Ex Parte SOBA

Patent Trial and Appeal Board

Feb 11, 2019

14088937 (P.T.A.B. Feb. 11, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/088,937 11/25/2013
21839 7590 02/13/2019
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
FIRST NAMED INVENTOR
Ryoichi SOBA
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.
1027550-001266 7085
EXAMINER
NELSON,MATTHEWM
ART UNIT PAPER NUMBER
3772
NOTIFICATION DATE DELIVERY MODE
02/13/2019 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):
ADIPDOC 1@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RYOICHI SOBA
Appeal2018-001254
Application 14/088,937
Technology Center 3700
Before JAMES P. CALVE, WILLIAM A. CAPP, and
FREDERICK C. LANEY, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the final
rejection of claims 1, 5, 6, 14, 16, 19, and21 asunpatentableunder35
U.S.C. § 103(a) over Pelton (US 2004/0117001 Al, pub. June 17, 2004) and
Melton (US 4,389,250, iss. June 21, 1983) and claims 12, 13, 17, and 18,
over Pelton, Melton, & Ishida (JP 2000-17395, pub. Jan. 18, 2000). We
have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
1 Terumo Kabushiki Kaisha is the Applicant and real party in interest.
Appeal Br. 2.
Appeal2018-001254
Application 14/088,937
THE INVENTION
Appellant's invention relates to composite materials used in medical
devices. Spec. ,r 2. Claim 5, reproduced below, is illustrative of the subject
matter on appeal.
5. A medical device composite material, comprising:
a superelastic shape memory alloy constituting a matrix;
a metal oxide dispersed in the matrix;
wherein the superelastic shape memory alloy matrix is a
sintered body made from a superelastic shape memory alloy
powder, and the metal oxide is metal oxide particles dispersed
in the superelastic shape memory alloy powder in an amount
from 0.10% by volume to 0.5% by volume, and wherein the
superelastic shape memory alloy powder is TiNi-based alloy
powder, and the metal oxide particles and the additive amount
thereof are any one of0.15% by volume to 0.5% by volume of
Ti02 and 0.10% by volume to 0.2% by volume of Ah03; and
wherein the superelastic shape memory alloy powder is a TiNi -
based alloy powder.
Claim 1
OPINION
Unpatentability of Claims 1, 5, 6, 14, 16, 19, and 21
over Pelton and Melton
The Examiner finds that Pelton discloses a superelastic shape memory
alloy (SMA) substantially as claimed except for sintering and the metal
oxide being specifically limited to Ti02 or Ah03. Final Action 2. The
Examiner relies on Melton as disclosing sintering as well as Ti02 or Ah03
in the range of 0.5 to 2 percent by weight. Id. The Examiner concludes that
it would have been obvious to a person of ordinary skill in the art at the time
the invention was made to modify Pelton's material to include Ti02. Id.
at 3. According to the Examiner, a person of ordinary skill in the art would
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Appeal2018-001254
Application 14/088,937
have done this to provide controlled results and avoid adverse effects to the
mechanical properties of the material. Id.
Specifically with respect to the limitation directed to a concentration
of metal oxide in the SMA, the Examiner finds that the general conditions of
the claim are disclosed in the prior art by virtue of the disclosed workable
range in Appellant's Specification overlapping that of the prior art. Id. The
Examiner concludes that it is not inventive to discover the optimum or
workable ranges by routine experimentation. Id. The Examiner further
states that Appellant's disclosure appears to be merely a change of degree as
opposed to disclosing something critical or unexpected. Id. at 4.
Appellant argues, among other things, that Melton is directed to
memory alloys based on copper and nickel and is not based on a titanium
nickel-based alloy powders as in the claimed invention. Appeal Br. 8-9.
Appellant also argues that weight percentage ranges disclosed in Melton do
not overlap the claimed ranges if the claimed volume percentage ranges are
converted to weight percentages. Id. at 9.
In response, the Examiner states that the use of titanium nickel (TiNi)
alloys is addressed by the base reference, Pelton, and that both Pelton and
Melton are directed to the general use of shape memory alloys, which
includes the titanium nickel alloy of Pelton. Ans. 5.
Melton is directed to providing memory alloys based on compositions
of Cul Al, Cu/ Al/Ni, and Ni/ Al. Melton, col. 1, 11. 45--4 7. Melton further
discloses that Ab03, or Ti02, or mixtures thereof, are suitable inclusions to
the compositions. Id. col. 2, 11. 19-20. Melton further discloses that such
inclusions should preferably make up 0.5 to 2 percent by weight of the total
mass of the alloy. Id. col. 2, 11. 20-22.
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Appeal2018-001254
Application 14/088,937
Apart from the general observation that both Pelton and Melton are
directed to shape memory alloys, the Examiner provides no evidence or
persuasive technical reasoning that Ab03 and/or Ti02 would impart the
same or similar beneficial properties to titanium nickel alloys as they do to
Melton's copper-aluminum and nickel-aluminum compositions.
Furthermore, the concentrations of Ab03 and Ti02 disclosed in
Milton are percentages by weight of copper-aluminum and nickel-aluminum
compositions. Melton, col. 1, 11. 45--47; col. 2, 11. 19-22. The Examiner
makes no effort to convert the weight percentages of Melton's copper-
aluminum and nickel-aluminum compositions to equivalent volume
percentages of titanium compositions used in Pelton and claimed in the
instant invention.
Finally, even if it could be shown that Melton's Ab03 and Ti02
inclusions were known to provide similar advantages to Pelton's titanium
compositions, the Examiner provides no evidence or persuasive technical
reasoning that the concentrations of Melton would provide a similar
advantage to a titanium composition. In other words, even if some
advantage would be expected from adding Ab03 or Ti02, it does not
necessarily follow that the same volume percentage concentration
appropriate for copper-aluminum or nickel aluminum compositions should
be used in a titanium nickel composition.
In view of the foregoing, the Examiner's findings of fact are not
supported by a preponderance of the evidence and the Examiner errs in
concluding that the invention of claim 1 would have been obvious over
Pelton and Melton. Accordingly, we do not sustain the Examiner's
unpatentability rejection of claim 1.
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Appeal2018-001254
Application 14/088,937
Claim 5
Claim 5 is an independent claim that contains limitations directed to
concentrations of Ab03 and Ti02 in a titanium based alloy powder that are
substantially identical to those of claim 1 discussed above. Claims App. As
such, the Examiner's rejection of claim 5 suffers from the same infirmity
that was identified above with respect to claim 1. Thus, for essentially the
same reason expressed above in connection with claim 1, we do not sustain
the rejection of claim 5.
Claim 6, 14, 16, 19, and 21
These claims depend from either claim 1 or claim 5. Claims App. As
such the Examiner's rejection of these claims suffers from the same
infirmity that was identified above with respect to claims 1 and 5. Thus, for
essentially the same reason expressed above in connection with claims 1
and 5, we do not sustain the rejection of claims 6, 14, 16, 19, and 21.
Unpatentability of Claims 12, 13, 17, and 18
over Pelton, Melton, and Ishida
These claims, depend, directly or indirectly, from either claim 1 or
claim 5. Claims App. As such the Examiner's rejection of these claims
suffers from the same infirmity that was identified above with respect to
claims 1 and 5. Thus, for essentially the same reason expressed above in
connection with claims 1 and 5, we do not sustain the rejection of claims 12,
13, 17, and 18.
DECISION
The decision of the Examiner to reject claims 1, 5, 6, 12-14, 16-19,
and 21 is reversed.
REVERSED
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