Ex Parte Chung et al

Patent Trial and Appeal Board

May 15, 2018

12616915 (P.T.A.B. May. 15, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/616,915 11/12/2009
826 7590 05/17/2018
ALSTON & BIRD LLP
BANK OF AMERICA PLAZA
101 SOUTH TRYON STREET, SUITE 4000
CHARLOTTE, NC 28280-4000
FIRST NAMED INVENTOR
Kenneth K. Chung
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.
049648/496233 3592
EXAMINER
PATTERSON, MARC A
ART UNIT PAPER NUMBER
1782
NOTIFICATION DATE DELIVERY MODE
05/17/2018 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):
usptomail@alston.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KENNETH K. CHUNG, ANTHONY B. BRENNAN,
JOSEPH W. BAGAN, and MARK M. SPIECKER
Appeal2017-007510
Application 12/616,915
Technology Center 1700
Before ADRIENE LEPIANE HANLON, BRIAND. RANGE, and
JENNIFER R. GUPTA, Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
final decision rejecting claims 1--4, 6-16, and 56-77. We have jurisdiction
under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
1 In this Decision, we refer to the Specification filed November 12, 2009
("Spec."), the Final Office Action dated September 25, 2015 ("Final Act."),
the Appeal Brief filed February 29, 2016 ("Appeal Br."), the Response to
Notice ofNon-Compliance filed October 14, 2016 ("Resp."), the Examiner's
Answer dated February 14, 2017 ("Ans."), and the Reply Brief filed
April 13, 2017 ("Reply Br.").
2 Appellants identify the real party in interest as University of Florida
Research Foundation, Inc. Appeal Br. 2.
Appeal2017-007510
Application 12/616,915
The subject matter of the claims on appeal relates to an article with a
curved surface having a plurality of identical patterns disposed on the inner
and outer curved surfaces of the article. Spec. ,r,r 2, 5, 13, 102. Claim 1,
reproduced below from the Claims Appendix of the Response to Notice of
Non-Compliance filed October 14, 2016, with emphasis on the key disputed
limitation, is illustrative of the claims on appeal.
1. An article comprising:
a curved surface; the curved surface having disposed
thereon a plurality of identical patterns; each pattern being
defined by a plurality of spaced apart features attached to or
projected into the curved surface, at least one spaced apart
feature having a dimension of about 1 nanometer to about
10 micrometers, the plurality of features each having at least
one neighboring feature having a substantially different
geometry, wherein each pattern has at least one feature which is
identical to a feature of a neighboring pattern and shares that
feature with the neighboring pattern, wherein an average
spacing between adjacent spaced apart features is about
1 nanometer to about 1 millimeter in at least a portion of the
curved surface, wherein the plurality of spaced apart features
are represented by a periodic function; wherein the plurality of
identical patterns is disposed on an inner curved surface and
an outer curved surface; and wherein the article is used for flow
control of liquids that come in contact with the curved surface.
Resp. 5 (Claims App.) ( emphasis added).
REJECTIONS
The Examiner maintains the following rejections on appeal:
Rejection 1: Claim 14 under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement (Final Act. 2;
Ans. 2);
2
Appeal2017-007510
Application 12/616,915
Rejection 2: Claim 16 under 35 U.S.C. § 112, second paragraph, as
being indefinite (Final Act. 3; Ans. 2);
Rejection 3: Claims 1--4, 6-13, 56-62, and 68-77 under 35 U.S.C.
§ 103(a) as unpatentable over Brennan et al. (US 2006/0219143 Al,
published October 5, 2006) ("Brennan") in view of GB Patent No. 1,063,870
(published March 30, 1967) ("GB '870") (Final Act. 3-5; Ans. 3); and
Rejection 4: Claims 14--16 and 63----67 under 35 U.S.C. § 103(a) as
unpatentable over Brennan in view of GB '870, and further in view of
Eidenschink et al. (US 2002/0120233 Al, published August 29, 2002) (Final
Act. 5-6; Ans. 5).
DISCUSSION
Rejections 1 & 2: Rejections under 35 U.S.C. § 112
Appellants do not present arguments contesting the Examiner's
rejection of claim 14 under 35 U.S.C. § 112, first paragraph or the rejection
of claim 16 under 35 U.S.C. § 112, second paragraph. See generally Appeal
Br. 5-13. Consequently, Appellants have waived any argument of error, and
we summarily sustain the rejections under 35 U.S.C. § 112 of claims 14 and
16. See Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010) (precedential)
("If an appellant fails to present arguments on a particular issue - or, more
broadly, on a particular rejection -the Board will not, as a general matter,
unilaterally review those uncontested aspects of the rejection."), and Manual
of Patent Examining Procedure (MPEP) § 1205.02 (9th ed., August 2017)
("If a ground of rejection stated by the examiner is not addressed in the
appellant's brief, appellant has waived any challenge to that ground of
3
Appeal2017-007510
Application 12/616,915
rejection and the Board may summarily sustain it, unless the examiner
subsequently withdrew the rejection in the examiner's answer.").
Rejections 3 & 4: Rejections under 35 U.S.C. § 103(a)
We focus our discussion on independent claim 1.
The Examiner finds that Brennan discloses a material with a curved
surface, such as a catheter, having a coating layer, comprised of elastomers,
with a plurality of features (patterns) that are attached to and projected out
from the material's surface. Final Act. 3--4 (citing Brennan ,r,r 11, 33,
Fig. la). The Examiner finds that Brennan discloses that the features on its
coating layer have at least one microscale dimension, with a width of about
3 µm, lengths of from about 3 µm to about 16 µm, and a feature spacing of
about 1.5 µm. Id. at 4; Brennan ,r 33.
The Examiner recognizes that Brennan does not disclose that its
coating layer, which has a plurality of features, "is disposed on an inner
curved surface and an outer curved surface," of its material (e.g., catheter).
To account for this difference, the Examiner relies on GB '870. Final
Act. 4. The Examiner finds that GB '870 teaches a catheter having an
elastomeric coating bonded to its inner and outer curved surfaces "for the
purpose of obtaining a catheter that provides less irritation." Id.; GB '87 0, 1,
11. 25-30, 37--40.
The Examiner finds that one of ordinary skill in the art would have
been led, based on GB '870's teachings, to use Brennan's patterned coating
layer on the inner and outer curved surfaces of its catheter "to obtain a
catheter that provides less irritation." Final Act. 4.
Appellants argue that Brennan teaches a coating layer having a
plurality of identical patterns, i.e., an uneven coating, to control bioadhesion
4
Appeal2017-007510
Application 12/616,915
on a surface of a material, for example the surface of a catheter. Appeal
Br. 7; Reply Br. 3. Appellants argue that unlike Brennan, GB '870 discloses
a layer that is "uniform and evenly coated" on the entire surface of its
catheter to achieve reduced irritation and reduced adhesion to organic
resides. Appeal Br. 7. Appellants argue that GB '870's teaching of
providing a layer that is "uniform and evenly coated" on the inside and
outside curved surfaces of a catheter would not have reasonably motivated
one of ordinary skill in the art to modify Brennan to provide a patterned
coating layer on the inner and outer surfaces of a catheter. Id. at 7, 9.
The Examiner responds in the Answer that the term "uniform" and the
phrase "evenly coated" are used in GB '870 to refer to obtaining a uniform
and even thickness for the overall coating, and do not exclude a coating that
has patterns or physical features. Ans. 7. The Examiner finds that one of
ordinary skill in the coating art would understand that GB '870's coating
could be uniformly or evenly coated on its catheter and include patterns so
long as the pattern is uniform and even. Id. at 7-8.
We disagree with the Examiner's interpretation of the term "uniform"
or phrase "evenly coated" in the context of GB '870. As Appellants
persuasively explain, when GB '870's teachings are taken as a whole, one of
ordinary skill in the art would reasonably interpret "uniform" and "evenly
coated" as used in GB '870 as "lacking physical features, specifically,
patterned features which are attached to or protrude into the surface, which
are by definition, an uneven surface." Appeal Br. 9; see also Reply Br. 6
(arguing that based on GB '870's disclosure "the terms 'uniform' and 'even'
can only be interpreted as producing a smooth surface of uniform
thickness"). The nature of GB '870' s teachings is that providing a
5
Appeal2017-007510
Application 12/616,915
"uniform" or an "evenly coated" silicone layer on a catheter causes less
tissue irritation and thus results in improved comfort to the patient.
GB '870, 1, 11. 35-30, 3, 11. 64--73 (Ex. 3), Fig. l(a). Thus, even though GB
'870 teaches applying its uniform unpatterned coating layer on the inside
and outside curved surfaces of its catheter to provide less tissue irritation, the
Examiner has not provided a sufficient reason, absent hindsight, to apply a
non-uniform patterned coating layer, as disclosed in Brennan, on inner and
outer curved surfaces of a catheter to achieve the same benefit.
Indeed, the only reasons for combining the teachings of the references
provided by the Examiner is to "obtain a catheter that provides less
irritation as taught by GB 1,063,870" (Final Act. 4; see also Ans. 7) and that
both references "disclose coatings that are elastomers" and teach inhibiting
bioadhesion (Ans. 7). The Examiner has not made findings of fact adequate
to support these stated reasons to combine the teachings of the references
with a reasonable expectation of success. As explained above, the
preponderance of the evidence does not support that the teachings of
GB '870 would have been combined with Brennan's patterns to provide less
irritation, and the Examiner has not explained why the similarity of
Brennan's and GB '870's elastomers and bioadhesion inhibition would have
provided a reason to apply Brennan's patterns to both sides of a curved
surface. Accordingly, on this record, we agree with Appellants that the
Examiner has not adequately explained the Examiner's stated conclusion
that independent claims would have been obvious over Brennan in view of
GB '870. Thus, we do not sustain the rejection of claim 1. Because
claims 2--4, 6-13, and 58-62 depend from claim 1, we also do not sustain
the rejection of these claims.
6
Appeal2017-007510
Application 12/616,915
Independent claims 56 and 57 contain limitations that correspond to
the disputed limitation in claim 1 discussed above. See Resp. 12 (Claims
App.). Accordingly, for the same reasons as discussed above, we do not
sustain the rejection of claims 56 and 57, or the rejection of claims 68-77
that depend from those claims.
The Examiner's rejection under 35 U.S.C. § 103(a) of claims 14--16
and 63-67 relies on the same combination of Brennan and GB '870, and
therefore, has the same deficiency as the§ 103(a) rejection of claim 1--4, 6-
13, 56-62, and 68-77 discussed above. The Examiner does not rely on
Eidenschink, the additional reference relied upon in rejecting claims 14--16
and 63-67, to remedy the above-noted deficiency in the combination of
Brennan and GB '870. Final Act. 5---6. Thus, for the same reasons as
discussed above, a preponderance of the evidence does not support the
Examiner's conclusion that claims 14--16 and 63---67 would have been
obvious over Brennan in view of GB '870, and further in view of
Eidenschink. Accordingly, we do not sustain the rejection of claims 14--16
and 63-67.
DECISION
For the above reasons, we affirm the rejections of claims 14 and 16
under 35 U.S.C. § 112. We reverse the rejections of claims 1--4, 6-16, and
56-77 under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
7
Appeal2017-007510
Application 12/616,915
AFFIRM-IN-PART
8