Ex Parte Smith et al

Patent Trial and Appeal Board

Jun 22, 2018

14640124 (P.T.A.B. Jun. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/640,124 03/06/2015 William A. Smith
26294 7590 06/26/2018
TAROLLI, SUNDHEIM, COVELL & TUMMINO L.L.P.
1300EASTNINTH STREET, SUITE 1700
CLEVELAND, OH 44114
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.
CCF-6723 US DIV 3 4231
EXAMINER
MORALES, JON ERIC C
ART UNIT PAPER NUMBER
3762
NOTIFICATION DATE DELIVERY MODE
06/26/2018 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):
rkline@tarolli.com
docketing@tarolli.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAM A. SMITH, MARKUS LORENZ,
DAVID DUDZINSKI, HSIANG MING CHEN,
PETER A. CHAPMAN JR., CHARLES J. PRISCO,
NICHOLAS G. VITALE, and STEPHAN WEBER
Appeal2017-005268
Application 14/640,124
Technology Center 3700
Before RICHARD M. LEBOVITZ, FRANCISCO C. PRATS, and
JEFFREY N. FREDMAN, Administrative Patent Judges.
FREDMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal 1 under 35 U.S.C. § 134 involving claims to a blood
pump. The Examiner rejected the claims as obvious and on the grounds of
obviousness-type double patenting. We have jurisdiction under 35 U.S.C.
§ 6(b ). We affirm-in-part.
Statement of the Case
Background
"[C]urrently there are no pulsatile or implantable V ADs [ventricular
assist devices] available for infants and small children in the United States,
1 Appellants identify the Real Parties in Interest as The Cleveland Clinic
Foundation and Foster-Miller, Inc. (see App. Br. 3).
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while at many centers ECMO [ extracorporeal membrane oxygenation]
remains their only available form of mechanical circulatory support" (Spec.
i-f 7). The "present invention provides an implantable adult or pediatric
ventricular assist device that may be used for short to long-term applications.
Through flexible implant approaches, the pump is adaptable to patient size
and to the special anatomic features that may be encountered when treating
congenital heart disease" (Spec. i-f 34).
The Claims
Claims 1-22, 28-50, and 56 are on appeal. 2 Independent claim 1 is
representative and reads as follows:
1. A blood pump comprising:
a stator assembly comprising a motor stator, a fluid inlet,
and a fluid outlet;
a rotor assembly comprising a motor rotor and an
impeller rotatable about an axis to move fluid from the inlet to
the outlet; and
a permanent magnet radial bearing for supporting the
rotor assembly for rotation about the axis, the radial bearing
compnsmg:
a permanent magnet radial bearing stator fixed to the
stator assembly and a permanent magnet radial bearing rotor
fixed to the rotor assembly, the radial bearing being configured
such that the radial bearing stator magnets and the radial
bearing rotor magnets are axially offset from each other when
the pump is at rest.
2 The Examiner withdrew rejections of claims 6, 7, and 46 (see Ans. 6) while
claims 5, 23-27 and 51-55 were objected to but not rejected (see Final Act.
8). The claim objections are not revieweable in this appeal because the
Board's jurisdiction extends review only to rejections.
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The Issues
A. The Examiner rejected claims 1-5, 8-12, 33, 34, 43--45, and 56 under
35 U.S.C. § 103(a) as obvious over Jarvik3 and Locke4 (Final Act. 2---6).
B. The Examiner rejected claims 1, 13-22, 35--42, and 47-50 on the
ground of nonstatutory obviousness-type double patenting as being
unpatentable over claims 1, 3, 12-22, 26, 31, 32, and 51-57 of Smith5 (Final
Act. 7-8).
A. 35 US.C. § 103(a) over Jarvik and Locke
The Examiner finds Jarvik teaches a blood pump "comprising a stator
assembly 42 with a fluid inlet 16 and a fluid outlet 20," "a rotor assembly 64
comprising an motor rotor 14 and a impeller 66 rotatable about an axis to
move fluid from the inlet 16 to the outlet 20," and a "radial bearing 52, 54
for supporting the rotor assembly for rotation about the axis, the radial
bearing comprising radial bearing stator fixed to the stator assembly and a
radial bearing rotor fixed to the rotor assembly" (Final Act. 2-3). The
Examiner acknowledges that Jarvik "does not show the radial bearings being
permanent magnets and the radial bearing being configured such that the
radial bearing stator magnets and the radial bearing rotor magnets are axially
offset from each other when the pump is at rest" (Id. at 3).
The Examiner finds Locke teaches "radial bearings being permanent
magnets ... and the radial bearing being configured such that the radial
bearing stator magnets and the radial bearing rotor magnets are axially offset
from each other when the pump is at rest" (Final Act. 3). The Examiner
3 Jarvik et al., US 5,851,174, issued Dec. 22, 1998.
4 Locke, US 2003/0193252 Al, published Oct. 16, 2003.
5 Smith et al., US 8,177,703 B2, issued May 15, 2012.
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finds that "magnetic bearings allows for a more compact blood pump, while
reducing manufacturing and operating costs" (Id.).
The Examiner finds it obvious "to modify the device of Jarvik by
adding permanent magnetic bearings as taught by Locke in order to facilitate
compact blood pump, while reducing manufacturing and operating costs and
provide proper pumping of the blood of a patient with minimal power
consumption" (Final Act. 3).
Appellants contend "the broadest reasonable interpretation of the
relevant language in claims 1, 43, and 56 is that 'permanent magnet radial
bearing' means a bearing constructed of permanent magnets" (App. Br. 14).
Appellants contend
The precise wording of claims 1, 43 and 56 cannot be ignored.
The language is a "permanent magnet radial bearing," not a
radial bearing comprising a permanent magnet or a radial
bearing including a permanent magnet. Nevertheless, if there is
any confusion or uncertainty as to what is meant by "permanent
magnet radial bearing," the specification makes crystal clear
what is meant. There is no room in the broadest reasonable
interpretation of "permanent magnet radial bearing" for an
electromagnet, period.
(App. Br. 20).
Appellants contend that in Locke, "radial and thrust loads on the rotor
are borne by a pair of axially spaced combinations 40. Each combination 40
comprises permanent magnet rings 42, 44 and an electrically energizable
coil 54" (App. Br. 18). Appellants contend Locke teaches "current in the
coils varies their magnetic flux, which interacts with the magnetic flux of the
permanent magnets and thereby varies the forces in order to achieve
stability" (Id.). Appellants contend "it is clear that, in Locke, the bearings
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[i.e., combinations 40] are unstable and therefore inoperable without the
coils" (App. Br. 19).
The issue with respect to obviousness is: Does a preponderance of the
evidence of record support the Examiner's interpretation of "a permanent
magnet radial bearing stator" and "a permanent magnet radial bearing rotor"
as broadly encompassing bearings that comprise both permanent magnets
and electromagnets as disclosed in Locke?
Findings of Fact
1. The Specification teaches
A permanent magnet radial bearing supports the rotor assembly
for rotation about the axis. The radial bearing includes a
permanent magnet radial bearing stator fixed to the stator
assembly and a permanent magnet radial bearing rotor fixed to
the rotor assembly. The radial bearing is configured such that
the radial bearing stator magnets and the radial bearing rotor
magnets are axially offset from each other when the pump is at
rest.
(Spec. ii 11 ).
2. The Specification teaches the "radial bearings 100 are
permanent magnet bearings that utilize permanent magnets, such as N dF eB
magnets. Each radial bearing 100 comprises a plurality of ring-shaped stator
magnets 106 and a plurality of ring-shaped rotor magnets 108" (Spec. ii 42).
3. The Specification teaches: "From the above description of the
invention, those skilled in the art will perceive improvements, changes and
modifications. Such improvements, changes and modifications within the
skill of the art are intended to be covered by the appended claims" (Spec.
ii 95).
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4. Locke teaches:
Radial and thrust loads on the rotor are borne by a pair of
axially spaced combinations 40 ... Each combination 40
comprises a pair of axially polarized side-by-side permanent
magnet rings 42 and 44 received in a circumferential groove 46
in the radially outer surface of the rotor 14 . ...
A similar pair of axially polarized side-by-side permanent
magnet rings 48 and 50 are received in a circumferential groove
52 in the radially inner surface of the housing 12 ...
Each combination 40 also includes an electrically energizable
coil 54 ... each coil 54 being wound as a toroid over the
respective pair of magnet rings 48 and 50 (i.e., the magnetic
rings 48 and 50 are disposed within the toroid defined by the
respective coil 54) to provide magnetic flux which interacts
with the magnetic flux of the rotor and stator magnet rings 42,
44, 48, and 50.
(Locke ii 20).
5. Locke teaches the "rotor magnets 42 and 44 are aligned in
repulsion with the stator magnets 48 and 50 respectively, i.e., like poles
thereof face each other across the gap 30 in repulsion" (Locke ii 22).
6. Locke teaches:
the rotor magnets 42 and 44 are offset axially outwardly from
the stator magnets 48 and 50 respectively thereby creating axial
forces in opposite directions . . . The current direction and
magnitude in the coils 54a and 54b will vary their magnetic
flux which in tum, due to interaction of the coil magnetic flux
with the magnetic flux between the stator and rotor magnets,
will vary the axial forces 55a and 55b respectively to achieve
stability at the zero force balance position of the rotor 14.
(Locke ii 23).
7. Locke teaches the "stator magnet rings are offset axially
outwardly of the rotor magnets respectively" (Locke ii 6).
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8. Locke teaches: "Mechanical stops (not shown) may desirably
be provided to limit rotor axial movement to, for example, about 0.005 inch
to prevent rotor damage in case of bearing break-down" (Locke i-f 24).
Principles of Law
The correct inquiry in giving a claim term its broadest
reasonable interpretation in light of the specification is not
whether the specification proscribes or precludes some broad
reading of the claim term adopted by the examiner. And it is
not simply an interpretation that is not inconsistent with the
specification. It is an interpretation that corresponds with what
and how the inventor describes his invention in the
specification.
In re Smith International, Inc., 871 F.3d 1375, 1382-83 (Fed. Cir. 2017).
Analysis
Claim 1
"In the parlance of patent law, the transition 'comprising' creates a
presumption that the recited elements are only a part of the device, that the
claim does not exclude additional, unrecited elements." Crystal
Semiconductor Corp. v. TriTech Microelectronics Int'!, Inc., 246 F.3d 1336,
1348 (Fed.Cir. 2001).
Rejected claim 1 relies upon the transitional phrase "comprising"
multiple times, including in the initial preamble with a "blood pump
comprising" three elements, "a stator assembly," "a rotor assembly," and "a
permanent magnet radial bearing" and in the description of the "permanent
magnet radial bearing" further "comprising a permanent magnet radial
bearing stator" and "a permanent magnet radial bearing rotor" that "are
axially offset from each other when the pump is at rest" (emphasis added).
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Therefore, claim 1 is reasonably interpreted as open, because neither the
Specification nor claim 1 exclude any additional, unrecited elements.
Appellants contend that, when claim 1 is read in light of the
Specification, "[ t ]here is no room in the broadest reasonable interpretation of
'permanent magnet radial bearing' for an electromagnet, period" (App. Br.
20).
While we agree that claim 1 requires a "permanent magnet radial
bearing" where the stator and rotor are composed of permanent magnets, we
find that even if we treat the recitation of "a permanent magnet radial
bearing" as being closed "consisting of' type language, the "reasonable
interpretation of the claims containing both of the terms 'comprising' and
'consists' is that the term 'consists' limits the [recited] language to the
subsequently recited [elements], but the earlier term 'comprising' means that
the claim can include [the recited elements plus other elements]." In re
Crish, 393 F.3d 1253, 1257 (Fed. Cir. 2004).
As applied here, Crish supports the position that while claim 1
requires a radial bearing with stator and rotor elements composed of
permanent magnets, claim 1 does not exclude additional radial bearing
elements including "an electrically energizable coil" as taught by Locke (FF
4).
When we read claim 1 in light of the Specification, we note that while
the Specification clearly teaches and exemplifies a radial bearing with stator
and rotor elements composed of permanent magnets, the Specification also
recognizes "those skilled in the art will perceive improvements, changes and
modifications. Such improvements, changes and modifications within the
skill of the art are intended to be covered by the appended claims" (FF 3).
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The interpretation of the claims to include other elements, including other
types of coils and magnets, is consistent with this disclosure.
We therefore conclude that the broadest reasonable interpretation of
claim 1, consistent with, and corresponding to, the disclosure in the
Specification, is open to the presence of additional radial bearing elements in
addition to the required "permanent magnet radial bearing" recited.
Appellants do not dispute that Jarvik teaches a blood pump with a
"stator assembly", "rotor assembly" and "radial bearing" but rather contend
that "Locke does not disclose permanent magnet radial bearings" (App. Br.
19).
We find this argument unpersuasive as it relates to the recitation in
Claim 1 for "a permanent magnet radial bearing stator" and a "permanent
magnet radial bearing rotor" because Locke specifically teaches "rotor and
stator magnet rings 42, 44, 48, and 50" (FF 5) where rotor magnets comprise
"permanent magnet rings 42 and 44" (FF 4) and stator magnets comprise
"permanent magnet rings 48 and 50" (FF 4). Thus, Locke teaches that both
the rotor magnets and the stator magnets are composed of permanent
magnets as required by claim 1 (FF 4). Locke further teaches the "stator
magnet rings are offset axially outwardly of the rotor magnets respectively"
(FF 7) as required by claim 1.
While Appellants are correct that Locke further includes the use of an
electromagnet to achieve stability at the zero force balance of the rotor (FF
6; cf App. Br. 18-19), Appellants do not identify any language in claim 1
that excludes the use of such an electromagnet.
We therefore agree with the Examiner's determination that the
combination of Jarvik and Locke renders Claim 1 obvious because the
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references teach all of the elements required by Claim 1. The Examiner
provides a substantive reason for modifying Jarvik with the magnetic
bearings of Locke, finding "[ u ]se of magnetic bearings allows for a more
compact blood pump, while reducing manufacturing and operating costs"
(Ans. 3).
Claims 2 and 44
Appellants contend
Dependent claims 2 and 44 recite that the offset of the radial
bearing stator magnets and the radial bearing rotor magnets is
configured to balance with hydrodynamic forces created by
pumping action of the impeller. Locke does not disclose this
structure. In Locke, the balance is not achieved by the offset
between radial bearing stator and rotor magnets. Instead, it is
the electrical control circuit that controls operation of the
electromagnetic bearings in order to achieve balance.
(App. Br. 22).
The Examiner responds
Locke also discloses the radial bearing stator magnets and the
radial bearing rotor magnets are axially offset 55A, 55B (Figs.
1 and 3, section 0023) from each other when the pump is at rest
and to balance the hydrodynamic forces created by the pumping
action, the offset stator and rotor magnets allows the device to
achieve angular and axial stability and balance.
(Ans. 7).
We find the Examiner's position is supported by a preponderance of
the evidence. Claims 2 and 44 simply require "the offset of the radial
bearing stator magnets and the radial bearing rotor magnets is configured to
balance with hydrodynamic forces." As the Examiner points out, Locke
teaches that "the rotor magnets 42 and 44 are offset axially outwardly from
the stator magnets 48 and 50 respectively thereby creating axial forces in
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opposite directions" with an electromagnet being used "to achieve stability
at the zero force balance position of the rotor" (FF 6). Thus, Locke teaches a
configuration in which the stator and rotor magnets are configured to
balance the hydrodynamic forces (FF 6). That Locke further relies upon an
electromagnet is not excluded from claims 2 and 44 for the reasons given
above.
Claims 3 and 45
Appellants contend:
Dependent claims 3 and 45 recite front and rear stop points
configured to limit an axial range of motion of the rotor
assembly relative to the stator assembly in order to maintain the
axial offset of the radial bearing stator magnets and the radial
bearing rotor magnets. Locke does not disclose any front stop
point.
(App. Br. 22).
The Examiner responds "Locke discloses rear stop points (section
0024) arranged to limit axial range of motion of the rotor assembly to have
the radial bearing stator magnets and the radial bearing rotor magnets are
axially offset (Section 0023). The stops limit axial movement of the rotor to
prevent rotor damage" (Ans. 7).
We find the Examiner has the better position because Locke teaches:
"Mechanical stops (not shown) may desirably be provided to limit rotor
axial movement" (FF 8). In the context of an obviousness analysis, Locke
suggests that the ordinary artisan would have recognized the use of
mechanical stops generally, whether located as front or rear stop points, is
desirable to "prevent rotor damage in case of bearing break-down" (FF 8).
Because the bearing could break down either in the front or in the rear, we
agree with the Examiner that the ordinary artisan would have had reason to
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prevent rotor damage at both locations and therefore include mechanical
stops at both locations (see Ans. 7).
Claim 4
Appellants contend:
Regarding claim 4, contrary to the position of the examiner,
Locke does not disclose at least one of front and rear stop
points comprising a magnetic axial bearing. In Locke, the end
points are clearly illustrated as being portions of the pump
housing. Paragraph [0024] in Locke explicitly states that the
housing is constructed of a non-magnetic material. In Locke,
the magnets do not act as stop points. They are positioned
radially, so it is impossible for them to perform this function.
(App. Br. 23).
The Examiner responds:
Concerning claims 4 and 45, Locke discloses an axial magnet
bearing working in combination with the stop points
(mechanical stops mentioned in last sentence of section 0024)
to limit the axial range of motion of the rotor assembly (section
0020, 0024). The stops limit axial movement of the rotor to
prevent rotor damage.
(Ans. 7-8).
We find that Appellants have the better position. The Examiner does
not identify any specific teaching in Locke, or any reason, suggesting that
the "front and rear stop points comprises a magnetic axial bearing" as recited
in claim 4. In the absence of any evidentiary support for the obviousness
rejection, we are constrained to reverse the rejection of claim 4.
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Claims 6, 7, and 46
The Examiner has withdrawn the rejection as to these claims, so we
need not address them (see Ans. 6).
Conclusion of Law
The evidence of record supports the Examiner's interpretation of "a
permanent magnet radial bearing stator" and "a permanent magnet radial
bearing rotor" as broadly encompassing bearings that comprise both
permanent magnets and electromagnets as disclosed in Locke.
A preponderance of the evidence of record does not support the
Examiner's position regarding claim 4.
B. Obviousness-Type Double Patenting
Appellants do not dispute this obviousness-type double patenting
rejection. We therefore summarily affirm the obviousness-type double
patenting rejection over U.S. Patent No. 8,177,703. See Manual of Patent
Examining Procedure§ 1205.02 ("If a ground of rejection stated by the
examiner is not addressed in the appellant's brief, that ground of rejection
will be summarily sustained by the Board.")
SUMMARY
In summary, we affirm the rejection of claims 1-3, 44, and 45 under
35 U.S.C. § 103(a) as obvious over Jarvik and Locke. Claims 5, 8-12, 33,
34, 43, and 56 fall with claims 1-3, 44, and 45. 37 C.F.R. § 41.37(c)(l).
We reverse the rejection of claim 4 under 35 U.S.C. § 103(a) as
obvious over Jarvik and Locke.
We affirm the rejection of claims 1, 13-22, 35--42, and 47-50 on the
ground of nonstatutory obviousness-type double patenting as being
unpatentable over claims 1, 3, 12-22, 26, 31, 32, and 51-57 of Smith.
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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-IN-PART
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