Nestor Rodriguez San Juan et al.

Patent Trials and Appeals Board

Jul 19, 2019

13120109 - (D) (P.T.A.B. Jul. 19, 2019)

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.
13/120,109 03/21/2011 Nestor Rodriguez San Juan 4684-111109 7106
32182 7590 07/19/2019
Becton, Dickinson and Company /
The Webb Firm
420 Ft. Duquesne Blvd., Suite 1200
Pittsburgh, PA 15222
EXAMINER
YU, YUECHUAN
ART UNIT PAPER NUMBER
1718
NOTIFICATION DATE DELIVERY MODE
07/19/2019 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):
ip.docket@bd.com
patents@webblaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte NESTOR RODRIGUEZ SAN JUAN
and SRINIVASAN SRIDHARAN

____________

Appeal 2018-007497
Application 13/120,109
Technology Center 1700
____________
Before JEFFREY B. ROBERTSON, JAMES C. HOUSEL,
and MICHAEL G. McMANUS, Administrative Patent Judges.

McMANUS, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner rejected claims 1, 3–5, 8, 10, 12–15, 20, 24, 62, 63, and
69–81 of Application 13/120,109 under 35 U.S.C. § 103(a). Non-Final Act.
(April 19, 2017) 3–31. Appellants1 seek reversal of these rejections
pursuant to 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we AFFIRM.

1 Becton, Dickinson and Company is identified as the real party in interest.
Appeal Br. 3.
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Application 13/120,109
2
BACKGROUND
The present application generally relates to thermal chemical vapor
deposition (CVD) to provide barrier and/or lubricant coating(s) on the
interior surface of a container, such as a syringe, tube, or medical collection
device. Spec. ¶ 2. Barrier coatings may prevent leaching of materials from
the container surface into the container contents and/or from the container
contents into the container surface, and may also prevent gas and/or water
permeability in containers. Id. ¶ 16. Lubricant coatings may reduce
frictional forces so that smooth transition of two surfaces from stationary
contact to sliding contact can be achieved. Id.
Figure 1 of the Application is reproduced below.

The Specification indicates that Figure 1 is “a schematic diagram of a
system and apparatus for coating the interior of a container using a chemical
vapor deposition process according to the present invention.” Spec. ¶ 26. In
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Figure 1, the container is a syringe barrel 12. Id. ¶ 49. Monomer gas 34 is
supplied to the interior of the container (syringe barrel) through gas inlet
duct 36. Id. ¶ 57. The feed gas may be a monomer which can be pyrolyzed
(heat treated) to form a film on the container surface. Id. ¶¶ 63, 75.
Claim 1 is illustrative of the subject matter on appeal and is
reproduced below:
1. A system, comprising:
(a) a medical article defining a container, of which at
least a portion of an interior wall surface of the container is to
be coated, the container comprising an open end, a second end
opposite the open end, and a wall extending therebetween, the
wall having an exterior wall surface and an interior wall
surface, the container having a chamber within an area defined
by the interior wall surface between the open end and the
second end of the container, wherein the chamber of the
container is sealed from an exterior of the container;
(b) a monomer gas supply source for supplying at least
one monomer gas;
(c) a gas inlet duct positioned at the open end of the
container and having a portion extending into a portion of the
chamber for supplying at least one monomer gas received from
the monomer gas supply source into the chamber;
(d) a heated pyrolyzing surface disposed at least partially
within the chamber for pyrolyzing, by the heat of the heated
pyrolyzing surface, at least a portion of the monomer gas
supplied to the chamber of the container to form a reactive gas
comprising at least one reactive moiety from the monomer gas;
(e) a temperature controller proximate to the exterior wall
surface of the container to promote cooling of the exterior
surface for maintaining the interior wall surface of the container
at a temperature which is less than the temperature of the
pyrolyzing surface to facilitate deposition and polymerization
of the reactive moiety on at least a portion of the interior wall
surface of the container; and
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(f) an outlet duct positioned at the open end of the
container or the second end of the container for removing
excess reactive gas from the chamber;
wherein, with the pyrolyzing surface disposed at least
partially within the chamber, the chamber of the container
defines a reaction chamber during pyrolyzation; and
wherein the exterior wall surface of the container is
exposed to atmospheric pressure.
Appeal Br. 25–26 (Claims App.).
REJECTIONS
The Examiner maintains the following rejections:
1. Claims 1, 3–5, 8, 15, 20, 24, 62, 63, 69–75, 77, 78, 80, and 81 are
rejected under 35 U.S.C. § 103(a) (pre-AIA) as obvious over
Bicker et al.2 in view of Sukai et al.3 and Mishima et al.4 Non-
Final Act. 3–16.
2. Claims 10 is rejected under 35 U.S.C. § 103(a) (pre-AIA) as
obvious over Bicker in view of Sukai, Mishima, and Gleason et
al.5 Id. at 17.

2 DE 10 2005 040 266 A1, published March 1, 2007 (citation to U.S.
counterpart US 2009/0155490 Al, published June 8, 2009 (collectively
“Bicker”).
3 JP 2006-335379, published Dec. 14, 2006 (“Sukai”).
4 WO 2006/126677 Al, published Nov. 30, 2006 (citation to U.S. counterpart
US 2009/0061111 Al, published Mar. 5, 2009) (collectively “Mishima”).
5 US 2003/0138645 Al, published July 24, 2003 (“Gleason”).
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3. Claim 12 and 13 are rejected under 35 U.S.C. § 103(a) (pre-AIA)
as obvious over Bicker in view of Sukai, Mishima, and Mikami et
al.6 Id. at 17–18.
4. Claim 14 is rejected under 35 U.S.C. § 103(a) (pre-AIA) as
obvious over Bicker in view of Sukai, Mishima, Mikami, and
Wheat et al.7 Id. at 18–19.
5. Claim 76 is rejected under 35 U.S.C. § 103(a) (pre-AIA) as
obvious over Bicker in view of Sukai, Mishima, and Haines et al.8
Id. at 19–20.
6. Claims 1, 3–5, 8, 12–15, 20, 24, 62, 63, 69–77, and 79 are rejected
under 35 U.S.C. § 103(a) (pre-AIA) as obvious over Mishima. Id.
at 20–30.
7. Claim 10 is rejected under 35 U.S.C. § 103(a) (pre-AIA) as
obvious over Mishima in view of Gleason. Id. at 31.
DISCUSSION
Rejection 1. The Examiner rejects claims 1, 3–5, 8, 15, 20, 24, 62,
63, 69–75, 77, 78, 80, and 81 as obvious over Bicker in view of Sukai and
Mishima. Id. at 3–16. In support of the rejection, the Examiner finds that
Bicker teaches syringe body 10 having an interior surface which is to be
coated. Id. at 3. The Examiner further finds that the interior of the syringe
is sealed to maintain a vacuum during the coating process. Id. at 4. The
Examiner additionally finds that Bicker “teaches in [0075] the container may

6 JP 2005-200044, published July 28, 2005 (“Mikami”).
7 US 2003/0116278 Al, published June 26, 2003 (“Wheat”).
8 US 2007 /0187280 Al, published Aug. 16, 2007 (“Haines”).
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be cooled by air flow at atmospheric pressure over the external surface of the
container and also during processing [0119, 0123, 0128, 0135, 0145-0203].”
Answer 32. The Examiner finds that Sukai and Mishima teach the use of a
heated surface for pyrolyzing a monomer gas to form a reactive gas. Final
Act. 5.
Appellants argue that none of the cited references teach a system
having a container where “the chamber of the container is sealed from an
exterior of the container” and where “the chamber of the container defines a
reaction chamber during pyrolyzation; and wherein the exterior wall surface
of the container is exposed to atmospheric pressure” as required by claim 1.
Appeal Br. 13–21. Appellants similarly argue that none of the cited
references teach a system having a container where “the chamber of the
container is sealed from an exterior of the container” and where “the
chamber defines the evacuated chamber in which pyrolysis occurs, and the
exterior wall surface of the container is exposed to atmospheric pressure” as
required by claim 81. Id.; Reply Br. 3.
Appellants initially argue that neither Sukai nor Mishima teaches the
features of these claim elements. Id. at 15–18. Such argument is not
directly responsive to Rejection 1 as the Examiner relies on Bicker as
teaching the limitations in question for this rejection. See Final Act. 3–16;
Answer 31–32. Appellants additionally argue that Bicker does not teach the
limitations at issue. Appeal Br. 18–20.
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Figure 1 of Bicker is reproduced below.

Figure 1 shows “a syringe body 10 arranged in the reactor chamber
2 of the reactor 1.” Bicker ¶ 89. Bicker teaches that “the cavity of the
syringe body 10 is evacuated through an opening at a first end–here
accordingly the plunger opening 12–and the process gas is introduced
through a further opening, i.e. the opening 16 in the Luer cone 15.”
Appellants rely on Bicker’s teaching of a reactor chamber 2 external
to the wall of the syringe being coated. Appeal Br. 19. Appellants argue
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that, in view of such reaction chamber, Bicker does not teach that “the
chamber of the container defines a reaction chamber during pyrolyzation;
and wherein the exterior wall surface of the container is exposed to
atmospheric pressure,” as recited in claim 1, or “the chamber defines the
evacuated chamber in which pyrolysis occurs, and the exterior wall surface
of the container is exposed to atmospheric pressure” of claim 81. Id. at 19–
20; Reply Br. 3.
We do not find such argument to be persuasive. The Examiner reads
the “reaction chamber” (claim 1) / “evacuated chamber” (claim 81) on the
interior of the syringe body of Bicker. Answer 32, 34. Appellants
apparently contend that the Examiner’s determination is in error because the
pyrolysis reaction occurs throughout the full area of reactor chamber 2.
Appeal Br. 19–20. This is not supported by the reference.
Bicker teaches the interior of the workpiece (such as a syringe) is a
“treatment zone” which is evacuated and then supplied with a process gas
for plasma treatment as follows:
the invention provides a method for the plasma treatment of
workpieces, particularly workpieces in the form of hollow
bodies, in which a treatment zone in a reactor chamber is at
least partially evacuated, a process gas is introduced into the
treatment zone, for instance the cavity of the workpiece, and
a plasma is ignited by means of injected electromagnetic energy
in the process gas introduced into the treatment zone, wherein
the process gas flows through the treatment zone between
opposite ends of the zone during the plasma treatment.

Bicker ¶ 9 (emphasis added). Bicker further teaches that, in an embodiment,
“[t]he plasma treatment may be carried out exclusively on the inside . . . of
the workpiece of the hollow body.” Id. ¶ 12. Bicker additionally teaches
that “[i]f internal coating is carried out, for example, the workpiece may be
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cooled externally by a gas flow–in the simplest case a flow of air at
atmospheric pressure.” Id. ¶ 75. The Examiner further cites to Bicker’s
Example 1a where “[t]he interior of the syringe is subsequently evacuated
until a base pressure < 0.05 mbar is reached. The exterior remains at
atmospheric pressure throughout the treatment process.” Id. ¶ 123
(emphasis added). Bicker additionally teaches that “the syringe body 10 is
both fixed and sealed off from the surrounding regions of the reactor
chamber 2.” Id. ¶ 91.
The Examiner finds that the interior of the syringe of Bicker is the
“reaction chamber” of claim 1 and the “evacuated chamber” of claim 81.
Answer 32, 34. The Examiner further finds that the exterior wall of the
barrel of the syringe of Bicker is exposed to atmospheric pressure during
pyrolyzation. These findings are well-supported by Bicker. Accordingly,
Appellants have not shown error on this basis.
To the extent that Appellants argue that the “reaction chamber”
limitation of claim 1 should be read on the “reactor chamber 2” of Bicker
merely because of the similarity of the terminology, we do not find such
argument to be persuasive, given the structural and functional similarity
between Bicker’s syringe barrel and the claimed reaction chamber.
Appellants additionally argue that “there is no motivation for a skilled
artisan to combine these references.” Appeal Br. 22. In support of such
theory, Appellants reiterate their arguments regarding the references’ failure
to teach that “the chamber of the container defines a reaction chamber
during pyrolyzation; and wherein the exterior wall surface of the container is
exposed to atmospheric pressure,” as recited in independent claim 1, and that
“the chamber defines the evacuated chamber in which pyrolysis occurs, and
the exterior wall surface of the container is exposed to atmospheric
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pressure,” as recited in independent claim 81. Id. We find these arguments
unpersuasive for the reasons set forth above. In addition, they do not bear
directly on whether a person of ordinary skill in the art would have had
reason to combine the teachings of the references at issue. Rather, such
arguments concern the scope of the prior art. Accordingly, Appellants have
not shown error in this regard.
Appellants rely on the same arguments in support of their appeal of
dependent claims 3–5, 8, 15, 20, 24, 62, 63, and 69–75, 77, 78, and 80. Id.
at 22–23. We find these arguments unpersuasive for the reasons set forth
above.
In view of the foregoing, Appellants have not shown error in the
Examiner’s rejection of claims 1, 3–5, 8, 15, 20, 24, 62, 63, 69–75, 77, 78,
80, and 81 as obvious over Bicker in view of Sukai and Mishima.

Rejections 2–5. The Examiner rejects claims 10, 12, 13, 14, and 76
over Bicker, Sukai, and Mishima and certain additional references. Non-
Final Act. 17–20. Appellants rely on the same arguments described above in
support of their appeal of these claims. Appeal Br. 22–23. We find these
arguments unpersuasive for the reasons set forth above.

Rejections 6 and 7. The Examiner rejects claims 1, 3–5, 8, 12–15,
20, 24, 62, 63, 69–77, and 799 over Mishima and claim 10 over Mishima in
view of Gleason. Id. at 20–31.

9 All pending claims other than claim 79 stand rejected over Bicker in view
of Sukai and Mishima in combination with certain other references.
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In support of these rejections, the Examiner finds that vacuum
chamber 6 of Mishima teaches the “container” of claim 1. Non-Final Act.
20 (“the ‘container’ is interpreted as Mishima’s ‘vacuum chamber’ 6”);
Answer 33 (“Mishima’s vacuum chamber 6 is the processing chamber in
which all the processing/reactions occur, therefore serving as a reaction
chamber”). The Examiner further finds that “the exterior wall surface of the
container is exposed to atmospheric pressure (it would be obvious outside
wall surface of 6 is exposed to atmosphere/world, as can be seen in the
drawings . . .).” Non-Final Act. 23.
Figure 1(a) of Mishima is reproduced below.

Figure 1(a) is a schematic drawing showing an “apparatus 100 for
manufacturing a gas barrier plastic container shown in FIG. l has a vacuum
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chamber 6 for housing a plastic container 11, an exhaust pump (not shown in
the drawings) which evacuates the vacuum chamber 6.” Mishima ¶ 92.
Appellants argue that the Examiner does not accord proper weight to
the claim 1 limitation requiring “the chamber of the container defines a
reaction chamber during pyrolyzation.” Appeal Br. 17, 21. In the Answer,
the Examiner finds that “Mishima’s vacuum chamber 6 is the processing
chamber in which all the processing/reactions occur, therefore serving as a
reaction chamber.” Answer 33; see also Non-Final Act. 23. Accordingly,
the Examiner has accorded appropriate weight by making a finding
regarding this claim limitation.
Appellants additionally argue that the Examiner’s findings regarding
Mishima are ambiguous as to what structure teaches the reaction chamber
limitation. Appeal Br. 17–18. This is not persuasive. As above, the
Examiner makes a clear finding in this regard.
Appellants further argue that claim 1 recites a “container having a
chamber within an area defined by the interior wall surface between the
open end and the second end of the container” but that Mishima does not
teach the chamber of a container as claimed. Id. at 18. Appellants do not
adequately support their argument. The Examiner finds that “Mishima’s
vacuum chamber 6 is the processing chamber in which all the
processing/reactions occur, therefore serving as a reaction chamber.”
Answer 33; see also Non-Final Act. 20 (“the ‘container’ is interpreted as
Mishima’s ‘vacuum chamber’ 6”). Appellants do not clearly articulate a
theory as to why this finding is in error. Accordingly, Appellants have not
shown error in this regard. See 37 C.F.R. 41.37(c)(1)(iv) (“the brief shall
contain . . . . The arguments of appellant with respect to each ground of
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rejection, and the basis therefor . . . . The arguments shall explain why the
examiner erred as to each ground of rejection contested by appellant.”).

CONCLUSION
The rejections of claims 1, 3–5, 8, 10, 12–15, 20, 24, 62, 63, and 69–
81 are 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).
AFFIRMED