Ex Parte Weber et al

Board of Patent Appeals and Interferences

Jun 18, 2012

11280120 (B.P.A.I. Jun. 18, 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.
11/280,120 11/16/2005 Jan Weber 1001.1925101 7250
11050 7590 06/19/2012
SEAGER, TUFTE & WICKHEM, LLC
1221 Nicollet Avenue
Suite 800
Minneapolis, MN 55403
EXAMINER
SHUMATE, VICTORIA PEARL
ART UNIT PAPER NUMBER
3763
MAIL DATE DELIVERY MODE
06/19/2012 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 JAN WEBER and TRACEE E.J. EIDENSCHINK
__________

Appeal 2011-000883
Application 11/280,120
Technology Center 3700
__________

Before TONI R. SCHEINER, FRANCISCO C. PRATS, and
JACQUELINE WRIGHT BONILLA, Administrative Patent Judges.

BONILLA, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellants have requested rehearing of the decision entered March 30,
2012 (“Decision”), affirming the rejections of claims 1-3, 8, 9, 18-20, and
29-34 for obviousness. The request for rehearing is denied.
DISCUSSION
Appellants request reconsideration of our affirmance of the
obviousness rejections of: (I) claims 1-3, 8, 9, 18, and 19 over Swanson,
U.S. Pat. No. 5,605,543 (issued Feb. 25, 1997), in view of Lovett et al., U.S.
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Publ. Pat. Application No. 2003/0065373 A1 (Apr. 3, 2003); (II) claim 20
over Swanson in view of Lovett, and further in view of Jasne, U.S. Pat. No.
5,130,054 (Jul. 14, 1992); and (III) claims 29-34 over Swanson, in view of
Lovett, and further in view of Couvillon, Jr., U.S. Publ. Pat. Application No.
2004/0143160 A1 (issued Jul. 22, 2004).
I. Rejection of claims 1-3, 8, 9, 18, and 19 over Swanson in view of
Lovett
Appellants first assert that the Board misinterprets the phrase
“strength altering means for changing compressive strength of the hypotube”
recited in claim 1 (Req. Reh’g. 5, 7-8). Appellants argue that “compressive
strength” differs from flexibility or stiffness, and that “[l]ateral stiffness or
flexibility does not inherently correlate with column strength.” (Id. at 5; 7-
9.) In support, Appellants cite to a portion of the Specification that refers to
“medical devices having elongate shafts that provide adjustability in
flexibility, stiffness or compressive strength.” (Id.; see also Spec. 1, l. 4-5.)
As previously noted, Lovett describes an electroactive polymer in the
context of contracting and expanding, and consequently stiffening, a relevant
hypotube. (Decision, 8.) Appellants provide no evidence or information of
record indicating that an electroactive polymer that contracts and expands,
leading to a stiffening of a hypotube, as taught in Lovett, would have no
impact on compressive strength of the hypotube, even assuming stiffness
and compressive strength are measured differently as asserted by Appellants
(Req. Reh’g. 5). On the other hand, common sense dictates (and therefore a
skilled artisan would have understood) that contracting and stiffening a
hypotube would also increase, or at least alter, its compressive strength,
which is all that claim 1 requires. Other than referring to an unsupported
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“Slinky” example (id.), not relevant here, Appellants do not suggest
otherwise.
Consistently, the Specification indicates that a polymer that impacts
flexibility/stiffness of a hypotube also impacts, i.e., changes, compressive
strength. For example, immediately below the sentence cited by Appellants
(Req. Reh’g. 5 (citing Spec. 1, l. 5)), the Specification states that “[m]edical
devices may be subject to a number of often conflicting performance
requirements such as flexibility and strength,” and that “improved flexibility
may come at the expense of reduced strength.” (Id. at ll. 7-9.) Likewise,
the Specification refers to “the optimal balance of flexibility and strength.”
(Id. at ll. 11-13.)
As discussed in the Decision, Lovett expressly describes the use of an
electroactive polymer, which contracts and expands, which “causes the lead
body to become stiff as the compressive forces between the windings of the
electrically active polymer 122 are increased.” (Decision 5; FF 5 (citing
Lovett, [0054] (emphasis added)); see also Specification, page 13 line 1
(referring to use of an electroactive polymer.) Thus, a skilled artisan reading
Lovett would have understood that adding an electroactive polymer, such as
to the slots shown in the hypotube shown in Figure 10 of Swanson
(Decision, 4, FF 2), would likely alter/change both stiffness and compressive
strength of a hypotube. As such, Lovett taught, or at least suggested, to a
skilled artisan the use of an electroactive polymer that acts as a “strength
altering means for changing compressive strength of the hypotube” as
recited in claim 1.
Appellants also argue that Swanson uses slots in the hypotube to
increase flexibility and provide a “smooth transition” between the proximal
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and more flexible distal parts. (Req. Reh’g. 5-6.) Appellants then assert that
if one wanted to “instead stiffen the hypotube portion,” it would have been
easier to omit slots. (Id. at 6.) We address these arguments on page 9 of the
Decision. As previously stated, “[s]uch statements ignore teachings in
Lovett, however, which describe the benefit of being able to alternately
stiffen and relax a hypotube (Ans. 7-8; FF 9),” including “being able to
selectively stiffen certain parts of a hypotube at certain locations, to affect a
curve or bending in the hypotube. (FF 11.)” (Decision 9.)
Appellants also assert that our Decision errs “in assuming that all
electroactive polymers are necessarily ‘rheometric materials’ as defined by
Lovett.” (Req. Reh’g. 6-7.) This assertion misses the point previously
stated in our Decision that Lovett describes a guide catheter that “includes a
device body with rheometric material associated therewith” (Lovett, [0006]),
where the “rheometric material includes, but is not limited to, an
electroactive polymer or magnoactive material. . . . (Id.)” (Decision 4-5, FF
4.) In other words, Lovett expressly teaches the use of rheometric materials,
and that examples of such materials include electroactive polymers.
In relation to claim 18, Appellants also assert arguments (Req. Reh’g.
9) that mirror those previously asserted in the Appeal Brief (App. Br. 15).
We have addressed such arguments on pages 10-11 of the Decision, and are
not persuaded that we have misapprehended or overlooked any argument or
point of law therein. 37 C.F.R. § 41.52. An appellant dissatisfied with the
outcome of a Board decision is entitled to appeal the decision, see 35 U.S.C.
§§ 141 and 145, but is not entitled to have the same issue decided multiple
times on the same record.
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II. Rejection of claim 20 over Swanson in view of Lovett, and further in
view of Jasne
In relation to claim 20, Appellants again assert arguments (Req.
Reh’g. 9-10) that mirror those already asserted in the Appeal Brief (App. Br.
16-17). We have addressed such arguments on pages 12-14 of the Decision,
and are not persuaded that we have misapprehended or overlooked any
argument or point of law therein.
III. Rejection of claims 29-34 over Swanson, in view of Lovett, and further
in view of Couvillon
Appellants argue that our Decision “errs in equating a lack of
mechanical contact across layer 614 with a lack of electrical conductivity
through layer 614” in Couvillon. (Req. Reh’g. 10.) Appellants further
assert that layer 614 in Couvillon “cannot act as an insulator although
components thereof may be insulating,” and the “ʻshort-circuiting’ to which
Couvillon refers is direct contact between electrodes which would prevent
the required transporting current from flowing through intervening
electrolyte.” (Id.) In short, Appellants argue that the phrases “insulating
layer” in independent claims 29 and 31 and “electrically isolated” in
independent claim 34 do not encompass the type of insulating material
described in Couvillon.
We disagree. The Board gives claims “their broadest reasonable
interpretation consistent with the specification.” In re Hyatt, 211 F.3d 1367,
1372 (Fed. Cir. 2000). The Specification here generally refers to an
“insulating layer” as one that “electrically isolate[s]” a conductive pattern
from the tube (Spec. 20-21) or is “formed of any suitable electrically-
insulating material,” such as “for example, a diamond-like coating, an oxide,
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or a polymeric shrink tube” (id. at 23, l. 19-23). The Specification also
describes that an insulating layer may have “distinct gaps therein in order to
direct current to desired locations” (id. at 24, ll. 9-10).
Teachings in Couvillon are entirely consistent the Specification’s
discussion of “insulating layer” and “electrically isolating” as recited in the
claims. As noted in the Decision, Couvillon describes including “insulating
polymers” in layer 614 to prevent short-circuiting contact between an
electroactive polymer 612 and a counter electrode 618. (Decision, 16, FF 22
(emphasis added).) To prevent short-circuiting, the electrolyte-containing
layer 614 including the insulating polymer material necessarily prevents at
least some electrical conductivity between the electroactive polymer and the
counter electrode. Thus, we are not persuaded that layer 614 in Couvillon
fails to act as an “insulating layer” or to “electrically isolate” components.
Appellants have not provided any reason as to how/why the “isolating layer”
recited in the claims works differently than layer 614 comprising insulating
polymer material as described in Couvillon.
SUMMARY
We are not persuaded that the Decision has misapprehended or
overlooked any argument or point of law, or that Appellants have presented
any grounds for rehearing. For the reasons discussed, we decline to modify
our original decision entered March 30, 2012.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
REHEARING DENIED
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