Ex Parte Knisley et al

Patent Trial and Appeal Board

Jun 6, 2017

13773937 (P.T.A.B. Jun. 6, 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.
13/773,937 02/22/2013 KEITH A. KNISLEY MP/406 9898
28596 7590 06/06/2017
W T mRF.fr ASSOPTATFS TNC
EXAMINER
551 PAPER MILL ROAD SCHALL, MATTHEW WAYNE
P. 0. BOX 9206
NEWARK, DE 19714-9206 ART UNIT PAPER NUMBER
3738
MAIL DATE DELIVERY MODE
06/06/2017 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 PATENT TRIAL AND APPEAL BOARD
Ex parte KEITH A. KINSLEY, VISHNU T. MARLA,
RACHEL RADSPINNER, PAUL A. SILVAGNI, JASON J. STRID, and
MICHAEL J. VONESH1
Appeal 2016-003367
Application 13/773,937
Technology Center 3700
Before: FRANCISCO C. PRATS, JOHN E. SCHNEIDER,
And DEVON ZASTROW NEWMAN, Administrative Patent Judges.
SCHNEIDER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35U.S.C. § 134 involving claims to
biocompatible surfaces, which have been rejected as obvious. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
STATEMENT OF THE CASE
A variety of devices including stents, vascular grafts and blood tubing
come in contact with blood, both within the body and without. Spec. 13.
The devices must perform their functions without causing unwanted clot
1 Appellants identifies W.L. Gore & Associates, Inc. as the real party in
interest. Br. 1.
Appeal 2106-003367
Application 13/773,937
formation or adversely reacting with various blood components or with
bloodvessels. Id.
It has been found that devices which come into contact with blood
should have sufficient porosity to allow certain blood components to attach
to the devices but not so porous as to allow blood to leak through the device.
Id. at 14. The Specification describes a biomaterial having an improved
blood contact surface. Id. at 110.
Claims 1—16 are on appeal. Claim 1 below is representative of the
rejected claims and reads as follows:
1. A blood contact surface comprising
a polytetrafluoroethylene micro structure of nodes and
fibrils in both an x direction and in a substantially perpendicular
y direction;
wherein the nodes and fibrils have a mean distance
between adjacent nodes of 5 micron or less; and
wherein the mean width of the 32 largest nodes in a
representative 10,000 x SEM micrograph is less than about 1.5
micron.
Claims 1—16 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Martakos.2 Final Action 2.3
DISCUSSION
Issue
The issue is whether a preponderance of evidence supports the
Examiner’s finding that claims 1—16 would have been obvious over
Martakos.
2 Martakos et al., US 6,287,337 Bl, issued Sept. 11, 2001 (“Martakos”).
3 Examiner’s Final Action, mailed November 19, 2014.
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Appeal 2106-003367
Application 13/773,937
The Examiner finds that
Martakos discloses implantable medical devices (column 2,
lines 66—67) and external medical devices (column 3, lines 44—
47) comprising ePTFE comprising nodes and fibrils in
substantially perpendicular directions (column 5, lines 30-37),
distance between the nodes of 5 micro[n]s or less (column 3,
line 13) and the desire to alter the width of the nodes as
required (column 4, lines 22—27).
Final Act. 3. The Examiner also finds that while Martakos does not
specifically disclose the mean width of the 32 largest nodes is less than 1.5
microns, Martakos does teach that the sizes of the nodes can be altered. Id.
Appellants contend that Martakos teaches formation of extruded
PTFE materials having large elongate nodes, such as those that “consistently
range in size from approximately 500 microns to approximately 900
microns.”. Appeal Br. 5—7 (emphasis in original). Appellants argue that
Martakos does not teach or suggest the present invention having relatively
thin nodes. Appeal Br. 8—10. Appellants also contend Martakos does not
teach a microstructure with fibrils in both an x direction and in a
substantially perpendicular y direction. Appeal Br. 10.
Principles of Law
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness. Only if that
burden is met, does the burden of coming forward with evidence or
argument shift to the applicant.” In re Rijckaert, 9 F.3d 1531, 1532 (Fed.
Cir. 1993).
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Appeal 2106-003367
Application 13/773,937
“Even when obviousness is based on a single prior art reference, there
must be a showing of a suggestion or motivation to modify the teachings of
that reference.” In re Kotzab, 217 F.3d 1365, 1370 (Fed. Cir. 2000).
Analysis
Appellants have the better position. We agree with Appellants that
Martakos does not teach or suggest decreasing the size of the nodes to
achieve nodes of the claimed size range, nor does Martakos provide any
motivation to decrease the size of the nodes. Appeal Br. 10.
The Examiner argues that Martakos discloses why having a smaller
node size may be desirable. Ans. 3. We have reviewed the portions of
Martakos cited by the Examiner and are unpersuaded. While we agree with
the Examiner that Martakos teaches that altering the node size is possible
and can affect porosity, the Examiner has pointed to nothing in the art to
suggest that low porosity or small pore size, particularly of the claimed
range, is desirable. Ans. 3.
Conclusion of Law
We conclude that a preponderance of the evidence does not support
the Examiner’s conclusion that claims 1—16 would have been obvious over
Martakos under 35 U.S.C. § 103(a).
DECISION
We reverse the rejection under 35 U.S.C. § 103(a).
REVERSED
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