Ex Parte Chen et alDownload PDFPatent Trial and Appeal BoardSep 22, 201611201371 (P.T.A.B. Sep. 22, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 111201,371 08/10/2005 25570 7590 09/26/2016 Roberts Mlotkowski Safran Cole & Calderon, P,C, 7918 Jones Branch Drive Suite 500 McLean, VA 22102 Gaoyuan Chen 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. ETH5230USNP 5787 EXAMINER SANDERS, JAMES M ART UNIT PAPER NUMBER 1744 NOTIFICATION DATE DELIVERY MODE 09/26/2016 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): lgallaugher@rmsc2.com docketing@rmsc2.com dbeltran@rmsc2.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GAOYUAN CHEN and JAMES MATRUNICH 1 Appeal2014-008169 Application 11/201,3 71 Technology Center 1700 Before TERRY J. OWENS, JEFFREY T. SMITH, and BRIAND. RANGE, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL This is a decision on an appeal under 35 U.S.C. § 134(a) from the Examiner's final rejection of claims 1-7, 11, 12, 14, and 15. We have jurisdiction pursuant to 35 U.S.C. § 6(b ). We REVERSE. 1 According to the Appeal Brief, the Real Party in Interest is Ethicon, Inc. (App. Br. 1 ). Appeal2014-008169 Application 11/201,3 71 BACKGROUND Appellants' invention relates to a method for making an absorbable microtube. (Spec. 4). Claim 1 is reproduced below from the Claims Appendix to the principal Brief: 1. A method for making a microtube comprising the steps of: a) extruding an absorbable polymer melt through a die to produce a molten extrudate; b) passing the molten extrudate vertically through an air gap having an air gap dimension of about 0.1 to about 0.5 inch, as measured from the tip of the die to the surface of a liquid quenching medium, to produce a quenched extrudate; and c) drawing the quenched extrudate to produce a drawn tube having an outer diameter of about 4 to about 12 mil, with an outer diameter standard deviation of less than 0.15 mil and an inner diameter in the range of about 3 to about 5 mil; d) controlling the outer diameter standard deviation, and thereby inner diameter uniformity, by maintaining the air gap dimension e) annealing the drawn tube in-line at a temperature of about 50°C. to about 150°C.; and t) further annealing the drawn tube off-line at a temperature of about 50°C. to about 150°C., to produce said microtube having a dimensional stability as measured by thermal shrinkage at 65°C of less than 3%. The Examiner maintains, and Appellants appeal, the rejection of claims 1-7, 11, 12, 14, and 15 under 35 U.S.C. § 103(a) as unpatentable over the combination of Ichikawa (US 4,708,800, Nov. 24, 1987) Goodson (US 4,175,326, Nov. 27, 1979) and Ryan (US 5,741,452, Apr. 21, 1998). 2 Appeal2014-008169 Application 11/201,3 71 OPINION2 The dispositive issue on appeal is: Did the Examiner err in determining that the combination of Ichikawa, Goodson and Ryan would have suggested a method for making a microtube comprising extruding an absorbable polymer melt through a die to produce a molten extrudate that is passed vertically through an air gap having an air gap dimension of about 0.1 to about 0.5 inch to produce a quenched extrudate which is drawn to produce a microtube as required by independent claim 1? After review of the respective positions provided by Appellants and the Examiner, we agree with Appellants that the Examiner did not establish that the combination of Ichikawa, Goodson and Ryan would have suggested a method for making a microtube comprising extruding an absorbable polymer melt through a die to produce a molten extrudate that is passed vertically through an air gap having an air gap dimension of about 0.1 to about 0.5 inch to produce a quenched extrudate which is drawn to produce a microtube as required by independent claim 1. 3 Appellants specifically argue that Ishikawa is directed to making a hollow to membrane from a polyolefin polymer not an absorbable polymer. (App. Br. 6-10). Appellants argue that Ishikawa is silent regarding controlling the standard deviation of the outside diameter of the tubing and does not provide a reason for doing so. (App. Br. 11-12). The Examiner found Ichikawa teaches a method for making a microtube comprising extruding a polymer melt through a die to produce a 2 We limit our discussion to independent claim 1. 3 The statement of the rejections on appeal appear in the November 30, 2012 Non-Final Office Action. 3 Appeal2014-008169 Application 11/201,3 71 molten extrudate that is passed vertically through an air gap having an air gap dimension of about 0.2 to 39 .4 inches to produce a quenched extrudate which is drawn to produce a microtube manufacturing a hollow fiber membrane having an outer diameter of 170 to 600 micrometers. (Final Act. 3). The Examiner determined these ranges overlap the ranges disclosed by the prior art. (Id.). The Examiner found Ichikawa teaches an inner diameter of 5.9 to 11.8 mil, which is close enough to render the claimed range of 3 to 5 mil obvious. (Id.). The Examiner found Ichikawa is silent regarding outer diameter standard deviation. (Id.). The Examiner recognized Ichikawa does not disclose an absorbable polymer is used in the method. (Id.). To address this difference the Examiner relies on Goodson's teaching hollow fibers formed from absorbable polymers. (Id. at 4). In light of these teachings, the Examiner determined it would have been obvious to utilize an absorbable polymer in the process of Ichikawa. (Id.). The Examiner relied on Ryan to describe annealing the extrudate both online and off-line. (Id. at 5). We agree with Appellants that the Examiner's rejection cannot be sustained. The Examiner has failed to provide an adequate explanation why a person of ordinary skill in the art would have substituted an absorbable polymer for the polyolefin polymer disclose in Ishikawa. The Examiner has not provided an explanation why an absorbable polymer, if substituted in Ishikawa's process, would have been expected to provide the same dimensional characteristics for the inner and outer diameter. The Examiner has not adequately explained why it would have been obvious to control the standard deviation of the outer diameter of the tube and what effect change in the polymer would have had on the standard deviation. Consequently, the 4 Appeal2014-008169 Application 11/201,3 71 Examiner has not adequately addressed how a person of ordinary skill in the art would have arrived at the claimed invention. Thus, the Examiner has not established that the relied-upon disclosures are sufficient to support obviousness of the Appellants' claimed binder. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) ("A rejection based on section 103 clearly must rest on a factual basis, and these facts must be interpreted without hindsight reconstruction of the invention from the prior art"). Accordingly, we reverse the rejection. We reverse the appealed prior art rejection. REVERSED 5 Copy with citationCopy as parenthetical citation