Ex Parte Bork et al

Patent Trial and Appeal Board

Apr 11, 2018

12147605 (P.T.A.B. Apr. 11, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/147,605 06/27/2008
27777 7590 04/13/2018
JOSEPH F. SHIRTZ
JOHNSON & JOHNSON
ONE JOHNSON & JOHNSON PLAZA
NEW BRUNSWICK, NJ 08933-7003
FIRST NAMED INVENTOR
Toralf Bork
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.
COD5166USNP 7224
EXAMINER
PATEL, SHEFALI DILIP
ART UNIT PAPER NUMBER
3763
NOTIFICATION DATE DELIVERY MODE
04/13/2018 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):
jnjuspatent@corus.jnj.com
lhowd@its.jnj.com
pairjnj@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TORALF BORK and FRANCOIS BIANCHI
Appeal2017-006944
Application 12/147,605
Technology Center 3700
Before STEFAN STAICOVICI, BRANDON J. WARNER, and
ANTHONY KNIGHT, Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Toralf Bork and Francois Bianchi ("Appellants") 1 appeal under 35
U.S.C. § 134(a) from the Examiner's decision in the Final Action (dated
Mar. 18, 2016, hereinafter "Final Act.") rejecting claims 1-12, 14--27, 29-
41, and 45. 2 We have jurisdiction over this appeal under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
1 Codman Neuro Sciences Sarl is identified as the real party in interest in
Appellants' Appeal Brief (dated Aug. 22, 2016, hereinafter "Br."), at page 1.
2 Claims 13 and 28 are canceled and claims 42--44 are withdrawn. Br. 2.
Appeal2017-006944
Application 12/147,605
INVENTION
Appellants' invention relates to "implantable infusion pumps used to
administer a controlled flow of drug into a patient." Spec. para. 1.
Claims 1, 30, and 31 are independent. Claim 1, with formatting
added, is illustrative of the claimed invention and reads as follows:
1. A capillary for use in an infusion pump, comprising
a substrate having a first surface;
a channel on said first surface extending between a start
point and an end point;
a passivation layer applied to said first surface within
said channel;
an outlet bore in said substrate positioned at said end
point;
a cover affixed to said first surface so that the cover is in
direct contact with at least a portion of the passivation layer that
is in contact with the first surface and so that said channel is
covered, thereby defining a fluid conduit, said cover including
an inlet bore located in alignment with said start point of said
channel so that said fluid conduit is in fluid communication
with both said inlet bore and said outlet bore.
REJECTIONS
I. The Examiner rejects claims 1, 2, 5, 9, 10, 18, 19, 25, 30, and 31
under 35 U.S.C. § 102(b) as anticipated by Winer et al. (US
2003/0003619 Al, pub. Jan. 2, 2003, hereinafter "Winer").
II. The Examiner rejects claims 3, 4, 6-8, 11, 12, 22-24, 26, 27, 32, and
34--41under35 U.S.C. § 103(a) as being unpatentable over Winer and
Oka et al. (US 2005/0274423 Al, pub. Dec. 15, 2005, hereinafter
"Oka").
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Application 12/147,605
III. The Examiner rejects claims 14--17 and 29 under 35 U.S.C. § 103(a)
as being unpatentable over Winer and Saaski et al. (US 5,839,467, iss.
Nov. 24, 1998, hereinafter "Saaski").
IV. The Examiner rejects claims 20 and 21under35 U.S.C. § 103(a) as
being unpatentable over Winer.
V. The Examiner rejects claim 33 under 35 U.S.C. § 103(a) as being
unpatentable over Winer, Oka, and Saaski.
VI. The Examiner rejects claim 45 under 35 U.S.C. § 103(a) as being
unpatentable over Winer and Brown et al. (US 2004/0013545 Al,
pub. Jan. 22, 2004, hereinafter "Brown").
ANALYSIS
Rejection I
Appellants do not present arguments for the patentability of claims 2,
5, 9, 10, 18, 19, 25, 30, and 31 apart from claim I. See Br. 5---6. Therefore,
in accordance with 37 C.F.R. § 41.37(c)(l)(iv), we select independent claim
1 as the representative claim to decide the appeal of the rejection of these
claims, with claims 2, 5, 9, 10, 18, 19, 25, 30, and 31 standing or falling with
claim 1.
The Examiner finds that Winer discloses, inter alia, a substrate 10, a
channel 40, a passivation layer 70, an outlet bore, and a cover 20. See Final
Act. 2-3 (citing Winer, Fig. 1). To explain more clearly, the Examiner
provides an annotated version ofWiner's Figure 1 as shown below:
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Application 12/147,605
Id. at 4. The Examiner's annotated Figure 1 of Winer shows substrate 10,
start point and inlet bore, end point and outlet bore, a first surface, a
passivation layer 70 in contact with the first surface, and a cover 20 in direct
contact with the passivation layer 70.
Appellants note that "[ t ]he recited first surface of substrate 10 is
considered to be the bottom of buried microchannel 40 that is formed within
substrate 10" and "[t]he recited cover is considered to be layer 20." Br. 5---6.
Appellants argue that "[ c ]learly layer 20 is not in direct contact with any
portion of the passivation layer [70] that is in contact with the first surface or
face of the substrate [10]." Id. at 6. According to Appellants, "[l]ayer 20 is
placed on the top surface of substrate 10 while microchannel 40 is buried
within substrate 10." Id.
We are not persuaded by Appellants' arguments because the
Examiner is correct in that "passivation layer [70] has [both] vertical
components and horizontal components that contact both the cover [20] and
the first surface/face of the substrate [10]." Examiner's Answer (dated Jan.
26, 2017, hereinafter "Ans."), at page 3. For example, cover layer 20
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Application 12/147,605
located at side edges of substrate 10 is "in direct contact with" vertical
components ("at least a portion") of passivation layer 70 that contacts the
first surface of substrate 10, as the claim requires. See id., Examiner's
annotated Figure 1 of Winer. Moreover, we note that, in contrast to
Appellants' position (see Br. 6), in the Examiner's rejection "the structure of
Winer ... is not being modified." Ans. 3; see also Final Act. 2-3.
In conclusion, for the foregoing reasons, we sustain the rejection of
independent claim 1under35 U.S.C. § 102(b) as anticipated by Winer.
Claims 2, 5, 9, 10, 18, 19, 25, 30, and 31 fall with claim I.
Rejections II-VI
Appellants rely on the arguments discussed supra in Rejection I. See
Br. 6-7. Therefore, for the same reasons discussed above, we also sustain
Rejections II-VI.
SUMMARY
The Examiner's decision to reject claims 1-12, 14--27, 29-41, and 45
under 35 U.S.C. §§ 102 and 103 is affirmed.
No time period for taking any subsequent action in connection
with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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