Ex Parte Peltz et alDownload PDFPatent Trial and Appeal BoardDec 15, 201712211030 (P.T.A.B. Dec. 15, 2017) Copy Citation 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. 2 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. 3 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.) 4 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 5 Appeal 2016-008282 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 6 Copy with citationCopy as parenthetical citation