Ex Parte SOBA

Patent Trials and Appeals BoardFeb 11, 2019

14088937 - (D) (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. Â§ 134(a) of the final rejection of claims 1, 5, 6, 14, 16, 19, and21 asunpatentableunder35 U.S.C. Â§ 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. Â§ 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 2 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. 3 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. 4 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 5