Ex Parte Laramy et al

Patent Trial and Appeal BoardMar 11, 2019

13956501 (P.T.A.B. Mar. 11, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/956,501 08/01/2013 34399 7590 03/13/2019 GARLICK & MARKISON 100 Congress A venue, Suite 2000 AUSTIN, TX 78701 FIRST NAMED INVENTOR Christine Laramy 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. MEMOOl 9011 EXAMINER FRERE, WILLIAM R ART UNIT PAPER NUMBER 3783 NOTIFICATION DATE DELIVERY MODE 03/13/2019 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): MMurdock@TEXASPATENTS.COM bpierotti@texaspatents.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CHRISTINE LARAMY and BRUCE STUCKMAN 1 Appeal 2018-006729 Application 13/956,501 Technology Center 3700 Before EDWARD A. BROWN, MICHAEL L. HOELTER, and ANNETTE R. REIMERS, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is a decision on appeal, under 35 U.S.C. Â§ 134(a) from the Examiner's rejection of claims 1-10. 2 Non-Final Act. 1 (Office Action Summary). We have jurisdiction under 35 U.S.C. Â§ 6(b). For the reasons explained below, we find error in the Examiner's rejections of these claims. Accordingly, we REVERSE the Examiner's rejections. 1 "The present U.S. utility patent application is currently owned by Memory Effect Medical." App. Br. 2. We thus proceed on the basis that, for purposes of this appeal, Memory Effect Medical is the "Appellant." 2 Claims 11-20 have been withdrawn from consideration. See App. Br. 20- 21 (Claims Appendix). Appeal2018-006729 Application 13/956,501 CLAIMED SUBJECT MATTER The disclosed subject matter "relates generally to medical devices that intravenously insert shape memory members in a patient." Spec. 1 :21-22. Claim 1, the sole independent claim, is representative of the claims on appeal, and is reproduced below. 1. A system for deploying a shape memory catheterization device within a patient, the system comprising: a shape memory polymer having a transition temperature that is higher than a normal body temperature of the patient; a catheter having a delivery rod for endovascular insertion of the shape memory polymer; a heat source for heating the shape memory polymer above the transition temperature, wherein heating the shape memory polymer above the transition temperature causes the shape memory polymer to undergo a shape transformation from a catheterization shape to a transformed shape, and further causes a change in a resistance of the shape memory polymer as a result of the shape transformation; and a transformation data generator, coupled to the catheter, that includes a circuit driver for driving a detection circuit that monitors the change in resistance of the shape memory polymer and generates transformation data based on the change in the resistance of the shape memory polymer resulting from the shape transformation of the shape memory polymer. Saadat et al. Maitland et al. Chowdhury Shrivastava et al. REFERENCES us 5,989,242 us 6,102,917 US 2011/0178380 Al US 2012/0041470 Al 2 Nov. 23, 1999 Aug. 15, 2000 July 21, 2011 Feb. 16,2012 Appeal2018-006729 Application 13/956,501 THE REJECTIONS ON APPEAL 3 Claims 1-10 are rejected under 35 U.S.C. Â§ 112(a), as failing to comply with the enablement requirement. Non-Final Act. 3. Claims 1--4, 9, and 10 are rejected under 35 U.S.C. Â§ I03(a) as being unpatentable over Saadat and Maitland. Non-Final Act. 4. Claims 5 and 6 are rejected under 35 U.S.C. Â§ I03(a) as being unpatentable over Saadat, Maitland, and Shrivastava. Non-Final Act. 8. Claims 7 and 8 are rejected under 35 U.S.C. Â§ I03(a) as being unpatentable over Saadat, Maitland, and Chowdhury. Non-Final Act. 9. ANALYSIS The rejection of claims 1-10 as failing to comply with the enablement requirement The Examiner determines that, with respect to the limitation "wherein heating the shape memory polymer ... further causes a change in a resistance of the shape memory polymer," "[i]t is unclear from applicant's specification what change in resistance is being determined." Non-Final Act. 3; see also Ans. 4. The Examiner points out that the Specification discloses that the "resistance may decrease depending on the ... position and orientation of the resistive element or elements included in the shape memory member 100." Non-Final Act. 3; Ans. 4 (both quoting Spec. 10:30- 11:24) (emphasis added). As such, the Examiner construes "'a change in 3 In the Non-Final Office Action, claim 10 is also objected to for informalities. See Non-Final Act. 3. However, the objection is not within the jurisdiction of the Board. See 3 7 C.F .R. Â§ 1.181. 4 Throughout the Non-Final Office Action and the Answer, the Examiner refers to Appellant's Specification via the numbered paragraphs of Pre-Grant Publication No. 2014/0207225 Al, dated July 24, 2014. Appellant, on the 3 Appeal2018-006729 Application 13/956,501 resistance of the shape memory polymer' of Claim 1" as encompassing a change in the resistance of "medicaments or devices enclosed or trapped by the shape memory polymer." Non-Final Act. 4 (emphasis added); see also Ans. 4. "Based on this definition, [the] Examiner determined that the breadth and nature of the invention of Claim 1 would render one of ordinary skill in the art unable to decipher what change in resistance is being determined." Ans. 4. Thus, the "Examiner believes that Claim 1 would result in the undue or unreasonable experimentation for one of ordinary skill in the art." Ans. 5. Appellant contends that "[ o ]ne of ordinary skill in the art, when presented with the specification, would be able to understand how to make and use the invention without undue experimentation." App. Br. 6 (referencing Spec. 7:4--13, 9:11-11:13 and Fig. 5) (emphasis omitted); see also Spec. 16:6-21. There is merit to Appellant's contention because the Examiner's understanding above encompasses not only the internal resistance of the polymer material itself, but also the resistance of separate and distinct substances or components from the polymer material that the polymer material may grasp, enclose, or trap. One skilled in the art, upon reading Appellant's Specification, would have understood that the polymer material itself may be electrically conductive, or such material may be doped with a conductive compound. See Spec. 9: 11-24. However, one skilled in the art would not have understood Appellant's Specification to encompass other hand, cites to the page and line numbering of the original Specification filed on August 1, 2013. For consistency, we convert the Examiner's pre- grant publication references to the page/line numbering found in the original Specification. 4 Appeal2018-006729 Application 13/956,501 components beyond the polymer material itself (i.e., medicaments or devices that may be "enclosed or trapped by the shape memory polymer") as being included when ascertaining "a change in a resistance of the shape memory polymer" as recited. Hence, because the Examiner's construction of the scope of the claimed "shape memory polymer" extends beyond the shape memory material itself (see supra), we are not persuaded that the proper (i.e., narrower) scope of this claim recitation was not enabled by Appellant's Specification. In other words, the Examiner's enablement rejection is premised on an erroneous claim construction. Instead, we determine that Appellant has shown that a skilled artisan, via the original Specification, would understand that the subject invention works, and how it works, without undue experimentation. Accordingly, we reverse the rejection of claims 1-10 as failing to comply with the enablement requirement. The rejection of claims 1-4, 9, and 10 as being obvious over Saadat and Maitland The Examiner relies on Saadat for disclosing a material transformation that "causes a change in a resistance of the shape memory member." Non-Final Act. 5. However, Saadat does not disclose that this member is a "shape memory polymer," as recited. Non-Final Act. 5 ( emphasis added). The Examiner relies on Maitland for disclosing a "shape memory member being a shape memory polymer." Non-Final Act. 5. Central to the Examiner's findings regarding Saadat, is the Examiner's unswerving inclusion of ball 72 as a part of Saadat's "shape memory member." See Non-Final Act. 5; Ans. 6-8. Saadat teaches that ball 72 is an item temporarily held by shape memory fingers 52 and 54, and that 5 Appeal2018-006729 Application 13/956,501 it is subsequently released by these fingers. See, e.g., Saadat 2:34--40; 5:6- 7; 5:29--32; 5:56-59; see also Saadat Figs. 4 (ball being "held") and 5 (after the ball is "released therefrom"). Ball 72 is clearly distinct from and external to Saadat's shape memory fingers 52, 54. See supra. Thus, in view of the claim construction undertaken above, the Examiner's inclusion of Saadat's ball 72 as part of Saadat's shape memory material is not a reasonable interpretation of "shape memory polymer," and particularly not of the limitation directed to ascertaining "a change in a resistance of the shape memory polymer." In other words, the Examiner proffers a definition for a "shape memory" material that is unreasonable when contrasted with Appellant's Specification, and also with the understanding a skilled person would have had upon reading this Specification. See supra. Furthermore, there is no indication that Saadat's ball 72 is made of a shape memory material. Thus, the Examiner's finding that ball 72 is part of Saadat's shape memory member is premised on an incorrect claim construction, and thus the Examiner's reliance on Saadat's ball 72 as a component of Saadat's shape memory polymer is faulty. Additionally, Maitland is not relied upon to cure this deficiency. Accordingly, and based on the record presented, the Examiner has not established by a preponderance of the evidence that the combination of Saadat and Maitland renders claims 1--4, 9, and 10 obvious. We do not sustain the rejection of these claims. The rejection of claims 5 and 6 as being obvious over Saadat, Maitland, and Shrivastava The rejection of claims 7 and 8 as being obvious over Saadat, Maitland, and Chowdhury 6 Appeal2018-006729 Application 13/956,501 Claims 5-8 depend from claim 1. App. Br. 19 (Claims App'x). The Examiner's rejections of claims 5 and 6 as unpatentable over Saadat, Maitland, and Shrivastava, and of claims 7 and 8 as unpatentable over Saadat, Maitland, and Chowdhury, are based on the same unsupported findings in Saadat regarding ball 72 as discussed above with respect to claim I. See Non-Final Act. 8-11. The Examiner does not rely on Shrivastava or Chowdhury in any manner that would remedy this deficiency. Accordingly, for reasons similar to those already discussed, we do not sustain the Examiner's rejections of claims 5-8 as unpatentable over the various combinations of cited art. DECISION The Examiner's rejection of claims 1-10 under 35 U.S.C. Â§ 112, first paragraph, is reversed. The Examiner's rejections of claims 1-10 under 35 U.S.C. Â§ 103(a) are reversed. REVERSED 7