Ex Parte STONE et alDownload PDFPatent Trial and Appeal BoardMay 16, 201813831680 (P.T.A.B. May. 16, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/831,680 03/15/2013 121974 7590 05/18/2018 KACVINSKY DAISAK BLUNI PLLC America's Cup Building 50 Doaks Lane Marblehead, MA 01945 FIRST NAMED INVENTOR CORBETT W. STONE 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. 8150BSC0127C2 2321 EXAMINER VAHDAT, KHADIJEHA ART UNIT PAPER NUMBER 3739 NOTIFICATION DATE DELIVERY MODE 05/18/2018 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): bbonneville@kdbfirm.com docketing@kdbfirm.com ehysesani@kdbfirm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CORBETT W. STONE, MICHAEL F. HOEY, THOMAS A. STEINKE, RAPHAEL M. MICHEL, ARTHUR G. BLANCK, MARLENE KAY TRUESDALE, and BRET HERSCHER 1 Appeal2017-004489 Application 13/831,680 Technology Center 3700 Before FRANCISCO C. PRATS, ELIZABETH A. LA VIER, and RYAN H. FLAX, Administrative Patent Judges. FLAX, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) involving claims directed to an apparatus for removing a solid object from a body canal or vessel. Claims 1-32 are on appeal as rejected under 35 U.S.C. § 102, § 103, and§ 112, first and second paragraphs, double patenting for duplicate claims, and statutory double patenting. We have jurisdiction under 35 U.S.C. § 6(b ). We affirm and also enter a new ground of rejection under 35 U.S.C. § 103(a), pursuant to our authority under 37 C.F.R. § 41.50(b). 1 Appellants identify "Vessix Vascular, Inc." as the Real Party in Interest. Appeal Br. 3. Appeal2017-004489 Application 13/831,680 STATEMENT OF THE CASE The Specification states "[t]he structures of the invention allow guided eccentric atherosclerotic material analysis, remodeling and/or removal, often using both electrical diagnostic signals and electrosurgical energy." Spec. 1:30-32. 2 The Specification further states "[e]mbodiments of the invention may employ electrical energy to selectively heat target tissues and/or other structures." Id. at 4:10-11. The Specification describes the invention to "expand[] radially within the blood vessel so as to engage a plurality of electrodes against the vessel wall" and "[a]n eccentric subset of the array ( optionally a single electrode or an adjacent pair of electrodes) adjacent the target plaque may be energized to characterize tissues locally, and/or to eccentrically remodel the characterized target plaque using a remodeling electrical potential." Id. at 7:16-24. An exemplary illustration of a device within the scope of the claimed invention is provided in the Specification at Fig. 4, which is reproduced ( annotated to label relevant structures) below: 2 We herein refer to the Specification filed Mar. 15, 2013 ("Spec."); Final Action mailed July 8, 2015 ("Final Action"); Appeal Brief filed Apr. 21, 2016 ("Appeal Br."); Examiner's Answer mailed Nov. 17, 2016 ("Answer"); and Reply Brief filed Jan. 17, 2017 ("Reply Br."). 2 Appeal2017-004489 Application 13/831,680 ~N=p,,,bbi,i ,~,tru,:tw,:l--·\, 26 \._ 54 I:~~!~.:~~~~;;! :;·;::thY-\ l,d~~Jr~bu}-::1d j "'.lo\. ' • .r. y / 22 2411~ 66 ' 50 64 r0 \i,si~S(/"('f/::XKk.:c:ior~ 1 jfrJ.r -E~i :::~ctn)d{:~·~ i yc~~th~~t~ff b<~ci~l ~ Figure 4 shows an expandable structure 26 mounted upon a catheter body 14. Upon the expandable structure 26 are mounted several electrodes 50, distributed around an axis running along the length of the expandable structure 26 and catheter body 14. Figure 4 shows two pairs of electrodes 50, provided in a "zig-zag" fashion (see dotted arrow) so that each electrode 50 is distributed at a varied position lengthwise along the expandable structure 26 with respect to and angularly off-set from their adjacent electrodes 50. Each electrode 50 is connected to a dedicated conductor 52 running out the proximal end of the catheter body 14. The Specification describes that the connections and arrangement of electrodes 50 in this manner "allows bipolar energy to be directed between adjacent circumferential (axially offset) electrodes, between adjacent distal 3 Appeal2017-004489 Application 13/831,680 electrodes, between adjacent proximal electrodes, and the like." Id. at 20:25-21:2; see also Appeal Br. 5-17 (discussing such a structure, as claimed). Independent claims 1 and 17 are reproduced below: 1. An apparatus comprising: a catheter configured for intravascular placement within a blood vessel of a human patient; an expandable balloon at a distal portion of the catheter, wherein the expandable balloon is configured to vary between a delivery configuration and a deployed configuration sized to fit within the blood vessel; a first pair of bipolar contacts attached to the expandable balloon;and a second pair of bipolar contacts attached to the expandable balloon, wherein the first pair of bipolar contacts and the second pair of bipolar contacts are spaced apart lengthwise and angularly offset from one another when the expandable balloon is in the deployed configuration, wherein each of the first pair of bipolar contacts and the second pair of bipolar contacts is configured to deliver thermal energy to less than a full circumference of the blood vessel of the patient. 1 7. An apparatus for treating a patient, the apparatus compnsmg: a catheter configured for intravascular placement within a blood vessel of a human patient; an expandable balloon at a distal portion of the catheter, wherein the expandable balloon is configured to vary between a delivery configuration and a deployed configuration sized to fit within the blood vessel; 4 Appeal2017-004489 Application 13/831,680 a first electrode having a first pair of bipolar contacts attached to the expandable balloon; and a second electrode having a second pair of bipolar contacts attached to the expandable balloon, wherein the first electrode and the second electrode are spaced apart lengthwise and angularly offset from one another when the expandable balloon is in the deployed configuration, wherein each of the first electrode and the second electrode is configured to deliver thermal energy to less than a full circumference of the blood vessel of the patient. Appeal Br. 29, 33-34 (Claims App'x). The following rejections are appealed: Claims 17-32 stand rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Final Action 7. Claims 11 and 12 stand rejected under 35 U.S.C. § 112, second paragraph, as indefinite. Id. at 9. Claims 17-32 stand rejected under 35 U.S.C. § 102(b) as anticipated by Demarais. 3 Id. at 10. Claims 1-10, 13, 14, and 16 stand rejected under 35 U.S.C. § I02(b) as anticipated by Clayman. 4 Id. at 14. Claims 1, 2, 4, 7, 8, 10, and 16 stand rejected under 35 U.S.C. § I02(e) and claims 17, 18, 20, 23, 24, 26, and 32 stand rejected under 35 U.S.C. § I02(b) as anticipated by Patel. 5, 6 Id. at 19. 3 US 2007 /0129720 Al (pub. June 7, 2007) ("Demarais"). 4 US 5,779,698 (issued July 14, 1998) ("Clayman"). 5 US 2007/0287994 Al (pub. Dec. 13, 2007) ("Patel"). 6 The Examiner stated that the anticipation rejection of claims 13, 14, 29, and 30 over Patel was an error and is withdrawn. Answer 3. 5 Appeal2017-004489 Application 13/831,680 Claims 11 and 12 stand rejected under 35 U.S.C. § I03(a) over Clayman, Steinke, 7 and Maguire. 8 Id. at 24. Claim 15 stands rejected under 35 U.S.C. § I03(a) over Clayman and Steinke. Id. at 25. Claims 19, 21, 22, 25, and 27-31 stand rejected under 35 U.S.C. § I03(a) over Patel and Demarais. Id. at 26. Claims 17-32 stand (provisionally) rejected for double patenting, pursuant to MPEP § 706.03(k), over claims 1-16, if found allowable, as being substantial duplicates. Id. at 28-29. Claims 1-32 stand provisionally rejected under 35 U.S.C. § 101 for statutory double patenting over claims 1-32 of co-pending application 13/831,634. Id. at 29. DISCUSSION Only those arguments made by Appellants in the Appeal Brief and properly presented in the Reply Brief have been considered in this Decision. Arguments not so presented in the Briefs are waived. See 37 C.F.R. § 4I.37(c)(l)(iv) (2015); see also Ex parte Borden, 93 USPQ2d 1473, 1474 (BP AI 2010) (informative) ("Any bases for asserting error, whether factual or legal, that are not raised in the principal brief are waived."). Statements in a brief that "merely mention [a] claim ... and lack any type of separate, substantive argument concerning the claim" are not sufficient to constitute separate argument regarding that claim under 37 C.F.R. § 4I.37(c)(l)(iv). In re Kao, 639 F.3d 1057, 1065 (Fed. Cir. 2011). 7 US 2005/0096647 Al (pub. May 5, 2005) ("Steinke"). 8 US 2002/0087156 Al (pub. July 4, 2002) ("Maguire"). 6 Appeal2017-004489 Application 13/831,680 "[T]he examiner bears the initial burden, on review of the prior art or on any other ground, of presenting aprimafacie case ofunpatentability. If that burden is met, the burden of coming forward with evidence or argument shifts to the applicant." In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Priority and Written Description Requirement There is a dispute whether claim 17 and its dependent claims should be accorded priority to a filing date before their actual filing date. The Examiner determined that the earlier-filed applications do not support the subject matter of claim 17 and the claimed priority is not warranted. Final Action 2--4. Similarly, claims 17-31 stand rejected as not supported by the Specification, which is essentially the same as the prior applications and was determined to not meet the written description requirement. Id. at 7-9. Claim 17, in relevant part, recites: a first electrode having a first pair of bipolar contacts attached to the expandable balloon; and a second electrode having a second pair of bipolar contacts attached to the expandable balloon, wherein the first electrode and the second electrode are spaced apart lengthwise and angularly offset from one another when the expandable balloon is in the deployed configuration Appeal Br. 33-34 ( emphasis added). "In order to gain the benefit of the filing date of an earlier application under 35 U.S.C. § 120, each application in the chain leading back to the earlier application must comply with the written description requirement of 35 U.S.C. § 112." Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1571 (Fed. Cir. 1997). See also 35 U.S.C. § 119(e)(l) (benefit of provisional application's filing date requires disclosure of claimed invention 7 Appeal2017-004489 Application 13/831,680 "in the manner provided by the first paragraph of section 112"). "In order to satisfy the written description requirement [of 35 U.S.C. § 112, first paragraph], the disclosure as originally filed does not have to provide in haec verba support for the claimed subject matter at issue." Purdue Pharma L.P. v. Faulding, Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000). Nonetheless, the disclosure must convey with reasonable clarity to those skilled in the art that the inventor was in possession of the invention. See id. "A disclosure in a parent application that merely renders the later-claimed invention obvious is not sufficient to meet the written description requirement; the disclosure must describe the claimed invention with all its limitations." Tronzo v. Biomet, Inc., 156 F.3d 1154, 1158 (Fed. Cir. 1998). We have considered Appellants' arguments on priority and the written description requirement, but find them unpersuasive. See Appeal Br. 7-17, 19-20. Nothing in the Specification, the identified-parent application, or identified-provisional application(s) discloses an electrode having a pair of bipolar contacts, much less two such electrodes, configured in the fashion claimed. Appellants point to nothing in the Specification or the other applications' disclosures that describes such subject matter. 8 Appeal2017-004489 Application 13/831,680 We interpret the disputed claim language to define a structure as illustrated by the following illustration: "spaced apart lengthwise" "first electrode having a first _#f!i!i,-&&&ISl~--1&. pair of bipolar contacts" "angularly offset":,",, ,,.,:, ..... :,,, .... , ..., ..... ::::., .. :;:;.,., .. ,., .. ,.,., .. ,., .. ,.,.,., .. ,.,., .... ,.,.,., .... ,.,.,.,.:,::::::::::::::::•:•:•:•:•:;:i;\~~~~~~~~~~~~:;:;~, ·-,,•••••••••••••••••••••,,-... "second··~;~~-~·;::·:·····~:·:;~·~···:····· ···:::::::-:•.. . . ,, ·.·.,,,,....,••t,,., ... second pair of bipolar contacts We generically show by illustration above a catheter (thick black line) and an expandable balloon (in grey perspective outline) of claim 17, upon which are provided two electrode structures ( dark and light gray shaded rectangles), which are spaced apart lengthwise ( shown by the red bracket) and are angularly offset from one another ( shown by the red arrows-the angular offset could also reasonably be accomplished by other angles of offset in any direction and is not limited to the precise angle and direction illustrated; the Specification is not explicit on this element). Each of the electrode structures has a respective pair of bipolar contacts (shown as the dark and light grey shaded squares of each respective electrode rectangle- their specific orientation here is exemplary and is not a claim requirement). Each bipolar contact is labeled with "+/-" indicating its bipolar nature. We interpret the relevant claim elements in the above-illustrated fashion per the 9 Appeal2017-004489 Application 13/831,680 claim's ordinary language. The Specification provides no express definition of a structure of an electrode or of a bipolar contact, as claimed, which could serve to direct our claim interpretation in a way contrary to what we set forth above as the broadest reasonable interpretation. The electrodes described consistently throughout the Specification (the cited prior applications' disclosures are essentially the same), which are given reference numbers, e.g., 50, 174, 230, 232, 234, 330, 346, 348, 380, 722 ( 1---6), are never described therein as having more than one contact per electrode, i.e., not a "pair." No figure of the Specification illustrates an electrode having more than one contact, i.e., not a "pair." Therefore, neither the Specification nor the applications to which Appellants claim priority disclose, describe, or illustrate the relevant elements/limitations of claim 1 7, as set forth immediately above; they do not convey that the inventors were in possession of an apparatus having an electrode ( or a first and second electrode) having a respective pair of bipolar contacts. For the reasons set forth above, we agree with the Examiner's determinations on priority and the written description requirement and affirm the rejection under 35 U.S.C. § 112, first paragraph. Indefiniteness "[A] claim is indefinite when it contains words or phrases whose meaning is unclear," i.e., "ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention." In re Packard, 751 F.3d 1307, 1310-13 (Fed. Cir. 2014); see also MPEP § 2173.02(1) (Rev. 07.2015, Nov. 2015) (advising examiners that a rejection for indefiniteness is appropriate "after applying the broadest reasonable 10 Appeal2017-004489 Application 13/831,680 interpretation to the claim, if the metes and bounds of the claimed invention are not clear"). Claim 11 recites "[t]he apparatus of claim 1 wherein the first pair of bipolar contacts further comprises at least one sensor configured to monitor a parameter of the apparatus or of tissue within the patient." Appeal Br. 32 ( emphasis added to highlight disputed language). In rejecting claim 11 as indefinite, the Examiner determined, "[i]t is unclear how a pair of bipolar contacts that are naturally separated from one another to provide bipolar energy could comprise a single sensor. It is at most unclear if each of the conductive contacts includes a sensor or if there is a sensor between the two contacts." Final Action 9. Independent claim 1 does not require that the first pair of bipolar contacts are spaced apart lengthwise and angularly offset from one another, but requires that the first and second pairs of bipolar contacts are spaced apart lengthwise and angularly offset from one another. Thus, the Examiner's inquiry as to how a pair of naturally separated contacts can comprise a single sensor is not relevant. Further, we do not understand the limitation of claim 11 to require that a sensor must be a structural part of two contacts, as interpreted by the Examiner, but only to require that somehow the first pair of bipolar contacts, as a set, has a sensor therewith. The claim language is not unclear. We reverse the indefiniteness rejection. 11 Appeal2017-004489 Application 13/831,680 Anticipation "Anticipation requires that all of the claim elements and their limitations are shown in a single prior art reference." In re Skvorecz, 580 F.3d 1262, 1266 (Fed. Cir. 2009). 1. Claims 17-32 and Demarais The Examiner determined Demarais disclosed each element of the rejected claims. Final Action 10-14 (citing Demarais ,r,r 9, 26, 31, 34--42, 55-58, 60, 73, Figs. 2A-2J, 3, 5A, 5B, and claim 8). Appellants argue only that, because Demarais was filed November 14, 2006, and its relevant disclosed subject matter can claim priority to no earlier date, the reference does not constitute prior art to claims 17-32, which should be accorded a priority date of October 18, 2006 (i.e., the filing date of provisional application 60/852,787). Appeal Br. 21. This is not persuasive. As we concluded above, claims 17-32 do not benefit from the earlier filing date of the cited provisional application because that provisional, which is substantially similar to the Specification, does not provide a supporting disclosure for the claims. Demarais is prior art to claims 17-32, filed March 15, 2013. Therefore, we affirm the rejection. 2. Claims 1-10, 13, 14, and 16 and Clayman The Examiner determined that each element of the rejected claims was disclosed by Clayman. Final Action 14--18 ( citing Clayman abstract, 9:50-10:7, 10:66-11 :4, 11:22-35, and Figs. 4--8, 12). Appellants argue Clayman's disclosure of conductive pads on a balloon (for angioplasty), that can be energized ( electrified) does not 12 Appeal2017-004489 Application 13/831,680 necessarily (inherently) teach two pairs of such pads configured to be energized in a bipolar fashion as claimed. Appeal Br. 22-23. In response, the Examiner stated: Please note that the recitation of "a first pair of bipolar contacts attached to the expandable balloon; and a second pair of bipolar contacts attached to the expandable balloon, wherein the first pair of bipolar contacts and the second pair of bipolar contacts are spaced apart lengthwise and angularly offset from one another when the expandable balloon is in the deployed configuration", only requires having separate electrodes with separate contacts such that they would desirably be connected to bipolar energy, but the actual bipolar energy is not positively claimed. Answer 8. We conclude the balance of evidence favors Appellants' position. While Clayman discloses a device that is, in most ways, structurally the same as the claimed invention, Clayman is silent as to any polar nature of its electrodes. According to Clayman's disclosure, the electrodes are either on or off. We agree with the Examiner that bipolar energy is not positively claimed, but disagree with the Examiner's determination that an electrode that is merely capable of being charged positively or negatively will suffice to disclose the claimed bipolar contacts because such claim language indicates how the claimed contacts are connected to an electrical energy source. See, e.g., Spec. 20:31-21:2, 27:7-28:8. For this reason, we reverse the anticipation rejection over Clayman. 3. Claims 1, 2, 4, 7, 8, 10, 16--18, 20, 23, 24, 26, and 32 and Patel The Examiner determined each element of the rejected claims was disclosed by Patel. Final Action 19-23 ( citing Patel ,r,r 26, 32, 83-91, Figs. 1, 5, 6, and 9); see also Patel ,r,r 2, 36-38, 43, 44, 96, 98, and Figs. 11, 13. 13 Appeal2017-004489 Application 13/831,680 Appellants argue, because the claims are to be accorded priority to October 18, 2006, Patel, which was filed June 12, 2006 and published December 13, 2007, is only prior art under 35 U.S.C. § 102(e), if at all. Appeal Br. 23-24. This argument is not persuasive because, as discussed above, claims 17-32 are not accorded an earlier priority date. Patel is § 102( e) prior art to claim 1 and is § 102(b) prior art to claim 17. Appellants also argue Patel fails to disclose the claimed catheter and balloon. Appeal Br. 24--25. Appellants argue Patel's balloon and electrodes are configured to deliver energy to a full circumference of the balloon, rather than to less than the full circumference of the blood vessel, as claimed. Id. at 24. Appellants also argue the device of Patel is not intended to be used inside a blood vessel, but only from outside a blood vessel. Id. These arguments are not persuasive. The claims require "each of the first pair of bipolar contacts and the second pair of bipolar contacts is configured to deliver thermal energy to less than a full circumference of the blood vessel of the patient," not that the entire device is configured in this way. Patel discloses such pairs of bipolar contacts, as shown by Patel's Figure 9, reproduced ( annotated to highlight contact pairs) below: 14 Appeal2017-004489 Application 13/831,680 304 Patel's Figure 9 shows a balloon upon which are a plurality of electrodes/contacts 302, 304. As shown by the figure, these contacts are bipolar and span the entirety of the balloon's surface. However, any two pairs of the contacts ( annotated by boxes above) would only be capable of delivering electrical energy to a portion of the entire circumference of the balloon or of a blood vessel into which the balloon was inserted. Further, Patel discloses "a balloon at the distal end of the catheter shaft 104 covered with circumferential, parallel and spirally disposed bipolar electrodes 302 and 304," and "sidewise [i.e., less than circumferential] applications of the probe results in at least a bipolar contact." Patel ,r,r 89, 90, 96, 98. Further, Patel's catheter and balloon are, respectively, "configured for intravascular placement within a blood vessel of a human patient" and "configured to vary between a delivery configuration and a deployed configuration sized to fit within the blood vessel." Based on the dimensions disclosed in the Specification, i.e., balloons having diameter sizes ranging from about 3 mm to about 8 mm, the dimensions of the Patel balloon and 15 Appeal2017-004489 Application 13/831,680 catheter of approximately 3-5 mm (the balloon is around the catheter) would be configured for intravascular placement and deployment, as claimed. Spec. 52:3-5; Patel ,r,r 84--85, Figs. 1, 9. For the reasons set forth above, we affirm the anticipation rejection. Obviousness "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,416 (2007). "[T]he analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ." Id. at 418. "In determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls. What matters is the objective reach of the claim. If the claim extends to what is obvious, it is invalid under§ 103." Id. at 419. 1. Claims 11 and 12 and Clayman-Steinke-Maguire Combination The Examiner determined that claims 11 and 12, which depend from claim 1, would have been obvious over the Clayman-Steinke-Maguire combination. Final Action 24--25 ( citing Clayman as cited for the anticipation rejection of claim 1; citing Steinke ,r,r 26, 93, 116; citing Maguire ,r 359, Fig. 35); see also Steinke ,r,r 22, 26, 29, 80-82, 96-101, 107, 109-112, 116-117, 126-129, Figs. 3, 6A, 6B, lOA-lOD, 22-25, 28A-30B, 38A-38H, 40 (disclosing the subject matter of the claimed invention, using the same illustrations, almost verbatim). Appellants renew their arguments over Clayman as presented over the anticipation rejection. Appeal Br. 25. Appellants argue Maguire "does not 16 Appeal2017-004489 Application 13/831,680 provide what Clayman lacks," i.e., "the first pair of bipolar contacts," which comprise "at least one sensor." Id. at 25-26. Appellants declined to comment on the Steinke reference as prior art. Id. at 26. Appellants' arguments are not persuasive. The portions of Maguire the Examiner cites do not make up for Clayman's not teaching a pair of bipolar contacts nor are they intended to. Maguire is cited for its disclosure of pairing a temperature sensor with a pair of electrodes, which it teaches. Appellants decline to comment on Steinke; however, the disclosure of Steinke appears largely identical to that of the Appellants' Specification ( as noted supra), including, inter alia, Steinke' s Fig. 3, which is identical to Appellants' Fig. 4; Steinke's Fig. 6A/B, which are identical to Appellants' Figs. 5/6; Steinke's Figs. lOB/C, which are identical to Appellants' Figs. 7B/C; Steinke's Figs. 22-25, 28A, which are identical to Appellants' Figs. 8-11, and so on. It is apparent that, if Appellants' Specification discloses the invention of the claims, so does Steinke. However, here, Steinke is cited by the Examiner for teaching pairing sensors with electrodes, which it does teach. Further, Steinke was published May 5, 2005 (filed Sept. 10, 2004; claiming priority to Sept. 12, 2003). Therefore, even were all of Appellants' claims given their earliest requested priority date of October 18, 2006, Steinke' s publication would still be § 102(b) prior art. For the reasons set forth above, we affirm the obviousness rejection. 2. Claim 15 and Clayman-Steinke Combination The Examiner determined the rejected claim would have been obvious over the Clayman-Steinke combination. Final Action 25-26 ( citing 17 Appeal2017-004489 Application 13/831,680 Clayman as it was cited for the anticipation rejection; citing Steinke ,r,r 26, 95). Appellants bundle this rejection with the preceding obviousness rejection and renew their arguments over Clayman as presented over the anticipation rejection. Appeal Br. 25. Appellants, as noted above, declined to comment on the Steinke reference as prior art. Id. at 26. As discussed above, Steinke' s disclosure is essentially the same as (and more extensive than) Appellants' Specification and it is prior art to the appealed claims. For the reasons above, we affirm this obviousness rejection. 3. Claims 19, 21, 22, 25, and 27-31 and Patel-Demarais Combination The Examiner determined the rejected claims would have been obvious over the Patel-Demarais combination. Final Action 26-28 ( citing Patel as applied in the anticipation rejection; citing Demarais ,r,r 26, 31, 34-- 42, 55-58, 60, Figs. 5A, 5B). Appellants renew their arguments over the Patel reference, as made addressing the anticipation rejection. Appeal Br. 27. Appellants also argue Demarais is not prior art. These arguments are not persuasive, as discussed above. For the reasons set forth above we affirm this obviousness rejection. Duplicate Claims Double Patenting The Examiner, despite rejecting claims 17-32 as directed to subject matter not sufficiently described in the Specification, while determining the same was not so for claims 1-16, rejected claims 17-32 as substantial duplicates of claims 1-16. Final Action 28-29 (citing MPEP § 706.03(k)). 18 Appeal2017-004489 Application 13/831,680 Appellants do not address this rejection in their brief. See, e.g., Appeal Br. 27. However, the Examiner's determination that the Specification's disclosure supports the invention of claim 1 under§ 112, first paragraph, but does not do so for claim 17, is incompatible with this rejection. Having affirmed the written description rejection, we conclude there is some not-insubstantial difference between the subject matter of the independent claims. We reverse this rejection. Statutory Double Patenting Under 35 U.S.C. § 101 The Examiner makes a provisional double patenting rejection over claims 1-32 of U.S. Patent Application No. 13/831,634, which the Examiner finds are directed to the same invention as Appellants' claims. Appellants do not contest the substance of the provisional double patenting rejection. Appeal Br. 27. Because Appellants do not contest the substance of this rejection, we affirm it. See MPEP § 1205.02 (Arguments and evidence not presented in an appeal brief "are waived for purposes of the appeal and the Board may summarily sustain any grounds of rejections not argued."). NEW GROUNDS OF REJECTION UNDER 35 U.S.C. § 103(a) As we noted above discussing the reversal of the anticipation rejection of claims 1-10, 13, 14, and 16 over Clayman, although the device disclosed by Clayman is substantially similar to the device of claim 1, the reference does not identify its electrodes/contacts as bipolar contacts. As we also noted above in discussing the obviousness rejection of claims 11 and 12 over the Clayman-Steinke-Maguire combination, the disclosure of Steinke is substantially similar to, if not more extensive than, Appellants' Specification describing the claimed invention. Therefore, we enter a new ground of 19 Appeal2017-004489 Application 13/831,680 rejection for claims 1-10, 13, 14, and 16 under 35 U.S.C. § 103(a) as obvious over Clayman and Steinke. We apply Clayman as did the Examiner in the respective anticipation rejection. We conclude that Steinke, besides disclosing that its electrodes/contacts (similar to those of Clayman) are bipolar, also discloses the subject matter of these claims, in their entirety, essentially on its own. See Steinke ,r,r 22, 26, 29, 80-82, 96-101, 107, 109-112, 116-117, 126-129, Figs. 3, 6A, 6B, lOA-lOD, 22-25, 28A-30B, 38A-38H, 40 (disclosing the subject matter of the claimed invention, using the same illustrations and almost verbatim). We rely on the Examiner's rationale for combining Clayman and Steinke as set forth in the Final Action. See Final Action 24-- 26. Based thereon, we conclude there would have been motivation for a skilled artisan to combine the disclosures of Clayman and Steinke, in any fashion, because the references are directed to the same goals and achieve them by substantially similar means and devices; the references are directed to analogous art. Furthermore, we conclude the skilled artisan would have reasonably expected to successfully combine the references because doing so would amount to combining and using well-known features in their customary ways. SUMMARY The rejection of claims 17-32 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement is affirmed. The rejection of claims 11 and 12 under 35 U.S.C. § 112, second paragraph, as indefinite is reversed. The rejection of claims 17-32 under 35 U.S.C. § 102(b) as anticipated by Demarais is affirmed. 20 Appeal2017-004489 Application 13/831,680 The rejection of claims 1-10, 13, 14, and 16 under 35 U.S.C. § 102(b) as anticipated by Clayman is reversed. The rejection of claims 1, 2, 4, 7, 8, 10, and 16 under 35 U.S.C. § 102(e) and claims 17, 18, 20, 23, 24, 26, and 32 under 35 U.S.C. § 102(b) as anticipated by Patel is affirmed. The rejection of claims 11 and 12 under 35 U.S.C. § 103(a) over Clayman, Steinke, and Maguire is affirmed. The rejection of claim 15 under 35 U.S.C. § 103(a) over Clayman and Steinke is affirmed. The rejection of claims 19, 21, 22, 25, and 27-31 under 35 U.S.C. § 103(a) over Patel and Demarais is affirmed. The rejection of claims 17-32 for double patenting, pursuant to MPEP § 706.03(k), over claims 1-16, if found allowable, as being substantial duplicates is reversed. The rejection of claims 1-32 under 35 U.S.C. § 101 for statutory double patenting over claims 1-32 of co-pending application 13/831,634 is affirmed. Claims 1-10, 13, 14, and 16 are herein rejected under 35 U.S.C. § 103(a) as unpatentable over Clayman and Steinke, as set forth above. TIME PERIOD FOR RESPONSE This Decision contains a new ground of rejection pursuant to 37 C.F.R. § 4I.50(b), which provides, "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." 37 C.F.R. § 4I.50(b) also provides: When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must exercise 21 Appeal2017-004489 Application 13/831,680 one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: ( 1) Reopen prosecution. Submit an appropriate amend- ment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under§ 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure§ 1214.01. AFFIRMED 37 C.F.R. § 4I.50(b) 22 Copy with citationCopy as parenthetical citation