Ex Parte Amano et al

Patent Trial and Appeal Board

Oct 14, 2016

13402082 (P.T.A.B. Oct. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/402,082 02/22/2012
77218 7590 10/18/2016
Medtronic Vascular - APV Division
c/o IP Legal Department
3576 Unocal Place
Santa Rosa, CA 95403
FIRST NAMED INVENTOR
Kenichi Amano
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
H-NS-01239 4246
EXAMINER
EISENBERG, REBECCA E
ART UNIT PAPER NUMBER
3763
NOTIFICATION DATE DELIVERY MODE
10/18/2016 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):
rs. docketingapv@medtronic.com
medtronic _apv _docketing@ cardinal-ip. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KENICHI AMANO and MIKI MURAMATSU
Appeal2014-009694
Application 13/402,082
Technology Center 3700
Before STEFAN STAICOVICI, LEE L. STEPINA, and
SEAN P. O'HANLON, Administrative Patent Judges.
O'HANLON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Kenichi Amano and Miki Muramatsu (Appellants) 1 appeal under 35
U.S.C. § 134 from the Examiner's decision rejecting claims 1---6. 2 We have
jurisdiction over this appeal under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
1 According to Appellants, the real party in interest is Covidien LP. App.
Br. 1.
2 Claims 7-21 are withdrawn. Final Act. 1.
Appeal2014-009694
Application 13/402,082
SUMMARY OF INVENTION
Appellants' "disclosure relates to lubricious medical instruments and
methods for manufacturing [the] same." Spec. i-f 2. Claim 1, reproduced
below from page 8 (Claims Appendix) of the Appeal Brief, is the sole
independent claim on appeal and is representative of the claimed subject
matter:
1. A medical instrument comprising:
a base material comprising a metal;
an intermediate film covering at least a part of a surface
of the base material, the intermediate film comprising a
bisphenol A type epoxy resin; and
a wet lubricant formed on the intermediate film, the base
material, or both, the wet lubricant comprising a polymer alloy
comprising a methyl vinyl ether maleic anhydride copolymer
and a polyether block amide.
REJECTION
Claims 1-6 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Thurmond (US 2009/0318746 Al, pub. Dec. 24, 2009)
and Amano (US 2008/0091168 Al, pub. Apr. 17, 2008).
ANALYSIS
Regarding independent claim 1, the Examiner finds that Thurmond
discloses the invention substantially as claimed, including a metal base
material, an intermediate layer formed of a bisphenol A type epoxy resin,
and a lubricant, but does not disclose the lubricant including a polymer alloy
comprising a methyl vinyl ether maleic anhydride copolymer and a
polyether block amide. Final Act. 2-3 (citing Thurmond i-fi-1 4, 5, 17, 18, 20,
24, 30, 34, and 35); see also Ans. 4 (citing Thurmond i-fi-117, 20, 32, 35, and
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Application 13/402,082
39). The Examiner finds that Amano teaches a polymer alloy lubricant
including a methyl vinyl ether maleic anhydride copolymer and a polyether
block amide applied on a medical instrument, and reasons that it would have
been obvious to a skilled artisan to include such a lubricant with
Thurmond's device "if one wished to prevent the lubricant from separating
from the instrument and to allow the instrument to be used in the vasculature
without risk of thrombosis." Final Act. 3 (citing Amano i-fi-15, 6, 9-11, 16,
and 19); see also Ans. 5 (citing Amano i-fi-19-11 and 14).
Appellants traverse the rejection, arguing first that Thurmond does not
disclose or suggest a wet lubricant including a polymer alloy possessing a
methyl vinyl ether maleic anhydride copolymer and a polyether block amide,
and Amano does not disclose or suggest an intermediate layer including a
bisphenol A type epoxy resin. App. Br. 3; see also Reply Br. 1-2.
The Appellants' arguments are not persuasive because they attack the
individual teachings of the references and do not address what the
combination of references teaches, as explained by the Examiner.
"Nonobviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references." In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The
Examiner interprets Thurmond to disclose the recited base material and the
recited intermediate film, as well as a wet lubricant. Final Act. 2-3. The
Examiner proposes to substitute Thurmond's wet lubricant for that disclosed
by Amano. Id. at 3. Appellants' arguments on this point do not address the
rejection as set forth by the Examiner, and, therefore, Appellants have failed
to apprise us of any error in the Examiner's findings or reasoning.
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Application 13/402,082
Appellants also argue that the Examiner's rejection is based on
impermissible hindsight reasoning and ignores evidence of unexpected
results. App. Br. 3---6; see also Reply Br. 2. Regarding the assertion of
unexpected results, Appellants cite Example 1 and Comparative Examples
1-3, set forth in the Specification, as supporting evidence. App. Br. 4---6.
To the extent that Appellants argue that the Examiner improperly used
hindsight, the argument is of no import where the Examiner states a rationale
for the modification that we determine is supported adequately by sufficient
facts. See In re Cree, 818 F.3d 694, 702, n.3 (Fed. Cir. 2016). Here, the
Examiner proposes to substitute Thurmond's wet lubricant with that
disclosed by Amano in order "to bond a lubricious coating layer (methyl
vinyl ether maleic anhydride copolymer) to a resin substrate layer as taught
by Amano." Ans. 5; see also Final Act. 2. As this rationale is disclosed by
Amano (see, e.g., Amano i-f 9), we find the Examiner's articulated reasoning
to have a rational underpinning and, therefore, it is supported by sufficient
facts. Appellants have not persuasively shown error in the Examiner's
reasomng.
Appellants' arguments regarding purported unexpected results are
also unpersuasive. The burden rests with Appellants to establish: 1) that
any alleged unexpected results presented as being associated with the
claimed invention are, in fact, unexpected; 2) that the comparisons are to the
disclosure of the closest prior art; and 3) that the supplied evidentiary
showing is commensurate in scope with the claimed subject matter. See In
re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). Appellants have not met any
of these requirements: Thurmond reports the same benefits due to its
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Appeal2014-009694
Application 13/402,082
bonding layer (see, e.g., Thurmond i-fi-135 and 65), so the results are not
unexpected; Appellants have submitted no evidence regarding the
embodiments of the closest cited prior art in comparison with the claimed
invention; and, as noted by the Examiner (see Ans. 6), the tested
embodiment included a wet lubricant formed only on the intermediate film
(Spec. i1 50), but the claims are not so limited.
Accordingly, for the foregoing reasons, we affirm the Examiner's
rejection of independent claim 1 as being unpatentable over Thurmond and
Amano. Appellants do not make any other substantive argument regarding
the rejection of dependent claims 2-6. See App. Br. 2---6. Therefore, we
likewise sustain the rejection of dependent claims 2---6.
DECISION
The Examiner's decision to reject claims 1---6 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)(l )(iv).
AFFIRMED
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