Ex Parte Peltz et al

Patent Trial and Appeal Board

Dec 15, 2017

12211030 (P.T.A.B. Dec. 15, 2017)

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.
12/211,030 09/15/2008 Leora Peltz 08-0469 (82,000-197) 7688
101302 7590 12/19/2017
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
12/19/2017 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 LEORA PELTZ, JI HYE SON,
SHAWN HYUNSOO PARK, and ROVELYN T. DYTIOCO1
Appeal 2016-008282
Application 12/211,030
Technology Center 1600
Before ERIC B. GRIMES, TAWEN CHANG, and TIMOTHY G. MAJORS,
Administrative Patent Judges.
GRIMES, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
method of making an antimicrobial coating, which have been rejected as
obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
STATEMENT OF THE CASE
The claimed invention “relates to an antimicrobial coating fabrication
method and structure in which an antimicrobial coating may be applied to a
surface in such a manner that different antimicrobial materials in the coating
1 Appellants identify the Real Party in Interest as The Boeing Company.
(Appeal Br. 2.)
Appeal 2016-008282
Application 12/211,030
may remain unmixed to substantially retain or optimize the full
antimicrobial efficacy of the materials.” (Spec. ^ 1.)
Claims 1-22 are on appeal. Claim 1 is illustrative and reads as
follows (emphasis added):
1. A method of fabricating an antimicrobial surface coating, comprising:
providing a substrate;
separately providing a first staggered pattern of a first antimicrobial
material on the substrate, the first antimicrobial material being configured to
inactivate a first target range of microorganisms; and
separately providing a second staggered pattern of a second
antimicrobial material on the substrate, the second antimicrobial material
being configured to inactivate a second target range of microorganisms, the
first target range of microorganisms being different than the second target
range of microorganisms, the first antimicrobial material being different than
the second antimicrobial material, wherein the second staggered pattern to
at least partially overlap the first staggered pattern, and the second
staggered pattern to be at least partially disposed in spaces defined by the
first staggered pattern.
(Appeal Br. 49 (Claims App.).)
Claims 9 and 17, the only other independent claims, also recite that
the second staggered pattern at least partially overlaps the first staggered
pattern and is at least partially disposed in the spaces defined by the first
staggered pattern.
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Appeal 2016-008282
Application 12/211,030
DISCUSSION
The Examiner has rejected claims 1-20 under 35 U.S.C. § 103(a) as
obvious based on Cima2 and Cho.3 (Ans. 3.) The Examiner has rejected
claims 21 and 22 under 35 U.S.C. § 103(a) as obvious based on Cima, Cho,
and Foss.4 (Ans. 7.) The same issue is dispositive for both rejections.
The Examiner finds that Cima discloses solid free-form fabrication
methods (e.g., 3D printing) to make devices for controlled release of
bioactive agents. {Id. at 4.) The Examiner finds that Cima discloses that
different active agents can be applied in the layers of the 3D-printed device,
and that Cima suggests including antimicrobials in its device. {Id. at 5.)
However, “Cima et al. does not disclose depositing the bioactive agents in a
manner that yields a staggered pattern.” {Id.)
The Examiner finds that “Cho et al. teaches that ‘ [djrug delivery
devices are being created by printing different drugs at prescribed locations
within the interior of a pill or implantable device.’” {Id. at 6.) The
Examiner finds that “Cho et al. teaches that a dithering algorithm plays an
important role in 3D printing with local composition control” and that
“[ejxemplary ditherings within a volume are taught in [Cho’s] Figure 8.”
{Id.) The Examiner concludes that
[t]he teachings of Cho et al. would have motivated a person
having ordinary skill in the art, at the time Applicant’s invention
was made, to employ a dithering algorithm from Figure 8 . . .
2 Cima et al., US 5,490,962; issued Feb. 13, 1996.
3 Cho et al., “Methods for Distributed Design and Fabrication of Parts with
Local Composition Control,” Proceedings of the 2001 NSF Design and
Manufacturing Grantees Conference 2001.
4 Foss et al., US 6,723,428 Bl; issued Apr. 20, 2004.
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Appeal 2016-008282
Application 12/211,030
when printing different antimicrobial agents at different
locations within a layer and/or different regions of one or more
layers in an effort to yield a constant release matrix of two
antimicrobial agents.
{Id.)
Appellants argue, among other things, that “Cho . . . make[s] no
mention of a second staggered pattern that is to at least partially overlap a
first staggered pattern in any form.” (Appeal Br. 19-20.) Appellants also
argue that “Cho . . . make[s] no mention of a second staggered pattern at
least partially disposed in spaces defined by a first staggered pattern in any
form.” {Id. at 20.)
We agree with Appellants that the Examiner has not shown that a
method meeting the limitations of claim 1 would have been obvious based
on Cima and Cho. Cima discloses a method of solid ffee-form fabrication
(e.g., 3D printing) “to precisely position bioactive agent(s) within a release
matrix to control the rate of release and allow either a pulsed or constant
release profile.” (Cima 2:32-34.) The bioactive agent can be an
antimicrobial or antiviral agent. {Id. at 9:63-64.)
Cima states that “devices for pulsed release of drugs are prepared by
constructing drug-rich regions within [a] polymer matrix.” {Id. at 5:8-10.)
Cima states that
[t]he devices having these release profiles can be constructed as
follows. The devices formed using 3DP consist of horizontal
layers, or planes, of polymer and/or bioactive agent, arranged in
a vertical plane to create a device. Composition gradients are
created by applying a different amount of bioactive agent, or
different combinations of bioactive agent, in different layers or
within different regions of one or more layers.
{Id. at 10:31-38.)
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Appeal 2016-008282
Application 12/211,030
The Examiner acknowledges that Cima “does not disclose depositing
the bioactive agents in a manner that yields a staggered pattern.” (Ans. 5.)
The Examiner finds, however, that Cho discloses this limitation, specifically
citing Cho’s Figure 8. (Id. at 5-6.)
Cho states that “[o]ne of the great potential benefits offered by Solid
Freeform Fabrication (SFF) technology is the ability to create parts that
have composition variation within them. Such Local Composition Control
(LCC) has the potential to create new classes of components.” (Cho 1, left
col.) Cho states that its “dithering algorithm is . . . adapted to minimize the
undesirable low frequency textures of composition not only layer-wise but
throughout the volume of an LCC model.” (Id. at 7, left col.) Cho’s Figure
8 is reproduced below:
(a) 4x4Bayer's hiring; (bj 4 x 4 2D cfhhermg(i*» 2); (o) 4x 4x 4 volume dtfhenng (i**2}
Figure 8 shows a comparison of Cho’s dithering algorithm (Fig. 8(c))
with other dithering approaches (Fig. 8(a) and (b)). (Id.)
In response to Appellants’ argument that the cited references do not
show a second staggered pattern that partially overlaps a first staggered
pattern, or a second staggered pattern that is partially disposed in spaces
defined by a first staggered pattern, the Examiner stated that
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Application 12/211,030
considering Cho et al.’s teaching that “[d]rug delivery devices
are being created by printing different drugs at prescribed
locations within the interior of a pill or implantable device”
((emphasis added) page 9), the examiner maintains his position
that Cho et al. compensates adequately for Cima et al.’s relative
silence regarding the methodologies or algorithms that are used
in 3DP to yield different combinations of bioactive agent within
different regions of one or more layers.
(Ans. 11.)
This reasoning, however, does not provide a basis for concluding that
a person of ordinary skill in the art would have had a reason, based on the
teachings of Cima and Cho or the knowledge of those skilled in the art, to
fabricate an antimicrobial coating by providing two staggered patterns of
different antimicrobial materials, where the second staggered pattern
partially overlaps the first staggered pattern and is disposed at least partially
in spaces defined by the first staggered pattern, as required by the claims on
appeal. The Examiner has not pointed to any disclosure in Foss that makes
up for the deficiency in Cima and Cho. (See Ans. 7.) We therefore reverse
both of the rejections on appeal.
REVERSED
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