Ex Parte Hyde et alDownload PDFPatent Trial and Appeal BoardJul 15, 201612315631 (P.T.A.B. Jul. 15, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/315,631 12/04/2008 138951 7590 07119/2016 Advent, LLP/INTELLECTUAL VENTURES 3930 South 147th Suite 101 Omaha, NE 68144 FIRST NAMED INVENTOR Roderick A. Hyde 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. 0705-004-002A-OOOOOO 1016 CONFIRMATION NO. 8466 EXAMINER CUEVAS, PEDRO J ART UNIT PAPER NUMBER 2831 NOTIFICATION DATE DELIVERY MODE 07/19/2016 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): uspto@adventip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RODERICK A. HYDE, MURIEL Y. ISHIKAWA, ERIC C. LEUTHARDT, MICHAEL A. SMITH, LOWELL L. WOOD JR., and VICTORIA Y.H. WOOD Appeal2014-002420 Application 12/315,631 1 Technology Center 2800 Before BRADLEY R. GARRIS, JEFFREY T. SMITH, and JEFFREY W. ABRAHAM, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134 from the Examiner's final decision rejecting claims 1--4, 6-9, 12, 17-28, 31, 32 and 37. We have jurisdiction under 35 U.S.C. § 6. The '631 Application describes an intraluminal power generation device. Spec. 4. Independent claim 1 is representative of the subject matter on appeal and is reproduced below: 1 According to Appellants, the real party in interest is Searete LLC. App. Br. 4. Appeal2014-002420 Application 12/315,631 1. A method comprising: receiving an intraluminal pressure change with a deformable pressure change receiving structure that is operably coupled to an intraluminal piezoelectric generator, said intraluminal pressure change associated with an intraluminal fluid, said deformable pressure change receiving structure in physical contact with said intraluminal fluid; and converting the intraluminal pressure change into electric current energy with the intraluminal piezoelectric generator. App. Br. 33 (Claims App.). REJECTIONS On appeal, the Examiner maintains the following rejections: 1. Claims 1-3, 6-9, 12, 17, 25-28, 31, 32 and 37 are rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Lehr (US 3,906,960, issued Sept. 23, 1975) and Snaper (US 5,431,694, issued July 11, 1995). Final Act. 3-7. 2. Claims 4, 18, 23 and 24 are rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Lehr, Snaper, and Estevez (US 6,822,343 B2, issued Nov. 23, 2004). Final Act. 7-8. 3. Claims 19-22 are rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Lehr, Snaper and Dahl (US 4,140,132, issued Feb. 20, 1979). Final Act. 8-9. OPINION Rejection 1. The Examiner rejected claims 1-3, 6-9, 12, 17, 25-28, 31, 32 and 37 under 35 U.S.C. § 103(a) as unpatentable over the combination of Lehr and 2 Appeal2014-002420 Application 12/315,631 Snaper. Final Act. 3-7. Appellants' arguments for reversal of this rejection are principally based on the discussion of independent claim 1. Appellants have also addressed several dependent claims. Claims not specifically argued will stand or fall with their respective parent claims. Separately argued claims will be addressed. Claim 12 We affirm the rejection of claim 1. Appellants argue the Examiner has not established that Lehr discloses each and every element recited in independent claim 1. Appellants argue the Examiner has failed to "provide Appellant[ s] with the benefit of knowing which one of those myriad features or elements the Examiner considered to disclose or suggest a particular claimed feature." (App. Br. 14). Contrary to Appellants' arguments, the Examiner has not identified a myriad of elements. The Examiner found that Lehr describes a deformable intraluminal pressure change-receiving structure and a generator. (Ans. 2-3; Final Act. 4; Lehr col. 1, 11. 39--44, Figs. 1-2). Thus, the Examiner has identified the elements considered to be equivalent to a particular claim feature or recitation. Appellants have not explained why Lehr' s description of the figures is insufficient to identify the elements relied upon by the Examiner. As explained in In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011): [A ]ll that is required of the office to meet its prima facie burden of production is to set forth the statutory basis of the rejection and the reference or references relied upon in a 2 Appellants rely on the same arguments presented for independent claim 1 when addressing dependent claims 2--4, 6-9, 12, and 17-25. (App. Br. 17- 18). 3 Appeal2014-002420 Application 12/315,631 sufficiently articulate and informative manner as to meet the notice requirement of [35 U.S.C.] § 132. Appellants also argue the Examiner failed to provide objectively- verifiable evidence or a detailed explanation of how the intraluminal piezoelectric generator disclosed by Snaper would be incorporated on the medical energy converter disclosed by Lehr or how such incorporation would result in a generator of reduced size. (App. Br. 15-16). Appellants' argument is premised on bodily incorporation and does not focus on the Examiner's reasons for combining the cited art. Final Act. 7. It is well established that the obviousness inquiry does not ask "whether the references could be physically combined but whether the claimed inventions are rendered obvious by the teachings of the prior art as a whole." In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en bane); see also In re Keller, 642 F.2d 413, 425 (CCPA 1981) (stating "[t]he test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference"). Appellants have not adequately explain why one skilled in the art would not have been capable of adapting an intraluminal piezoelectric generator for incorporation into the device of Lehr. See In re Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985) (skill is presumed on the part of one of ordinary skill in the art); In re Bozek, 416 F.2d 1385, 1390 (CCPA 1969). Claims 8, 9 and 28 We reverse the rejections of claims 8, 9, and 28. Claim 8 requires "a resilient polymeric structure operably coupled to the intraluminal piezoelectric generator"; claim 9 requires "intraluminal pressure change with an elastomeric pressure change receiving structure operably coupled to the 4 Appeal2014-002420 Application 12/315,631 intraluminal piezoelectric generator,"; and claim 28 requires "the deformable pressure change receiving structure having a resilient polymeric membrane." The Examiner has failed to provide evidence that establishes Lehr' s intraluminal pressure change-receiving structure (i.e., Lehr's membrane 2) is either polymeric or elastomeric as required by claims 8, 9 and 28 (cf Lehr col. 1, 11. 46-4 7 ("membrane 2 is made of thin, body compatible steel sheet like Elgiloy")). Claim 25 We affirm the rejection of claim 25. Appellants argue the Examiner has not properly provided an explanation or evidence of where Lehr or Snaper discloses or suggests the recitations of claim 25. In support of this argument, Appellants argue the Examiner has not provided objectively- verifiable evidence that Lehr or Snaper discloses or suggests converting the intraluminal pressure change into electric current energy with the intraluminal piezoelectric generator moveable relative to a lumen wall. (App. Br. 20-21 ). In this case, the Examiner has found that the combination of Lehr and Snaper describes a deformable intraluminal pressure change-receiving structure and a generator. (Ans. 2-3; Final Act. 5). Lehr discloses the device can be located in a vessel or heart ventricle. Thus, the Examiner has reasonably determined that the device of Lehr and Snaper would convert intraluminal pressure change into electric current energy with the intraluminal piezoelectric generator moveable relative to a lumen wall. Appellants have failed to provide a technical explanation explaining why the device which is located within a vessel or heart ventricle fails to meet the requirements of the claimed invention. 5 Appeal2014-002420 Application 12/315,631 Claims 31, 32, and 37 Appellants present the arguments for rejections 31 and 37 together and Appellants argue claim 32 is patentable for the same reasons as claim 31. (App. Br. 23-25). Appellants have not provided substantive arguments for claims 3 1 and 3 7 that differ from those presented for independent claim 1. (Id.). As stated above, we do not find Appellants' arguments regarding the patentability of claim 1 persuasive. Consequently, we sustain the rejection of claims 31, 32, and 37 for the reasons presented by the Examiner and stated above. Rejection 2. The Examiner rejected claims 4, 18, 23, and 24 under 35 U.S.C. § 103(a) as unpatentable over the combination of Lehr, Snaper and Estevez. Appellants' arguments for reversal of this rejection are principally based on the discussion of claim 4. Appellants have not addressed claims 18, 23, and 24. For this rejection claims 18, 23, and 24 will stand or fall with claim 4. Claim 4 Appellants argue Estevez uses fluid flow through the generator to generate electricity, while the device of both Lehr and Snaper do not utilize fluid flowing through their device in order to generate electricity. (App. Br. 28-29). Thus, Appellants argue the Examiner failed to establish that it would have been obvious to combine or modify Lehr, Snaper, and Estevez to achieve the recitations of claim 4. (App. Br. 29). 6 Appeal2014-002420 Application 12/315,631 Appellants' argument is premised on bodily incorporation and does not focus on the Examiner's reasons for combining the cited art. (Final Act. 7-8). As stated above, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference. Appellants have not adequately explain why one skilled in the art would not have been capable of adapting a generator that utilizes intraluminal pressure change associated with a respiratory pressure change to generate electricity, such as described in Estevez, for use as suggested by the Examiner. Rejection 3. The Examiner rejected claims 19-22 under 35 U.S.C. § 103(a) as unpatentable over the combination of Lehr, Snaper and Dahl. Appellants' arguments for reversal of this rejection are principally based on the discussion of independent claim 1. Appellants have not separately addressed claims 19-22. As stated above, we do not find Appellants' arguments regarding the patentability of claim 1 persuasive. Consequently we sustain the rejection for the reasons presented by the Examiner and stated above. (App. Br. 29- 30). ORDER The Examiner's prior art rejections are affirmed-in-part. TIME PERIOD No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l). 7 Appeal2014-002420 Application 12/315,631 AFFIRMED-IN-PART 8 Copy with citationCopy as parenthetical citation