Ex Parte Halada et al

Patent Trial and Appeal Board

Feb 9, 2017

13594288 (P.T.A.B. Feb. 9, 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.
13/594,288 08/24/2012 Gary HALADA 1339-31 (R-8234/R-8417) 2630
31554 7590 02/13/2017
CARTER, DELUCA, FARRELL & SCHMIDT, LLP
445 BROAD HOLLOW ROAD
SUITE 420
MELVILLE, NY 11747
EXAMINER
CABRAL, ROBERT S
ART UNIT PAPER NUMBER
1618
NOTIFICATION DATE DELIVERY MODE
02/13/2017 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):
docket @ cdfslaw. com
tgiordano@cdfslaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GARY HALADA, MICHAEL A. CUIFFO,
and PRASHANT JHA1
Appeal 2015-005622
Application 13/594,288
Technology Center 1600
Before ERIC B. GRIMES, TAWEN CHANG, and RYAN H. FLAX,
Administrative Patent Judges.
FLAX, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) involving
claims directed to a method of electrochemical deposition and an
antimicrobial coating for a stainless steel surface. Claims 1—20 are on
appeal as rejected under 35 U.S.C. § 103(a). We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
1 We understand the Real Party in Interest to be The Research Foundation of
State University of New York. Br. 2.
Appeal 2015-005622
Application 13/594,288
STATEMENT OF THE CASE
“The present invention relates generally to a method of aqueous
electrochemical deposition to coat a metallic surface with chitosan and metal
nanoparticles.” Spec. 1:11—12. The Specification describes an embodiment
including “submerging [a] chitosan coated surface [on stainless steel] in an
aqueous solution having a predetermined concentration of a noble metal
nitrate and applying a[n] [] electric potential... to deposit noble metal
particles on the chitosan coated surface.” Spec. 3:16—19. The Specification
describes another embodiment including “submerging [a] stainless steel
surface in an acidic chitosan solution with a predetermined concentration of
a cationic noble metal and applying an electric potential... to form a matrix
of the cationic noble metal and nitro-chitosan.” Spec. 3:22—25.
The appealed claims are set forth in the Claims Appendix of the
Appeal Brief. Claims 1, 8, and 15 are the independent claims and read as
follows:
1. A method of electrochemical deposition consisting essentially
of:
submerging a stainless steel surface of an object in a chitosan
solution;
applying a first electric potential between the submerged
stainless steel surface and the chitosan solution for a
predetermined time to form a chitosan coating on the surface;
rinsing the chitosan coated surface;
dehydrating the chitosan coated surface;
submerging the chitosan coated surface in a solution having a
predetermined concentration of a noble metal nitrate; and
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Application 13/594,288
applying a second electric potential between the chitosan coated
surface and the solution of the noble metal nitrate to deposit
noble metal particles on the chitosan coated surface.
8. A method for aqueous electrochemical deposition to form a
coating on a stainless steel surface, the method consisting
essentially of:
submerging the stainless steel surface in an acidic chitosan
solution with a predetermined concentration of a cationic noble
metal; and
applying an electric potential between the submerged stainless
steel surface and the acidic chitosan solution for a predetermined
time to form a matrix of the cationic noble metal and
nitrochitosan on the submerged stainless steel surface,
wherein a functionally graded layer forms on the stainless steel
surface that includes a semi-crystalline matrix of the cationic
noble metal and chitosan.
15. An antimicrobial coating for a stainless steel surface,
wherein the coating is formed by a method consisting essentially
of submerging a stainless steel surface of an object in a chitosan
solution, applying a first electric potential between the
submerged stainless steel surface and the chitosan solution for a
predetermined time to form a chitosan coating on the stainless
steel surface, rinsing the chitosan coated surface, dehydrating the
chitosan coated surface, submerging the chitosan coated surface
in a solution having a predetermined concentration of a noble
metal nitrate, and applying a second electric potential between
the chitosan coated surface and the solution of the noble metal
nitrate to deposit noble metal particles on the chitosan coated
surface.
Br. 12—16 (Claims App’x).
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Appeal 2015-005622
Application 13/594,288
The following rejection is on appeal:
Claims 1—20 stand rejected under 35 U.S.C. § 103(a) over Payne,2
Eby,3 and Wei.4 Final Action 2.
DISCUSSION
We adopt the Examiner’s findings of fact, reasoning on scope and
content of the prior art, and conclusions set out in the Final Action and
Answer. Only those arguments made by Appellants in the Briefing have
been considered. Arguments not presented in the Brief are waived. See
37 C.F.R. § 41.37(c)( 1 )(iv)(2012).
The Examiner determined:
Payne et al. teaches a method “for electrochemically
depositing a polysaccharide mass having a selected physical
state.” Abstract. In particular, Payne et al. teaches “an
electrically conductive support of a substrate is contacted with an
aqueous solution including a selectively insoluble
polysaccharide.” Id. Substrates include “steel,” col. 6, line 20,
and preferably “chitosan,” col. 7, lines 46 and 47. The method
includes application of an electrical voltage between electrodes
in a chitosan solution .... Col. 9, lines 15—22.
2 U.S. Patent No. 7,883,615 B2 (issued to Gregory F. Payne on Feb. 8, 2011)
(hereinafter “Payne”).
3 D. Matthew Eby et al., Hybrid Antimicrobial Enzyme and Silver
Nanoparticle Coatings for Medical Instruments, 1 Applied Materials &
Interfaces 1553-60 (2009) (hereinafter “Eby”).
4 Dongwei Wei et al., The Synthesis of Chitosan-based Silver Nanoparticles
and Their Antibacterial Activity, 344 Carbohydrate Research 2375—82
(2009) (hereinafter “Wei”).
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Application 13/594,288
Office Action 3 (citing Payne).5 The Examiner identified that “Payne et al.
does not teach ‘submerging the chitosan coated surface in a solution having
a predetermined concentration of a noble metal nitrate’ (in part, current
claims 1 and 15), silver nitrate (current claims 18 and 20), or a pre­
determined concentration of noble metal (claim 11 and in part, claim 8).”
Id. 4.
The Examiner cited Eby, which is directed to “a method for the
synthesis of antimicrobial coatings on medical instruments” (Eby Abstract),
in combination with Payne, and determined “Eby et al. teaches the
electrophorectic [sic] deposition of silver nanoparticle coatings onto the
surface of stainless steel blades and needles. See Abstract,” and “[i]n
particular, Eby et al. [teaches] submerging stainless steel blades in a silver
acetate solution (current claims 8, 9, 11, 14 and 20, in part).” Office Action
4 (citing Eby and pointing to Appellants’ claims).
The Examiner also determined “Wei et al. teaches ‘[t]he synthesis of
chitosan-based silver nanoparticles and their antibacterial activity.’ Title. In
this regard, ‘ [c]hitosan-based silver nanoparticles were synthesize[d] by
reducing silver nitrate salts with nontoxic and biodegradable chitosan. ’
Abstract.” Id. (citing Wei). Wei disclosed “4 mL of 52.0 mM AgMA and
10 mL of a solution of chitosan (6.92 mg mL'1) were mixed and stirred until
homogenous” and this solution was used to form “a free-standing chitosan
film with silver (about 0.10 mm in thickness).” Wei 2376.
5 Office Action dated Oct. 3, 2013 (maintained in the Final Action 2)
explaining the Examiner’s rationale for the obviousness rejection.
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Application 13/594,288
The Examiner determined that a person of ordinary skill in the art
would have been motivated to combine Payne, Eby, and Wei to produce
chitosan and silver coated stainless steel to achieve effective antimicrobial
properties. Office Action 5. The Examiner also determined that such a
combination would reasonably be expected to succeed in view of Wei. Id.
We find the Examiner has established a prima facie case that claims 1,
8, and 15 would have been obvious over the cited prior art combination. We
address Appellants’ arguments below.
Appellants argue the individual references do not teach or suggest all
or particular claim elements of claims 1, 8, and 15. See Br. 5—6, 8—10.
“Non-obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Therefore, such arguments are not persuasive.
Appellants argue that Eby discloses a process using solvents and
processes, and cleaning/preparation steps that the recited methods of claims
1 and 8 and the antimicrobial coating of claim 15 avoid (teaching away from
the claimed inventions). Br. 6, 8—10. Similarly, Appellants argue Wei
forms its nanoparticles at high temperatures, e.g., 60°C and 90°C, for
periods of 9 and 12 hours, and the recited methods of claims 1 and 8 and the
antimicrobial coating of claim 15 do not require these steps. Id. We find
these arguments unpersuasive.
Although Appellants do not expressly make such an argument, or
even identify the relevant claim language in their briefing, we understand
their arguments to be premised on the “consisting essentially of’ transitional
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Application 13/594,288
phrasing of the claims and that it restricts the scope of the claims such that
the above-referenced disclosures of Eby and Wei are outside that scope.
However, as the Examiner pointed out during prosecution, the claims do not
expressly exclude anything, e.g., solvents or cleaning or temperatures or
durations. See, e.g., Advisory Action dated Aug. 6, 2014.
By using the term “consisting essentially of,” the drafter
signals that the invention necessarily includes the listed
ingredients and is open to unlisted ingredients that do not
materially affect the basic and novel properties of the invention.
A “consisting essentially of’ claim occupies a middle ground
between closed claims that are written in a “consisting of’ format
and fully open claims that are drafted in a “comprising” format.
PPG Indus, v. Guardian Indus. Corp, 156 F.3d 1351, 1354 (Fed. Cir. 1998).
Inventors may define the scope of “consisting essentially of’ by making
clear in the specification what is regarded as constituting a material change
in the basic and novel characteristics of the invention. Id. at 1355.
Appellants do not, in their briefing or in their Specification, identity
what they regard as the basic and novel property or properties of the claimed
inventions. We will not make an assumption on this issue. See In re Baxter
TravenolLabs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the function of
this court to examine the claims in greater detail than argued by an appellant,
looking for [patentable] distinctions over the prior art.”). Because the claims
do not expressly exclude anything and the claims are open to additional,
unrecited elements, we are not persuaded by Appellants’ arguments that the
disclosures of the prior art references that Appellants identify (see supra)
exclude the references from combination with one another in an obviousness
analysis or that they fail to make obvious the claimed inventions.
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For the reasons above, we affirm the obviousness rejection.
SUMMARY
The rejection of claims 1—20 under 35 U.S.C. § 103(a) over Payne,
Eby, and Wei is affirmed.
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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