Ex Parte Olson

Board of Patent Appeals and Interferences

May 14, 2012

11190983 (B.P.A.I. May. 14, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte GREG OLSON
__________

Appeal 2011-002070
Application 11/190,983
Technology Center 3700
__________

Before DEMETRA J. MILLS, STEPHEN WALSH, and
ERICA A. FRANKLIN, 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 medical device comprising different electrorheological
fluids and to a method comprising changing rheological properties of an
electrorheological fluid in a medical device. The Patent Examiner rejected
the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Appeal 2011-002070
Application 11/190,983

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STATEMENT OF THE CASE
Claims 1-11, 13-19, and 21-32 are on appeal. Claims 1 and 18 are
representative and read as follows:
1. A medical device, comprising:
an elongated member adapted to be inserted into a subject; and
an electrorheological fluid carried by the elongated member
comprising a first portion having a first electrorheological fluid, and a
second portion having a second electrorheological fluid different than the
first electrorheological fluid.

18. A method, comprising:
providing a medical device comprising an elongated member and an
electrorheological fluid carried by the elongated member;
applying different electric fields to the electrorheological fluid,
wherein the electric fields differ in intensity; and
changing the rheological properties of the electrorheological fluid.

The Examiner rejected the claims as follows:
 claims 1-31, 7-11, 13, 16-19, 21-25, 27, and 28 under 35 U.S.C.
§ 103(a) as unpatentable over Lemelson2 and Holmen;3
 claims 4-6 under 35 U.S.C. § 103(a) as unpatentable over Lemelson,
Holmen, and Mäkelä;4

1 It appears that claim 3 was omitted by oversight from the statement of
rejection at Ans. 4, because the explanation of the rejection at Ans. 5
included claim 3, and because the second rejection at Ans. 7 explicitly
referred to claim 3 as included in the first rejection. See also, App. Br. 5,
noting the second rejection’s reference to claim 3 as included in the first
rejection.
2 Jerome Lemelson, US 6,058,323, issued May 2, 2000.
3 Jorgen Holmen, US 2003/0014021 A1, published Jan. 16, 2003.
4 Kimmo K. Mäkelä, Characterization and performance of
electrorheological fluids based on pine oils, Technical Research Centre of
Finland (1999).
Appeal 2011-002070
Application 11/190,983

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 claims 14, 15, and 29 under 35 U.S.C. § 103(a) as unpatentable over
Lemelson; and
 claims 31-33 under 35 U.S.C. § 103(a) as unpatentable over Lemelson
and Mäkelä.

DISCUSSION
The Examiner’s position is that Lemelson described a medical device
with an elongated member comprising segmented compartments containing
an electrorheological fluid (ER), but Lemelson did not describe filling the
compartments with two different ER fluids. (Ans. 4-5.) The Examiner
found however that “Holmen teaches a device that uses rheologic fluids with
different properties in specific volumetric regions in order to exert different
pressures at different areas in forming a desired shape (Figure 10) [0054]
[0055].” (Id. at 5.) The Examiner concluded: “It would have been obvious
in view of Holmen to provide fluids of different properties and volumes in
different compartments in Lemelson in order to form a desired shape of the
elongate member and aid in navigation.” (Id.)
Appellant contends that Holmen’s teaching is “irrelevant,” as
(i) Holmen’s device is a lens, shaped during an implantation process, and
“[t]his is significantly different from altering the stiffness of a pre-fabricated
medical device during the process of using that device” (App. Br. 7);
(ii) “[o]ne cannot reshape the catheter of Lemelson using the fluids or
process of Holmen” (id.); and (iii) “[t]he methods of making discussed in
Holmen simply do not apply to the methods of use of Lemelson” (id.).
Appellant argues: “Combining the teachings of Holmen, which pertains to
molding a lens forming fluid using other fluids, and Lemelson, which
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Application 11/190,983

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pertains to a treatment catheter where electrorheological fluids are trapped
within compartments along the length of the catheter, would not have
suggested any modification to the treatment catheter of Lemelson.” (Id. at
8.)
After reviewing the evidence and arguments, we agree with
Appellant, for the reasons set out in the Appeal and Reply Briefs. The
rejection is therefore reversed.

SUMMARY
We reverse the rejection of claims 1-3, 7-11, 13, 16-19, 21-25, 27, and
28 under 35 U.S.C. § 103(a) as unpatentable over Lemelson and Holmen.
We reverse the rejection of claims 4-6 under 35 U.S.C. § 103(a) as
unpatentable over Lemelson, Holmen, and Mäkelä.
We reverse the rejection of claims 14, 15, and 29 under 35 U.S.C.
§ 103(a) as unpatentable over Lemelson.
We reverse the rejection of claims 31-33 under 35 U.S.C. § 103(a) as
unpatentable over Lemelson and Mäkelä.

REVERSED

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