Ex Parte Miller et al

Board of Patent Appeals and Interferences

Apr 28, 2011

11431486 (B.P.A.I. Apr. 28, 2011)

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.
11/431,486 05/10/2006 Paul Miller S63.2-9964-US02 7949
490 7590 04/29/2011
VIDAS, ARRETT & STEINKRAUS, P.A.
SUITE 400, 6640 SHADY OAK ROAD
EDEN PRAIRIE, MN 55344
EXAMINER
ORLANDO, MICHAEL N
ART UNIT PAPER NUMBER
1745
MAIL DATE DELIVERY MODE
04/29/2011 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 PAUL MILLER, YIGUN (BRUCE) WANG,
CHAUNTING YOU, and EDWARD PARSONAGE
____________

Appeal 2010-003232
Application 11/431,486
Technology Center 1700
____________

Before BRADLEY R. GARRIS, MARK NAGUMO, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134 from the Examiner's decision
rejecting claims 14-22. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
Appellants claim a method for assembling a medical device having at least
two substrates comprising the steps of powder coating at least a portion of the
outer surface of a first substrate or an inner surface of a second substrate by
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exposing the first substrate or the second substrate to a charged powder in the
presence of an applied electric field resulting in a powder coated portion on the
outer surface of the first substrate or the inner surface of the second substrate,
contacting the first substrate and the second substrate, and thermally activating the
powder coating to form a tie layer between the first substrate and the second
substrate (claim 14).
Representative claim 14, the sole independent claim on appeal, reads as
follows:
14. A method for assembling a medical device having at least two substrates
comprising the steps of:

a) providing a first substrate having an inner and an outer surface;

b) providing a second substrate having an inner and an outer surface;

c) powder coating at least a portion of said outer surface of said first
substrate or said inner surface of said second substrate by exposing said first
substrate or said second substrate to a charged powder in the presence of an
applied electric field resulting in a powder coated portion on at least one of said
outer surface of said first substrate or said inner surface of said second substrate;

d) contacting said first substrate and said second substrate at least at said
powder coated portion; and

e) thermally activating said powder coating to form a tie layer between said
first substrate and said second substrate.

The references set forth below are relied upon by the Examiner as evidence
of obviousness:
Lundberg 3,641,204 Feb. 08, 1972
Takahashi 4,359,192 Nov. 16, 1982
Kotliar 4,886,689 Dec. 12, 1989
Samuelson 6,165,166 Dec. 26, 2000
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Under 35 U.S.C. § 103(a), the Examiner rejects claims 14-17 and 19-21 as
unpatentable over Samuelson in view of Lundberg and Takahashi and rejects
claims 18 and 22 as unpatentable over these references and further in view of
Kotliar.
In this appeal, Appellants contest the rejection of independent claim 14 only.
Additional arguments have not been made against the rejections of the dependent
claims including separately rejected dependent claims 18 and 22 (App. Br. 16-17).
Accordingly, in our disposition of this appeal, we will focus on independent claim
14.
In rejecting claim 14, the Examiner finds: that Samuelson discloses a
method for assembling a medical device having at least two substrates by adhering
the substrates together via an adhesive tie layer; that Lundberg discloses adhering
substrates together via an adhesive in powder form; and that Takahashi discloses
applying powder to a substrate by exposing the substrate to a charged powder in
the presence of an applied electric field (Ans. 4-6). Based on these findings, the
Examiner concludes that it would have been obvious for one with ordinary skill in
this art to use adhesive in powder form in view of Lundberg as the adhesive tie
layer of Samuelson and to apply the adhesive powder by exposing the substrate(s)
of Samuelson to charged powder in the presence of an applied electric field in view
of Takahashi (id. at 5-6).
Appellants contest the rejection of claim 14 by disputing the Examiner's
finding regarding Lundberg (App. Br. 11-12). While acknowledging that column
7, lines 46-64, of Lundberg discloses applying adhesive powder by spraying,
brushing, rolling, extrusion or flowing techniques, Appellants argue that Lundberg
intends for the adhesive powder to be applied via these techniques in the form of a
melt, solution or dispersion (id.). As support for this argument, Appellants state
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that "[c]learly, application of the 'film form or powder, granular or pellet form'
cannot be applied using such techniques unless it is in some sort of flowable form"
(id. at 12).
This argument is unpersuasive for the reasons given by the Examiner (Ans.
para. bridging 9-10). We emphasize the Examiner's point that the column 7, lines
54-58, disclosure of Lundberg teaches applying the adhesive composition in
powder form followed by heating in order to "melt the composition", which
undermines Appellants' argument that the powder is applied in the form of a melt,
solution or dispersion (id.). We also emphasize that Appellants' argument is not
supported by their above quoted statement that a powder cannot be applied by
Lundberg's techniques (e.g., spraying) "unless it is in some sort of flowable form"
(App. Br. 12). Contrary to the implication of this statement, a material in powder
form is flowable and can be applied by a spraying technique as evidenced by
Takahashi.
Appellants also argue that the rejection of claim 14 is improper because
Takahashi is directed to an electrostatic spray technique for coating a substrate
with paint powder, rather than adhesive powder, and therefore "one of skill in the
art would simply not look to Takahashi . . . for application of a tie layer to improve
adhesion between two substrates" (App. Br. 13).
The Examiner acknowledges that Takahashi is not within the field of
Appellants' endeavor but nevertheless determines that the reference discloses
pertinent information relevant to the obviousness inquiry (Ans. para. bridging 10-
11). We agree. Takahashi is analogous prior art because it is reasonably pertinent
to the problem with which Appellants were concerned, that is, the problem of
applying a powder coating to a substrate. See In re Kahn, 441 F.3d 977, 986-87
(Fed. Cir. 2006) ("The analogous-art test requires that the Board show that a
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reference is either in the field of the appellant's endeavor or is reasonably pertinent
to the problem with which the inventor was concerned in order to rely on that
reference as a basis for rejection. References are selected as being reasonably
pertinent to the problem based on the judgment of a person having ordinary skill in
the art." (internal citations omitted)). Under these circumstances, we are
unpersuaded by Appellants' assertion that an artisan "would simply not look to
Takahashi" (App. Br. 13).
In the Reply Brief, Appellants present an argument which was not made in
their Appeal Brief. Specifically, Appellants argue that "one of ordinary skill in the
art might be lead [sic, led] to employ the novel adhesives disclosed by Lundberg
. . . in the method of Samuelson . . . , but would certainly would not be lead [sic,
led] to modify Samuelson's preferred coextrusion method for forming trilayer
medical tubing with a powder coating method" (Rep. Br. 5).
This argument is fatally deficient in two respects. First, the argument is
nothing more than an unembellished assertion that the disclosure of Samuelson is
limited to its preferred teaching which is not only unsupported but contrary to
established legal precedent. See Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804,
807 (Fed. Cir. 1989) (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). Second, and more importantly, Appellants
have not explained why the new argument was not presented in their Appeal Brief.
Under regulations governing appeals to the Board, any new argument not timely
presented in the Appeal Brief will not be considered when filed in a Reply Brief,
absent a showing of good cause explaining why the argument could not have been
presented in the Appeal Brief. See 37 C.F.R. § 41.37 and § 41.41. See also Ex
parte Borden, 93 USPQ2d 1473, 1474-77 (BPAI 2010) (informative).
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For the reasons stated above and in the Answer, the Examiner has
established a prima facie case of obviousness for the subject matter defined by
claim 14, and correspondingly Appellants have failed to show error in the
Examiner's obviousness conclusion. It follows that we sustain the Examiner's
§ 103 rejections of claims 14-17 and 19-21 over Samuelson in view of Lundberg
and Takahashi and of claims 18 and 22 over these references and further in view of
Kotliar.
The decision of the Examiner is affirmed.

No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a) (2008).

AFFIRMED

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