Ex Parte Mohl

Patent Trial and Appeal Board

Sep 4, 2018

14454965 (P.T.A.B. Sep. 4, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/454,965 08/08/2014
26191 7590 09/06/2018
FISH & RICHARDSON P.C. (TC)
PO BOX 1022
MINNEAPOLIS, MN 55440-1022
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Werner Mohl
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.
25955-0013003 4177
EXAMINER
MARLEN, TAMMIE K
ART UNIT PAPER NUMBER
3762
NOTIFICATION DATE DELIVERY MODE
09/06/2018 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):
P ATDOCTC@fr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WERNER MOHL
(APPLICANT: MIRACOR MEDICAL SYSTEMS GmbH)
Appeal2017-008461
Application 14/454,965 1
Technology Center 3700
Before DONALD E. ADAMS, DEMETRA J. MILLS, and
ULRIKE W. JENKS, Administrative Patent Judges.
ADAMS, Administrative Patent Judge.
DECISION ON APPEAL
This Appeal under 35 U.S.C. § 134(a) involves claims 2-9 and 12-17
(App. Br. 1). Examiner entered rejections under 35 U.S.C. § 103(a). We
have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
1 Appellant identifies "Miracor Medical Systems GmbH" as the real party in
interest (App. Br. 1 ).
Appeal2017-008461
Application 14/454,965
STATEMENT OF THE CASE
Appellant's disclosure "relates to a catheter to assist the performance
of a heart with at least one pump" (Spec. 1: 12-13). Appellant's
independent claims 2 and 12 are representative and reproduced below:
2. A device for assisting performance of a heart, comprising:
a pump for conveying a fluid in one or more blood
vessels;
a control circuit configured to regulate a conveyed
quantity of said fluid; and
a heart ventricle catheter having one or more sensors in
communication with the control circuit to supply measurement
values indicative of cardiac output, wherein the control circuit
is configured to regulate the conveyed quantity of said fluid as a
function of said measurement values of the one or more sensors
of the heart ventricle catheter, and wherein the pump is formed
as an intravasal rotary pump on a periphery or at a distal end of
the catheter, and a rotor of the pump is arranged on an outer
side of the catheter, is supported by a central shaft configured to
rotate with the rotor, and is connected via a magneto coupling
with a drive which is arranged inside the catheter;
wherein the central shaft occupies a central longitudinal
axis of rotation of the rotor between a first magnet of the
magneto coupling and the rotor.
(App. Br. 9 (emphasis added).)
12. A device for assisting performance of a heart, comprising:
a pump for conveying a fluid in one or more blood
vessels;
a control circuit configured to regulate a conveyed
quantity of said fluid; and
a heart ventricle catheter having one or more sensors in
communication with the control circuit to supply measurement
values indicative of cardiac output, wherein the control circuit
is configured to regulate the conveyed quantity of said fluid as a
function of said measurement values of the one or more sensors
2
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Application 14/454,965
of the heart ventricle catheter, and wherein the pump is formed
as an intravasal rotary pump on a periphery or at a distal end of
the catheter, and a rotor of the pump is arranged on an outer
side of the catheter and is connected via a magneto coupling
with a fluid-powered drive which is arranged inside the
catheter;
wherein the rotor of the pump is coupled with a drive
wheel via the magneto coupling, said drive wheel being
arranged inside the catheter and formed as a hydraulically or
pneumatically operated paddle wheel; and
further comprising a first lumen of the catheter supplying
driving fluid to the drive wheel, and a second lumen of the
catheter carrying off driving fluid from the drive wheel.
(Id. at 10-11 (emphasis added).)
The claims stand rejected as follows:
I. Claims 2 and 6-9 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over the combination of Rau2 and Mohl. 3
II. Claims 3 and 5 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over the combination of Rau, Mohl, and Aboul-Hosn. 4
III. Claim 4 stands rejected under 35 U.S.C. § I03(a) as unpatentable
over the combination of Rau, Mohl, Aboul-Hosn, and Fasciano. 5
2 Rau et al., US 6,176,848 Bl, issued Jan. 23, 2001.
3 Mohl, US 6,506,146 Bl, issued Jan. 14, 2003.
4 Aboul-Hosn, US 6,083,260, issued July 4, 2000.
5 Fasciano et al., US 6,540,658 Bl, issued Apr. 1, 2003.
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Application 14/454,965
IV. Claims 12-17 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Rau, Aboul-Hosn, and Mohl. 6
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
ANALYSIS
Rau's Figure 3 is reproduced below:
Rau's "FIG. 3 is a longitudinal sectional view of [an] embodiment of [Rau's]
blood pump" (Rau 3: 10-11 ( emphasis removed)). Rau discloses that "[h ]ub
35 of impeller 34 is provided with blades 36 or pump buckets radially
projecting therefrom" and
[ t ]he rotation of motor shaft 50 is transmitted to impeller 34
through a magnetic coupling 53. The magnetic coupling
comprises first magnetic portions 54 arranged within the motor
housing and connected to motor shaft 50, and second magnetic
portions 55 connected to hub 35. The two magnetic portions
6 We note Examiner's inclusion of canceled claim 11 in the statement of this
rejection (see Examiner's May 18, 2016 Final Action (Final Act.) 8; Ans. 2;
cf Appellant's July 25, 2016 After-Final Amendment 6 ("Claim 11 has been
canceled without prejudice"); Examiner's September 27, 2016 Advisory
Action ,r 7(b) (entering Appellant's After-Final Amendment). We did not
consider Appellant's canceled claim 11 in our deliberations.
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Appeal2017-008461
Application 14/454,965
are coupled to each other through the non-magnetic end wall
45.
(Rau 4: 13-14 and 34--40 (emphasis removed).)
Rau's Figure 4 is reproduced below:
TI tt
; 2ij s~ s 3 1; ,,_ *~
Rau's "FIG. 4 is a longitudinal sectional view of a third embodiment of
[Rau's] blood pump" (Rau 3: 12-13). Examiner's annotated, "exploded,"
view of Rau's FIG. 4 is reproduced below:
/
Examiner's annotated, "exploded," view of Rau's FIG. 4 identifies those
portions of the device illustrated in Rau's FIG. 4 that Examiner believes
correspond to device Appellant's first and second lumens, i.e., lumens 1 and
2, as annotated by Examiner (see Ans. 6-7).
5
Appeal2017-008461
Application 14/454,965
Rejections 1-111:
Rejections I-III involve independent claim 2 and its dependents (see
Final Act. 4--7; Ans. 2). The device of Appellant's independent claim 2
comprises, inter alia,
a rotor of [a] pump ... supported by a central shaft configured
to rotate with the rotor, and [] connected via a magneto
coupling with a drive ... wherein the central shaft occupies a
central longitudinal axis of rotation of the rotor between a first
magnet of the magneto coupling and the rotor.
(See App. Br. 9 (Appellant's claim 2 (emphasis added)).)
Examiner finds that Rau discloses a device comprising, inter alia, "a
rotor 36 of [a] pump [12] ... supported by a central shaft 35 configured to
rotate with the rotor ... and[] connected via a magneto coupling 53 with a
drive wheel 50" (Final Act. 4; see Ans. 3). According to Examiner,
Appellant's
rotor is considered to be [Rau's] blades 36 and, thus, [to read on
Appellant's claim 2, Rau's] hub 35 must occupy a central
longitudinal axis of rotation of [Rau's] blades 36. [Rau's] [h]ub
3 5 satisfies this limitation because it is situated in or at
( definition of occupy) the central longitudinal axis of rotation of
Rau's blades 36, as can be clearly seen from ... Rau's Figure 3.
(Ans. 4.) Examiner further reasons that "[fJor a location to be between two
things, it must be between the outer borders of those two elements" (id.).
Examiner, therefore, finds that Rau's hub 35 is "between a portion of
[Rau's] magnet portions 55 and a portion of [Rau's] blades 36" (id.; see
Final Act. 11 (Rau's "hub 35 satisfies the limitations of a 'central shaft
configured to rotate with the rotor' and 'wherein the central shaft occupies a
central longitudinal axis of rotation of the rotor between a first magnet of the
magneto coupling and the rotor"')).
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Application 14/454,965
As Appellant's correctly explain, however, Rau's hub comprises
blades 36 and, thus, cannot be between Rau's blades 36 and magnet portions
55 (see generally Reply Br. 2---6; see also Rau 4: 13-14 (Rau's "[h]ub 35 ...
is provided with blades 36") (emphasis omitted)). Thus, on this record,
Examiner failed to establish an evidentiary basis to establish that Rau's hub
"occupies a central longitudinal axis of rotation ... between a first magnet ..
. and the rotor," as is required by Appellant's claim 2 (see App. Br. 9
(Appellant's claim 2 (emphasis added))).
In addition, Examiner failed to establish that any of Mohl, Aboul-
Hosn, or Fasciano, alone or in combination, make up for the foregoing
deficiency in Rau (see Final Act. 5-10).
Rejection IV:
Rejection IV involves independent claim 12 and its dependents (see
Final Act. 8-10; Ans. 5-8). The device of Appellant's independent claim 12
comprises, inter alia, a
rotor of [a] pump [] coupled with a drive wheel via the magneto
coupling, said drive wheel being arranged inside the catheter
and formed as a hydraulically or pneumatically operated paddle
wheel; and
further comprising a first lumen of the catheter supplying
driving fluid to the drive wheel, and a second lumen of the
catheter carrying off driving fluid from the drive wheel.
(App. Br. 11 (Appellant's claim 12).)
Examiner finds that Rau discloses "a rotor 3 6 of [a] pump ...
connected via a magneto coupling 53 with a drive wheel 50 ... and first and
second lumens" (Final Act. 8 (citing Rau 3: 41-4: 57 and FIGs. 2---6)).
Examiner finds, however, that "Rau fails to disclose that the rotor of the
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pump is connected via the magneto coupling with a fluid-powered drive
wheel which ... is formed as a hydraulically or pneumatically operated
paddle wheel" (id.). In this regard, Examiner finds that "[t]he language
'supplying driving fluid to the drive wheel' and 'carrying off driving fluid
from the drive wheel,' [as set forth in Appellant's claim 12,] is considered
intended use language that fails to further define the claimed structure" (id.;
see id. at 11 ). Specifically, Examiner reasons:
The recitation[, in Appellant's claim 12,] of "a first lumen
supplying driving fluid" requires only a first lumen because the
function of the lumen, "supplying driving fluid", does not
differentiate the first lumen from any other lumen. Similarly,
the recitation[, in Appellant's claim 12, ofJ "a second lumen
carrying off driving fluid" requires only a second lumen
because the function of the lumen, "carrying off driving fluid",
does not differentiate the second lumen from any other lumen.
(Ans. 6; see Ans. 6-7.) We are not persuaded.
Initially, we note, as Appellant correctly explains, Rau "describes []
an electric motor," thus, a lumen supplying or carrying off driving fluid
would be unnecessary in Rau's device (Reply Br. 7). Nevertheless, Rau's
FIG. 4 does appear to illustrate spaces between certain internal parts of
Rau's device (see Rau's FIG. 4; Examiner's annotated, "exploded," view of
Rau's FIG. 4). As Appellant correctly explains, however, although there
may be spaces between certain internal parts of Rau's device, "Rau
describes a sealed housing configuration that prevents ( and teaches away
from) [a] space within its housing 'supplying driving fluid' or 'carrying off
driving fluid'," as is required by Appellant's claimed invention (Reply Br. 7;
see also App. Br. 6-7). Thus, Appellant contends that "[t]he space in
[Rau's] housing is simply not capable of 'supplying [driving] fluid' or
'carrying off driving fluid"' and Examiner failed to establish an evidentiary
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Application 14/454,965
basis on this record to support a contrary conclusion (Reply Br. 7). We
agree.
Examiner has, at best, relied upon "Aboul-Hosn ... to teach a pump
for transporting bodily fluids that includes a fluid-powered pneumatic drive
unit[] connected to a rotor of [a] pump via a magneto coupling" (Ans. 7).
From this disclosure in Aboul-Hosn, Examiner asserts that by modifying
Rao's device to include, inter alia, Aboul-Hosn's fluid-powered pneumatic
drive unit, the device suggested by the combination of Rao and Aboul-Hosn
will necessarily include "a fluid-powered pneumatic drive wheel akin to that
of Aboul-Hosn, [] including any lumens that would necessarily be present in
[such] a fluid-powered pneumatic drive wheel" (Ans. 7-8 ( emphasis
added)). We are not persuaded.
As Appellant explains, Examiner's assertion is based on a
presumption that Aboul-Hosn's device inherently includes lumens within the
scope of Appellant's claimed invention (see Reply Br. 7-8). "Examiner[,
however,] failed to cite to any disclosure of such lumens in Aboul-Hosn, or
any evidence that such structure would 'necessarily be present' in
combination with a fluid-powered pneumatic drive wheel ( e.g. instead of
ports to an external environment or other structures that could be used to
facilitate operation of a drive wheel)" (Reply Br. 8). We agree. Inherency
"may not be established by probabilities or possibilities. The mere fact that
a certain thing may result from a given set of circumstances is not
sufficient." In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations
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Application 14/454,965
and internal quotation marks omitted). As Appellant explains, on this
record, Examiner
provid[ed] nothing more than a possibility that Aboul-Hosn
could somehow include a "first lumen of the catheter supplying
driving fluid" and a "second lumen of the catheter carrying off
driving fluid." To be clear, Aboul-Hosn does not expressly
describe such claimed structures, and the Examiner has not
cited to any evidence that would indicate to one of ordinary
skill in the art that such features would have been "necessarily
present" in Aboul-Hosn's device.
(Reply Br. 8.) Thus, Examiner's reliance on Aboul-Hosn fails to make up
for the deficiencies noted above in Rau.
To be complete, we note that Examiner does not rely on Mohl to
suggest or disclose lumens (see Final Act. 9). Thus, Examiner's reliance on
Mohl also fails to make up for the deficiencies in the combination of Rau
and Aboul-Hosn noted above.
CONCLUSION
The preponderance of evidence relied upon by Examiner fails to
support a conclusion of obviousness.
The rejection of claims 2 and 6-9 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Rau and Mohl is reversed.
The rejection of claims 3 and 5 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Rau, Mohl, and Aboul-Hosn is
reversed.
The rejection of claim 4 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Rau, Mohl, Aboul-Hosn, and Fasciano is reversed.
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Application 14/454,965
The rejection of claims 12-17 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Rau, Aboul-Hosn, and Mohl is
reversed.
REVERSED
11