Ex Parte Sliwa et al

Patent Trial and Appeal Board

Aug 23, 2017

12638393 (P.T.A.B. Aug. 23, 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.
12/638,393 12/15/2009 John W. Sliwa 0E-044000US 4975
(065513-0214)
67337 7590 08/25/2017
DYKEMA GOSSETT PLLC (STJ)
4000 Wells Fargo Center
90 South Seventh Street
Minneapolis, MN 55402
EXAMINER
SIRIPURAPU, RAJEEV P
ART UNIT PAPER NUMBER
3786
NOTIFICATION DATE DELIVERY MODE
08/25/2017 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):
MN_IPMail @ dykema. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN W. SLIWA and STEPHEN A. MORSE
Appeal 2015-002896
Application 12/638,3931
Technology Center 3700
Before: MICHAEL C. ASTORINO, CYNTHIA L. MURPHY, and
MATTHEW S. MEYERS, Administrative Patent Judges.
ASTORINO, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35U.S.C. § 134 from the Examiner’s
decision rejecting claims 1—20 and 23. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).
We REVERSE.
1 According to the Appellants, St. Jude Medical, Atrial Fibrillation Division,
Inc., is the real party in interest. Appeal Br. 1.
Appeal 2015-002896
Application 12/638,393
Claimed Subject Matter
Claims 1 and 20 are the independent claims on appeal. Claim 1,
reproduced below with added paragraphs and emphasis, is illustrative of the
subject matter on appeal.
1. An acoustic transducer assembly for use in a medical insertion
device having an axis, the acoustic transducer assembly
comprising:
a plurality of directional acoustic transducer elements
circumferentially disposed about the axis, each acoustic
transducer element being configured to transmit a respective
acoustic beam in a predetermined direction, and receive a
respective returning acoustic echo in a respective field of view;
and
a switch array in communication with the plurality of
directional acoustic transducer elements and configured to
activate or enable at least one of the plurality of directional
acoustic transducer elements in response to a load on a portion
of the medical insertion device other than on the plurality of
directional acoustic transducer elements,
said switch array includes a plurality of switches in
communication with the plurality of directional acoustic
transducer elements,
at least one of the plurality of switches including a first
contact on a first support and a second contact on a second
support wherein the first contact is separated from the second
contact by a gap, and
wherein at least one of the first and second supports
comprises an elastic foundation having a surface on which one
of the first contact and the second contact is situated, and which
directly touches said one of the first contact and the second
contact without an intervening structure, said elastic foundation
being one of axially disposed and radially-inwardly disposed
relative to said one of the first contact and the second contact.
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Appeal 2015-002896
Application 12/638,393
Rejections
Claims 1—8, 10, 11, and 14—19 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Crompton, Jr. et al. (US 2007/0191830 Al,
pub. Aug. 16, 2007, hereinafter “Crompton”) and Pless et al. (US 6,805,128
Bl, iss. Oct. 19, 2004, hereinafter “Pless”).
Claim 9 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Crompton, Pless, and Chan (US 4,425,017, iss. Jan. 10, 1984).
Claims 12 and 13 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Crompton, Pless, and Schwartz et al.
(US 2004/0102769 Al, pub. May 27, 2004, hereinafter “Schwartz”).
Claims 20 and 23 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Crompton, Pless, Goldin et al. (US 6,569,160 Bl, iss.
May 27, 2003, hereinafter “Goldin”) and Crowley (US 5,630,837, iss.
May 20, 1997).
ANALYSIS
The Appellants argue that the Examiner’s rejection of independent
claim 1 lacks adequate support. Appeal Br. 6—12. The Appellants contend
Crompton fails to teach a support that includes an “elastic foundation having
a surface on which one of the first contact and the second contact is situated,
and which directly touches said one of the first contact and the second
contact without an intervening structure” as recited in independent claims 1
and 20 (Appeal Br.15, 18—19, Claims App. (emphasis added)). Appeal
Br. 7.
The Examiner relies on Crompton’s contact sensitive switch 228 to
show a force activated electrical switch. Ans. 2; see also Crompton, Figs. 7,
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Appeal 2015-002896
Application 12/638,393
9, 11, paras. 62, 65. The Examiner finds that contact sensitive switch 228’s
electrical contacts 236 a d correspond to the claimed first contact and second
contact. See Ans. 3^4; see also Final Act. 3^4.
As pointed out by the Appellants, Crompton’s “electrical contacts
236„ ,/are disposed on contact support disc 239” and “Crompton is silent in
regards to whether disc 239 is elastic, rigid, or somewhere in between.”
Appeal Br. 7 (emphasis omitted); Reply Br. 5 (emphasis omitted).
To remedy this deficiency, the Examiner offers two separate
rationales as to why a skilled artisan would have modified Crompton’s
contact sensitive switch 228 to include a support having an elastic
foundation as required by claim 1. For the first rationale, the Examiner
reasons:
It would have been obvious to one having ordinary skill in
the art at the time the invention was made to provide an elastic
element, since it has been held to be within the general skill of a
worker in the art to select a known material on the basis of its
suitability for the intended use as a matter of obvious design
choice. In re Leshin, 125 USPQ 416. An elastic element would
allow the device to be repeatedly flexed as shown in Fig. 11.
Final Act. 3^4; see also Ans. 3^4. Here, the Examiner modifies the material
of Crompton’s contact sensitive switch 228 to allow support disc 239 to be
repeatedly flexed. This reasoning rests on an unfounded assumption that an
intended use of contact support disc 239 is repeat flexing. See Appeal Br. 9.
Crompton does not disclose repeat flexing of contact support disc 239. As
such, the Examiner modifies the material of Crompton’s support disc 239 by
adding a structural characteristic (i.e., the ability to repeatedly flex), which
in this case is distinct from a matter of design choice. Accordingly, the
Examiner’s reasoning does not rest on an adequate factual basis. See In re
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Appeal 2015-002896
Application 12/638,393
Warner, 379 F.2d 1011, 1017, (CCPA 1967), cert, denied, 389 U.S. 1057
(1968).
For the second rationale, the Examiner reasons:
Further, it would have been obvious to one having
ordinary skill in the art at the time the invention was made to
omit the spacer element 239 of Crompton, since it has been held
that omission of an element and its function in a combination
where the remaining elements perform the same functions as
before involves only routine skill in the art. In re Karlson, 136
USPQ 184. (see also MPEP 2144.04 II A, which notes In re
Larson, 340 F.2d 965, 144 USPQ 347 (CCPA 1965) (Omission
of additional framework and axle which served to increase the
cargo carrying capacity of prior art mobile fluid carrying unit
would have been obvious if this feature was not desired.); and In
re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975) (deleting a
prior art switch member and thereby eliminating its function was
an obvious expedient).
Essentially, it would have been obvious to eliminate the
spacer element 239 to optimize the size and spacing of the switch
gap.
Since a skilled artisan would have eliminated element 239
to adjust or remove a spacing and to remove unnecessary
elements and features of the device, a skilled artisan would have
found placing the contacts directly on the elastic foundation that
is axially disposed obvious.
Final Act. 4. Here, the Examiner modifies Crompton’s contact sensitive
switch 228 by removing contact support disc 239. See Ans. 3—5. The
resulting structure, according to the Examiner, is such that electrical contacts
236a-d touch support disc 235 directly. See Ans. see also Crompton,
Figs. 1,9, 11. The Examiner finds that support disc 235 is “made of
polypropylene, which is an elastic, flexible, and non-conductive material.”
Ans. 3; see also Crompton, para. 62.
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Appeal 2015-002896
Application 12/638,393
The Examiner’s reasoning rests on an unfounded assumption that
contact sensitive switch 228 would be able to continue to function as a
switch after the modification. However, after the modification, the gap
between contacts 236 and base 230 is significantly wider. See Crompton,
Fig. 11. And, it is unclear if contacts 236 would be able to touch base 230
after removing contact support disc 239 and re-positioning of contacts 236
from contact support disc 239 to support disc 235. See Crompton, para. 65,
Fig. 11. As stated by the Appellants, “[ojmitting the support disc 239—as
proposed by the Examiner—will instantly change the switch gap (spacing)
between the electrical contacts and base 230” such that “switch closure [may
not] be achieved at all.” Appeal Br. 11. As such, we determine that the
Examiner’s reasoning does not rest on an adequate factual basis.
Thus, we do not sustain the rejection of independent claim 1 and
dependent claims 2—8, 10, 11, and 14—19 as unpatentable over Crompton
and Pless. The rejections based on Crompton and Pless, in combination with
Chan or Schwartz rely on the same unfounded assumptions as discussed
above. These rejections are not remedied by the additional findings and
reasoning associated therewith. As such, we do not sustain the rejections
under 35 U.S.C. § 103(a) of: claim 9 as unpatentable over Crompton, Pless,
and Chan; and claims 12 and 13 as unpatentable over Crompton, Pless, and
Schwartz.
The Examiner’s rejection of claim 20 suffers from the same
unfounded assumptions as discussed above. Final Act. 13—14. As such, we
do not sustain the rejection of independent claim 20 and dependent claim 23
as unpatentable over Crompton, Pless, Goldin, and Crowley.
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Appeal 2015-002896
Application 12/638,393
DECISION
We reverse the Examiner’s decision rejecting claims 1—20 and 23.
REVERSED
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