatentable over
Gandhi in view of Ogawa (US 6,159,206, issued Dec. 12, 2000); and
Appeal 2010-000182
Application 10/850,995

3
(iii) claim 8 under 35 U.S.C. § 103(a) as being unpatentable over
Gandhi in view of Frantzen (US 5,873,907, issued Feb. 23, 1999).

ANALYSIS
The sole issue contested by Appellant in this appeal is whether
Gandhi discloses the use of direct current in order to heat a junction member
to detach an implantable device from a deployment mechanism.1
Appellant maintains that Gandhi illustrates a two-wire system, and
that such depiction would be understood by persons of ordinary skill in the
art as representing an alternating current system, not a direct current system.
Appeal Br. 4-5. As alleged evidence of this, Appellant points to a drawing
figure extracted from the Gugliemi2 patent, which illustrates a direct current
circuit with one wire and an alternating circuit with two wires. Reply Br. 4-
5. Appellant further maintains that, because the heating element is an
electrical resistance heating element, it would be understood by persons of
ordinary skill in the art to employ alternating current. Appeal Br. 5.
Appellant maintains that this is also established by the evidence of record,
but points to nothing other than the Gandhi patent. Id.; Reply Br. 6.

1 We note that, in claim 1, the limitation setting forth “wherein the
thermoplastic polymer is melted by application of direct current, thereby
detaching the implantable device from the deployment mechanism” appears
to be nothing more than an intended use of the claimed structure, and thus
the issue as to whether Gandhi does or does not disclose the use of direct
current may not be of any import. Since the Examiner appears to have
treated this as a positive limitation, and since dependent claims 9 and 11
positively recite “a source of direct current” in any event, we will dispose of
the issue as to all claims.
2 US 5,919,187, issued Jul. 6, 1999.
Appeal 2010-000182
Application 10/850,995

4
Gandhi discloses that the power supply for its electrical resistance
heater may be a small battery. Gandhi, col. 5, l. 66-col. 6, l. 1. Appellant
correctly acknowledges that “batteries are an example of direct current.”
Appeal Br. 4. We do not find any disclosure of any other specific type of
power supply in Gandhi. As such, the preponderance of the evidence in this
case weighs against Appellant’s positions, and in favor of the Examiner’s
position that Gandhi does disclose the use of direct current to power the
electrical resistance heaters disclosed therein.
The rejection of claim 1, as well as that of claims 6, 7 and 9-13, as
anticipated by Gandhi is sustained.
Appellant has not presented any different arguments directed to the
rejections of claims 3 and 8 under §103. Accordingly, those rejections are
sustained.
CONCLUSION
Gandhi discloses the use of direct current to heat a junction member to
detach an implantable device from a deployment mechanism.
DECISION
The rejections of claims 1, 3 and 6-13 are 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)(1)(iv).

AFFIRMED
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