Ex Parte Chung et al

Patent Trial and Appeal Board

Aug 31, 2017

13161137 (P.T.A.B. Aug. 31, 2017)

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.
13/161,137 06/15/2011 Kenneth K. Chung 049648/496243 4807
826 7590 09/05/2017
ALSTON & BIRD LLP
BANK OF AMERICA PLAZA
101 SOUTH TRYON STREET, SUITE 4000
CHARLOTTE, NC 28280-4000
EXAMINER
SCHIFFMAN, BENJAMIN A
ART UNIT PAPER NUMBER
1742
NOTIFICATION DATE DELIVERY MODE
09/05/2017 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):
u sptomail @ 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,
MARK MCCULLOUGH SPIECKER, RYAN STONEBERG,
WALTER SCOTT THIELMAN, and SHRAVANTHI REDDY
Appeal 2016-007240
Application n/161,1371
Technology Center 1700
Before JEFFREY T. SMITH, LINDA M. GAUDETTE,
and BRIAN D. RANGE, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 1—3, 5—7, and 15. We have jurisdiction under 35 U.S.C. § 6.
We affirm.
1 The real party in interest Sharklet Technologies LLC.
Appeal 2016-007240
Application 13/161,137
Appellants’ invention is directed generally to a method comprising
transporting a conduit and a template through a guide tube; the template
being disposed on an outer surface of the conduit between the conduit and
the guide tube. (Spec. 1 5). Claim 1 illustrates the subject matter on appeal
and is reproduced below:
1. A method comprising:
transporting a conduit and a template through a guide
tube; the template being disposed on an outer surface of
the conduit between the conduit and the guide tube;
and
transferring a texture from the template to the conduit as
the conduit and the template are transported through the
guide tube, where the template is in the form of a single
film that is wrapped around the entire circumference of
the conduit, and wherein the conduit is a catheter.
The Examiner finally rejects claims 1—3, 5—7, and 15 under
35 U.S.C. § 103(a) as unpatentable over the combination of Milani
(US 3,795,471; Mar. 5, 1974) and Chung et al. (US 2010/0119755 Al;
May 13, 2010). (Final Act. 3^4).
OPINION2
2 Appellants’ arguments are not directed to a specific claim. (App. Br. 4—
10). We select independent claim 1 as representative of the subject matter
on appeal.
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Application 13/161,137
After review of the respective positions provided by Appellants and
the Examiner, we AFFIRM for the reasons presented by the Examiner and
add the following.
Appellants argue Milani fails to teach a template that is in the form of
a single film that is wrapped around the entire circumference of the conduit,
as required by the claimed invention. (App. Br. 5—6). Appellants argue the
exemplified apparatus disclosed by Milani employing only one shaping band
could not wrap the film around the entire circumference of the hollow
shaped body, as required by the claimed invention. {Id. at 6—7). Appellants
argue although Milani discloses an extrudate that is hollow, it is not
disclosed as a conduit as required by the claimed invention. {Id. at 9-10).
Appellants further argue Chung fails to cure the deficiencies of Milani. (Id.
at 10).
Appellants’ arguments are without persuasive merit. The Examiner
found Milani discloses a method of shaping hollow extrudates comprising
advancing a hollow extrudate of plastic material (conduit) in contact with a
band covering the entire outer surfaces of the extrudate. (Final Act. 3).
Milani specifically discloses that the process continuously shapes hollow
thermoplastic profiles wherein the extrudate in a deformable state passes
through a shaping mold having at least a shaping band that provides
texture/pattems on the outer surface of the extrudate. (Col. 1,11. 51—57).
The shaping band provides texture to the extrudate by sliding over the mold
walls at the same speed as the extrudate is formed. (Col. 1,11. 57—63). The
Examiner found Milani does not discloses that the hollow extrudate is a
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Appeal 2016-007240
Application 13/161,137
catheter. The Examiner found Chung discloses a method of patterning a
curved surface which is used as a catheter (Chung | 60). The Examiner
determined that a person of ordinary skill in the art would have found it
obvious to form a hollow patterned conduit/catheter utilizing the process of
Milani. (Final Act. 3).
Appellants’ arguments are directed principally to Milani’s
exemplified embodiment. (App. Br. 5—6; Milani col. 2,1. 15—53; Figures 1—
2). A reference is available for all that it teaches to a person of ordinary skill
in the art. In re Inland Steel Co., 265 F.3d 1354 (Fed. Cir. 2001); Merck &
Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (“the fact that
a specific [embodiment] is taught to be preferred is not controlling, since all
disclosures of the prior art, including unpreferred embodiments, must be
considered”) (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)).
Although certain of Milani’s embodiments utilize two bands to imprint a
pattern on a conduit, this teaching would not have detracted a person of
ordinary skill in the art from a process for imprinting a desired pattern on the
entire surface of a conduit utilizing a mold suitable for use with a single film
band which is wrapped around the entire surface of a conduit. Milani
teaches the suitability of utilizing at least one band for texturing hollow
conduits. (Milani, Col. 1,1. 58). Milani teaches the band shape, size and
quantity can be varied depended upon the desired pattern and width of the
extrudate. (Milani, Col. 1,1. 58; Col. 2,1. 64—col. 3,1. 16). Milani states, for
example, that “it can be specified that it is not required to mask all the
extradate surfaces as it is caused to pass through the shaping mould. ...”
(Milani, Col. 3,1. 10-16). Consequently, a person of ordinary skill in the art
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Appeal 2016-007240
Application 13/161,137
would have reasonably expected from the teachings of Milani that a single
band could have been utilized for imprinting the desired shape on the entire
exterior surface of the extrudate. A person of ordinary skill in the art would
have had sufficient skill to perform a process to imprint a desired pattern on
a conduit utilizing a single film band with an appropriate molding apparatus
to provide the desired pattern on the surface of the conduit. See, KSR Int 7
Co. v. Teleflex Inc., 550 US 398, 418 (2007) (In making an obviousness
determination one “can take account of the inferences and creative steps that
a person of ordinary skill in the art would employ”). Appellants have not
directed us to evidence that establishes that a process which utilizes a single
film band wrapped around the entire surface of the conduit to impart a
desired pattern provides unexpected results.
Milani discloses the band can be made of plastic material. (Col. 2,11.
12—13). Appellants have not adequately explained why Milani’s band made
of plastic material is not a film as required by the claimed invention. Milani
also teaches that the extrudate is hollow (i.e., a tube). (Milani Title).
Accordingly, we affirm the Examiner’s prior art rejection of claims
claims 1—3, 5—7, and 15 under 35 U.S.C. § 103(a) for the reasons stated
above and those presented by the Examiner.
ORDER
The decision of the Examiner rejecting claims 1—3, 5—7, and 15 is
affirmed.
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Application 13/161,137
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED
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