Ex Parte Medina Malaver

Board of Patent Appeals and Interferences

Aug 6, 2012

11214908 (B.P.A.I. Aug. 6, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte EVELIA YSABEL MEDINA MALAVER
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Appeal 2010-007581
Application 11/214,908
Technology Center 3700
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Before STEFAN STAICOVICI, GAY ANN SPAHN, and
LYNNE H. BROWNE, Administrative Patent Judges.

SPAHN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Evelia Ysabel Medina Malaver (Appellant) seeks our review under 35
U.S.C. § 134 of the Examiner’s final rejection of claims 1-32 under 35
U.S.C. § 103(a) as unpatentable over Drake (US 4,736,747, issued Apr. 12,
1988) and Swanson (US 6,244,142 B1, issued Jun. 12, 2001) as evidenced
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by Goodbred (US 6,857,612 B2, issued Feb. 22, 2005)1. Ans. 3-5. The
Examiner withdrew claim 33 from consideration pursuant to a restriction
requirement. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

THE CLAIMED SUBJECT MATTER
The claimed subject matter relates to an external coil assembly, for
use in a transcutaneous system of a medical device, e.g., a cardiac assist or
replacement device, stimulating device, biosensor, etc. Spec. 4, para. [0024]
to 5, para. [0026]. Claims 1, 14, and 27 are independent and claim 1,
reproduced below, is illustrative of the subject matter on appeal.
1. An external coil assembly for a transcutaneous
system comprising:
a housing having a skin-adjacent surface, an
opposing exposed surface and a threaded shaft
open to the exposed surface and extending toward
the skin-adjacent surface;
an external coil secured within the housing;
and
a magnet with a threaded exterior surface to
threadingly engage the threaded shaft,
wherein at least one of either the shaft thread
or the magnet thread has at least one transverse
channel forming discontinuities in the thread.

1 In the body of the rejection, the Examiner cites to Goodbred as evidence
that “forming discontinuities in threads to remove debris from the threads is
old and well known in the threading art.” Ans. 3. Thus, we have included
Goodbred as an evidence reference in the ground of rejection.
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OPINION
The Examiner finds that Drake discloses the subject matter of
independent claims 1, 14, and 27 substantially as claimed, including: a
housing 28 having a skin-adjacent surface, an opposite exposed surface, and
a threaded shaft; an external coil 30 secured within the housing; and a
magnet 34 having a threaded exterior surface. Ans. 3 and 5. The Examiner
concedes that “Drake does not expressly disclose at least one of either the
shaft thread or the magnet thread having at least one transverse channel
forming discontinuities of the thread.” Ans. 3. To cure the deficiency of
Drake, the Examiner turns to Swanson for its teaching of “creating
transverse channels forming discontinuities in threads in order to channel
away debris and material from the threads.” Id. The Examiner concludes
that it would have been obvious to one of ordinary skill in the art “to create
at least one transverse channel forming discontinuities in at least one of
either the shaft thread o[r] the magnet thread of Drake in order to remove
debris from the threads.” Ans. 3-4.
Appellant contends that the Examiner’s rejection based upon Drake
and Swanson is “improper because the alleged motivation to modify Drake
in view of Swanson is based upon impermissible hindsight which is
improperly drawn directly from Appellant’s own disclosure.” App. Br. 6
and Reply Br. 4. More particularly, Appellant contends that “the art of
record fails to provide the motivation set forth by the Examiner, and that the
Examiner is using Appellant’s disclosure as an ‘instruction manual’ to piece
together the discontinuities taught by Swanson . . . with the device of
Drake.” App. Br. 9-10. Appellant also contends that “[b]ecause Drake does
not recognize that there is a problem with dirt or debris accumulating in the
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threads which makes it difficult to unscrew the magnetic device, or make use
of any type of reconditioning to generate debris for removal, there would be
no need for the modification of Drake without Appellant’s disclosure,” and
“the Examiner has based the proposed combination [of Drake and Swanson]
of impermissible hindsight drawn directly from Appellant’s disclosure.”
App. Br. 11.
It is undisputed that Drake discloses a transcutaneous coupling
apparatus 10 which is shown in place across the user’s skin 12 in Figure 1.
Drake, col. 3, ll. 41-43. The transcutaneous coupling apparatus 10 includes
an internal device 14 implanted subcutaneously within the user’s body and
an externally worn body device 16 which is magnetically held in a
supercutaneous position with respect to the user’s body. Drake, col. 3, ll.
43-48 and col. 2, ll. 24-26. The internal device 14 has a magnetic device 24
positioned therewithin and the externally worn body device 16 includes a
case 28 having internal threads for threadingly mating with another magnetic
device 34. Drake, col. 3, ll. 66-67 and col. 4, ll. 17-19. Positioned within
magnetic device 34 is magnet 36 which provides a suitable magnetic
attraction to magnetic device 24 of internal device 14 in order to readily
adjust the supercutaneous position of magnet 36 with respect to surface 38
for the desired comfort level of the user. Drake, col. 4, ll. 19-30 and col. 2,
ll. 14-17. Both the Examiner and Appellant agree that Drake fails to
disclose that “at least one of either the shaft thread or the magnet thread has
at least one transverse channel forming discontinuities in the thread.” See
Ans. 3 and App. Br. 6.
Swanson discloses a thread chaser 40A or 40B including “a
cylindrical body 42 having a first end face 44 and a second end face 46
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connected by a threaded peripheral surface 48 that extends in an axial
direction of body 42. Swanson, col. 3, ll. 51-54. “[A] plurality of grooves
56 interrupt threaded peripheral surface 48 at regular circumferential
locations” in order to channel away debris and material from internal threads
in the bore. Swanson, col. 4, ll. 3-6. The thread chasers 40A and 40B
include a “[t]hrough hole 54 . . . intended to receive a breaker bar or ratchet
with extension for manual rotation of the thread chaser to clear and
recondition damaged internal threads which mate with external threads on
the king pin cap.” Swanson, col. 3, ll. 63-67.
The Examiner’s proposed modification of Drake is “to create at least
one transverse channel forming discontinuities in at least one of either the
shaft thread o[r] the magnet thread” by the teaching of Swanson “in order to
remove debris from the threads.” Ans. 3-4. Although Swanson teaches that
it is known to use a discontinuously threaded surface 48 having grooves 56
therein to remove debris, we find the Examiner’s rejection insufficient to
explain what in the prior art would have prompted a person having ordinary
skill in the art to use Swanson’s grooves 56 for removing debris from
Drake’s transcutaneous coupling apparatus 10. Drake never contemplated
the need to remove debris from the transcutaneous coupling apparatus 10
because Drake does not contemplate the accumulation of debris, as the
Examiner proposes. See Ans. 6 (“. . . it is particularly true that devices like
that of Drake, which are adapted to be worn externally on a human body and
held in supercutaneous position, are susceptible to debris accumulation, e.g.,
dead skin, earwax, etc.”). In fact, in Drake’s preferred embodiment, a
particular user adjusts the external magnetic device 34 by turning it within
case 28 in order to find its optimum spacing with respect to the implanted
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magnetic device 24 and then, “a suitable adhesive 40 or other securing
means [is used] to affix magnetic device 34 in fixed relationship with case
28.” See Drake, col. 2, ll. 37-39, col. 3, ll. 10-12, and col, 4, ll. 54-57.
Emphasis omitted. Hence, because of the presence of the adhesive or other
securing means, we do not see how debris accumulates in the device of
Drake.
Swanson screws the external threads of its thread chaser 40A or 40B
into the internal threads of a king pin cap to clear and recondition the
damaged internal threads and thus generates debris. See Swanson, col. 3, ll.
63-67. Unlike Swanson, Drake’s magnetic device 36 only requires minor
adjustment within case 28 and then, is fixed in place by adhesive or some
other mechanical attachment means and once fixed in place, is not screwed
into case 28 to perform reconditioning. Moreover, the Examiner has not
provided any findings that Drake recognized a problem with either the shaft
thread or the magnet thread so as to require clearing and reconditioning of
damaged threads.
Finally, while the Examiner concedes that “the reconditioning process
would create some debris,” the Examiner takes the position that “nowhere in
Swanson does it state that the reconditioning process is the only source of
debris in the thread,” nor that “the discontinuities in the threads exist solely
to remove debris generated by the reconditioning process.” Ans. 6.
Emphasis added. However, Swanson specifically discloses that grooves 56
are used for “channeling material removed by the thread chaser.” Id. at col.
2, ll. 14-17. As such, we find the Examiner’s position to be speculative
based on an unfounded assumption that Swanson may also have considered
debris resulting from other sources than from the reconditioning process.
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Thus, absent the hindsight knowledge from Appellants’ Specification
that unwanted debris may accumulate between neighboring portions of the
shaft and magnet threads, which debris needs to be removed for proper
adjustment of the magnets, we fail to see why one having ordinary skill in
the art would have been led to modify the teachings of Drake by the
teachings of Swanson in the manner claimed.
Accordingly, we do not sustain the Examiner’s rejection of
independent claims 1, 14, and 27, and claims 2-13, 15-26, and 28-32
dependent thereon, under 35 U.S.C. § 103(a) as unpatentable over Drake and
Swanson. See In re Fine, 837 F.2d 1071, 1076 (Fed. Cir. 1988) (If an
independent claim is nonobvious under 35 U.S.C. § 103, then any claim
dependent therefrom is nonobvious).

DECISION
We reverse the Examiner’s decision to reject claims 1-32.

REVERSED

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