Ex Parte Nason et al

Patent Trial and Appeal Board

Apr 15, 2013

11726330 (P.T.A.B. Apr. 15, 2013)

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.
11/726,330 03/21/2007 Clyde K. Nason 130.37-US-C2 8767
12813 7590 04/15/2013
Gates & Cooper LLP - Minimed
6701 Center Drive West
Los Angeles, CA 90045
EXAMINER
OSINSKI, BRADLEY JAMES
ART UNIT PAPER NUMBER
3767
MAIL DATE DELIVERY MODE
04/15/2013 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 PATENT TRIAL AND APPEAL BOARD
__________

Ex parte CLYDE K. NASON and WILLIAM H. STUTZ JR.
__________

Appeal 2011-007641
Application 11/726,330
Technology Center 3700
__________

Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
STEPHEN WALSH, Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the rejection of
claims directed to a method of delivering fluid medication to a user. The
Patent Examiner rejected the claims for obviousness. We have jurisdiction
under 35 U.S.C. § 6(b). We reverse.
Appeal 2011-007641
Application 11/726,330

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STATEMENT OF THE CASE
Claims 1-20 are on appeal. Claim 1 illustrates the subject matter on
appeal and reads as follows:
1. A method of using an apparatus having a housing to deliver a fluid
medication to a user, comprising the steps of:
subjecting a shape memory wire within the housing to a first material
condition, wherein the wire is capable attaining at least two difference
material conditions, a first material condition below a transformation
temperature and a second material condition above a transformation
temperature, and wherein the wire attains a memorized configuration such
that the wire can produce a work stroke as a consequence of a transition
between the first and second material conditions; and
subjecting the wire to a second material condition;
wherein the shape memory wire is operatively coupled to a gear
within the housing; and
the gear comprises teeth and is operatively coupled to a fluid pump
within the housing such that when the wire produces the work stroke as a
consequence of a transition between the first and second material conditions,
the gear is rotated such that the fluid pump generates a fluid flow that
delivers the fluid medication from the apparatus to the user.

The Examiner rejected the claims as follows:
I. claims 1-3, 6-9, 12-14, and 17-20 under 35 U.S.C. § 103(a) as
unpatentable over Idriss1 and AbuJudom II;2 and
II. claims 4, 5, 10, 11, 15, and 16 under 35 U.S.C. § 103(a) as
unpatentable over Idriss, AbuJudom II, and Siegel.3

1 Samir F. Idriss et al., US 5,207,666, issued May 4, 1993.
2 David N. AbuJudom II et al., US 5,176,544, issued Jan. 5, 1993.
3 Ronald A. Siegel, US 5,062,841, issued Nov. 5, 1991.
Appeal 2011-007641
Application 11/726,330

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DISCUSSION
We will consider both rejections together because the same issue is
dispositive for each.
The Examiner’s position is that the difference between Appellants’
and Idriss’ methods of delivering fluids such as insulin with a metering
device is that Idriss’ device did not include a gear operatively coupled to its
shape memory wire. (Ans. 3-4.) The Examiner found that AbuJudom
described a shape memory controller for liquids and gases in which linear
forces generated by shape memory wires were converted into rotational
forces to control a fluid control member. (Id. at 4.) The Examiner
concluded:
it would have been obvious to one of ordinary skill in the art at
the time the invention was made to modify the device of Idriss
by utilizing a gear with teeth and elongate member with rack as
taught by AbuJudom to control the magnet 41 that moves the
control member 3 as it is a known structure used with shape
memory wires to control the flow of gases and liquids.

(Id.)
Appellants contend the rejection should be reversed because it is
predicated only on the conclusory statement that a gear coupled to a shape
memory wire is a known structure, but “in the absence of any objective
reason whatsoever as to why an artisan would have been motivated to
combine the linear pumping mechanism disclosed in Idriss with the rotating
gear disclosed in AbuJudom, [the conclusory statement] is not sufficient to
establish a prima facie case of obviousness.” (App. Br. 4, citing In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006).)
Appeal 2011-007641
Application 11/726,330

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We agree with Appellants that the mere fact that AbuJudom described
a gear coupled to shape memory wires to control fluid flow is not a reason to
add a gear to Idriss’ device. “[A] patent composed of several elements is not
proved obvious merely by demonstrating that each of its elements was,
independently, known in the prior art.” KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 418 (2007).
We note the Examiner responded to Appellants by arguing, in part,
that a gear with teeth offers advantages over a system without a gear with
teeth:
The main advantage is a gear offers mechanical advantage such
that a more precise measurement is achievable, by using smaller
or larger gears, a movement caused by the shape memory wires
may be magnified or diminished allowing for greater
disbursement of a smaller system (large gear) or greater
precision (smaller gear).

(Ans. 6.) However, Appellants contend the rejection did not explain how the
proposed combination of elements would be accomplished, and that the
Idriss and Abujudom references do not suggest how the combination would
be made. (App. Br. 5; Reply Br. 5.) Appellants point, for example, to the
fact that Abujudom described “devices that are used to open and close air
conditioning and/or heating ducts” (Reply Br. 4), not the fluid medication
metering devices Idriss described. We agree with Appellants that the
rejection did not explain how the combination should be made. We
acknowledge that “[t]he combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416
Appeal 2011-007641
Application 11/726,330

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(2007). The rejection falls short of showing that the proposed combination
could have been done according to known methods.

CONCLUSION
A preponderance of evidence on this record does not support the
Examiner’s conclusion that the subject matter of Appellants’ claims would
have been prima facie obvious.

SUMMARY
We reverse the rejection of claims 1-3, 6-9, 12-14, and 17-20 under
35 U.S.C. § 103(a) as unpatentable over Idriss and AbuJudom II.
We reverse the rejection of claims 4, 5, 10, 11, 15, and 16 under
35 U.S.C. § 103(a) as unpatentable over Idriss, AbuJudom II, and Siegel.

REVERSED

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