Ex Parte D et al

Board of Patent Appeals and Interferences

May 19, 2011

11463940 (B.P.A.I. May. 19, 2011)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/463,940 08/11/2006 Brian R. D'Urso 6321-278-1 7774
46592 7590 05/20/2011
NOVAK DRUCE +QUIGG LLP/UTB
CITY PLACE TOWER
525 OKEECHOBEE BLVD., 15TH FLR
WEST PALM BEACH, FL 33401
EXAMINER
EMPIE, NATHAN H
ART UNIT PAPER NUMBER
1712
MAIL DATE DELIVERY MODE
05/20/2011 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte BRIAN R. D'URSO and JOHN T. SIMPSON
____________________

Appeal 2010-005865
Application 11/463,940
Technology Center 1700
____________________

Before BRADLEY R. GARRIS, TERRY J. OWENS, and
CATHERINE Q. TIMM, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 1, 2, 5-17, 19-22, and 24. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
Appellants’ invention relates to a method of making composite
materials having sharp surface features by making a fused composite body,
etching a cut surface to form the sharp surface features having a conical
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shape, and cutting to form a plate with the sharp surface features. Claim 1 is
illustrative:
1. A method of making a composite material having
sharp surface features comprising the steps of:
making a fused composite body, said making step
comprising:
forming a bundle comprising a plurality of rods,
said bundle comprised of a recessive phase and a
protrusive phase, said recessive phase having a higher
susceptibility to a preselected etchant than said protrusive
phase,
heating and drawing said bundle to reduce a
diameter of said bundle,
cutting said bundle transversely into sections,
re-bundling a plurality of sections to form a
composite body, and
fusing the composite body;
treating a cut surface of said fused composite body with
said preselected etchant, wherein said etchant simultaneously
etches the recessive and protrusive phases, for a sufficient time
so that said protrusive phase protrudes from said fused
composite body to form a plurality of sharp surface features
having a conical shape, and said recessive phase defines a
recessed surface area between said surface features; and
cutting the fused composite body in a transverse direction
to form a plate, wherein a cross sectional area of a tip portion of
said sharp features is less than 10 % of a cross sectional area of
a base portion of said sharp features.
The Examiner maintains, and Appellants seek review of, the
following rejections:
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A. The rejection of claims 1, 2, 5, 8-10, 14-17, and 19-21 under
35 U.S.C. §103(a) as obvious over Ozeryansky (US
2004/0094503 A1, pub. May 20, 2004) in view of Walt (US
5,633,972; issued May 27, 1997) and Sowers (US 3,586,895;
issued Jun 22, 1971);
B. The rejection of claim 11 under 35 U.S.C. § 103(a) as obvious
over Ozeryansky, Walt, and Sowers, and further in view of
Allen (US 2002/0138049 A1, pub. Sep. 26, 2002);
C. The rejection of claims 12 and 13 under 35 U.S.C. § 103(a) as
obvious over Ozeryansky, Walt, Sowers, and Allen, and further
in view of Hakky (US 5,498,258; issued Mar. 12, 1996);
D. The rejection of claim 6 under 35 U.S.C. § 103(a) as obvious
over Ozeryansky, Walt, and Sowers, and further in view of
McAllister et al., "Microfabricated Needles for Transdermal
Delivery of Macromolecules and Nanoparticles: Fabrication
Methods and Transport Studies" in PNAS Vol. 100 No. 24, pgs.
13755-13760, (published online Nov. 17, 2003);
E. The rejection of claim 7 under 35 U.S.C. § 103(a) as obvious
over Ozeryansky, Walt, and Sowers, and further in view of
Hicks (US 3,265,480; issued Aug. 9, 1966);
F. The rejection of claim 22 under 35 U.S.C. § 103(a) as obvious
over Ozeryansky, Walt, and Sowers, and further in view of
Wood (US 6,511,463 B1; issued Jan. 28, 2003);
G. The rejection of claim 24 under 35 U.S.C. §103(a) as being
obvious over Ozeryansky, Walt, Sowers, Allen, and Hakky, and
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further in view of Yuzhakov (US 6,256,533 B1; issued Jul. 3,
2001).
II. DISPOSITIVE ISSUES
With regard to rejection A listed above, Appellants contend that
Ozeryansky teaches away from the claimed treating step and that one of
ordinary skill in the art would not have been motivated to proceed contrary
to the teachings of Ozeryansky by a couple of optic cable references (Walt
and Sowers) (Br. 10). In the context of the lack of motivation argument,
Appellants also contend that Walt and Sowers are non-analogous art (Br.
15). Appellants do not argue any claim apart from the others. Therefore, we
select claim 1 as representative for deciding the issues on appeal for
rejection A.
The issues are: Have Appellants (1) established that Walt and Sowers
are non-analogous art; (2) identified a reversible error in the Examiner’s
finding of a suggestion to treat the cut surface of Ozeryansky by etching as
claimed so as to obtain sharp features having a conical shape; or (3)
established that Ozeryansky teaches away from etching the cut surface as
claimed?
III. FINDINGS OF FACT
The following Findings of Fact (FF) are particularly relevant for
disposing of the issues on appeal.
1. Ozeryansky teaches a process of fabricating a metal matrix composite,
cutting the composite, and etching the cut surface to form a range of
microstructures and microparts (Ozeryansky, ¶¶ [0028] and [0134]). For
instance, microparts are formed by etching the matrix material
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completely away (id.). In other embodiments, the matrix is partially
etched away to form a substrate having an array of microprotrusions,
solid or hollow, protruding from the substrate (id.; see also ¶¶ [0139-
40].). A solid microneedle in such an array is depicted at 16-s in Figure
7E (Ozeryansky, ¶¶ [0064], [0081], and [0174]).
2. The metal matrix composite of Ozeryansky consists of microneedle- or
micropin-sized filaments imbedded in a metal matrix (Ozeryansky, ¶
[0148]). The filament design is dependent on the configuration desired in
the end product microneedle or micropin, which can have many shapes
(see Figs. 3, 6, and 7).
3. To fabricate the metal matrix composite, Ozeryansky assembles a billet
22 using subelement rods 24 or hex-shaped elements 25 as the building
blocks (Ozeryansky, ¶ [0150]). The rods are inserted into the holes of a
gun-drilled billet (¶ [0155]; Fig. 3), hex-shaped elements are assembled
inside a can (¶ [0156]; Fig. 5A), or a combination of these techniques is
used (¶¶ [0154] and [0158]). To obtain a large number of microneedles,
a subelement billet may be fashioned from a plurality of elements, heated
and drawn by extruding, and such extruded billets combined to form
another billet that is extruded to draw down and multiply the number of
elements/filaments (¶ [0157]).
4. To fabricate microneedles or micropins arrayed above a substrate,
Ozeryansky slices the metal matrix composite (¶ [0194-97] and then
etches out the undesired portions of the matrix and/or needle cores
(¶ [0199]).
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5. In reference to the forming of hollow needles, Ozeryansky states that the
materials of the composite are selected so that the matrix and needle
cores can be etched, dissolved, leached, and/or microblasted out without
any damage to the microneedles (¶¶ [01999] and [0206]).
6. In reference to an intermediate stage of etching, Ozeryansky suggests
methods of etching that would change the diameter of the needles ¶¶
[0216-17] and methods of sharpening the needles (¶ [0218]). For
instance, one can self-sharpen a double component wall needle having a
core material harder than the surrounding outer layer by micro-particle
erosion, micro-blasting, or chemical polishing (id.). Ozeryansky suggests
forming a solid needle tip using a titanium microneedle material with a
titanium alloy core in which sharpening occurs because the Ti alloy
central core has greater wear resistance than the Ti outer layer of the
needle (id.).
7. Walt is directed to a method of forming optical imaging fibers having an
array of tapered strand end faces (col. 1, ll. 7-15; col. 4, ll. 38-63). Walt
describes using the difference in etching rates between the core (GeO2-
doped silica) and cladding (fluoride-doped silica) of optical fiber strands
of the fiber optic array to obtain tapered strand ends upon etching (col.
11, ll. 1-30). Figures 9 and 10 show that the tapered strand ends are
sharply pointed and conical in nature (see also col. 11, ll. 45-65).
8. Sowers teaches a process of drawing a heated bundle of optical fibers,
each positioned within closely fitting hollow tubes of cladding material,
cutting the drawn bundles into sections, assembling the cut bundles
together (re-bundling), and redrawing the assembled bundles until the
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fibers are of the desired cross-section (Sowers, col. 5, ll. 18-25). Sowers
also teaches selectively etching the cladding material at a higher rate than
the core material to obtain a tapered tip (col. 3, ll. 25-34).
IV. ANALYSIS
As a first matter, Appellants contend that Walt and Sowers are non-
analogous art, but in so doing Appellants conflate the concept of non-
analogous art with the question of whether there is a reason to combine the
teachings of those references with the teachings of Ozeryansky to obtain the
claimed process. The two legal concepts are separate.
The question of whether the references are “analogous” art is a
threshold question. In considering this question, what is really being
determined is whether the references are within the scope of the prior art one
of ordinary skill in the art should be charged with knowing. In order to rely
upon a reference as a basis for rejection, the examiner must “show that a
reference is either in the field of the applicant's endeavor or is reasonably
pertinent to the problem with which the inventor was concerned.” In re
Kahn, 441 F.3d 977, 986-87 (Fed. Cir. 2006).
In the present case, the Examiner merely applies Walt and Sowers as
evidence of what was known in the art with regard to processes of
differential etching to form sharpened tips and processes of obtaining a
composite of filaments within a matrix by drawing and re-bundling. Walt
and Sowers are reasonably pertinent to the problems involved with those
processes. Therefore, we cannot agree with Appellants that Walt and
Sowers are non-analogous art.
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Turning to the question of whether there is a reason to combine the
teachings of the references, we find there is ample suggestion within the
references themselves to support the Examiner’s finding of a suggestion to
combine.
With respect to the combination with Sowers, we find that
Ozeryansky itself suggests a process at least similar to the claimed process
of bundling, heating and drawing, cutting, re-bundling, and fusing (FF 3).
The difference appears to be merely semantics or otherwise minimal.
Moreover, because Ozeryansky desires to draw down the diameter of the
filaments and multiply their numbers, there is a reason for conducting the
process in accordance with the bundling, heating and drawing, cutting, re-
bundling, and fusing process of Sowers, which accomplishes this same
drawing down and multiplying of fibers or filaments in a composite.
With respect to differential etching to form sharp conical surface
features, while Ozeryansky teaches embodiments in which the needles are
not etched at all during the partial etching away of the matrix, this reference
also teaches alternate embodiments of needle tip etching with “reagents
dissolving both needles and matrix” (FF6 and Ozeryansky, ¶ [0216]) and
further indicates that sharpened solid needles are obtainable by chemically
polishing microneedles having core materials of higher wear resistance (FF6
and Ozeryansky, ¶ [0218], particularly at lines 10-16). Walt describes a
method of obtaining sharpened projecting components by selecting the outer
and core fiber materials so they have different etching rates (FF 7 and Walt,
col. 15, ll. 49-57; Fig. 9). Ozeryansky provides a suggestion that sharpening
is desirable in at least some embodiments of the solid needles of that
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reference and Walt suggests that by selecting materials based on their
etching rate one can selectively etch to obtain an array of sharpened solid
needles in a matrix plate. Such sharpening of the solid needles of
Ozeryansky would result in a conical shape as claimed. Sowers provides
further evidence that the differential etching process was known in the art of
etching composites having arrays of filaments or fibers (FF 8).
The evidence as a whole supports the Examiner’s finding of a
suggestion within the prior art for treating the cut surface of Ozeryansky’s
composite body as claimed.
Turning to the question of teaching away, Appellants focus their
arguments on embodiments taught by Ozeryansky involving making an
array of hollow needles with no microneedle sharpening step (see, e.g., Br.
9-11). But Appellants’ arguments ignore the broader disclosures of
Ozeryansky (see, e.g., FF 1-2) and do not properly take into account the
specific disclosure of a process of self-sharpening solid microneedles with a
hard core (FF 6). The disclosure of alternatives does not constitute a
teaching away. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). In a
determination of obviousness, a reference may be relied upon for all that it
would have reasonably suggested to one having ordinary skill in the art.
Merck & Co v. Biocraft Labs., 874 F.2d 804, 807 (Fed. Cir. 1989) (“That the
[prior art] patent discloses a multitude of effective combinations does not
render any particular formulation less obvious.”).
Applying the teaching of Walt of differential etching to the composite
matrix of Ozeryansky including microfilaments of two materials of different
etching rates as taught by Walt, the ordinary artisan would have been led to,
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not away from, treating a cut surface of Ozeryansky’s metal matrix
composite with an etchant that etches the materials at different rates to
obtain the sharpened microneedles Ozeryansky discloses.
With respect to the other rejections, the issues are the same as above.
For the reasons discussed, we cannot say that Appellants have shown the
Examiner erred in rejecting the claims as obvious.
V. CONCLUSION
On the record before us, we sustain the rejections maintained by the
Examiner.
VI. DECISION
The decision of the Examiner is affirmed.
VII. TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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