Ex Parte Ando et al

Patent Trial and Appeal Board

Dec 13, 2016

13325207 (P.T.A.B. Dec. 13, 2016)

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.
13/325,207 12/14/2011 Masamichi Ando 036470.00019 1039
38485 7590
ARENT FOX LLP
1675 BROADWAY
NEW YORK, NY 10019
12/15/2016 EXAMINER
SMITH, JEREMIAH R
ART UNIT PAPER NUMBER
1723
NOTIFICATION DATE DELIVERY MODE
12/15/2016 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):
patentdocket @ arentfox. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MASAMICHI ANDO and YOSHIRO TAJITSU
Appeal 2015-006656
Application 13/325,207
Technology Center 1700
Before KAREN M. HASTINGS, CHRISTOPHER C. KENNEDY, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL1
STATEMENT OF THE CASE
Appellants2 appeal under 35 U.S.C. § 134 from a rejection of claim 1.
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 In this Opinion, we refer to the Final Action mailed June 10, 2014 (“Final
Act.”), the Appeal Brief filed January 8, 2015 (“App. Br.”), the Examiner’s
Answer mailed May 4, 2015 (“Ans.”), and the Reply Brief filed June 30,
2015 (“Reply Br.”).
2 Appellants identify Murata Manufacturing Co., Ltd. and A School
Corporation Kansai University as the real parties in interest. App. Br. 2.
Appeal 2015-006656
Application 13/325,207
Claim 1, the sole claim on appeal, is directed to a piezoelectric sheet
with the disputed limitation italicized:
1. A piezoelectric sheet comprising polylactic acid having
helix axes of at least some polylactic acid molecules oriented
relatively in a thickness direction of the piezoelectric sheet, and
dipoles in a helix axes direction of the polylactic acid molecules
are not cancelled with each other, so as to exhibit
piezoelectricity according to piezoelectric constant d33 when
the 3 axis is in the thickness direction thereof.
App. Br. 7 (Claims App’x) (emphasis added).
REFERENCES
The Examiner relies on US 8,241,653 B1 to Hossainy et al., issued
August 14, 2012 (“Hossainy”), in rejecting claim 1.
REJECTIONS
Claim 1 stands rejected as anticipated by Hossainy. Final Act. 6.
OPINION
The Examiner rejects claim 1 as anticipated by Hossainy. Id.
Hossainy discloses piezoelectricity modulation of the release rate of
bioactive agents from the polymer matrix coating of implantable medical
devices, such as vascular stents. Hossainy col. 1,11. 8—14. The Examiner
acknowledges that “Hossainy does not expressly state that molecular
orienting/poling comprises orienting of helix axes of the polylactic acid
molecules to exhibit d33 type piezoelectricity in the thickness direction.”
Final Act. 6. The Examiner contends, however, that Hossainy teaches a
polylactic acid sheet molecularly poled in a thickness direction and therefore
appears to be the same, or substantially the same, as the claimed product. Id.
2
Appeal 2015-006656
Application 13/325,207
According to the Examiner, recognition of poling of polylactic acid helix
and d33 piezoelectric orientation in Hossainy is not required because the
reference teaches orienting the molecules of a polylactic acid sheet to
produce a piezoelectric effect and the helix and d33 orientation “appears to be
inherent in the molecular structure of the sheet.” Id.
The Examiner specifically identifies paragraphs 70 to 72 of the
Specification as teaching applying substantially the same process to the
same material to achieve the same type of polarization as disclosed in
Hossainy. Ans. 6—7 (citing Spec. Tflf70—72 and Hossainy col. 2, In. 42; col.
7,11. 23—24; col. 7,11. 10—23, and col. 8,11. 45—67). The cited portions of
Hossainy disclose that a heated air source is used to heat the polymer-coated
stent to a predetermined temperature (at or above the glass transition
temperature of the coating) in a vacuum chamber and then a high voltage
DC power supply is turned on to perform the polarization. Hossainy col. 7,
11. 21-23, col. 8,11. 45-62.
Appellants contend that Hossainy merely teaches standard
polarization treatment. App. Br. 5—6. Appellants explain that the
piezoelectric constant dn represents the oscillation of molecules (expansion
and contraction) in direction 4 when applying a voltage in direction 1. Id. at
4. This is in contrast the piezoelectric constant d33, which represents the
direction of application of a voltage in the same direction of expansion and
contraction. Id. According to Appellants, this is opposite to what occurs in
generating piezoelectric constant dn. Id. The standard polarization
treatment, as applied in Hossainy, using simple heating and thermal
vibration of poly L-lactic acid (PLLA) molecules would not create a
piezoelectric sheet exhibiting a piezoelectric constant d33 when the 3 axis is
3
Appeal 2015-006656
Application 13/325,207
in the thickness direction thereof, as required by claim 1. Id. at 2. To
achieve the claimed piezoelectric sheet, Appellants contend that
microwaves, not use of a “heated air source,” as in Hossainy, are needed.
Reply Br. 2; see also Spec. Tflf 18, 24, 69, and 74. In a paragraph of the
Specification immediately before that cited by the Examiner, Appellants
disclose that microwave is applied to a very small region, 0.01 to 1 mm2, of
the unprocessed polylactic acid sheet to unravel entangled molecular chains
in order to achieve the claimed piezoelectric sheet exhibiting piezoelectricity
according to piezoelectric constant d33 when the 3 axis is in the thickness
direction thereof. Spec. 1 69.
The Examiner’s rejection of claim 1 as anticipated by Hossainy is
based on inherency. Final Act. 6, Ans. 3. In making such a rejection, the
Examiner bears the burden of showing that elements asserted to be
inherently present must necessarily be present in or result from the prior art,
in this case, Hossainy. See In re Montgomery, 677 F.3d 1375, 1379-80
(Fed. Cir. 2012) (“The inherent result must inevitably result from the
disclosed steps; ‘[ijnherency . . . may not be established by probabilities or
possibilities.’”) (citation and internal quotations omitted). “The mere fact
that a certain thing may result from a given set of circumstances is not
sufficient.” In re Olerich, 666 F.2d 578, 581 (CCPA 1981). In relying upon
the theory of inherency, the Examiner must provide a basis in fact and/or
technical reasoning to reasonably support the determination that the
allegedly inherent characteristic necessarily flows from the teachings of the
applied prior art. Ex parte Levy, 17 USPQ2d 1461, 1464 (BPAI 1990).
Here, the Examiner does not provide sufficient fact or technical
reasoning to support that a piezoelectric sheet exhibiting piezoelectricity
4
Appeal 2015-006656
Application 13/325,207
according to piezoelectric constant d33 when the 3 axis is in the thickness
direction thereof necessarily flows from the teachings of Hossainy.
Specifically, the Examiner ignores how polarization of a polymer-coated
stent using a heated air source in a vacuum chamber may differ from
polarization of a polymer sheet using pin-point application of microwaves.
On the facts before us, we cannot say that the product of Hossainy and
the claimed piezoelectric sheet “are produced by identical or substantially
identical processes,” thus requiring Appellants to prove that Hossainy’s
product does not “necessarily or inherently possess the characteristics of his
claimed product.” See In re Best, 562 F.2d 1252, 1255 (CCPA 1977).
We do not sustain the Examiner’s rejection of claim 1.
DECISION
For the above reasons, the Examiner’s rejection of claim 1 is reversed.
REVERSED
5