Ex Parte Park et al

Patent Trial and Appeal Board

Jan 11, 2018

12609352 (P.T.A.B. Jan. 11, 2018)

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.
12/609,352 10/30/2009 Shawn Park 08-0469A (82,000-197A) 8216
7590 01/16/2018
Hanley, Flight & Zimmerman (Boeing)
150 S. Wacker Drive
Suite 2200
Chicago, IL 60606
EXAMINER
ANTHOPOLOS, PETER
ART UNIT PAPER NUMBER
1611
NOTIFICATION DATE DELIVERY MODE
01/16/2018 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):
docketing@hfzlaw.com
mhanley@hfzlaw.com
patentadmin @ boeing. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHAWN PARK and JOHN BELK
Appeal 2017-000163
Application 12/609,352
Technology Center 1600
Before TAWEN CHANG, TIMOTHY G. MAJORS, and DAVID COTTA,
Administrative Patent Judges.
MAJORS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 submit this appeal under 35 U.S.C. § 134 involving
claims to contaminant resistant structures. The Examiner rejected the claims
as indefinite and obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
Appellants’ invention “relates to materials and structures having
antimicrobial, antiviral, antifungal, biocidal, and/or antichemical properties,”
1 Appellants identify the Real Party in Interest as THE BOEING
COMPANY. App. Br. 2.
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Application 12/609,352
and to three-dimensional surface features of such materials and structures.
See, e.g., Spec, 2, 6—7, 10—11.
Claims 1,3,4, 7—9, 11—15, 23, 24, 27, and 28 are on appeal.2 Claim 1
is illustrative:
1. A contaminant resistant structure, comprising:
spaced protrusions between which recesses are defined;
a contaminant resistant material disposed in the recesses;
and
a relatively hydrophobic or oleophobic material compared
to the contaminant resistant material disposed on the protrusions,
when a contaminant is disposed on the contaminant resistant
structure, the protrusions to encourage the contaminant to move
from the protrusions into the recesses to come into contact with
the contaminant resistant material therein.
Br. 35 (Claims App.). Independent claim 9 is similar to claim 1, but the
“spaced protrusions” of claim 1 are recited as “peaks comprising heights of
greater than about 3 microns,” with “depressions disposed between the
peaks.” Id. at 36. Independent claim 23 is similar to claims 1 and 9, but
recites “elevated surfaces and depressions extending between the elevated
surfaces.” Id. at 38—39. Independent claim 24 recites, inter alia, “convex
portions and depressions disposed between the convex portions.” Id. at 39.
We further note that, whereas claims 1 and 23 recite “a relatively
hydrophobic or oleophobic material,” claims 9 and 24 recite “a relatively
hydrophilic or oleophilic material.” Id. at 35—36, 38—39.
The claims stand rejected as follows:
2 Appellants identify claims 1,3,4, 7—9, and 11—28 as being on appeal.
App. Br. 2. Claims 16—22, 25, and 26, however, stand withdrawn as
directed to a non-elected invention. Final Act. 2.
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Application 12/609,352
I. Claims 1, 3, 4, 7—9, 11—15, 23, 24, 27, and 28 under 35 U.S.C.
§ 112, second paragraph (pre-AIA), as being indefinite.
II. Claims 1, 7, 8, 23, 24, and 27 under 35 U.S.C. § 103(a) over
Grainger3 and D’Urso.4
III. Claims 3, 4, 9, 11—15, and 28 under 35 U.S.C. § 103(a) over
Grainger, D’Urso, and Brennan.5
I-INDEFINITENESS
“[T]he Office establishes a prima facie case of indefmiteness with a
rejection explaining how the metes and bounds of a pending claim are not
clear because the claim contains words or phrases whose meaning is
unclear.” In re McAward, No. 2015-006416 (PTAB Aug. 25, 2017)
(precedential); see also In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989)
(“[Djuring patent prosecution when claims can be amended, ambiguities
should be recognized, scope and breadth of language explored, and
clarification imposed.”).
The Examiner rejected the pending claims as indefinite. Ans. 3^4;
Final Act.6 5—6; Adv. Act.7 2. The Examiner finds the claims “recite[] the
following limitation: ‘when a contaminant is disposed on the contaminant
resistant structure, the protrusions to encourage the contaminant to move
from the protrusions into the recesses to come into contact with the
3 Grainger et al., US 2005/0228477 Al, published Oct. 13, 2005
4 D’Urso et al., US 2006/0024508 Al, published Feb. 2, 2006.
5 Brennan et al., US 2007/0227428 Al, published Oct. 4, 2007.
6 Final Rejection mailed July 17, 2015.
7 Advisory Action mailed Nov. 5, 2015.
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contaminant resistant material therein.’”8 Ans. 3. The Examiner points out
that the Specification states that, “‘[a]s used herein, ‘contaminant’ includes
microbial, viral, fungal, biological and/or chemical contaminant, for example
and without limitation.,',, Adv. Act. 2 (quoting Spec. 131) (emphasis
added). Because the description of contaminants is “open-ended,” the
Examiner finds the “definition is otherwise directed to a genus that is vast,
tremendously diverse, and poorly defined.” Id. To illustrate, the Examiner
asks “how would a person of ordinary skill in the art ascertain to a
reasonable degree of certainty whether a given chemical element or
compound qualifies as a ‘biological and/or chemical contaminant,’ when
Applicant’s specification provides no significant guidance regarding this
issue?” Id.
Based on the open-ended description of “contaminants” and lack of
detail in the Specification, the Examiner reasons “[i]t is unclear if (and if so,
how) this [functional] limitation even further limits the claims, especially
considering the vast size and tremendous diversity of the following genus:
contaminant.” Ans. 3^4; see also Final Act. 5; Adv. Act. 2. According to
the Examiner, “Applicant is seeking to define the protrusions and possibly
other claimed features by how these features interact with — or function in
the presence of — the contaminant.” Adv. Act. 2. Thus, the Examiner
concludes, “the scope of claims 1, 9, 23, and 24 cannot be ascertained to a
8 The quoted language is found in claim 1 but, as the Examiner points out,
“[substantially similar functional limitations are recited in Applicant’s other
independent claims, namely, claims 9, 23, and 24.” Adv. Act. 2.
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reasonable degree of certainty” and the claims are indefinite under 35 U.S.C.
§ 112, second paragraph, as a result. Ans. 4; Final Act. 5—6; Adv. Act. 2.
Appellants provide no argument that is both timely and specifically
responsive to the Examiner’s rejection for indefmiteness. Ans. 10
(“Appellant included no argument in his Appeal Brief against the rejection
of [the] claims . . . under 35 U.S.C. 112, second paragraph.”) Appellants
argue the indefmiteness rejection for the first time in the Reply Brief (Reply
Br. 3—4), but offer no explanation for the delay in raising those arguments.
37 C.F.R. § 41.41(b)(1) & (2); Ex parte Borden, 93 USPQ2d 1473, 1477
(BPAI 2010) (informative) (“Properly interpreted, the Rules do not require
the Board to take up a belated argument that has not been addressed by the
Examiner, absent a showing of good cause”); Ex parte Nakashima, 93
USPQ2d 1834, 1837 (BPAI 2010) (informative) (explaining that arguments
not timely presented in the principal 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 principal brief).
As the Examiner set forth the reasons for concluding that the claims
are indefinite in the Final Rejection and Advisory Action that preceded the
present appeal (and essentially restated the reasons in the Answer), we see
no justifiable excuse for Appellants waiting until the Reply Brief to make
their arguments. Appellants’ untimely arguments are, thus, waived and not
considered on appeal. Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir.
2008). We conclude the Examiner met the burden to explain the rejection
adequately and establish a prima facie case of indefmiteness. On this record,
the rejection of the claims as indefinite is affirmed.
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II & III - OBVIOUSNESS
Issues
1) Has the Examiner established by a preponderance of the evidence
that claims 1, 7, 8, 23, 24, and 27 would have been obvious over Grainger
and D’Urso?
2) Has the Examiner established by a preponderance of the evidence
that claims 3, 4, 9, 11—15, and 28 would have been obvious over Grainger,
D’Urso, and Brennan?
Findings of Fact (FF)
The Examiner’s findings of fact and statement of the obviousness
rejection of claims 1, 7, 8, 23, 24, and 27 are provided at pages 5—8 of the
Examiner’s Answer. See also Ans. 10—15; Final Act. 6—10; Adv. Act. 2.
The Examiner’s findings of fact and statement of the obviousness
rejection of claims 3, 4, 9, 11—15, and 28 are provided at pages 8—9 of the
Examiner’s Answer. See also Ans. 10—16; Final Act. 10—11; Adv. Act. 2.
The following findings are provided for emphasis.
FF 1. Grainger teaches medical devices, such as a vascular stent, with
topographic coatings. Grainger, Abstract; id. 7, 14. More specifically,
Grainger teaches the coatings include “topographic coatings [that] have
regions of high and low elevation and may be composed of polymers,
metals, ceramics, proteins and other biocompatible materials.” Id.; see also
id. 1 5 (“the topographic coatings are jet printed onto the surface of the
medical device, creating regions of high elevation and low elevation in a
predetermined pattern.”). Grainger teaches various topographic patterns
such as “elongate ridges or walls . . ., discrete bumps or projections, in
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irregular blobs, in hills and valleys, or in various thicknesses or overlapping
layers to create depressions, concavities, or reservoirs.” Id.
FF 2. Grainger teaches “such coatings may be configured to provide
channels, apertures, holes, depressions, reservoirs and other suitable
structures to contain therapeutic agents.” Id. 14; see also id. 11 8-9, 12.
According to Grainger, one or more therapeutic agents may be used,
“including anti-restenosis, anti-proliferative, immunosuppressive, antibiotic,
thrombolytic, cytotoxic, cytostatic, and other agents . . . , [which] may be
deposited in the regions of low elevation in the topographic coating.” Id.
1 6; see also id. Fig. 11 (showing a cross-sectional view of a stent (20),
including topographic layer (32) with a plurality of concavities (50) formed
in the topographic layer); id. 146 (“A therapeutic agent may be deposited in
the concavities 50, with or without a carrier or matrix.”). Grainger identifies
Rapamycin (an antifungal, antibiotic, anti-restenosis agent) as an example of
a therapeutic agent that may be used. Id. ^fl[ 2, 40; Ans. 8.
FF 3. Grainger teaches “[additional layers of polymers ... or other
materials may be applied to the medical device either over or under the
topographic coating and/or therapeutic agent.” Id. 1 6. “The therapeutic
agent may further be coated with polymers or other materials to control its
elution rate, protect it from damage during delivery, or other purposes.” Id.
140; see also id. Fig. 12 and 146 (“a top layer 52 may optionally be
deposited on top of topographic layer 32 and/or the therapeutic agent in
concavities 50.”)
FF 4. D’Urso teaches nano structured super-hydrophobic composite
materials having surface features that include a protrusive and a recessive
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phase, wherein the protrusive feature is hydrophobic. D’Urso, Abstract, title
page. According to D’Urso, “[a]t least the protrusive phase can be
hydrophobic or treated to make the surface thereof hydrophobic, for example
by coating.” Id. 130; see also id. Fig. 3 (e.g., showing surface feature
(spike) 32 having protrusive sub-surface feature (roughness of the spike) and
a smooth recessive phase 34 between spikes); id. 138.
FF 5. D’Urso teaches “[t]he hydrophobic coating may comprise, for
example, a coating of PTFE [e.g., Teflon®] or similar polymer.” Id. 132.
FF 6. D’Urso teaches the disclosed surfaces/materials “can be used as
an anti-clotting surface for blood, which generally will not stick to the
surface[,] . . . and can be used as a coating for synthetic implants, such as
stents, heart valves,” and other medical devices. Id. 1 63. D’Urso further
teaches “decreased viscous drag on the surface may reduce the shear force
on the blood, reducing damage to the blood.” Id.
FF 7. Brennan teaches articles “having surface topography and/or
surface elastic properties for providing non-toxic bioadhesion control.”
Brennan 13. According to Brennan, “[bjiofouling is [] a problem for
surfaces used in biomedical applications,” and, as an example, Brennan
describes “accumulations of bacteria, i.e. a biofilm on implanted devices,”
which can lead to severe complications. Id. 19. Brennan teaches that
biofouling/bioadhesion may affect “[b]lood contacting surfaces such as
artificial heart valves and vascular grafts [that become] fouled by proteins
such as fibrinogen.” Id.
FF 8. Brennan teaches a bioadhesion/biofouling-resistant surface
topography that comprises a polymer, and includes “a pattern defined by a
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plurality of spaced apart features attached to or projected into the base
article.” Id. 110. These features have a “microscale dimension” and the
“average spacing between adjacent ones of the features is between 10 pm
and 100 pm in at least a portion of the surface.” Id.', see also id. 1 50 (“The
thickness (height) of features 111 comprising coating layer is about three (3)
microns.”); see also id. Fig. 1(a).
Analysis
Claims 1, 7, 8, 23, 24, and 27
The Examiner finds that Grainger is directed to implantable medical
devices, such as vascular stents, “having topographic coatings” with the
claimed characteristics. Ans. 5—6, 8. For example, the Examiner identifies
Figure 11 of Grainger, reproduced below, as showing, inter alia, a
topographic layer (32) substantially covering the top surface (26) of the
struts of stent (24). Id. at 6.
Grainger, Fig. 11. As pointed out by the Examiner, and as depicted in Fig.
11, Grainger teaches a topographic layer with a pattern of high and low
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elevation regions. Ans. 5—6; FF 1. The Examiner finds Grainger teaches
including a therapeutic agent, such as Rapamycin, in the low elevation
regions (e.g., concavities 50 as shown in Fig. 11). Id. at 6—8; FF 2.
On the record here, we are persuaded Grainger teaches the claimed
spaced protrusions (high elevation portions) and recesses (low elevation
portions) with a contaminant resistant material (an antibiotic like
Rapamycin) disposed in the recesses as recited in claim 1. FF 1—3. So too,
we are persuaded Grainger teaches the “elevated surfaces and depressions”
of independent claim 23 and the “convex portions and depressions” of
independent claim 24. The slight difference in claim terminology does not
distinguish over Grainger’s teachings because, as the Examiner notes,
Grainger teaches the high and low portions can be formed in a variety of
shapes (e.g., square, irregular, bumps, peaks, valleys, etc.). Ans. 6; FF 1.
The Examiner finds the topographic coating of Grainger may be a
biocompatible polymer and that additional polymer layers may be applied
over or under the topographic coating and/or the therapeutic agent. Ans. 5—
6. The Examiner acknowledges, however, that Grainger does not
specifically teach applying an additional layer on the protrusions that is a
“relatively hydrophobic or oleophobic material compared to the contaminant
resistant material” as recited in, for example, claim 1. Id. at 6—7. The
Examiner thus turns to D’Urso and finds it teaches coating the protrusive
phase of a nano-structured surface with a hydrophobic material (e.g., PTFE).
Ans. 7. According to the Examiner, D’Urso teaches such materials can be
used for synthetic medical implants, like stents or heart valves, which helps
prevent blood clotting on the coated surface of the implant. Id.; FF 4—6.
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The Examiner concludes it would have been obvious to select PTFE
as a top layer or additional layer for the high elevation regions of Grainger.
Id. at 8. The Examiner reasons the skilled person would have had a reason
to make this modification “to increase the hydrophobicity of the surface of
the stents [of Grainger] . . . thereby reducing the risk that blood (an aqueous
liquid) will stick to that surface and promote clotting” as suggested by
D’Urso. Id. The Examiner further finds that “PTFE is more hydrophobic
than rapamycin (an antifungal antibiotic), which is identified in Grainger et
al. as an exemplary therapeutic (anti-restenosis) agent.” Id.
As for the recitation (e.g., in claim 1) that “when a contaminant is
disposed on the contaminant resistant structure, the protrusions to encourage
the contaminant to move from the protrusions into the recesses to come into
contact with the contaminant resistant material therein,” the Examiner finds
this is functional language. Ans. 11—12; Adv. Act. 2. And, the Examiner
finds, this functional limitation (and minor variants of it appearing in other
independent claims) fails to structurally distinguish the pending apparatus
claims from the cited prior art. Ans. 12 (citing In re Schreiber, 128 F.3d
1473, 1477—78 (Fed. Cir. 1997) and Hewlett-Packard Co. v. Bausch &Lomb
Inc., 909 F.2d 1464, 1469 (Fed. Cir. 1990) (“Apparatus claims cover what
the device is, not what a device does.'”)).
Here again, we agree with the Examiner on this record. The Examiner
provided articulated reasoning with a rational underpinning for coating the
elevated portions of Grainger’s topographic surface with a hydrophobic
material like PTFE. Ans. 7—8. D’Urso suggests this modification would be
advantageous for devices like the stents in Grainger. FF 1—6. In making the
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modification, the skilled person would reasonably expect a stent surface that
is less susceptible to adhesion and clotting of blood. FF 6.
The functional language related to “protrusions to encourage the
contaminant to move from the protrusions into the recesses ...” fails to
identify a clear structural distinction over the Examiner’s prior art
combination. “[T]he patentability of apparatus or composition claims
depends on the claimed structure, not on the use or purpose of that
structure.” Catalina Mktg. Inti, Inc. v. Coolsavings.com, Inc., 289 F.3d
801, 809 (Fed. Cir. 2002). Without evidence to the contrary, we are
persuaded Grainger’s topographic structures with the super-hydrophobic
coating of D’Urso on the high-elevation portions would be capable of the
functionality claimed. In re Schreiber, 128 F.3d at 1478; In re Best, 562
F.2d 1252, 1255 (CCPA 1977).9
Below we address Appellants’ arguments. Although claims 1, 23, and
24, are argued under separate headings, Appellants make substantially the
same arguments for each claim. We thus address them together.
Appellants argue the Examiner’s rejection fails to comply with Title
37 of the Code of Federal Regulations (CFR) and the MPEP. App. Br. 7.
9 Although we have determined supra that this claim limitation is indefinite,
we nonetheless use our discretion in this case to address the prior art
contentions. See, e.g., Supplementary Examination Guidelines for
Determining Compliance With 35 U.S.C. § 112 and for Treatment of
Related Issues in Patent Applications, 76 Fed. Reg. 7162, 7169 (Feb. 9,
2011). In other words, although the metes and bounds of this claim
language are unclear, it is clear that it would encompass at least the
combined structure of Grainger and D’Urso, and under this narrow
interpretation, the claim is rendered obvious in view of the prior art.
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According to Appellants, “[t]he pertinence of any of the references is in no
way apparent and the examiner fails to explain the pertinence of each
reference throughout the Final Office action of July 17, 2015.” Id.
Appellants assert the Examiner “merely summarizes the references without
regard to the actual claim language.” Id.
Appellants’ argument is unpersuasive. A key question in determining
whether the rejection complied with the relevant statute and rules, is whether
the Examiner provided adequate notice of the reasons and evidentiary basis
for the rejection. See 35 U.S.C. § 132 (explaining that when a claim is
rejected, “the Director shall notify the applicant thereof, stating the reasons
for the rejection . . . together with such information and references as may be
useful in judging of the propriety of continuing the prosecution of his
application.”). The Examiner gave reasonable notice here, and provided a
thorough citation to the evidence, including the particular disclosures of the
references (e.g., by citation to particular paragraphs and even quoting
specific text) relied upon as teaching or suggesting the claim elements. See,
e.g., Final Act. 7—10 (identifying paragraphs and figures of the cited art as
showing structures corresponding to the claimed structures). The Examiner,
thus, identified and designated “the particular part[s] [of the references]
relied on” as provided in 37 C.F.R § 1.104(c)(2). Moreover, the claims and
cited art here are not especially complex. And so, contrary to Appellants’
argument, the “pertinence” of these references to the claims — particularly
the teachings cited by the Examiner — is apparent on its face. Indeed,
Appellants understood and were fully capable of responding to the
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obviousness rejections, as is evident by the 20-plus pages of argument
devoted to those rejections in the Appeal Brief.
Appellants argue the Grainger/D’Urso combination is missing a claim
limitation. App. Br. 8. The allegedly missing limitation, however, is the
functional language discussed above — “when a contaminant is disposed on
a contaminant resistant structure, protrusions to encourage the contaminant
to move from the protrusions . . . ,” as recited in, for example, claim 1.
As we explained above, on this record, we agree with the Examiner
that this functional language fails to structurally distinguish the claims over
the combination of Grainger and D’Urso. Catalina Mktg. Int 7, 289 F.3d at
809. See Ans. 11—12; Adv. Act. 2.
Appellants argue Grainger and D’Urso cannot be combined. App. Br.
12. According to Appellants, “modifying Grainger with D’Urso renders
Grainger unsatisfactory for its intended purpose” because “covering the
therapeutic agent of Grainger with PTFE . . . would prevent the therapeutic
agent from eluting from the concavities.” Id. at 12—13. Further, Appellants
contend, if Grainger’s therapeutic agent was covered with PTFE/Teflon®, it
would be incapable of providing the claimed functionality. Reply Br. 5.
This argument is unpersuasive. Appellants are reading the prior art,
and the Examiner’s combination, too narrowly. We agree with Appellants
that coating Grainger’s therapeutic agent with PTFE/Teflon® would
seemingly frustrate an object of Grainger’s design. See, e.g., Grainger 110.
If the therapeutic agent is neither exposed to the environment nor allowed to
elute, what purpose would it serve in Grainger’s stents? In addition, putting
a Teflon® layer over the antimicrobial agent in Grainger’s recesses may
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prevent Grainger’s device from having the claimed functionality. How
would a contaminant moving from a coated protrusion be capable of
“com[ing] into contact” with a contaminant resistant material that is coated
with Teflon®? All that being said, Grainger teaches that its additional
coating is optional, and, if it is used, it need not cover both the protrusions
and the therapeutic agent. Grainger suggests it may cover one or the other,
or both. FF 3; Ans. 12. And, as noted by the Examiner, especially when
considered with D’Urso, there is adequate reason to cover only the
protrusions with the hydrophobic material. Ans. 12—13.
Appellants argue the Examiner’s rejection is based on hindsight
because the “examiner has failed to provide any valid reasoning or
motivation to combine Grainger and D’Urso.” App. Br. 15. We disagree.
The Examiner explained the reasons for modifying the prior art based on
evidence drawn from the references themselves. As explained above,
D’Urso suggests its hydrophobic coatings provide advantages for medical
devices like vascular stents (e.g., less clotting), which would be desirable for
the stents described in Grainger. FF 1—6.
For the above reasons, the preponderance of the evidence supports the
Examiner’s conclusion that claims 1, 23, and 24 would have been obvious
over Grainger and D’Urso. Claims 7 and 8 have not been argued separately
and fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
Claim 27 depends from claim 1 and recites “wherein exterior facing
surfaces of the protrusions are defined by the hydrophobic or oleophobic
material.” App. Br. 40. Appellants argue “Grainger and D’Urso fail to
address the specific recitations of claim 27,” and that “the examiner
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provided [no] convincing line of reasoning as to why this missing element
can be ignored.” Id. at 32—33. We are unpersuaded. Claim 27 reads upon
the combination of the art proposed by the Examiner, where Grainger’s
high-elevation portions are coated with a hydrophobic material like
Teflon®, as suggested by D’Urso. FF 1—6; Ans. 14—15. As already
explained, the Examiner provided sufficient evidence-based reasons for
making this modification of the art. Ans. 6—8. The preponderance of the
evidence, thus, supports the obviousness rejection of claim 27 as well.
Claims 3, 4, 9, 11—15, and 28
To address these claims, the Examiner relies on the combination of
Grainger and D’Urso, discussed above, and the additional reference
Brennan. According to the Examiner, Brennan relates to articles, including
medical devices like artificial heart valves and vascular grafts, having a
surface topography that resists bioadhesion and biofouling. Ans. 8. The
Examiner finds that Brennan teaches the surface topography includes a
pattern of features having a “microscale dimension,” more specifically
features with a height of about three microns and a spacing between adjacent
features of between 10 and 100 microns. Id. at 8—9.
The Examiner concludes it would have been obvious to modify the
combination of Grainger and D’Urso by including features with Brennan’s
dimensions. Id. The Examiner reasons, for instance, it would have been
obvious “to select a height of about three (3) microns for the regions of high
elevation . . . with the heart valves and/or stents of Grainger ... in an effort
to yield a heart valve and/or stent surface that was especially resistant to
biofouling by fibrinogen and other proteins,” as taught by Brennan. Id. at 9.
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We agree with the Examiner on this record. The skilled person would
have predictably modified the height, and distance between, the high
elevation portions of Grainger based on Brennan, with a reasonable
expectation of providing a surface topography resistant to biofouling.10
FF 7—8. These advantages would be useful in, for example, a vascular stent
as described in the Grainger/D’Urso combination. FF 1—6.
Appellants provide argument under separate headings as to claims 9,
14, 15, and 28, which we address below.
With respect to claim 9, Appellants provide substantially the same
arguments as made with respect to independent claims 1, 23, and 24. These
arguments are unpersuasive for the reasons given above.
Claims 14 and 15 depend, indirectly, from claim 9 and recite that a
hydrophilic or oleophilic material: “is confined to the top surface portion [of
the peak]” (claim 14); or the material “is confined to the side surface portion
[of the peak]” (claim 15). App. Br. 37. With respect to claims 14 and 15,
Appellants argue the Examiner’s combination fails to disclose the limitations
related to confining the material to only the top or side surface portions. Id.
We agree with Appellants as to claims 14 and 15. The Examiner’s
combination suggests applying a coating material to the peaks, protrusions,
or high-elevation portions as in Grainger. Yet the Examiner fails to identify
a teaching or persuasive rationale for applying the material only to the “top,”
10 We also see that Grainger teaches that the topographic layer preferably has
a thickness of 0.0002—0.0006 inches at its thickest point (Grainger 138),
which corresponds to a range of about 5—15 pm.
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or only to a “side” of a peak.11 The Examiner asserts that the combination of
Grainger and D’Urso provide motivation to select a hydrophobic coating
that covers the protrusions but not the contaminant resistant material. Ans.
13. That may be so. But the Examiner fails to explain how that discloses
the more specific limitations of claim 14. So too, we find unpersuasive the
Examiner’s assertion related to claim 15 that D’Urso’s conical protrusions
“consist[] essentially of a side surface portion.” Ans. 14. Claim 13, from
which claim 15 depends, makes clear that the “peak” must have both a “top
surface portion” and a “side surface portion.” App. Br. 37. The “top surface
portion” does not contain the hydrophilic or oleophilic material in claim 15.
In other words, even with a cone, to satisfy claim 15 some portion must be
designated the “top” and not be covered by the material. The Examiner fails
to explain adequately why such a design is obvious in view of the cited art.
Finally, claim 28 depends from claim 1, and recites “the recesses are
spaced apart about 1 micron to about 1 millimeter.” App. Br. 40.
Appellants argue “the examiner fails to set forth any reasoning to combine
Grainger, D’Urso and Brennan.” App. Br. 33. We are unpersuaded. It is
reasonably clear the Examiner proposes modifying Grainger’s high and low
elevation features based on the dimensions disclosed in Brennan to obtain a
surface topography resistant to biofouling and bioadhesion. Ans. 15—16.
11 With protrusions having certain shapes (e.g., cone or bump), it is
somewhat unclear where the interface between the respective “side” and
“top” begins and ends. We decline to enter new grounds or decide here
whether that renders the claims indefinite. But it is reasonably clear that
claims 14 and 15 require something less than the whole peak, cone, bump,
etc. be coated with or comprise the material.
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Appeal 2017-000163
Application 12/609,352
For the reasons explained above, we conclude the preponderance of
the evidence supports the Examiner’s rejection of claims 9 and 28 as
obvious over Grainger, D’Urso, and Brennan. Claims 3, 4, and 11—13 have
not been argued separately and fall with claims 1 and 9.
The preponderance of the evidence does not, however, support the
rejection of claims 14 and 15 as obvious over Grainger, D’Urso, and
Brennan. Accordingly, the rejection of those claims as obvious is reversed.
SUMMARY
We affirm the rejection of the claims for indefiniteness. We affirm
the rejection of claims 1, 7, 8, 23, 24, and 27 as obvious over Grainger and
D’Urso. We affirm the rejection of claims 3, 4, 9, 11—13, and 28 as obvious
over Grainger, D’Urso, and Brennan.
We reverse the rejection of claims 14 and 15 as obvious over
Grainger, D’Urso, and Brennan.
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
19