Ex Parte Roby et al

Board of Patent Appeals and Interferences

Apr 14, 2009

10465675 (B.P.A.I. Apr. 14, 2009)

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.
10/465,675 06/19/2003 Mark S. Roby 2788 DIV 4701
50855 7590 04/14/2009
Tyco Healthcare Group LP
60 MIDDLETOWN AVENUE
NORTH HAVEN, CT 06473
EXAMINER
SONNETT, KATHLEEN C
ART UNIT PAPER NUMBER
3731
MAIL DATE DELIVERY MODE
04/14/2009 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 MARK S. ROBY, JOHN J. KENNEDY,
NICHOLAS MAIORINO, and ALAN CABEZAS
__________

Appeal 2009-0891
Application 10/465,675
Technology Center 3700
__________

Decided1: April 14, 2009
__________

Before TONI R. SCHEINER, RICHARD M. LEBOVITZ, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a surgical
needle. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

1 The two-month time period for filing an appeal or commencing a
civil action, as recited in 37 C.F.R. § 1.304, begins to run from the
decided date shown on this page of the decision. The time period
does not run from the Mail Date (paper delivery)
or Notification Date (electronic delivery).

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Statement of the Case
Background
“[T]he siliconization of metallic cutting edges of articles such as, for
example, razor blades, hypodermic needles, scissors, scalpels, and curettes,
is known” (Spec. 1, ll. 11-12). The Specification notes that the prior art
describes “coating surgical needles with a siliconization material containing
an aminoalkyl siloxane and cyclosiloxane employing ultrasonic radiation.
The siliconization material can be applied in a solvent carrier, e.g., hexane or
heptane” (Spec. 1, l. 22 to 2, l. 2).
The Claims
Claims 1-5, 7, and 8 are on appeal. We will focus on claims 1 and 5
which are representative and read as follows:
1. A surgical needle having a tissue penetrating end, a
suture attachment end, and a coating thereon, the coating
formed from a coating mixture comprising at least one
polydialkylsiloxane having a molecular weight sufficient to
provide a viscosity of the coating mixture of at least about
10,000 cp and at least one siliconization material.

5. A surgical needle having a tissue penetrating end, a
suture attachment end, and an interpenetrating networked
coating thereon, the coating formed from a coating mixture
comprising a first solution comprising polydimethylsiloxane
and a first solvent and a second solution comprising at least
one other siliconization material and a second solvent,
wherein the at least one other siliconization material does
not covalently bond with the polydimethylsiloxane.

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The prior art
The Examiner relies on the following prior art references to show
unpatentability:
Mathisen U.S. 5,456,948 Oct. 10, 1995
Pelkey U.S. 5,911,711 Jun. 15, 1999
Walther U.S. 5,985,355 Nov. 16, 1999
Arimatsu U.S. 6,015,398 Jan. 18, 2000
Numao U.S. 6,656,167 B2 Dec. 2, 2003

The issues
A. The Examiner rejected claims 1 and 2 under 35 U.S.C. § 103(a) as
being obvious over Pelkey and Numao (Ans. 4-5).
B. The Examiner rejected claims 3 and 4 under 35 U.S.C. § 103(a) as
being obvious over Pelkey, Numao, and Mathisen (Ans. 5-6).
C. The Examiner rejected claims 1-4 under 35 U.S.C. § 103(a) as being
obvious over Walther and Numao (Ans. 6-7).
D. The Examiner rejected claim 5 under 35 U.S.C. § 103(a) as being
obvious over Arimatsu and Numao (Ans. 7-8).
E. The Examiner rejected claims 7 and 8 under 35 U.S.C. § 103(a) as
being obvious over Arimatsu, Numao and Walther (Ans. 8-9).
A. 35 U.S.C. § 103(a) over Pelkey and Numao
The Examiner finds that Pelkey “discloses a needle that has a
lubricious coating applied to and adherent to the outside surface of the
needle. The coating mixture of Pelkey contains a polydialkylsiloxane and
one other siliconization material” (Ans. 4). Numao “discloses that it is old
and well known in the art to coat the surface of a suture needle with a
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silicone coating comprising a polydimethylsiloxane and another
siliconization material . . . to reduce frictional resistance” (Ans. 4-5).
The Examiner finds that Pelkey “fails to state that the viscosity of the
coating mixture is at least about 10,000cp but has considered the claimed
viscosity a mere design consideration since applicant has not disclosed that
this viscosity of the coating provides an advantage, is used for a particular
purpose, or solves a stated problem in the specification” (Ans. 9).
Appellants contend that the “Pelkey does not disclose the use of a
polydialkylsiloxane having a molecular weight sufficient to provide a
viscosity of the coating mixture of at least about 10,000 cp, nor does Pelkey
disclose that the needle may be a suture needle with a suture attachment end,
as Pelkey discloses hypodermic needles” (App. Br. 6). Appellants contend
that
while the Examiner has taken the position that the viscosity
of 10,000 cp is merely a design consideration, such is not the
case. A coating mixture possessing a higher viscosity of
greater than 10,000 cp would provide a uniform, durable
coating on the surface of a surgical needle. Such a coating,
in turn, would possess desirable penetration characteristics
and the ability to retain such characteristics after repeated
passage through tissue. Thus, the recitation of a coating
mixture with such a viscosity is not merely a design
consideration.

(App. Br. 6.)
In view of these conflicting positions, we frame the obviousness issue
before us as follows:
Did the Examiner err in finding that selection of a polydialkylsiloxane
“having a molecular weight sufficient to provide a viscosity of the coating
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mixture of at least about 10,000 cp” from the disclosures of Pelkey and
Numao is an obvious design choice?
Findings of Fact (FF)
1. Pelkey teaches “a lubricated hypodermic needle [which] . . .
includes a lubricious coating 24 applied to and adherent to outside surface
14 of the tube” (Pelkey, col. 2, ll. 52-59).
2. Pelkey teaches that a “preferred method for lubricating needle
10 of the invention includes preparing a curable coating mixture comprising
about four parts of a mixture of {50% solids (w/w)} dimethyl cyclosiloxane
and dimethyoxysilyldimethylaminopropyl silicone polymer in a mixture of
mineral spirits and isopropyl alcohol . . . and about two parts of
polydimethylsiloxane (12,500 centistoke viscosity . . .)” (Pelkey, col. 3, ll.
9-16).
3. The Examiner finds that Pelkey “fails to disclose that the
polydialkylsiloxane has a molecular weight sufficient to provide a viscosity
of the coating mixture to be at least about 10,000 cp” (Ans. 4).
4. Numao teaches “a needle made of a metal having elasticity such
as stainless steel . . . Specifically . . . a needle for suture” (Numao, col. 3, ll.
43-49).
5. Numao teaches that the needle may comprise a “silicone having
silanol groups at both terminal ends thereof [including]
polydimethylsiloxane” (Numao, col. 4, ll. 61-62).
6. Numao teaches obtaining “a piercing needle having low
piercing resistance” (Numao, col. 6, ll. 38-39).
7. The Specification teaches that
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[I]t has been discovered that a silicone coating derived from
a coating mixture comprising at least one
polydialkylsiloxane having a molecular weight sufficient to
provide a viscosity of the coating mixture of at least about
10,000 cp and at least one other siliconization material can
be applied to a surgical needle to provide a siliconized
surgical needle in which the siliconized needle exhibits an
average tissue penetration force below that of a standard
siliconized surgical needle.

(Spec. 2, ll. 14-19.)
8. The Specification teaches that the “average tissue penetration
force of the siliconized needle herein will advantageously be less than about
10%, preferably less than about 20% and more preferably less than about
30%, of the average tissue penetration force of a standard siliconized needle
from after about 5 to about 20 passes through the same or similar tissue”
(Spec. 4, ll. 9-12).
Principles of Law
The question of obviousness is resolved on the basis of underlying
factual determinations including: (1) the scope and content of the prior art;
(2) the level of ordinary skill in the art; (3) the differences between the
claimed invention and the prior art; and (4) secondary considerations of
nonobviousness, if any. Graham v. John Deere Co., 383 U.S. 1, 17 (1966).
The Supreme Court has recently emphasized that “the [obviousness] analysis
need not seek out precise teachings directed to the specific subject matter of
the challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.” KSR
Int'l v. Teleflex Inc., 127 S. Ct. 1727, 1741 (2007).
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However, KSR teaches that an invention “composed of several
elements is not proved obvious merely by demonstrating that each of its
elements was, independently, known in the prior art.” Id. There must be “a
reason that would have prompted a person of ordinary skill in the relevant
field to combine the elements in the way the claimed new invention does.”
Id.
Claim terms are interpreted using the broadest reasonable
interpretation in light of the Specification. See, e.g., In re Hyatt, 211 F.3d
1367, 1372 (Fed. Cir. 2000) (“[D]uring examination proceedings, claims are
given their broadest reasonable interpretation consistent with the
specification.”). Also see In re Morris, 127 F.3d 1048, 1054-56 (Fed. Cir.
1997). (“Absent an express definition in their specification, the fact that
appellants can point to definitions or usages that conform to their
interpretation does not make the PTO's definition unreasonable when the
PTO can point to other sources that support its interpretation.”)
Analysis
Pelkey teaches the use of lubricious coatings, including
polydialkysiloxane coatings, on medical needles (FF 1-2). Numao also
teaches the use of lubricious coatings, including polydialkysiloxane
coatings, on surgical suture needles (FF 4-6). There is no evidence that
either Pelkey or Numao teach a viscosity for the coating mixture of 10,000
cp (FF 3).
The Examiner finds that “the claimed viscosity [is] a mere design
consideration since applicant has not disclosed that this viscosity of the
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coating provides an advantage, is used for a particular purpose, or solves a
stated problem in the specification of application” (Ans. 9).
However, the Specification teaches that there is a specific reason to
use a higher viscosity polydialkysiloxane coating mixture (FF 7-8).
Specifically, the Specification teaches when coated with at least a 10,000 cp
viscosity mixture “the siliconized needle exhibits an average tissue
penetration force below that of a standard siliconized surgical needle” (Spec.
2, ll. 18-19; FF 7). See In re Gal, 980 F.2d 717, 719-720 (Fed.Cir.1992)
(finding of “obvious design choice” precluded where the claimed structure
and the function it performs are different from the prior art).
The Examiner provides no evidence or reason why the value of
10,000 cp is either simply a design choice or would have been routinely
optimizable. See KSR at 1741 (2007) (There must be “a reason that would
have prompted a person of ordinary skill in the relevant field to combine the
elements in the way the claimed new invention does.”). In particular, the
Examiner does not explain why persons of ordinary skill in the art would
had reason to either optimize or utilize a viscosity of 10,000 cp.
Conclusions of Law
The Examiner erred in finding that selection of a polydialkylsiloxane
“having a molecular weight sufficient to provide a viscosity of the coating
mixture of at least about 10,000 cp” is a design choice.
B. 35 U.S.C. § 103(a) over Pelkey, Numao, and Mathisen
The Examiner rejected claims 3 and 4 under 35 U.S.C. § 103(a) as
being obvious over Pelkey, Numao, and Mathisen (Ans. 5-6).
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The Examiner relies upon Mathisen to teach the limitations of claims
3 and 4 (Ans. 5-6). The Examiner does not find that Mathisen addresses the
viscosity issue regarding claims 1 and 2.
Since Appellants note that “Mathisen fails to remedy the deficiencies
of Pelkey and/or Numao” (App. Br. 8) and we find no teaching in Mathisen
regarding a viscosity of at least about 10,000 cp for the needle coating, we
reverse the rejection of claims 3 and 4.
C. 35 U.S.C. § 103(a) over Walther and Numao
The Examiner rejected claims 1-4 under 35 U.S.C. § 103(a) as being
obvious over Walther and Numao (Ans. 6-7).
The Examiner finds that “Walther discloses a surgical needle having a
tissue penetrating end and a coating thereon, the coating formed from a
coating mixture comprising at least one polydiakylsiloxane and at least one
siliconization material” (Ans. 6). The Examiner finds that Walther teaches
“using a first solution of ‘Syl-Off DC 23’ in a solvent of heptane” (Ans. 6).
Appellants contend that “[n]owhere does Walther disclose or suggest .
. . a surgical needle having a tissue penetrating end, a suture attachment end,
and a coating thereon formed from a coating mixture including at least one
polydialkylsiloxane having a molecular weight sufficient to provide a
viscosity of the coating mixture of at least about 10,000 cp” (App. Br. 9-10).
In view of these conflicting positions, we frame the obviousness issue
before us as follows:
Did the Examiner err in finding that Walther and Numao render
obvious a suture needle coated with a polydialkylsiloxane “having a
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molecular weight sufficient to provide a viscosity of the coating mixture of
at least about 10,000 cp”?
Findings of Fact
9. Walther teaches “a process for coating surgical needles by
means of which surgical needles can be produced in which the force of
penetration is even less compared with surgical needles treated by
previously known processes” (Walther, col. 1, ll. 36-40).
10. Walther teaches that the “force of penetration does not increase
as greatly after repeated penetration of tissue as in the case of surgical
needles coated by previously known processes” (Walther, col. 1, ll. 40-43).
11. Walther teaches that the “product sold by Dow Corning under
the name ‘Syl-Off DC 23’, which exhibits an average degree of
polymerization of ca 8000, is preferably used as condensable polymethyl
siloxane” (Walther, col. 2, ll. 13-16).
12. The Specification state that “preferred polydimethylsiloxanes
are polydimethylsiloxanes having a molecular weight sufficient to provide a
viscosity of the coating mixture of at least about 10,000 cp and preferably of
at least about 30,000 cp. Such polydimethylsiloxanes for use herein are the
products sold by Dow Corning under the name ‘Syl-Off DC 23’, which is
suitable as a high density condensable polydimethylsiloxane” (Spec. 6, ll. 1-
5).
13. Walther teaches, in Example 1, that “needles were immersed in
a sieve in a solution of ‘Syl-Off DC 23’ . . . in n-heptane, called ‘first
solution’” (Walther, col. 5, ll. 64-66). Walther then teaches that the “needles
were then immersed in a sieve in a bath containing a solution of ‘MDX4-
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4159’ . . . in n-heptane. The concentration of this solution, called ‘second
solution’ was 25 g/l” (Walther, col. 6, ll. 37-40).
14. The Specification teaches that a “particularly preferred
siliconization material for use herein in combination with the
aforementioned polydimethysiloxane(s) [Syl-OFF DC 23] to form the
coating mixture is Dow Corning Corporation’s Dow Corning® MDX4-4159
Fluid” (Spec. 7, ll. 12-14).
15. Numao teaches “a needle made of a metal having elasticity such
as stainless steel . . . . Specifically . . . a needle for suture” (Numao, col. 3,
ll. 43-49).
Principles of Law
“Where, as here, the claimed and prior art products are identical or
substantially identical, or are produced by identical or substantially identical
processes, the PTO can require an applicant to prove that the prior art
products do not necessarily or inherently possess the characteristics of his
claimed product.” In re Best, 562 F.2d 1252, 1255 (CCPA 1977). “Whether
the rejection is based on ‘inherency’ under 35 U.S.C. § 102, on ‘prima facie
obviousness' under 35 U.S.C. § 103, jointly or alternatively, the burden of
proof is the same, and its fairness is evidenced by the PTO's inability to
manufacture products or to obtain and compare prior art products.” Id.
Analysis
Walther teaches a surgical needle with a penetrating end and a coating
which comprises the polydialkylsiloxane “Syl-Off DC 23” and the
siliconization material “MDX4-4159” (FF 9-11, 13). Numao teaches the use
of a suture attachment end to surgical needles (FF 15).
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The dispute centers over whether Walther teaches a
polydialkylsiloxane which will satisfy the viscosity requirement of 10,000
cp of claim 1. Walther teaches the use of the identical materials for coating
as disclosed in Appellants’ Specification, including the preferred
polydialkylsiloxane “Syl-Off DC 23” and the siliconization material
“MDX4-4159” (FF 9-14).
Therefore, the Examiner established a prima facie case of
unpatentability at least based on inherency, thereby shifting to Appellants
the burden of proving that when Walther uses the polydialkylsiloxane “Syl-
Off DC 23” and the siliconization material “MDX4-4159”, the resulting
coating would have a viscosity of less than 10,000 cp. See In re Best, 562
F.2d at 1255 (“Whether the rejection is based on ‘inherency’ under 35
U.S.C. § 102, on ‘prima facie obviousness' under 35 U.S.C. § 103, jointly or
alternatively, the burden of proof is the same, and its fairness is evidenced
by the PTO's inability to manufacture products or to obtain and compare
prior art products”). On this record, Appellants have proffered no such
proof.
We are not persuaded by Appellants’ argument that “the Examiner has
taken the position that the viscosity of 10,000 cp is merely a design
consideration” in this rejection (App. Br. 10). In fact, the Examiner found
that because Walther used the same materials, “it would be inherent that the
coating of Walther would have the same characteristics as recited in the
claims” (Final Rej. 8). Thus, the Examiner recognized that Walther taught
the use of materials identical to those disclosed in Appellants’ Specification
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and properly applied the inherency doctrine. Appellants have provided no
evidence to the contrary.
We do not find persuasive Appellants’ argument that “[n]owhere does
Walther disclose or suggest its multiple coatings may be applied in a single
coating mixture” (App. Br. 10). However, claim 1 is drawn to a product,
which unlike claim 5, does not require that the coatings be “interpenetrated”,
but simply form a “coating mixture”. Walther teaches a coating mixture
comprising two separate coatings (FF 13). We decline to read the limitation
that the coatings are “interpenetrated” into the claim 1 when claim 1 simply
requires a “coating mixture” on the needle. “[L]imitations are not to be read
into the claims from the specification.” In re Van Geuns, 988 F.2d 1181,
1184 (Fed. Cir. 1993) (citing In re Zletz, 893 F.2d 319, 321 (Fed. Cir.
1989)).
Conclusion of Law
The Examiner did not err in finding that Walther and Numao teach
selection of a polydialkylsiloxane “having a molecular weight sufficient to
provide a viscosity of the coating mixture of at least about 10,000 cp”.
D. 35 U.S.C. § 103(a) over Arimatsu and Numao
The Examiner rejected claim 5 under 35 U.S.C. § 103(a) as being
obvious over Arimatsu and Numao (Ans. 7-8).
The Examiner finds that Arimatsu discloses “a needle having an
interpenetrating network coating thereon, the coating formed from a coating
mixture comprising at least one solution comprising polydialkylsiloxane and
a first solvent and a second solution comprising at least one other
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siliconization material, which does not covalently bond with the
polydialkylsiloxane, and a second solvent” (Ans. 7).
Appellants contend that “Arimatsu fails to disclose a coating on a
surgical needle having a suture attachment end” (App. Br. 12). Appellants
further contend that “[n]owhere does applicant's coating utilize the epoxy
functionalized siloxane required by Arimatsu. In addition, nowhere does
Arimatsu disclose a coating mixture of a first solution comprising
polydimethylsiloxane and a first solvent and a second solution comprising
the siliconization material and a second solvent” (App. Br. 12-13).
In view of these conflicting positions, we frame the obviousness issue
before us as follows:
Did the Examiner err in finding that Arimatsu and Numao render
obvious a suture needle comprising an interpenetrating networked coating as
required by claim 5?
Findings of Fact
16. Arimatsu teaches a “needle coated with a mixture of a first
polyorganosiloxane . . . and a second non-reactive polyorganosiloxane”
(Arimatsu, col. 2, ll. 5-10).
17. Arimatsu teaches reacting MDX4-4159 with γ-
glycidoxypropylmethyldimethoxysilane, then mixing with
polydimethylsiloxane “to obtain a colorless transparent coating liquid. A
21G injection needle was dipped in this coating liquid” (Arimatsu, col. 4, l.
63 to col. 5, l. 11).
18. The Examiner finds that Arimatsu’s coating comprises a “first
solution of a reactive polydialkylsiloxane in a solvent of toluene, in this case
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polydimethylsiloxane, with a nonreactive polydimethylsiloxane in a solvent
of dichloropentafluoropropane (see Example 1)” (Ans. 8). Arimatsu teaches
that “5 parts by weight of a silicone compound . . .MDX 4-4159 . . . and 0.2
parts by weight of γ-glycidoxypropylmethyldimethoxysilane (KBM-402 . . .)
were reacted in 10 parts by weight of toluene . . . After completion of the
reaction, 2.5 parts by weight of polydimethylsiloxane . . . and 82.3 parts by
weight of dichloropentafluoropropane . . . were added to obtain a colorless
transparent coating liquid” (Arimatsu, col 4, l. 64 to col. 5, l. 10).
19. Arimatsu teaches that the “non-reactive polyorganosiloxane
exists in the cross-linked polymer without participating in the reaction, and
provides good lubricating property to the needle” (Arimatsu, col. 4, ll. 8-11).
20. Arimatsu teaches that “a needle there can be used as an
injection needle, a winged needle, a retained needle or the like. A needle
which can be used for this invention is not limited” (Arimatsu, col. 4, ll. 15-
18).
21. Arimatsu teaches that the “needles of the present invention have
low piercing resistance and the resistance does not increase by repeated
piercing” (Arimatsu, col. 6, ll. 29-31).
22. Numao teaches “a needle made of a metal having elasticity such
as stainless steel . . . . Specifically . . . a needle for suture” (Numao, col. 3,
ll. 43-49).
Analysis
Arimatsu teaches a needle which comprises an interpenetrating
networked coating formed from polydimethylsiloxane and a first solvent,
and a second siliconization material comprising MDX4-4159 and a second
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solvent (FF 16-18). Arimatsu expressly teaches that the second
siliconization material is non-reactive and does not covalently bond with the
polydimethylsiloxane (FF 18-19). Arimatsu teaches that the purpose of the
needle is not limited (FF 20). Arimatsu teaches that the “needles of the
present invention have low piercing resistance and the resistance does not
increase by repeated piercing” (Arimatsu, col. 6, ll. 29-31; FF 21).
Numao teaches the use of needles for suture (FF 22).
Applying the KSR standard of obviousness to the findings of fact, we
conclude that there the combination of the needle coating of Arimatsu with
the suture needle of Numao represents a combination of known elements
which yield the predictable result of forming suture needles with “low
piercing resistance and the resistance does not increase by repeated piercing”
(Arimatsu, col. 6, ll. 29-31; FF 21). Such a combination is merely a
“predictable use of prior art elements according to their established
functions.” KSR, 127 S. Ct. at 1740.
We are not persuaded by Appellants argument that “nowhere does
Arimatsu disclose a coating mixture of a first solution comprising
polydimethylsiloxane and a first solvent and a second solution comprising
the siliconization material and a second solvent” (App. Br. 12-13). This
argument is incorrect, since Arimatsu teaches that “5 parts by weight of a
silicone compound . . . MDX 4-4159 . . . and 0.2 parts by weight of γ-
glycidoxypropylmethyldimethoxysilane (KBM-402 . . .) were reacted in 10
parts by weight of toluene . . . After completion of the reaction, 2.5 parts by
weight of polydimethylsiloxane . . . and 82.3 parts by weight of
dichloropentafluoropropane . . . were added to obtain a colorless transparent
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coating liquid” (Arimatsu, col 4, l. 64 to col. 5, l. 10; FF 18). The final
solution therefore comprises polydimethoxysiloxane in a first solvent of
dichloropentafluoropropane and the silicone compound MDX 4-4159 as the
siliconization compound in a second solvent of toluene (FF 18).
Conclusion of Law
The Examiner did not err in finding that Arimatsu and Numao render
obvious a suture needle comprising an interpenetrating networked coating as
required by claim 5.
E. 35 U.S.C. § 103(a) over Arimatsu, Numao, and Walther
The Examiner rejected claims 7 and 8 under 35 U.S.C. § 103(a) as
being obvious over Arimatsu, Numao and Walther (Ans. 8-9).
The Examiner states that Arimatsu “fails to disclose that the first
solvent is either hexane or heptane and that [the] second solvent is either
hexane, heptane, isopropanol, or a mixture thereof” (Ans. 8). The Examiner
finds that Walther “discloses using a polymethylsiloxane in a heptane
solvent . . . Walther . . . uses MDX 4-4159 as a second siliconization
material also in a heptane solvent” (Ans. 9). The Examiner finds that it
would have been obvious to “use hexane as a solvent of
polydimethylsiloxane as disclosed by Arimatsu . . . with the expectation of
successful results since Walther . . . teaches the suitability of hexane with
polydialkylsiloxane for coating needles” (Ans. 9).
The Examiner provides sound fact-based reasoning for combining
Arimatsu, Numao, and Walther. As Appellants do not identify any material
defect in the Examiner's reasoning, and we find none, we affirm the rejection
of claims 7 and 8 for the reasons stated by the Examiner.
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SUMMARY
In summary, we reverse the rejection of claims 1 and 2 under 35
U.S.C. § 103(a) as obvious over Pelkey and Numao. We reverse the
rejection of claims 3 and 4 under 35 U.S.C. § 103(a) as obvious over Pelkey,
Numao, and Mathisen.
We affirm the rejection of claim 1 under 35 U.S.C. § 103(a) as
obvious over Walther and Numao. Pursuant to 37 C.F.R.
§ 41.37(c)(1)(vii)(2006), we also affirm the rejection of claims 2-4 as these
claims were not argued separately.
We affirm the rejection of claim 5 under 35 U.S.C. § 103(a) as being
obvious over Arimatsu and Numao. We also affirm the rejection of claims 7
and 8 under 35 U.S.C. § 103(a) as being obvious over Arimatsu, Numao and
Walther.
AFFIRMED
LP
TYCO HEALTHCARE GROUP LP
60 MIDDLETOWN AVENUE
NORTH HAVEN CT 06473