Ex Parte Lewis et al

Patent Trial and Appeal BoardAug 30, 2017

13920501 (P.T.A.B. Aug. 30, 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. 13/920,501 06/18/2013 Thomas G. Lewis H-KN-00481 (1) 7412 149863 7590 09/01/2017 CARDINAL HEALTH INC. ATTN: DANIEL C. STELTER 300 South Riverside Plaza Suite 2010 Chicago, IL 60606 EXAMINER BOBISH, CHRISTOPHER S ART UNIT PAPER NUMBER 3746 NOTIFICATION DATE DELIVERY MODE 09/01/2017 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): C AH @ cardinal-ip. com karen.dangelo @ cardinalhealth.com patent@cardinalhealth.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte COVIDIEN LP1 Appeal 2016-007046 Application 13/920,501 Technology Center 3700 Before DANIEL S. SONG, KEN B. BARRETT, and ANTHONY KNIGHT, Administrative Patent Judges. SONG, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellant appeals under 35 U.S.C. § 134 the Examiner’s final rejection of claims 1—6, 8—11, and 13—20 in the present application. Claims 7, 12, and 21—27 have been previously canceled (App. Br. 2). We have jurisdiction under 35 U.S.C. §§ 6(b) and 134. We AFFIRM. 1 Referred to as “Appellant” herein. The real party in interest is Medtronic pic, the parent entity of Covidien LP (Appeal Brief (hereinafter “App. Br.”) 1). Appeal 2016-001746 Application 13/920,501 The claimed invention is directed to a medical pumping apparatus having a rotatable assembly and an electromagnetic radiation emitter- detector pair (Abstract). Representative independent claim 1 reads as follows (App. Br. 18, Claims App’x, emphasis added): 1. A medical pumping apparatus comprising: a pump rotor including a surface having a reflective portion for reflecting electromagnetic radiation and a non- reflective portion that does not reflect electromagnetic radiation, the nonreflective portion of the surface of the pump rotor is at least one of the following: hatched, scratched, pitted, and roughed, such that said non-reflective surface diffuses electromagnetic radiation incident thereon; a motor for rotating the pump rotor; an emitter for emitting electromagnetic radiation, said emitter positioned to emit electromagnetic radiation sequentially on the reflective and non-reflective portions of the surface of the pump rotor as the pump rotor rotates; and a detector for receiving electromagnetic radiation reflected by the surface of the pump rotor and providing a detection signal indicative of the received electromagnetic radiation for monitoring rotation of the pump rotor. The Examiner rejects various claims as unpatentable under 35 U.S.C. § 103(a)2 as follows: 2 Throughout the Final Office Action and the Answer, the Examiner states that the various claims are “rejected under 35 U.S.C. 102(b) as being anticipated.” It is clear from the texts of the rejections and the Appellant’s response that the actual rejection is that of obviousness under 35 U.S.C. § 103(a). 2 Appeal 2016-001746 Application 13/920,501 1. Claims 1—2, 6, 8—9, 11, 133, 15—16, and 19 as obvious over Dumas (US Patent No. 5,531,680, issued July 2, 1996) in view of Abe (US Patent No. 4,806,751, issued February 21, 1989) (Final Office Action (hereinafter “Final Act.”) 2). 2. Claims 3 and 17 as obvious over Dumas in view of Abe and Olliffe (US Patent No. 3,982,162, issued September 21, 1976) (Final Act. 5). 3. Claims 4, 10, and 18 as obvious over Dumas in view of Abe and Hamburg (US Patent No. 3,673,476, issued June 27, 1972). 4. Claims 5, 14, and 20 as obvious over Dumas in view of Abe and Wolfberg (US Patent No. 5,533,453, issued July 9, 1996) (Final Act. 7). ANALYSIS Only those arguments actually made by the Appellant have been considered in this decision. Arguments that the Appellant could have made but chose not to make have not been considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv). 3 The Examiner appears to have made another typographical error in that claim 13 is not identified in the heading of this rejection (Final Act. 2; Ans. 2), but is identified in the body of the rejection (Final Act. 4; Ans. 4). It is clear from the text of the rejection and the Appellant’s response that the actual rejection encompasses claim 13. 3 Appeal 2016-001746 Application 13/920,501 Rejection 1 Claim 1 The Examiner finds that Dumas discloses claim 1 except for marring the surface of a rotor so as to provide a non-reflective surface on the rotor (Final Act. 3; see also Ans. 12). The Examiner explains that “Dumas does not specify a manner in which the non-reflective portions (64) are formed,” and that Abe “is relied upon to teach such a feature.” (Ans. 9). Specifically, the Examiner finds that Abe discloses the limitation reciting that the non- reflective portion be hatched, scratched, pitted, or roughed (Final Act. 3, citing Abe, col. 3,1. 44—col. 4,1. 2; see also Final Act. 8—9). Indeed, Abe teaches a non-reflective portion satisfying the noted limitation by specifically disclosing that in order to further increase the difference in light reflectivity as described above, surfaces of the non-reflective portions 4 of the code wheel 2 may be treated to provide a satin crape like appearance by sand-blasting or the like to improve the irregular reflectivity of the same. (Abe, col. 3,1. 44—col. 4,1. 2). Based on the teachings of Dumas and Abe, the Examiner concludes that “[i]t would have been obvious to one of ordinary skill in the art of rotary sensors at the time of the invention to mar the non-reflective surfaces of the pumping apparatus of Dumas as taught by Abe in order to increase the non reflectivity of the surfaces.” (Final Act. 4). We agree with the Examiner, and address the Appellant’s arguments below. The Appellant disagrees with the Examiner and argues that “claim 1 requires the actual surface material of the pump rotor form the non-reflective portion. In particular, it is the actual surface of the pump rotor that is one of 4 Appeal 2016-001746 Application 13/920,501 hatched, scratched, pitted, or roughed.” (App. Br. 7). Hence, the Appellant interprets the limitations of the claim to exclude any other material or feature other than the material of the “pump rotor” from providing, or otherwise satisfying, the recited non-reflective portion limitation. The Appellant further asserts that the prior art “do[es] not show or suggest the actual surface material of a pump rotor that forms a non-reflective portion.” (Reply Br. 2). According to the Appellant, The cited references teach non-reflective components that are completely separate surfaces from the pump rotor, and attaching the separate components to the rotor or to a component of the device other than the rotor. A separate piece of material applied over a surface of the rotor to form the non- reflective portion is not included in the scope of claim 1. (App. Br. 7-8). However, even presuming that the Appellant’s interpretation of the claim is correct, its argument is unpersuasive because Dumas already discloses the non-reflective surface 64 provided on platen 22 (Dumas, Fig. 1). While this non-reflective surface 64 of Dumas is not disclosed as being one of “hatched, scratched, pitted, and roughed,” the Examiner has relied upon Abe for disclosing that such intentional marring of non-reflective surfaces is known in rejecting the claim (Final Act. 4, 9). The Appellant argues that Dumas discloses “coloring the platen surface to produce the non-reflective properties.” (App. Br. 8; referring to Dumas, col. 3,11. 62—64; see also App. Br. 10). In this regard, the Appellant appears to assert that there is some type of color coating on the platen surface, and further argues that “Abe does not teach a non-reflective portion 5 Appeal 2016-001746 Application 13/920,501 that cannot be disassembled from a rotor/motor after manufacture which is an advantage of Applicant's claimed pumping apparatus.” (Reply Br. 4). However, we agree with the Examiner that “[t]here is no teaching [in Dumas] of either coloring or an ‘attaching’ of any surfaces,” and that “Dumas is at best silent regarding the formation of non-reflective portions of the rotor.” (Ans. 10). The portion of Dumas cited by the Appellant is in reference to the schematic illustration of Figure 3 that shows “three light reflective surfaces 62 and three dark, non-reflective surfaces 64.” (Dumas, col. 2,11. 17—19; col. 3,11. 62—64; Fig. 3). The disclosure of a “dark surface” does not imply that there is a coating on the platen. The platen must be made of a material, and most materials (and objects) have color. At best, this portion of Dumas teaches that the non-reflective surfaces are darker than the light reflective surfaces, and are sufficiently dark to be non-reflective. The Appellant also observes that Abe discloses code wheel, which is a separate structure/component from a pump rotor (App. Br. 8—10), and as such, “when sandblasting is used to form a non-reflective surface, a part... separate from the components of the pump is used” (Reply Br. 3) so that a separate encoder would be attached to the platen of Dumas (App. Br. 10). According to the Appellant, “[t]he disclosure in Abe does not broadly teach the use of marring any surface (and certainly not for use on the material of the pump rotor) for producing non-reflective properties. . . . The only teaching of sand-blasting a surface is in the context of a material distinct from the rotor suitable for sandblasting (i.e„ a code wheel).” (App. Br 10; see also Reply Br. 3). 6 Appeal 2016-001746 Application 13/920,501 However, not only does the Appellant unpersuasively argue Abe individually, its argument does not address the basis upon which the Examiner relies on Abe. In this regard, contrary to the Appellant’s assertion, Abe does broadly establish that it was well-known to sandblast non- reflective portions in sensors systems that detect light (i.e., electromagnetic radiation) reflected off of non-reflective and reflective surfaces, and to use sandblasting to increase the difference in the amount of light reflected by these surfaces (Abe, col. 3,1. 44—col. 4,1. 2). Therefore, in view of the above considerations, we agree with the Examiner that claim 1 would have been obvious to one of ordinary skill in the art, and affirm the rejection of claim 1. Claim 6 Claim 6 depends from claim 1, and further recites that “wherein the reflective portion of the surface of the pump rotor comprises a smooth portion of the pump rotor produced when forming the pump rotor.” (App. Br. 19, Claims App’x). The Examiner finds that Abe already satisfies this limitation (Final Act. 4). The Appellant disagrees and argues that “claim 6 requires the actual surface material of the pump rotor form both the non-reflective and the reflective portions.” (App. Br. 11; see also Reply Br. 4). Hence, the Appellant interprets the limitations of the claim to exclude any other material or feature, other than the material of the “pump rotor,” from providing, or otherwise satisfying, the recited reflective portion limitation. The Appellant asserts that Dumas discloses strips of reflective surfaces are 7 Appeal 2016-001746 Application 13/920,501 attached to the surface of the platen, and thus, the reflective surfaces are “not formed from the actual material surface of the platen 22.” (App. Br. 11). In support of this assertion, the Appellant points to Figure 1 of Dumas as showing a difference between reflective surface 62 and non-reflective surfaces 64, and that the thicker line of reflective surface 62 represents a reflective strip, which “separate pieces attached to the rotor.” (Reply Br. 4— 5). These arguments are unpersuasive. Firstly, as noted, Dumas already discloses the non-reflective portion of the rotor. Secondly, as to the reflective portion, the Appellant’s assertion that the thicker line of reflective surface 62 represents a reflective strip it is speculative. While the Specification of Dumas does disclose that reflective surfaces “may be strips,” such a strip is not enumerated or discussed in describing Figure 1. In contrast, in an alternative embodiment of Dumas of Figure 6 that actually utilizes light reflective strip made from a “material, such as paper, with an adhesive backing,” which is then attached to the surface of the platen, the adhered “reflective surface 266” is specifically enumerated, discussed, and clearly illustrated utilizing a narrow, rectangular box (instead of a thick line) (Dumas, col. 5,11. 34-40; Fig. 6). Moreover, Dumas specifically distinguishes this embodiment of Figure 6 as being “unlike the embodiment shown in FIG. 1” in that the platen is made flat so as to allow for use of such adhesively attached reflective strip (Dumas, col. 5,11. 28—31). Accordingly, we find that upon preponderance of the evidence, it is more probable than not, that reflective surface 62 is rendered with a thicker line to distinguish it from non-reflective surface 64 in the cross sectional view illustrated in 8 Appeal 2016-001746 Application 13/920,501 Figure 1, and does not represent some unidentified strip that is attached to the platen. Thirdly, as noted above, the Appellant’s arguments are based on a narrow interpretation of the claim. However, the claim language fails to define what constitutes the recited pump rotor and whether the recited rotor is a unitary component or an assembly of components. In that regard, the Appellant’s Specification states “[i]t is also contemplated that the pump rotor 106 may be composed of multiple pieces of material that are fastened, glued, or otherwise attached to one another to form the complete pump rotor 106.” (Spec. 123). In addition, claim 1 and claim 6 depending therefrom merely recite that the pump rotor “includ[es] a surface having a reflective portion ... and a non-reflective portion.” As such, the broadest reasonable interpretation in view of the specification would not preclude adhered reflective (or non-reflective) strips from being considered to be part of “a surface” the pump rotor. Accordingly, even if the embodiment shown in Figure 1 of Dumas did include an attached reflective strip, in our view, such an implementation can reasonably be considered to be the surface of the pump rotor and thus, satisfy the claim language. Hence, the Appellant’s arguments are unpersuasive for this alternative reason as well. Therefore, in view of the above, we are not persuaded that the Examiner erred and affirm the rejection of claim 6. Claim 9 As to independent claim 9, the Appellant points to language therein, which is similar to that of claim 1, and relies on arguments submitted with 9 Appeal 2016-001746 Application 13/920,501 respect to claim 1 (App. Br. 12). Accordingly, because the Appellant’s arguments are unpersuasive for the reasons discussed supra, we likewise affirm the rejection of claim 9. Claim 13 Claim 13 depends from independent claim 9, and recites that “the reflective portion of the surface of the pump rotor comprises a polished portion of the surface of the pump rotor.” (App. Br. 21, Claims App’x). The Examiner finds that Abe already discloses this limitation (Final Act. 4). The Appellant argues that the claim requires both the non-reflective and the reflective portions be formed on the surface of the pump rotor, and that Dumas discloses reflective strips, which are attached to the platen (App. Br. 12—13). However, these arguments are unpersuasive for the reasons already discussed relative to claim 6, and thus, the rejection of claim 6 is affirmed. Claim 15 Independent claim 15 recites a method including the step of “marring a portion of the surface of the rotor” (App. Br. 20—21, Claims App’x). The Appellant relies on the same unpersuasive arguments submitted with respect to claim 1 (App. Br. 13). Accordingly, the rejection of claim 15 is also affirmed. 10 Appeal 2016-001746 Application 13/920,501 Claim 19 Claim 19 depends from claim 15 and recites the step of “providing the reflective portion of the surface comprises forming the rotor with a mold having a smooth area corresponding to the reflective portion of the surface of the rotor.” (App. Br. 21, Claims App’x). The Appellant submits substantially the same unpersuasive arguments as those submitted with respect to claims 6 and 13 (App. Br. 14—15). Accordingly, the rejection of claim 15 is also affirmed. The Appellant does not separately argue any of the remaining dependent claims subject to Rejection 1. Therefore, these remaining claims fall with claims from which they depend, and the Examiner’s rejection of claims 1—2, 6, 8—9, 11, 13, 15—16, and 19 is affirmed. Rejections 2, 3, and 4 As to the remaining rejections, the Appellant argues that the cited secondary references do not cure the deficiencies of Dumas and Abe as discussed relative to the various independent claims (App. Br. 15—16). Accordingly, having found no deficiencies in the combination of Dumas and Abe, we affirm these rejections of the remaining claims on appeal. CONCLUSIONS The Examiner’s rejections of claims 1—6, 8—11, and 13—20 are AFFIRMED. 11 Appeal 2016-001746 Application 13/920,501 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 12