Ex Parte Jardine et al

Patent Trials and Appeals BoardJun 26, 2019

14595079 - (D) (P.T.A.B. Jun. 26, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/595,079 01/12/2015 33356 7590 06/28/2019 SoCAL IP LAW GROUP LLP 310N. WESTLAKE BLVD. STE 120 WESTLAKE VILLAGE, CA 91362 FIRST NAMED INVENTOR Andrew Peter Jardine 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 ATTORNEY DOCKET NO. CONFIRMATION NO. S098-Pl5021US 3181 EXAMINER RUMMEL, TIJLIA L ART UNIT PAPER NUMBER 1784 NOTIFICATION DATE DELIVERY MODE 06/28/2019 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): USPTO@socalip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ANDREW PETER JARDINE, AND MEGHAN LOUISE CICCHI 1 (Applicant: Shape Change Technologies LLC) Appeal2018-007564 Application 14/595,079 Technology Center 1700 Before BEYERL YA. FRANKLIN, GRACE KARAFFA OBERMANN, and N. WHITNEY WILSON, Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. DECISION ON APPEAL 1 Appellant identifies the real party in interest as Shape Change Technologies LLC. Appeal Br. 1. Appeal2018-007564 Application 14/595,079 Appellant requests our review under 35 U.S.C. Â§ I34(a) of the Examiner's final decision rejecting claims 11-20. We have jurisdiction over the appeal under 35 U.S.C. Â§ 6(b ). STATEMENT OF THE CASE Claim 11 is illustrative of Appellant's subject matter on appeal and is set forth below: 11. A Nitinol and TiNi assembly comprising: a Nitinol construct; a TiNi foam created by: placing the Nitinol construct within a mold; packing a powder combination comprising Ti powder and Ni powder, and optionally, powder comprised of one or more of the elements Cu, Hf, Zr, Pt, Pd, Au, Cd, Ag, Nb, Ta, 0, N, B, and H, into the mold; and initiating a process of self-propagating high temperature synthesis of the powder combination within the mold to create a series of micro-welds as a chemical bond between the Nitinol construct and a resulting TiNi foam to thereby create the Nitinol and TiNi assembly. THE REJECTIONS 1. Claims 11-20 are rejected under 35 U.S.C. Â§ 112(b), second paragraph, as being indefinite. 2. Claims 11-20 are rejected under 35 U.S.C. Â§ 103 as being unpatentable over Jardine (Jardine, A. P., "Fast-Response-Time Shape- Memory-Effect Foam Actuators" NASA Tech Briefs, pp. 18-19 (2010)). 3. Claims 11-21 are rejected under 35 U.S.C. Â§ 103 as being unpatentable over Jardine as applied above and further in view of Gjunter (US 2004/0049282 Al, published Mar. 11, 2004). 2 Appeal2018-007564 Application 14/595,079 4. Claims 11-20 are rejected under 35 U.S.C. Â§ 103 as being unpatentable over Gjunter in view of Streuber (US 6,465,111 Bl, issued Oct. 15, 2002) or Jardine. 5. Claims 11-20 are rejected under 35 U.S.C. Â§ 103 as being unpatentable over Magnuson (US 2007/0118173 Al, published May 24, 2007) in view of Jardine and Streuber. 6. Claims 11-21 is rejected under 35 U.S.C. Â§ 103 as being unpatentable over Magnuson, Jardine and/or Streuber, as applied above, and further in view of Gjunter. ANALYSIS As a preliminary matter, as to Appellant's arguments concerning the restriction requirement (beginning on page 5 of the Appeal Brief), such is not under our jurisdiction as it a petitionable matter. Accordingly, we cannot grant Appellant the relief requested with regards to the restriction requirement and, therefore, do not address Appellant's arguments. Upon consideration of the evidence and each of the respective positions set forth in the record, we find that the preponderance of evidence supports Appellant's position in the record. We thus reverse the Examiner's decision for the reasons provided by Appellant in the record, and add the following for emphasis. Rejection 1 It is the Examiner's position that the meaning of claim 11 is vague because it is unclear if "Nitinol" refers generically to a nickel-titanium alloy or if it refers to a particular composition of nickel and titanium. The 3 Appeal2018-007564 Application 14/595,079 Examiner states that the Specification does not disclose the specific composition (i.e. percentages of Ni, Ti, and any other components) ofNitinol. Ans. 2-3. Beginning on page 8 of the Appeal Brief, Appellant refers to various parts of the Specification for providing definitive meaning to the term. We agree with Appellant that the Specification defines the composition ofNitinol with sufficient clarity. An ordinarily skilled artisan would have understood, based on the disclosure of the Specification, that the term "Nitinol" refers to a nickel-titanium alloy. On that point, the Specification expressly states, "Nitinol and TiNi metals are chemically identical" moieties "created though the chemical combination of Ti, Ni, and one or more elemental compositions of Cu, Hf, Zr, Pt, Pd, Au, Cd, Ag, Nb, Ta, 0, N, B, and/or H." Spec. 7. Even the Examiner acknowledges that "paragraph 7" of the Specification indicates that Nitinol is "an alloy primarily comprising nickel and titanium." Ans. 3. That degree of clarity is sufficient to comply with the definiteness requirements of 35 U.S.C. Â§ 112(b). In view of the above, we reverse Rejection 1. Rejections 2 and 3 We refer to pages 10-14 of the Appeal Brief regarding Appellants position involving Rejection 2. The Examiner's position is set forth on pages 4--6 of the Answer. In response to Appellant's argument in the Appeal Brief, beginning on page 17 of the Answer, the Examiner recognizes that Jardine does not teach a structure having a series of micro-welds as a chemical bond between the 4 Appeal2018-007564 Application 14/595,079 Nitinol construct and a resulting TiNi foam to thereby create the Nitinol and TiNi assembly. However, the Examiner states it would have been obvious to make a product from Nitinol or an alloy that can be considered "Nitinol" with TiNi foam portions that are formed by SHS (self-propagating high temperature synthesis), thus resulting in a series of connection points, or "micro-welds", in view of the evidence provided by Appellant's Specification that joints between the Nitinol portion and the TiNi foam portion are "microwelds" (Spec. ,r,r 27 and 32). Ans. 17, 21. In reply, Appellant reiterates that the applied references [Jardine for Rejection 1] involves one piece ofNitinol rather than a piece ofNitinol and a piece of TiNi joined together, and therefore does not suggest the claimed invention. Reply Br. 2. As stated above, the Examiner recognizes this too, and resorts to relying upon Appellants' Specification in an effort to make an obviousness rejection. However, the conclusion of obviousness cannot be derived from Appellant's own Specification. It is improper, to "[use] that which the inventor taught against its teacher." In re Lee, 277 F.3d at 1343, citing W.L. Gore & Assocs. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir. 1983). See In re Dow Chem. Co., 837 F.2d 469,473 (Fed. Cir. 1988) ("[ t ]here must be a reason or suggestion in the art for selecting the procedure used, other than the knowledge learned from the applicant's disclosure"); Cardiac Pacemakers, Inc. v. St. Jude Medical, Inc., 381 F.3d 1371 (Fed. Cir. 2004) ("the suggestion to combine references must not be derived by hindsight from knowledge of the invention itself."). We thus reverse Rejection 2. We also reverse Rejection 3 because Jardine is used as the primary reference in that rejection, which, therefore, suffers the same deficiency as Rejection 2. 5 Appeal2018-007564 Application 14/595,079 Rejection 4 Rejection 4 involves the primary reference of Gjunter. In the Reply Brief, Appellant similarly argues that the applied references involve one piece ofNitinol rather than a piece ofNitinol and a piece of TiNi joined together, and that therefore the applied art does not suggest the claimed invention. Reply Br. 2. In a similar manner, as discussed above, the Examiner recognizes this too, and resorts to relying upon Appellant's Specification in an effort to make an obviousness rejection (the Examiner's rejection is set forth on pages 8-12 of the Answer). Therein, the Examiner's conclusion of obviousness is again derived from Appellant's own Specification. Ans. 10. We thus reverse Rejection 4 for the same reasons that we reversed Rejections 2 and 3, supra. Rejections 5 and 6 The Examiner's position for this rejection is set forth on pages 12-16 of the Answer. Therein, the Examiner's conclusion of obviousness is again derived from Appellant's own Specification. Ans.14. Furthermore, Appellant points out that Magnuson's passive mention of "attach[ment]" in ,r [0028] indicating that the "struts" may be "attached ... by any suitable means, including but not limited to sonic bonding, thermal bonding, or adhesive bonding" relied upon by the Examiner is inadequate as there is no mention of any distinction between Nitinol and TiNi or chemical bonds joining the two different type of components as required by Appellant's claim limitations. Appellant correctly notes that the other applied references do not remedy this deficiency of Magnuson for the reasons presented by Appellant in the record. Reply Br. 3. We thus reverse 6 Appeal2018-007564 Application 14/595,079 Rejections 5 and 6 for similar reasons that we reversed Rejections 2--4, supra. DECISION Each rejection is reversed. REVERSED 7