Ex Parte Wyatt

Board of Patent Appeals and Interferences

Sep 15, 2011

10816093 - (D) (B.P.A.I. Sep. 15, 2011)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/816,093 04/01/2004 Derek Wyatt 3084.EEM 9478
7590 09/15/2011
JANE E. GENNARO
National Starch and Chemical
10 Finderne Avenue
Bridgewater, NJ 08807
EXAMINER
PATTERSON, MARC A
ART UNIT PAPER NUMBER
1782
MAIL DATE DELIVERY MODE
09/15/2011 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 DEREK WYATT

____________

Appeal 2010-004801
Application 10/816,093
Technology Center 1700
____________

Before ADRIENE LEPIANE HANLON, CHUNG K. PAK, and
TERRY J. OWENS, Administrative Patent Judges.

PAK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 14 through 16, all of the claims pending in the above-
identified application.1 We have jurisdiction under 35 U.S.C. § 6.

1 See Appeal Brief (“App. Br.”) filed August 21, 2009, 1; and Examiner’s
Answer (“Ans.”) filed November 24, 2009, 2.

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Application 10/816,093

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STATEMENT OF THE CASE
The subject matter on appeal is directed to “a method for reducing the
number of freeze thaw voids in uncured adhesives and to containers for
storing uncured adhesives at temperatures near or below the freezing point
of the adhesive[s]” (Spec. 1, para. 0001). The preferred containers are said
to be thermoplastic syringes, such as 10 cc sized polypropylene syringes
(Spec. 5, paras. 0015-0016 and claims 15 and 16). Details of the appealed
subject matter are recited in illustrative claim 14 reproduced from the Claims
Appendix to the Appeal Brief as shown below:
14. A method for reducing freeze/thaw voids in an
uncured adhesive consisting essentially of:
(a) providing a container with walls of a thermoplastic
material in which the walls have
(i) a flexural modulus of less than or equal to 1240
MPa, and
(ii) a thickness of 0.0254 to 1.524 mm and a mean
roughness value (Ra) of greater than 0.3 µm, or
(iii) a thickness of 0.0254 mm to 0.762 mm;
(b) filling the container with the uncured adhesive;
(c) freezing the uncured adhesive within the container;
(d) thawing the uncured adhesive;
characterized in that the thawed uncured adhesive
contains fewer freeze/thaw voids than would be
contained in an adhesive frozen and thawed in a
container not meeting the limitations of (a)(i), and (ii) or
(iii).

As evidence of unpatentability of the claimed subject matter, the
Examiner relies on the following prior art references at pages 3 and 6 of the
Answer:
Ota US 2003/0055179 A1 Mar. 20, 2003
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Application 10/816,093

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Seelich US 6,579,537 B2 Jun. 17, 2003

Appellant seeks review of the Examiner’s rejection of claims 14
through 16 under 35 U.S.C. § 103(a) as unpatentable over the combined
disclosures of Seelich and Ota (App. Br. 2).

RELEVANT FACTUAL FINDINGS, PRINCIPLES OF LAW, ISSUE,
ANALYSIS, AND CONCLUSION
Appellant does not dispute the Examiner’s finding that Seelich
discloses filling and freezing fibronectin and fibrinogen, a concentrated
tissue uncured adhesive solution, in a container for the purpose of storing the
adhesive and then thawing the adhesive prior to its use. (Compare Ans. 3
with App. Br. 2-3; see also Seelich, col. 12, ll. 42-52.) Nor does Appellant
dispute the Examiner’s finding that Ota discloses “a syringe (paragraph
1317) having a flexural modulus of less than or equal to 1240 MPa
(paragraph 2691) and a thickness of 0.0254mm to 0.762 mm (paragraph
1311) for the purpose of obtaining a syringe that has a good balance of
transparency and heat resistance (paragraph 0015).” (Compare Ans. 3 with
App. Br. 2-3.) Rather, Appellant contends that there is no apparent reason to
combine the teachings of Seelich and Ota for the purpose of reducing freeze
thaw voids. (See App. Br. 3)
Thus, the dispositive question is: Has the Examiner erred in
determining that one of ordinary skill in the art would have been led to
employ the syringe taught by Ota in the method of Seelich within the
meaning of 35 U.S.C. § 103(a)? On this record, we answer this question in
the negative.
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As our reviewing court stated in In re Beattie, 974 F.2d 1309, 1312
(Fed. Cir. 1992):
As long as some [reason,] motivation or suggestion to combine
the references is provided by the prior art taken as a whole, the
law does not require that the references be combined for the
reasons contemplated by the inventor.

See also KSR Int'l. Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007) (“Under
the correct analysis, any need or problem known in the field of endeavor at
the time of invention and addressed by the patent can provide a reason for
combining the elements in the manner claimed”).
Here, as is apparent from column 12, lines 45-53 of Seelich referred to
by the Examiner at page 3 of the Answer, the containers employed in
Seelich’s exemplified method includes syringes. Although Seelich does not
indicate that its syringes comprise walls having a thickness of 0.0254 mm to
0.762 mm made of a thermoplastic material having a flexural modulus of
less than or equal to 1240 MPa, Appellant does not dispute the Examiner’s
finding that Ota discloses that such syringes were known to provide “a good
balance of transparency and heat resistance” as indicated supra. Ota also
discloses that such syringes have, inter alia, excellent chemical resistance
and mechanical properties, including low temperature flexibility (p. 2, paras.
0015 and 0018).
Given the above teachings, we concur with the Examiner that one of
ordinary skill in the art would have been led to employ the syringe of the
type taught by Ota (i.e., a syringe having the claimed property and thickness)
as the syringe container used in Seelich’s method, with a reasonable
expectation of successfully obtaining the advantages taught by Ota. The
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claimed additional advantage or result, i.e., reducing freeze/thaw voids in the
uncured adhesive, would have naturally flowed from following the
suggestion of the collective teachings of Seelich and Ota, i.e., using the
advantageous syringe taught by Ota as the syringe used for filling, freezing
and thawing an uncured adhesive in Seelich’s method. In re Kubin, 561
F.3d 1351, 1357 (Fed. Cir. 2009) (“Even if no prior art of record explicitly
discusses the [limitation], [applicants’] application itself instruct that [the
limitation] is not an additional requirement imposed by the claims on the
[claimed invention], but rather a property necessarily present in [the claimed
invention]”); see also Ex parte Obiaya, 227 USPQ 58, 60 (BPAI 1985)
("The fact that appellant has recognized another advantage which would
flow naturally from following the suggestion of the prior art cannot be the
basis for patentability when the differences would otherwise [have been]
obvious.")
On this record, Appellant has not relied upon any showing of
unexpected results to rebut the prima facie case of obviousness established
by the Examiner (App. Br. 2-3). Nor have Appellant relied upon any
objective evidence to show that the claimed additional advantage or result
would not have naturally flowed from the use of Ota’s syringe in Seelich’s
method as suggested by the collective teachings of Seelich and Ota.
Accordingly, based on the totality of the record, including due
consideration of Appellant’s arguments in the Appeal Brief, we determine
that the preponderance of evidence weighs most heavily in favor of
obviousness within the meaning of 35 U.S.C. § 103(a).

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ORDER
In view of the foregoing, it is
ORDERED that the decision of the Examiner rejecting claims 14
through 16 under 35 U.S.C. § 103(a) as unpatentable over the combined
disclosures of Seelich and Ota is AFFIMRED; and
FURTHER ORDERED that no time period for taking any subsequent
action in connection with this appeal may be extended under 37 C.F.R.
§ 1.136(a)(1)(v).

AFFIRMED

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