Ex Parte Fisk

Patent Trial and Appeal Board

Jan 31, 2017

13087435 (P.T.A.B. Jan. 31, 2017)

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 070204-00033 6230
29880 7590 02/02/2017
FOX ROTHSCHILD LLP
PRINCETON PIKE CORPORATE CENTER
997 LENOX DRIVE
BLDG. #3
EAWRENCEVTT.TE, NJ 08648
EXAMINER
BAND, MICHAEL A
ART UNIT PAPER NUMBER
1754
NOTIFICATION DATE DELIVERY MODE
02/02/2017 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):
ipdocket @ foxrothschild. 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 2015-007474
Application 13/087,435
Technology Center 1700
Before JEFFREY T. SMITH, JULIA HEANEY, and
MONTE T. SQUIRE, Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL1
Appellant2 appeals the Examiner’s final rejection of claims 1—4, 6—9,
and 11—14. 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C.
§ 6(b).
For the reasons set forth below, we AFFIRM.
1 In this Decision, we refer to the Final Office Action appealed from, mailed
October 24, 2014 (“Final Act.”); the Appeal Brief dated March 5, 2015
(“App. Br.”); the Examiner’s Answer to the Appeal Brief dated June 12,
2015 (“Ans.”); and the Reply Brief (“Reply Br.”) dated August 6, 2015.
2 Appellant identifies Pulse Technologies, Inc. as the Real Party in Interest.
App. Br. 1.
Appeal 2015-007474
Application 13/087,435
The Claimed Invention
Appellant’s disclosure relates to a surface geometry 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 stimulation electrodes. Spec. 12; Abstract. Independent claim 1 is
illustrative of the subject matter on appeal and is reproduced below from the
Claims Appendix to the Appeal Brief (App. Br. 8) (key disputed limitation
italicized):
1. A method for optimizing a coating on a substrate
comprising the steps of:
a. providing a primary metallic component
b. providing a secondary reactive component;
c. polishing the surface of said substrate to reduce
nucleation sites',
d. depositing said primary and said secondary
components on said substrate such that deposited atoms of said
secondary reactive component react with atoms of said primary
metallic component prior to solidifying;
e. 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 of
said structure; and
f. varying the conditions under which said coating is
deposited such that said crystal structures have an approximate
average amplitude of between 250 and 400 nanometers.
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Application 13/087,435
The References
The Examiner relies on the following references as evidence in
rejecting the claims on appeal:
Sproul et al., US 4,428,811 Jan. 31, 1984
(hereinafter “Sproul”)
Merriam-Webster Online Dictionary, http://www.merriam-
webster.com/dictionary (last visited Oct. 15, 2014).
The 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,
second paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which the inventor or the applicant
regards as the invention. Ans. 2; Final Act. 2.
2. Claims 1—4, 6—9, and 11—14 are rejected under
35 U.S.C. § 102(b) as anticipated by or, in the alternative, under
35 U.S.C. § 103(a) as obvious over Sproul, as evidenced by Merriam-
Webster Online Dictionary. Ans. 3; Final Act. 3.
OPINION
Rejection 1
With respect to the Examiner’s rejection for indefiniteness, the
Appellant offers no substantive argument on the merits in either the Appeal
Brief or the Reply Brief.
Accordingly, because the Examiner’s Rejection 1 has not been
withdrawn and the Appellant offers no substantive argument on the merits,
we summarily affirm the rejection. Cf. Hyatt v. Dudas, 551 F.3d 1307, 1314
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Application 13/087,435
(Fed. Cir. 2008); Ex parte Frye, 2010 WL 889747, *4 (BPAI 2010) (“If an
appellant fails to present arguments on a particular issue — or, more
broadly, on a particular rejection — the Board will not, as a general matter,
unilaterally review those uncontested aspects of the rejection.”) (cited with
approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)).
Rejection 2
The Examiner bears the initial burden of establishing a prima facie
case of anticipation or obviousness. See generally In re Schreiber, 128 F.3d
1473, 1477 (Fed. Cir. 1997); In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992).
The Examiner finds that Sproul discloses all of the limitations of
claim 1, including the step of polishing the surface of said substrate to
reduce nucleation sites. Ans. 3, 4 (citing Sproul, Abstract, col. 3,11. 35—41,
40-43, 48—62). Regarding the polishing step, the Examiner finds that
Sproul et al. . . discloses that the substrate is cleaned (i.e.
polished) prior to depositing (col. 3, lines 40-43), where
‘cleaned’ is interpreted to be ‘polished’ as evidenced by
Merriam-Webster Online Dictionary defining ‘polish’ as either
‘to improve or to make something better than it was before’ or
‘to refine in manners of condition’.
Id. at 3, 4.
Appellant argues that the Examiner’s rejection of claim 1 should be
reversed because the Examiner has “failed to set forth a prima facie case of
anticipation under § 102(b) or obviousness under § 103(a).” App. Br. 5. In
particular, Appellant argues that the Examiner’s rejection is based on an
improper interpretation of the phrase “polishing the surface of said substrate
to reduce nucleation sites” and that Sproul neither teaches nor suggests this
step of claim 1. Id. at 3—5.
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Application 13/087,435
We concur with Appellant’s arguments for the reasons discussed
below. Specifically, in light of the Specification, we find that the Examiner
has improperly construed the phrase “polishing the surface of said substrate
to reduce nucleation sites,” as recited in claim 1. On the record before us,
we are also not persuaded that a preponderance of the evidence supports the
Examiner’s finding that Sproul discloses claim l’s “polishing” step.
We begin by considering the proper interpretation of the phrase
“polishing the surface of said substrate to reduce nucleation sites” and, in
particular, the term “polishing.” The Examiner interprets the term
“polishing” as meaning “to improve or to make something better than it was
before” or “to refine in manners of condition.” Ans. 3, 4 (citing Merriam-
Webster Online Dictionary).
During prosecution, claims are given their broadest reasonable
interpretation consistent with the specification. In re Am. Acad. Of Sci.
Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The words used in a claim
must be read in light of the specification, as they would have been
interpreted by one of ordinary skill in the art at the time of the invention. Id.
We are not persuaded that the Examiner’s interpretation constitutes the
broadest reasonable interpretation in light of the Specification and the
language of the claims.
Claim 1 ’s polishing step recites “polishing the surface of said
substrate to reduce nucleation sites” and the Specification provides that “the
surfaces of the electrodes are polished prior to the deposition of the coating
using the PVD process.” Spec. 142. The Specification explains that the
“polishing process reduces nucleation sites on the surface of the electrode
where the columns of the structure of the coating would tend to grow, thus
tending to make the columns closer together, thereby reducing porosities in
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Application 13/087,435
the coating” and that “[t]his results in a structure wherein columns are
tightly packed together, thereby reducing the porous voids between the
columns where the resistance which contributes to the transmission line
porosity effect is greatest.” Id. at 142; see also Spec., Fig. 10.
The Specification further explains that with regard to surface
roughness “the surface would be polished to 11 micro-inches Ra or less” or
“8 micro-inches Ra or less.” Spec. 142; see also Claims App’x, claim 11
(reciting the “method of claim 1 wherein said surface is polished to an Ra of
11 micro-inches or less”) and claim 12 (reciting the “method of claim 1
wherein said surface is polished to an Ra of 8 micro-inches or less”).
Additionally, the Specification discloses that it is undesirable to have a
“surface prone to abrasion.” Id. at 14.
In light of the Specification and the language of the claims, we
conclude that a person of ordinary skill in the art at the time of the invention
would have understood the term “polishing” as recited in claim 1 to mean
“making something smooth and shiny by rubbing it” or “making smooth and
glossy usually by friction” (see Merriam-Webster Online Dictionary), which
constitutes the broadest reasonable interpretation consistent with the
specification. Am. Acad. OfSci. Tech. Ctr., 367 F.3d at 1364. This
interpretation is also consistent with Appellant’s argument (App. Br. 4) that
“polish” is a term of art used to denote a process by which the surface
roughness, i.e., “Ra of the surface” is modified.
The Examiner’s arguments that the claims are “not limited to a PVD
process” and “Appellant’s argument is not commensurate in scope with the
claims” (Ans. 6) are not persuasive because they ignore the express language
and limitation of claim 1 that the polishing step “reduce nucleation sites”
and the Specification’s disclosures regarding the same. See, e.g., Spec. 142.
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Applying the proper interpretation of the term “polishing” discussed
above, the Examiner has not established by a preponderance of the evidence
that Sproul discloses or suggests the “polishing the surface of said substrate
to reduce nucleation sites” limitation of claim 1. As Appellant correctly
points out (App. Br. 4), the portion of Sproul that the Examiner relies on for
disclosing the polishing step states that a “potential is applied to the
substrate and the argon gas ionizes, providing argon ions which bombard the
substrate to clean the surface to be coated.” Sproul, col. 3,11. 40-43
(emphasis added). Although the passage discusses cleaning the surface of
the substrate, it does not teach, suggest, or even mention the term
“polishing” or polishing the surface of the substrate to reduce nucleation
sites, as recited in the claim.
The Examiner’s assertion that Sproul’s “cleaning of an outer surface .
. . is considered to be a form of etching the substrate, yielding the surface of
the substrate to be changed due to this etching” (Ans. 8) is not persuasive
because it is conclusory and the Examiner does not identify sufficient
evidence in the record or provide an adequate technical explanation to
support it. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (holding that the
Examiner’s “rejections . . . cannot be sustained by mere conclusory
statements”). The Examiner’s argument in this regard also rests on the
Examiner’s erroneous determination that Sproul’s surface cleaning reads on
claim 1 ’s polishing step.
Moreover, for the well-stated reasons provided by Appellant at pages
4 through 6 of the Appeal Brief, including the evidentiary reference
provided in the Evidence Appendix (App. Br. 11) as support and cited in the
Affidavit of Julie A. Fetch, we find that the record evidence actually
suggests that the cleaning process described by Sproul would remove only
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Application 13/087,435
surface contaminants, and would not provide the requisite “polishing”
sufficient to reduce nucleation sites, as claimed. See App. Br. 11 (Evid.
App’x).
Accordingly, we reverse the Examiner’s rejection of claim 1 under
35 U.S.C. § 102(b) as anticipated by or, in the alternative, under
35 U.S.C. § 103(a) as obvious over Sproul. Because claims 2—4, 6—9, and
11—14 depend from claim 1, we also reverse the Examiner’s rejection of
these claims as anticipated or obvious over Sproul.
DECISION/ORDER
The Examiner’s rejection of claims 1—4, 6—9, and 11—14 under
35 U.S.C. § 112, second paragraph, for indefiniteness is affirmed.
The Examiner’s rejection of claims 1—4, 6—9, and 11—14 under
35 U.S.C. § 102(b) as anticipated by or, in the alternative, under
35 U.S.C. § 103(a) as obvious over Sproul is reversed.
It is ordered that the Examiner’s decision is AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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