Fisk, Andrew E.

Patent Trials and Appeals Board

Feb 5, 2020

13087435 - (D) (P.T.A.B. Feb. 5, 2020)

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.
13/087,435 04/15/2011 Andrew E. Fisk PUL-00007US 6230
139939 7590 02/05/2020
Massina Patent & Trademark Law PLLC
702 Route 113
Suite B
Souderton, PA 18964
EXAMINER
BAND, MICHAEL A
ART UNIT PAPER NUMBER
1794
NOTIFICATION DATE DELIVERY MODE
02/05/2020 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing@massinaptl.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ANDREW E. FISK
____________

Appeal 2019-003827
Application 13/087,435
Technology Center 1700
____________

Before JEFFREY T. SMITH, JEFFREY W. ABRAHAM, and
MONTÉ T. SQUIRE, Administrative Patent Judges.

SQUIRE, Administrative Patent Judge.

DECISION ON APPEAL1

Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
decision rejecting claims 1–4, 6–9, and 11–14.2,3 We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 In this Decision, we refer to the Specification filed Apr. 15, 2011
(“Spec.”); Final Office Action mailed Aug. 16, 2017 (“Final Act.”); Appeal
Brief filed May 16, 2018 (“Br.”); and Examiner’s Answer mailed Feb. 14,
2019 (“Ans.”). There is no reply brief.
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies Pulse Technologies, Inc. as the real
party in interest. Appeal Br. 2.
3 Claims 5 and 10 are cancelled. See Claims Listing dated Feb. 3, 2017.
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CLAIMED SUBJECT MATTER
Appellant’s disclosure relates to a method for optimizing the surface
geometry/coating for electrically active medical devices, and, in particular,
to the surface geometry for devices intended to be permanently implanted
into the human body for use as electrodes. Spec. ¶¶ 2, 12; Abstract.
Claim 1 illustrates the claimed subject matter on appeal and is
reproduced below from the Claims Appendix to the Appeal Brief:
1. A method for optimizing a coating on a substrate having
a surface, comprising the steps of:
polishing the surface of said substrate to reduce
nucleation sites;
depositing a primary metallic component and a secondary
reactive component on said substrate through a physical vapor
deposition process such that deposited atoms of said secondary
reactive component react with atoms of said primary metallic
component prior to solidifying;
wherein the reaction of said primary metallic component
and said secondary reactive component results in a surface
having pyramidal or tetragonal crystal structures defined
thereon, each of said crystal structures having a base, an apex
and an amplitude measured from said base to said apex; and
controlling at least one deposition parameter while
depositing said coating such that said crystal structures have
an approximate average amplitude of between 250 and 400
nanometers.
Br. 9 (Claims Appendix) (key disputed claim language italicized and
bolded).

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REFERENCES

The Examiner relies on the following prior art references as evidence
in rejecting the claims on appeal:
Name Reference Date
Sproul et al. (“Sproul”) US 4,428,811 Jan. 31, 1984
Suire et al. (“Suire”) US 4,790,851 Dec. 13, 1988
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1–4, 6–9, and 11–14 are rejected under
35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA), first paragraph, as failing
to comply with the written description requirement (“Rejection 1”).
Ans. 2–3.
2. Claims 1–4, 6–9, and 11–14 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Sproul in view of Suire
(“Rejection 2”). Id. at 3–6.
OPINION
Rejection 1
The Examiner rejects claims 1–4, 6–9, and 11–14 under 35 U.S.C.
§ 112 for lack of written description, which we refer to as Rejection 1. In
particular, the Examiner contends
[t]here is no support in the Specification for ‘controlling’
at least one deposition parameter, since ‘controlling’ also
means ‘maintaining’ or ‘having constant[,]’ whereas
original claim 2 and para 0051 of the published
Specification (US 2012/0094024) support that power
and/or pressure are varied or changed.
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Ans. 3.
A specification complies with the 35 U.S.C. § 112, first paragraph
written description requirement if it “reasonably conveys to those skilled in
the art that the inventor had possession of the claimed subject matter as of
the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351
(Fed. Cir. 2010) (en banc) (citation omitted).
Appellant argues the Examiner’s rejection should be reversed because
the recitation “controlling at least one deposition parameter” is fully
supported by the Specification. Br. 3–4 (citing Spec. ¶¶ 39, 44, 50, 51).
Appellant contends that when the claim term is read in conjunction with the
Specification, “controlling” is not limited to “maintaining” or “having
constant,” and one skilled in the art can reasonably conclude that the
inventor had possession of the claimed invention, including controlling at
least one deposition parameter. Id. at 3–4.
We agree with Appellant’s argument. On the record before us, we
find that the “controlling at least one deposition parameter” recitation of
claim 1 is adequately supported by the Specification. See Spec. ¶¶ 39, 44,
50, 51.
For example, the Specification describes an embodiment whereby
“the substrate temperature is held between approximately 20% and 40% of
the melting point of the metallic coating species.” Spec. ¶ 39. The
Specification also discloses that “the power may also be varied . . . which
affects the rate of deposition” and “[c]hanging the power will [a]ffect the
rate of deposition.” Id. at ¶ 51. The Specification further discloses that:
In a physical vapor deposition process, the width of the
columns can be varied by modifying the parameters under
which the coating is deposited. The dominant factor is the
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pressure under which the deposition takes place. In
general, the higher the pressure the narrower the column
and the lower the pressure the wider the column. It is
therefore necessary to choose a pressure, which may vary
dependent upon the apparatus used to do the physical
vapor deposition, which results in the column width which
produces pyramids at the tops of the columns having
average amplitudes in the desired range.
Id. at ¶ 50.
Thus, based on the above disclosures, we are persuaded that the
Specification, as filed, provides sufficient written descriptive support for
claim 1, such that the skilled artisan would have understood the inventor had
possession of and actually invented the claimed method, including the step
of controlling at least one deposition parameter. Ariad, 598 F.3d at 1351.
Accordingly, we reverse the Examiner’s rejection of claims 1–4, 6–9,
and 11–14 under 35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA), first
paragraph, as failing to comply with the written description requirement.
Rejection 2
Having considered the respective positions advanced by the Examiner
and Appellant in light of this appeal record, we affirm the Examiner’s
rejection of claims 1–4, 6–9, and 11–14 under 35 U.S.C. § 103 as obvious
over the combination of Sproul and Suire, which we refer to as Rejection 2,
based on the fact-finding and reasoning set forth in the Answer and Final
Office Action, which we adopt as our own. Ans. 3–6. We add the following
primarily for emphasis.
In response to the Examiner’s rejection, Appellant presents argument
for the patentability of claim 1 but does not present separate argument for
the patentability of any of the other remaining claims subject to the
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Examiner’s rejection. Appeal Br. 4–8. We select claim 1 as representative
and remaining claims 2–4, 6–9, and 11–14 stand or fall with claim 1. See
37 C.F.R. § 41.37(c)(1)(iv).
The Examiner determines that the combination of Sproul and Suire
suggests a physical vapor deposition method satisfying all of the limitations
of claim 1 and concludes the combination would have rendered the claim
obvious. Ans. 3–5. On the record before us, we find a preponderance of the
evidence and sound technical reasoning support the Examiner’s findings and
determination that the combination of Sproul and Suire suggests a method
satisfying all of the limitations of claim 1 and conclusion that the
combination would have rendered the claim obvious. Sproul, Abstract,
3:40–43, 3:48–62, 4:35–41; Suire, Abstract, 3:4–19, 6:45–7:20, 8:10–14,
8:19–22.
Appellant argues that the Examiner’s rejection should be reversed
because the cited references are not analogous art. Br. 6. In particular,
Appellant contends that neither Sproul nor Suire is from the same field of
endeavor as the present invention because neither of the references is from
the field of implantable medical electrodes. Id. at 6–7. Appellant further
contends Sproul and Suire are not reasonably pertinent to the problem faced
by the inventor because neither reference is “concerned with optimizing
electrical characteristics of an electrode.” Id. at 7. Appellant also contends
“the references are not properly combinable” and “there is no reasonable
basis to combine the cited prior art references other than improper
hindsight.” Id. at 6.
We do not find Appellant’s arguments persuasive of reversible error
in the Examiner’s rejection. Two separate tests define the scope of
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analogous prior art: (1) whether the art is from the same field of endeavor,
regardless of the problem addressed and, (2) if the reference is not within the
field of the inventor’s endeavor, whether the reference still is reasonably
pertinent to the particular problem with which the inventor is involved. In re
Klein, 647 F.3d. 1343, 1348 (Fed. Cir. 2011) (citing In re Bigio, 381 F.3d
1320, 1325 (Fed. Cir. 2004)). “A reference is reasonably pertinent if, even
though it may be in a different field from that of the inventor’s endeavor, it
is one which, because of the matter with which it deals, logically would have
commended itself to an inventor’s attention in considering his problem.” In
re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992).
Contrary to what Appellant argues, based on the fact-finding and
reasoning provided by the Examiner at pages 3–5 and 8–9 of the Answer, we
determine that both Sproul and Suire are analogous art to the claimed
invention. As the Examiner finds (Ans. 8–9), like the claimed invention,
which recites a method of optimizing a coating on a substrate having a
surface and the coating comprising titanium nitride deposited by physical
vapor deposition (see claims 1, 4, 13, 14), Sproul and Suire are both directed
to optimizing a titanium nitride coating on a substrate by depositing via
physical vapor deposition from titanium targets with nitrogen (Sproul
3:48–62; Suire 5:16–26, 8:10–14), which is reasonably pertinent to a
problem in which the inventor is involved. Bigio, 381 F.3d at 1325
(explaining that a reference may qualify as analogous art even “if the
reference is not within the field of the inventor’s endeavor”).
As the Examiner further finds (Ans. 4), Suire teaches a method for
manufacturing surgical implants coated on the surface with a layer of metal
compound for permanent implantation in the human body (Suire, Abstract,
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1:1–15), which relates closely to the claimed invention (see Spec. ¶ 2
(disclosing the claimed invention relates to medical “devices intended to be
permanently implanted into the human body”)) and is, likewise, reasonably
pertinent to a problem in which the inventor is involved.
Thus, on the record before us, we are persuaded that each of the cited
references logically would have commended itself to the inventor’s attention
in considering the problem addressed by the claimed invention. Clay, 966
F.2d at 659.
The Examiner also provides a reasonable basis, which is supported by
a preponderance of the evidence in the record, to evince why one of ordinary
skill would have combined the teachings of the cited art to arrive at the
claimed invention. Ans. 4–5 (explaining that one of ordinary skill in the art
would have had reason to incorporate Suire’s step of polishing prior to
deposition of titanium nitride into Sproul’s method of depositing titanium
nitride for the advantages of reducing the index of roughness and removing
surface pollution from the substrate) (citing Suire 3:4–19); see also KSR Int’l
Co. v. Teleflex, Inc., 550 U.S. 398, 420 (2007) (explaining that any need or
problem known in the art can provide a reason for combining the elements in
the manner claimed).
Appellant’s disagreement as to the Examiner’s factual findings and
reasoning for combining the references, without more, is insufficient to
establish reversible error. Cf. SmithKline Beecham Corp. v. Apotex Corp.,
439 F.3d 1312, 1320 (Fed. Cir. 2006) (“[M]ere statements of disagreement .
. . as to the existence of factual disputes do not amount to a developed
argument.”).
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Appellant’s contentions that “the references are not properly
combinable” and “there is no reasonable basis to combine the cited prior art
references other than improper hindsight” (Br. 6) are not persuasive because
they are conclusory and unsupported by persuasive evidence in the record.
Attorney argument is not evidence. In re De Blauwe, 736 F.2d 699, 705
(Fed. Cir. 1984); see also In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir.
1997) (explaining that mere lawyer’s arguments or conclusory statements,
which are unsupported by concrete factual evidence, are entitled to little
probative value).
Appellant argues the Examiner’s rejection should be reversed because
the rejection does not indicate that “Sproul et al. teaches crystal structures
having the recited structural characteristics.” Br. 7.
We do not find this argument persuasive of reversible error in the
Examiner’s rejection because it is conclusory and Appellant does not
adequately explain it. De Blauwe, 736 F.2d at 705; see also In re Lovin, 652
F.3d 1349, 1356–57 (Fed. Cir. 2011) (holding that a “naked assertion” that
the references fail to teach a claim limitation is not an argument in support
of separate patentability).
Moreover, based on the fact-finding and reasoning provided by the
Examiner at pages 3–6 and 9–10 of the Answer, we find a preponderance of
the evidence supports the Examiner’s determination that the combination of
Sproul and Suire suggests all of the limitations of the claimed method and
the resultant crystal structures formed by the method. Sproul, Abstract,
3:40–43, 3:48–62, 4:35–41, 4:35–55, Table 1; Suire, Abstract, 3:4–19,
6:45–7:20, 8:10–14, 8:19–22.
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In particular, as the Examiner finds and explains (Ans. 5, 9–10),
because Suire teaches polishing the surface of the substrate prior to
depositing the primary and secondary components in the same manner
claimed (Suire, Abstract, 3:4–19) and Sproul, likewise, teaches that the
deposition parameters of target power and pressure for depositing the
titanium nitride are controlled in the same manner claimed (Sproul, Abstract,
3:48–62, 4:35–55, Table 1), it follows that the resulting titanium nitride on
the substrate would have the property of a surface having pyramidal or
tetragonal crystal structures having a base, an apex, and an amplitude
measured from the base to the apex with an average amplitude between 250
and 400 nm, as claimed. See In re Best, 562 F.2d 1252, 1255 (CCPA 1977)
(“Where, as here, the claimed and prior art products are identical or
substantially identical, or are produced by identical or substantially identical
processes, the PTO can require an applicant to prove that the prior art
products do not necessarily or inherently possess the characteristics of his
claimed product.”).
Appellant’s assertions at pages 7–8 of the Appeal Brief are conclusory
and, without more, insufficient to rebut or otherwise establish reversible
error in the Examiner’s factual findings and analysis in this regard.
Accordingly, we affirm the Examiner’s rejection of claims 1–4, 6–9,
and 11–14 under 35 U.S.C. § 103 as obvious over the combination of Sproul
and Suire.
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CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–4, 6–9,
11–14
112 Written Description 1–4, 6–9,
11–14
1–4, 6–9,
11–14
103 Sproul, Suire 1–4, 6–9,
11–14

Overall
Outcome
1–4, 6–9,
11–14

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a) (1)(iv).
AFFIRMED