Ex Parte Johnson

Board of Patent Appeals and Interferences

Jun 29, 2012

11363568 (B.P.A.I. Jun. 29, 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.
11/363,568 02/27/2006 Johnnie M. Johnson JOHNSON 2008-01 6492
22823 7590 06/29/2012
STEPHEN A GRATTON
THE LAW OFFICE OF STEVE GRATTON
2764 SOUTH BRAUN WAY
LAKEWOOD, CO 80228
EXAMINER
SHUMATE, VICTORIA PEARL
ART UNIT PAPER NUMBER
3763
MAIL DATE DELIVERY MODE
06/29/2012 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 JOHNNIE M. JOHNSON
____________

Appeal 2010-004994
Application 11/363,568
Technology Center 3700
____________

Before STEFAN STAICOVICI, GAY ANN SPAHN, and
MICHAEL C. ASTORINO, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1-18. We have jurisdiction over the appeal under
35 U.S.C. § 6(b).
We AFFIRM.
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REJECTIONS
Claims 1 and 2 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Nyhart (US 2002/0065493 A1, published May 30, 2002) and Davis
(US 6,018,676, issued Jan. 25, 2000).
Claims 3-8, 11, and 12 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Nyhart, Davis, and Elton (US 5,776,611, issued Jul. 7,
1998).
Claim 9 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Nyhart, Davis, Elton, and Creasy (US 4,987,182, issued Jan. 22, 1991).
Claims 10, 13-16, and 18 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Nyhart, Davis, Elton, and Sharp (US 2002/0165504 A1,
published Nov. 7, 2002).
Claim 17 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Nyhart, Davis, Elton, Sharp, and Creasy.

CLAIMED SUBJECT MATTER
Claims 1, 4, and 13 are the independent claims on appeal. Claim 1 is
illustrative of the subject matter on appeal. Claim 1, with emphasis added,
recites:
1. A cannula for harvesting or injecting cells
from a patient comprising:
a lumen configured to contain a plurality of the
cells having a polished inner surface; and
a first hydrophilic coating bonded to the
polished inner surface of the lumen,
the polished inner surface and the first
hydrophilic coating forming a microscopically
smooth surface without rough edges and artifacts
configured to prevent adherence of the cells in the
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lumen to the lumen during the harvesting of the
cells into the lumen or the injecting of the cells
from the lumen.

OPINION
The rejection of claims 1 and 2 as unpatentable over Nyhart and Davis
The Appellant argues claims 1 and 2 as a group. See Br. 11-13. We
select independent claim 1 as the representative claim and claim 2 stands or
falls with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
The Examiner determines Nyhart discloses a cannula, but not that the
inner surface is polished. See Ans. 3. The Examiner finds that Davis
“discloses a needle with a polished surface” at column 4, lines 18-20 (Ans.
3), which describes “[i]n the present invention, the outer surface of the
cannula 14 is smooth and polished to reduce tissue trauma and patient
discomfort . . . .” The Examiner does not find that Davis discloses the inner
surface being polished. See Ans. 3, 8; see also Br. 11. The Examiner
concludes that
At the time of the invention, it would have
been obvious to one of ordinary skill in the art,
having the teachings of Nyhart Jr. and Davis et al
before him or her to modify the cannula lumen of
Nyhart Jr. to include the polishing of Davis et al
because polishing the surface reduces tissue
trauma (Davis et al, Col. 4, lines 18-20) and
therefore would reduce damage to individual cells
as well. Therefore, it would have been obvious to
combine Nyhart Jr. with [the teachings of] Davis et
al to obtain the slick and smooth surface in the
instant claim in an effort to minimize the effects of
the needle not only on the tissue it punctures, but
the tissue it extracts.”
Ans. 3 (emphasis added).
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The Appellant contends that “[t]he combination of Nyhart, Jr. and
Davis et al. thus does not disclose or suggest the polished inner surface
limitation of claim 1.” Br. 11. More specifically, the Appellant contends
that a “polished inner surface performs the trauma reducing function in a
substantially different way and provides a substantially different result (i.e.,
trauma to the cells in the lumen rather than during insertion as in the prior art
is reduced).” Br. 12. The Appellant asserts support for this position by
citing to MPEP § 2183, entitled “Making a Prima Facie Case of
Equivalence,” and Kemco Sales, Inc. v. Control Papers Co., 208 F.3d 1352
(Fed. Cir. 2000). This contention along with these citations, however, is
directed to making a prima facie case of equivalence. Since the Examiner
does not make a finding that a polished outer surface of a cannula is
equivalent to a polished inner surface of a lumen, the Appellant’s contention
is of no moment. The Examiner determines that “ . . . one having ordinary
skill in the art of extracting cells would recognize that, in order to reduce
trauma to cells within the lumen, techniques used to protect cells exterior of
the needle would be applicable to cells on the interior of the needle.” Ans.
8. Further, the Appellant contends that the Examiner’s determination “is not
from the viewpoint of one skilled in the art at the time of the invention,”
because “[t]here is no suggestion in the cited art, or in the prior art in
general, of minimizing trauma to cells within the cannula (needle) using a
polished coated inner surface.” Br. 13; see also Br. 12. However, a
conclusion of obviousness must be supported by explicit findings and
analysis establishing an apparent reason to combine the known elements in
the manner required in the claim at issue. KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007). “[T]he analysis need not seek out precise teachings
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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.” Id. In this case, the Examiner relies
on Davis’ general teaching that polished surfaces of a cannula reduce tissue
trauma, which one of ordinary skill in the art at the time of the invention
would extend to all surfaces of a cannula that interacts with tissue including
an inner surface of a lumen of a cannula. See Ans. 3, 8. The Appellant has
not presented cogent argument to the contrary. Thus, the Examiner has
articulated adequate reasoning with rational underpinning as to why one of
ordinary skill in the art would have combined the teachings of these
references to result in the claimed subject matter. See In re Kahn, 441 F.3d
977, 988 (Fed. Cir. 2006)(cited with approval in KSR Int’l Co. v. Teleflex,
Inc., 550 U.S. 398, 418 (2007)).
The Appellant also contends that the Examiner’s determination that
the inside surface of Nyhart’s lumen 60 is microscopically smooth (Ans. 3)
is incorrect. Br. 11. The Appellant asserts that “[a]s shown in Figures 5A
and 5B of Nyhart, Jr., the inside surface of the lumen 60 . . . is rough to
provide a larger surface area for releasing the therapeutic agent 65.” Br. 11
(emphasis added). Based on the assertion that the surface of lumen 60 is
rough the Appellant further contends that cells in the lumen would “stick
and compress against one another causing cell damage”, which is the
“opposite function of the presently claimed cannula wherein reduced
adherence and minimal cell trauma is the goal.” Br. 11. As such, the
Appellant’s contention hinges on the assertion that the lumen 60 is rough.
Despite the fact that Nyhart’s Figures 5A and 5B depict the cross-section of
lumen 60 as formed by the hydrogel polymer surface 55 with bumps and
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grooves, the Appellant’s assertion that the inside surface of lumen 60 is
rough is not well supported. To the contrary, the Examiner finds that Nyhart
discloses in paragraph [0053] that the hydrogel polymer matrix 55, which is
deposed and affixed to the inner surface 52 of the catheter sheath 50, obtains
a “smooth coating” after drying. See Ans. 7-8. As such, Nyhart’s smooth
coating, bolstered by the modification of Nyhart’s lumen having a polished
inner surface as discussed above, provides adequate evidence to support the
Examiner’s determination that Nyhart’s lumen 60 is microscopically
smooth. Further, the Appellant does not present an argument that Nyhart’s
smooth coating as disclosed in paragraph [0053] is not microscopically
smooth.
Thus, the rejection of claims 1 and 2 as unpatentable over Nyhart and
Davis is sustained.

The rejection of claims 3-8, 11, and 12 as unpatentable over Nyhart, Davis,
and Elton, and the rejection of claim 9 as unpatentable over Nyhart, Davis,
Elton, and Creasy
The Appellant argues claims 3-8, 11, and 12 as a group. See Br. 13-
14. We select independent claim 4 as the representative claim and claims 3,
5-8, 11, and 12 stand or fall with claim 4. See 37 C.F.R. § 41.37(c)(1)(vii)
(2011).
The Appellant recites a portion of claim 4 and contends that the
rejection of claim 4 is improper because “[t]he combination of Nyhart, Jr.,
Davis et al. and Elton et al. taken as a whole does not disclose or suggest the
claimed cannula taken as a whole.” Br. 13-14. Our reviewing court has
held that the Board reasonably interpreted Rule 41.37 to require more
substantive arguments in an appeal brief than a mere recitation of the claim
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elements and a naked assertion that the corresponding elements were not
found in the prior art. See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir.
2011). The Appellant further contends that, “[t]he claimed cannula includes
a lumen which is polished and coated on both inner and outer surfaces.” Br.
13. For the reasons discussed above, the Appellant’s contention is not
persuasive. Thus, the rejection of claims 3-8, 11, and 12 is sustained.
Turning to the claim 9, the Appellant does not offer separate
arguments regarding the obviousness rejection of claim 9, but merely rely on
its dependency from independent claim 4. Br. 14. As we sustain the
rejection of claim 4, we also sustain the rejection of claim 9.

The rejections of claims 10, 13-16, and 18 as unpatentable over Nyhart,
Davis, Elton, and Sharp, and the rejection of claim 17 as unpatentable over
Nyhart, Davis, Elton, Sharp, and Creasy
The Appellant argues claims 10, 13-16, and 18 as a group. See Br.
14-15. We select independent claim 13 as the representative claim and
claims 10, 14-16, and 18 stand or fall with claim 13. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2011).
The Appellant recites a portion of claim 13 and contends that the
rejection of claim 13 is improper, because “the rejected claims taken as a
whole are unobvious over the cited art taken as a whole.” Br. 14. As
discussed above, more substantive arguments in the appeal brief are
required. See Lovin at 1357. The Appellant further contends “[a]s
previously argued, the structure and function of the polished inner surface
and the first hydrophilic coating in preventing the adherence of cells in the
lumen to the lumen is not disclosed or suggested by the combination of
Nyhart, Jr. and Davis et al.” Br. 14-15. For the reasons discussed above, the
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Appellant’s contention is not persuasive. The Appellant also contends
“[s]imilarly, the structure and function of the ‘the second hydrophilic coating
and the polished outer surface’ is submitted to further distinguish the
claimed apparatus, as the combination of elements taken as a whole is not
disclosed or suggested by the prior art taken as a whole.” Br. 15. However,
the Examiner finds Davis teaches a polished outer surface, supra, and Elton
teaches an outer (second) hydrophilic coating (Ans. 4). Since the Appellant
does not provide a specific contention explaining error in the Examiner’s
findings, references an unpersuasive argument via the term “similarly,” and
does not cogently argue how the Examiner’s conclusion of obviousness is in
error (see Br. 15), the Appellant’s contentions are not persuasive. Thus, the
rejection of claims 10, 13-16, and 18 is sustained.
Turning to the claim 17, the Appellant does not offer separate
arguments regarding the obviousness rejection of claim 17, but merely rely
on its dependency from independent claim 13. Br. 15. As we sustain the
rejection of claim 13, we also sustain the rejection of claim 17.

DECISION
We AFFIRM the rejections of claims 1-18.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

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