Sandra Keh et al.

Patent Trials and Appeals BoardJun 24, 2021

2020002131 (P.T.A.B. Jun. 24, 2021)

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. 12/979,411 12/28/2010 Sandra Keh 0F-0496USO/82410.0401 2952 55962 7590 06/24/2021 Wiley Patent Administration 1776 K Street, NW Washington, DC 20006 EXAMINER VU, QUYNH-NHU HOANG ART UNIT PAPER NUMBER 3783 NOTIFICATION DATE DELIVERY MODE 06/24/2021 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): ASJM_Patents@abbott.com ptodocket@wiley.law PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte SANDRA KEH and MICHAEL C. BEDNAREK ____________ Appeal 2020-002131 Application 12/979,411 Technology Center 3700 ____________ Before MICHELLE R. OSINSKI, JILL D. HILL, and MICHAEL L. WOODS, Administrative Patent Judges. OSINSKI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1, 4–7, 10, 11, and 16–26.2 We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies St. Jude Medical, Atrial Fibrillation Division, Inc. as the real party in interest. Appeal Br. 2. 2 Claims 2, 3, 8, 9, and 12 are cancelled, and claims 13–15 are withdrawn. Amendment (Apr. 18, 2019), 3–4. Appeal 2020-002131 Application 12/979,411 2 THE CLAIMED SUBJECT MATTER Claims 1, 7, and 11 are independent. Claim 1 is reproduced below. 1. An irrigation system for use with an irrigated electrophysiology catheter, comprising: a peristaltic pump including a pump clamp and a rotor, wherein the pump clamp and the rotor are spaced apart to provide a tubing channel therebetween; and an irrigation tube configured to be positioned between the pump clamp and the rotor within the tubing channel, wherein at least one of an inner surface of the pump clamp and an outer wall of the irrigation tube is roughened in more than one direction to reduce surface adhesion between the pump clamp and the irrigation tube. EVIDENCE The Examiner relied on the following evidence in rejecting the claims on appeal: Name Reference Date Wypych US 5,188,589 Feb. 23, 1993 Lelah US 2003/0235605 A1 Dec. 25, 2003 Postma US 2007/0224063 A1 Sept. 27, 2007 THE REJECTIONS I. Claims 1, 4–7, 10, 11, 16, 17, and 19–26 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Postma and Wypych. Final Act. 2–11. II. Claim 18 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Postma, Wypych, and Lelah. Id. at 11–12. Appeal 2020-002131 Application 12/979,411 3 OPINION Rejection I Appellant argues claims 1, 4–7, 10, 11, 16, 17, and 19–26 as a group. Appeal Br. 9–10. We select claim 1 as the representative claim, and claims 4–7, 10, 11, 16, 17, and 19–26 stand or fall therewith. 37 C.F.R. § 41.37(c)(1)(iv). The Examiner relies on Postma for most of the limitations of independent claim 1, including Postma’s peristaltic pump 1, pump clamp 2, rotor 8, tubing channel 15, and irrigation tube 4. Final Act. 2. The Examiner acknowledges that Postma does not teach “that at least one of an inner surface of the pump clamp and outer wall of the irrigation tube is roughened in more than one direction to reduce surface adhesion between the pump clamp and the irrigation tube.” Id. at 3. The Examiner finds that Wypych teaches “providing a roughness texture in more than one direction (e.g. random bumps and pits, or sandpaper-like appearance) located on the inner surface 38 of a catheter tube 28 for reducing the amount of surface contact between the outer surface of [a surgical cutting] tip 18 [used for phacoemulsification] and the inner surface of the tube 28.” Id.; Wypych Abstr. Because the Examiner also finds that Postma’s two contact surfaces are “sticky to each other” and “will build-up the heat [between] the two contact surfaces during use and will damage the two surfaces very quickly in time” (Final Act. 12–13), the Examiner concludes that it would have been obvious to modify the irrigation system of Postma by “providing a roughness texture in more than one direction located between the two contact surfaces (e.g. at least one of an inner surface of the first member and an outer surface of the second member), as taught by Wypych, [to] provide Appeal 2020-002131 Application 12/979,411 4 the benefits of reducing surface adhesion between the two contact surfaces” and “to solve the sticky and heat build-up issues.” Id. at 3. Appellant argues that “Wypych is not analogous art, and therefore cannot properly be relied upon.” Appeal Br. 9. The established precedent of our reviewing court sets up a two-fold test for determining whether art is analogous: “‘(1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.’” In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (quoting In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)). The first part of the test asks if the structure and function of the prior art is such that it would be considered by a person of ordinary skill in the art because of the similarity to the structure and function of the claimed invention as disclosed in the application. Bigio, 381 F.3d at 1325–27. Under the second part of the test, “[a] reference is reasonably pertinent if, even though it may be in a different field from that of the inventor’s endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem.” In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). One problem with which Appellant was involved is minimizing surface adhesion between irrigation tubing and the pump clamp. Spec. ¶¶ 7–10. “Typical peristaltic pumps operate by rotating a number of rollers mounted on a rotor to periodically compress an irrigation tube between the rollers and a pump housing or clamp.” Id. ¶ 4. Appellant describes that “it is desirable to minimize the abruptness with which irrigation tube 22 springs back from pump clamp 12,” and this may be Appeal 2020-002131 Application 12/979,411 5 accomplished by reducing surface adhesion between the components. Id. ¶ 25; see also id. ¶ 30 (emphasis added) (“The treatments disclosed herein reduce the contact surface area between pump clamp 12 and irrigation tube 22, and thus the surface adhesion between pump clamp 12 and irrigation tube 22.). Wypych similarly teaches that its phacoemulsification irrigating sleeve is advantageous as compared to prior irrigating sleeves because it “more effectively reduces the amount of friction between the cutting tip and the sleeve during sleeve compression than prior art sleeves” and that the “texturing of the sleeve bore . . . reduces the amount of surface contact between the cutting tip and the sleeve during sleeve wall compression against the vibrating cutting tip.” Wypych 2:44–46, 55–59 (emphasis added). Consequently, the Examiner has supported adequately that the teachings of Wypych are reasonably pertinent to a particular problem with which the inventor was involved (e.g., reduction of surface contact between contacting parts that are subject to compression so as to reduce surface adhesion) and that Wypych is analogous art. Appellant also argues that “even if Wypych is viewed as analogous art, there is no motivation to combine Wypych’s ‘roughness texture’ with Postma’s ‘irrigation system.’” Appeal Br. 10. More particularly, Appellant argues that “the Examiner fails to explain why it would be desirable to reduce surface adhesion in Postma’s device” and “just because it may be desirable to reduce surface adhesion in Wypych’s ophthalmic surgical device does not establish (or even suggest) that it is desirable to reduce surface adhesion in Postma’s peristaltic pump.” Id. Appellant argues that the Examiner’s obviousness rejection is based on improper hindsight because “the only reason the Examiner is even aware that it is desirable to Appeal 2020-002131 Application 12/979,411 6 reduce surface adhesion in a peristaltic pump is because of [Appellant’s] disclosure that electrical noise in an irrigated electrophysiology catheter system can be reduced by reducing surface adhesion between the peristaltic pump and the irrigation tubing.” Id. The Federal Circuit requires that we look to whether the Examiner has provided “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 417, 418 (2007)). The Examiner points out that Postma discloses a peristaltic pump “wherein the irrigation/tubing catheter 7 is directly contacting with the motor/rotor 8 and/or the inner surface of the pump clamp.” Ans. 13. The Examiner finds that the two contacting surfaces “are directly in contact and sticky to each other” and “will build[ ] up the heat [between] the two contact surfaces during use and will damage the two surfaces very quickly in time.” Final Act. 12–13. The Examiner further points out that Postma teaches “that a lubricant is provided in the space 15, para [0058–0059], which is located in between the two contact surfaces (of the inner surface of the pump clamp and the outer surface of the irritation tube 4).” Ans. 14. Postma teaches that the use of the lubricant helps improve the lifespan of the pump. Postma ¶¶ 16–17. Wypych teaches “a sleeve that more effectively reduces the amount of friction between the cutting tip and the sleeve during sleeve compression than prior art sleeves, thereby reducing heat build-up in the cutting tip.” Wypych 2:44–47. Wypych continues that “[b]y reducing the tendency of the cutting tip to overheat, the irrigating sleeve of the present invention is not as dependent on fluid flow cooling as are prior art sleeves.” Id. at Appeal 2020-002131 Application 12/979,411 7 2:47–50. Wypych further explains that “texturing of the sleeve . . . reduces the amount of surface contact between the cutting tip and the sleeve during sleeve wall compression” and “[b]y reducing the surface contact between the cutting tip and the sleeve during compression of the sleeve, the amount of heat-generating friction is reduced when the cutting tip is energized.” Id. at 2:55–65. The Examiner concludes that it would have been obvious to modify Postma to provide a roughness texture in between two contact surfaces as taught by Wypych at least to reduce surface adhesion between the contacting surfaces of the pump clamp and irrigation tube and “solve the sticky and heat build-up issues.” Final Act. 3. We are not persuaded that the Examiner’s stated reasoning for modifying Postma to include a roughness texture in between Postma’s two contacting surfaces lacks rational underpinnings or improperly used Appellant’s Specification as a guide. Wypych teaches the benefits of reducing surface contact between two contacting parts during compression in order to reduce surface adhesion, friction and heat build-up, and further allow a device to not be as dependent on fluid flow cooling. Wypych 2:45–65. Postma teaches a device with contacting surfaces that are situated in a lubricant in order to improve the lifespan of the device. Postma ¶¶ 16–17. We agree with the Examiner that one of ordinary skill in the art would have been led to modify at least one of the contacting surfaces in order to reduce surface contact area so as to reduce surface adhesion, friction, and heat build-up in between two contacting parts in Postma, and further allow Postma’s device to not be as dependent on lubricant. Appellant has not identified any deficiency in such reasoning articulated by the Examiner. Appeal 2020-002131 Application 12/979,411 8 We are also unpersuaded by Appellant’s argument that the Examiner’s proposed combination of Postma and Wypych is based upon impermissible hindsight. See In re Cree, Inc., 818 F.3d 694, 702 n.3 (Fed. Cir. 2016) (explaining that a hindsight argument is of no moment where the Examiner provides a sufficient, non-hindsight reason to combine the references). For the foregoing reasons, Appellant does not apprise us of error in the Examiner’s determination that the combination of Postma and Wypych renders obvious the subject matter of independent claim 1. Accordingly, we sustain the rejection of claim 1, and claims 4–7, 10, 11, 16, 17, and 19–26 falling therewith, under 35 U.S.C. § 103(a) as unpatentable over Postma and Wypych. Rejection II Appellant relies on the same arguments and reasoning we found unpersuasive in connection with the independent claims as the basis for seeking reversal of the rejection of dependent claim 18. Appeal Br. 11. Accordingly, for the same reasons discussed above in connection with the independent claims, we also sustain the rejection of claim 18 under 35 U.S.C. § 103(a) as unpatentable over Postma, Wypych, and Lelah. Appeal 2020-002131 Application 12/979,411 9 CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 4–7, 10, 11, 16, 17, 19–26 103(a) Postma, Wypych 1, 4–7, 10, 11, 16, 17, 19–26 18 103(a) Postma, Wypych, Lelah 18 Overall Outcome 1, 4–7, 10, 11, 16–26 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED