Ex Parte Foster et al

Patent Trial and Appeal Board

Nov 29, 2018

14822779 (P.T.A.B. Nov. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/822,779 08/10/2015 Arthur J. Foster
42074 7590 12/03/2018
Faegre Baker Daniels LLP
PATENT DOCKETING - INTELLECTUAL PROPERTY (32469)
2200 WELLS FARGO CENTER
90 SOUTH SEVENTH STREET
MINNEAPOLIS, MN 55402-3901
UNITED ST A TES OF AMERICA
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.
432469 001289 1357
EXAMINER
TEJANI, ANKIT D
ART UNIT PAPER NUMBER
3792
NOTIFICATION DATE DELIVERY MODE
12/03/2018 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):
PatentDocketing@FaegreBD.com
e-OfficeActionBSC@FaegreBD.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ARTHUR J. FOSTER, MATHEW GILK, KEITH R. MAILE,
JOSEPH T. DELANEY, MICHAEL EPPIHIMER, and GARY T. SEIM
Appeal2017-010765
Application 14/822,779
Technology Center 3700
Before JEFFREY N. FREDMAN, DEBORAH KATZ, and JOHN G. NEW,
Administrative Patent Judges.
KATZ, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2017-010765
Application 14/822,779
Appellants 1 seek our review, under 35 U.S.C. § I34(a), of the
Examiner's decision to reject claims 5-18 and 20. (Appeal Brief filed April
25, 2017 ("App. Br.") 3 .) Claims 1--4 and 21 were also finally rejected, but
were not appealed. (See App. Br. 3.) Appellants canceled them in a
Response after Final Action filed January 30, 2017, though the amendment
was not entered by the Examiner. (See App. Br. 3.)
We have jurisdiction under 35 U.S.C. § 6(b ). We affirm.
The Examiner rejects the claims under 35 U.S.C. § 103 as follows
(Final Office Action mailed November 30, 2016 ("Final Act.")):
Claims References Final Office Action
Citation
5-9, 12, and 14--16 Parker2 and Trieu3 9-13
10 and 11 Parker, Trieu, and 8-9
van Antwerp4
13 Parker, Trieu and 13-14
Meredith5
17, 18, and 20 Parker and 14--16
van Antwerp
Appellants' Specification provides an implantable medical device
coated with a wetting agent to reduce electrical impedance and provide
microbial resistance. (See Specification ("Spec.") ,r 62.) The device
includes a pulse generating portion enclosed in a housing and an active
1 Appellants report that the real party in interest is Cardiac Pacemakers, Inc.
(App. Br. 3)
2 Parker et al., US 2006/0004432 Al; published January 5, 2006
3 Trieu, US 2007 /0250045 Al; published October 25, 2007
4 Van Antwerp et al., US 2001/0008931 Al; published July 19, 2001
5 Meredith, US 2014/0172028 Al; published June 19, 2014
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Application 14/822,779
element, such as a lead. (See id. ,r 54.) The wetting agent can include a
hydrophilic polymer, such as polyethylene glycol ("PEG"). (See id. ,r 67.)
The Specification also provides a method for applying a coating including a
wetting agent to a medical device. (See id. ,r 83.)
Appellants present two independent claims: claims 5 and 17.
Although Appellants present separate arguments against the rejections of
these independent claims, they do not present separate arguments against the
rejections of the claims that depend on them. We focus on claims 5 and 17
in our analysis below. See 37 C.F.R. § 4I.37(c)(l)(iv).
Claim 5
Appellants' claim 5 recites:
An implantable medical device comprising:
a pulse generating portion enclosed within a housing;
an active element, wherein the pulse generating portion is
electrically coupled to the active element; and
a coating comprising a wetting agent, the coating
disposed over at least a portion of the housing,
wherein electrical impedance of the implantable medical
device is reduced compared to the medical device without the
coating.
(App. Br. 15-16, Claims App.)
The Examiner finds that Parker teaches an implantable medical device
including a pulse generating portion enclosed within a housing, an active
element electrically coupled to the pulse generating portion, and a coating
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Application 14/822,779
including a wetting agent, wherein the active element is coated to reduce the
electrical impedance of the medical device. (See Final Act. 10, citing Parker
,r,r 5, 25, 26, 27, 36, and 45.) The Examiner finds that Parker does not teach
coating the housing with the wetting agent. (Id.)
The Examiner finds that Trieu teaches an implantable medical device
with a housing made of PEG. (See Final Act. 10-11, citing Trieu ,r,r 79 and
80.) The Examiner determines that it would have been obvious for one of
ordinary skill in the art to coat the housing of Parker with a wetting agent in
view of the PEG housing of Trieu, in order to partially inhibit adhesion of
organic molecules onto the surface of the device. (See Final Act. 11; See
Answer mailed June 21, 2017 ("Ans.") 16, citing Parker ,r,r 36 and 37.)
Appellants argue that Trieu does not provide a particular reason to
choose PEG for the housing. (App. Br. 9.) Parker teaches coating only
electrodes with PEG to prevent an increase in electrical impedance.
Appellants argue that this advantage would not apply to the housing. (See
id., citing Parker ,r,r 5, 22, 36-37, and 46.) Appellants argue that the
Examiner does not explain how the advantageous properties of the PEG
coating disclosed in Parker and applicable only to electrodes, would provide
an advantage to an entire implantable unit. Therefore, Appellants argue that
there is no reason to combine Parker and Trieu to obtain a housing coated
with a wetting agent. (App. Br. 9--10.)
We are not persuaded by Appellants' arguments. As shown by the
Examiner, Parker teaches several advantages of the PEG coating including:
1) "partially inhibiting adhesion of organic molecules," 2) "minimizing
protein a[d]sorption," and 3) "preventing increases in electrode impedance."
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(Ans. 18, citing Parker ,r,r 5, 22, 36, and 46.) The advantages of inhibiting
adhesion and minimizing protein adsorption are directly applicable to
"tissue-stimulating devices that are not adapted to deliver inhibitory
stimulation," such as the housings of Parker and Trieu. (See Ans. 18, citing
Parker ,r 36.) Contrary to Appellants' argument, the Examiner is not
required to provide an explicit motivation in Parker or Trieu to support the
rejection. An obviousness analysis "need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ." KSR Int'! Co. v. Teleflex Inc., 550
U.S. 398,418 (2007). Here, an implicit motivation to combine exists
because reducing adhesion improves device power consumption and
efficiency (see Parker ,r 5) and therefore "the combination of references
results in a product or process that is more desirable, for example because it
is ... more durable, or more efficient." DyStar Textilfarben GmbH & Co.
Deutsch/and KG v. CH Patrick Co., 464 F.3d 1356, 1367 (Fed. Cir. 2006).
Because Parker provides several advantages to use PEG as a coating, and
Trieu discloses a housing of PEG, we are persuaded that there would have
been sufficient reason for a person of ordinary skill to combine Parker and
Trieu as proposed by the Examiner.
Appellants further argue that applying the coating to the housing of
Parker would not reduce the electrical impedance of the housing, and there
can be no reasonable expectation of success in combining the references.
(See App. Br. 10.) Appellants do not direct us to evidence to support their
argument that one of ordinary skill in the art would have considered
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applying a coating to a housing to be so different from applying a coating to
an implantable device that it would not have been expected to reduce
electrical impedance in the latter. The Examiner finds that the advantageous
properties of the coating, including reducing electrical impedance, are
"intrinsic advantages of the coating itself and are not reliant on the material
being coated." (See Ans. 18 and 21.) In the absence of persuasive evidence
to the contrary, we are not persuaded by Appellants' argument. See In re
Best, 562 F.2d 1252, 1255 (CCPA 1977) (holding that in an obviousness
rejection, "[ w ]here ... the claimed and prior art products are identical or
substantially identical ... the PTO can require an applicant to prove that the
prior art products do not necessarily or inherently possess the characteristics
of his claimed product. ... "). Moreover, even when the rejection is based
"on 'prima facie obviousness' under 35 U.S.C. § 103 ... the burden of proof
is the same, and its fairness is evidenced by the PTO' s inability to
manufacture products or to obtain and compare prior art products." Id.
Appellants do not persuade us that the Examiner erred in rejecting
claim 5 as being obvious. Appellants also fail to persuade us that the
Examiner erred in rejecting claims 6-9, 12, and 14--16, which depend from
claim 5, because they raise no other arguments against the rejections of these
claims.
Similarly, Appellants do not raise separate arguments against the
rejection of claims 10, 11, and 13, which were rejected over Parker,
Trieu, and either van Antwerp or Meredith. For the reasons explained
above, we are not persuaded that the Examiner erred in these rejections.
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Claim 17
Appellants' claim 17 recites:
A method of manufacturing an implantable medical
device including a pulse generator enclosed within a housing,
the method comprising:
applying a coating solution comprising a wetting agent to
an external surface of the housing; and
drying the applied coating solution;
wherein electrical impedance of the medical device is
reduced compared to the medical device without the coating.
(App. Br. 17, Claims App'x.)
The Examiner finds that van Antwerp teaches a method of
manufacturing an implantable medical device by applying a coating solution
of a wetting agent to an external surface and drying the coating solution,
wherein the coating reduces the electrical impedance of the medical device.
(Final Act. 14--15, citing van Antwerp ,r 23.) The Examiner finds that van
Antwerp does not teach a pulse generator enclosed within a housing coated
with the wetting agent. (Id. 15.)
The Examiner finds that Parker teaches an implantable medical device
including a pulse generator enclosed in a housing, and a wetting agent
applied as a coating to the device to reduce electrical impedance. (Id., citing
Parker ,r 27.) The Examiner determines that it would have been obvious to
one of ordinary skill in the art to combine the coating of van Antwerp with
the pulse generating device of Parker, in order to reduce the electrical
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impedance of the implantable medical device. (See Final Act. 15; Ans. 20-
21.)
Appellants argue that one skilled in the art would not have had a
motivation to incorporate a pulse generator within a housing in the biosensor
of van Antwerp because the potentiostat of van Antwerp is distinguishable
from a pulse generator. (See App. Br. 11-12.) Appellants further argue that
the Examiner provides no reason to apply the coating of van Antwerp to the
housing of Parker. (Id. 12.)
We are not persuaded by these arguments because "[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; nor is it that
the claimed invention must be expressly suggested in any one or all of the
references." In re Keller, 642 F.2d 413,425 (CCPA 1981). Rather, the test
for obviousness is whether the combined teachings of the references would
have suggested the claimed subject matter to those of ordinary skill in the
art. See id. The issue presented by the Examiner's rejection is whether it
would have been obvious to use the method for coating with a wetting agent
taught in van Antwerp, in order to reduce electrical impedance, with the
implantable device of Parker.
Furthermore, contrary to Appellants' argument, we agree with the
Examiner that one of ordinary skill in the art would have been motivated to
combine the elements of the prior art, because van Antwerp teaches that the
reduced electrode impedance is the result of the coating. (See Ans. 21; see
van Antwerp ,r 23.) Appellants do not direct us to evidence that the reduced
electrode impedance is due to the specific medical device. "[I]f a technique
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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." KSR, 550 U.S. at 417 (2007).
Finally, Appellants argue that applying the coating to the housing of
Parker would not reduce the electrical impedance of the housing, and
therefore, there can be no reasonable expectation of success in combining
the references. (App. Br. 12.) As discussed above, Appellants do not direct
us to evidence showing that applying the coating to the housing of Parker
would not reduce the electrical impedance of a device as claimed. In the
absence of evidence, Appellants' argument does not persuade us that the
Examiner erred.
Appellants do not persuade us that the Examiner erred in rejecting
claim 17 or any of claims 18 or 20 as being obvious over van Antwerp and
Parker.
Conclusion
Upon consideration of the record and the reasons given, the rejections
of claims 5-18 and 20 are sustained.
Therefore, we affirm the decision of the Examiner.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.
AFFIRMED
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