Ex Parte Weber

Patent Trial and Appeal Board

Apr 28, 2016

11266862 (P.T.A.B. Apr. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/266,862 11104/2005
11050 7590 05/02/2016
SEAGER, TUFTE & WICKHEM, LLP
100 South 5th Street
Suite 600
Minneapolis, MN 55402
FIRST NAMED INVENTOR
Jan Weber
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.
2001.1367101 1716
EXAMINER
GREENE, NAN A
ART UNIT PAPER NUMBER
1619
NOTIFICATION DATE DELIVERY MODE
05/02/2016 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):
BSC.USPTO@stwiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAN WEBER
Appeal2014-004468
Application 11/266,862
Technology Center 1600
Before CHARLES N. GREENHUT, LISAM. GUIJT, and
ERIC C. JESCHKE, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1,
3-5, 8-15, 18-21, 23-26 and 30-34. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We reverse.
The claims are directed to a medical device having particle-containing
regions with diamond-like coatings. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
Appeal2014-004468
Application 11/266,862
1. A medical device comprising:
(a) a polymer or metal substrate;
(b) a particle-containing region on the substrate that forms
a layer, said layer comprising particles of one or more materials
or particulate forms, said layer including a layer surface, and the
particles being particulates having a minimum dimension of at
least 0. 5 nm and a maximum dimension of 1000 microns or less
and comprising carbon particulates,
( c) said layer being a component of an mechanical actuator
system that is configured to electrochemically generate bubbles
within the particle-containing region when a voltage is applied,
said system further comprising an electrolyte in said particle-
containing region, a pair of electrodes and a separator, and
( d) a porous diamond-like coating layer on the surface of
said particle containing region.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Tran us 4,842,598 June 27, 1989
l.lT~t...~- '"7'J'J TTC' l')f\f\A /f\1 'J0"7'J'J A 1 T,, 1., 1 4:. I') 1\1\ A vv c;uca I ..J ..J U~ LVV'"t/Vl..JO/..J..J J-\.1 .J UlJ l .J, LVV'"t
Weber '160 US 7,493,160 B2 Feb. 17,2009
Weber '373 US 8,137,373 B2 Mar. 20, 2012
Chen US 8,293,262 B2 Oct. 23, 2012
Weber '143 US 8,343,143 B2 Jan. 1, 2013
Woo WO 01/43790 A2 June 21, 2001
Schittenhelm et al., Synthesis and characterization of single-wall
carbon nanotube-amorphous diamond thin-film composites, American
Institute of Physics, Applied Physics Letters, vol. 81, no. 11, pp. 2097-2099
(2002) (hereinafter "Schittenhelm").
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Appeal2014-004468
Application 11/266,862
REJECTIONS 1, 2
Claims 1, 3-5, 8-15, 18-21, 23-26 and 30-34 are rejected under 35
U.S.C. § 103(a) as being unpatentable over Weber '733, Tran, Woo and
Schittenhelm. Final Act. 3 7, incorporating by reference Non-Final Act. 4 17-
25.
Claims 1, 3-5, 8-15, 18-21, 23-26 and 30-34 are provisionally
rejected on the ground of nonstatutory obviousness-type double patenting as
being unpatentable over claims 1-3, 5-11, 13-29, 36-43, and 45--47 of
copending Application No. 11/355,392 in view of Weber '733, Tran, and
Schittenhelm. Final Act. 10; Non-Final Act. 26-27.
Claims 1, 3-5, 8-15, 18-21, 23-26 and 30-34 are rejected on the
ground of nonstatutory obviousness-type double patenting as being
unpatentable over any one of:
1) claims 1-10 of Weber '160;
2) claims 1-14 of Weber '373;
3) claims 1-20 of Chen; or
4) claims 1-19 of Weber '143; and
Tran, Woo and Schittenhelm. Final Act. 11-12; Non-Final Act. 29-35.
OPINION
The "porous" nature of the diamond-like coating layer recited in sole
independent claim 1 is at issue in each rejection before us. The Examiner
takes shifting positions on this issue. In the initial rejection (Non-Final Act.
1 The Examiner withdrew the rejections under 35 U.S.C. § 112. Ans. 2.
2 As copending Application No. 11/891,588 stands abandoned, the
provisional rejection based thereon is moot.
3 Mailed Aug. 12, 2013.
4 Mailed Apr. 22, 2013.
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Appeal2014-004468
Application 11/266,862
18-24), which was incorporated by reference into the Final Rejection from
which this appeal was taken (Final Act. 7), the Examiner only mentions the
term "porous" in conjunction with quoting claim 1. Non-Final Act. 18. The
Examiner does not discuss this limitation in connection with the Examiner's
Graham analysis. Non-Final Act. 18-24.
In response to Appellant's arguments, the Examiner first addresses the
"porous" limitation by stating:
per instant claims 11 and 14, a diamond-like carbon coating with
a thickness of 50 to 100 nm should meet this limitation, and
SCHITTENHELM teaches a diamond-like carbon (DLC)
coating on a single walled carbon nanotube layer, wherein the
DLC coating is 50 nm thick (see abstract), therefore the[re]
would have been a porous diamond-like coating, especially in the
absence of evidence to the contrary.
Non-Final Act. 25. The Examiner repeats this analysis in the Final
Rejection and reasons that the burden should be shifted to Appellant to
prove the absence of porosity in Schittenhelm. Final Act. 8. The Examiner
repeats this position again in the Answer (pp. 9-11) and additionally cites
Appellant's own Specification (Ans. 10, citing Spec. p. 2, para. 5) as
evidence that diamond-like coatings of the thicknesses disclosed in
Schittenhelm are inherently porous.
1986):
As was stated in Ex parte Skinner, 2 USPQ2d 1788, 1789 (BP AI
We are mindful that there is a line of cases represented by In re
Swinehart, 439 F.2d 210, 169 USPQ 226 (CCPA 1971) which
indicates that where an examiner has reason to believe that a
functional limitation asserted to be critical for establishing
novelty in the claimed subject matter may, in fact, be an inherent
characteristic of the prior art, the examiner possesses the
authority to require an applicant to prove that the subject matter
shown to be in the prior art does not possess the characteristic
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Appeal2014-004468
Application 11/266,862
relied on. Nevertheless, before an applicant can be put to this
burdensome task, the examiner must provide some evidence or
scientific reasoning to establish the reasonableness of the
examiner's belief that the functional limitation is an inherent
characteristic of the prior art.
Latent characteristics are subject to this same burden-shifting framework.
See In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990).
Here, the Examiner has not cited any evidence or articulated any
sound basis for the belief that porosity is an inherent characteristic of
Schittenhelm's coating. As the Examiner acknowledges (Ans. 10),
Schittenhelm describes the coating as a "barrier to ambient gases and
liquids." App. Br. 20, quoting Schittenhelm Abst. The Examiner states that
"the SCHITTENHELM reference does not state that the coatings are non-
porous." Ans. 10. This is true only insofar as Schittenhelm does not use
that exact terminology. Schittenhelm's description of a "barrier to ambient
gases and liquids" is the very definition of what it means to be non-porous.
This fact, and this characteristic of the Schittenhelm coating, is not altered
by the absence of a particular term describing it.
We are also mindful of a line of cases represented by In re Thorpe,
777 F.2d 695, 697-99 (Fed. Cir. 1985), indicating that admissions in an
applicant's own specification indicating that the applicant's claims
distinguish from the prior art by merely reciting latent properties or
characteristics of an old product, may be used against an applicant to reject
those claims. See Reply Br. 8-12; see also Elan Pharm., Inc. v. Mayo
Found., 304 F.3d 1221, 1233 (Fed. Cir. 2002) (Dyk, J., dissenting)
(distinguishing inherency from hindsight), vacated, 314 F.3d 1299 (Fed. Cir.
2002) (en bane). Here, however, the Examiner is improperly attributing
coating thickness, per se, to porosity. We recognize that, particularly in
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Appeal2014-004468
Application 11/266,862
certain circumstances, coating thickness can influence porosity. However,
thickness is not necessarily determinative of porosity. The Examiner quotes
from, without express citation to, paragraph 51 of Appellant's Specification
in support of the Examiner's inherency finding. Ans. 10. Paragraph 51
attributes the resulting porosity not just to the thickness of the diamond-like
coating 336d itself, but also to the interaction between that coating and the
particle-containing substrate region 336.
Accordingly, for the reasons discussed above, we are not apprised of
any reasonable basis to shift the burden to Appellant to demonstrate the
absence of porosity in the Schittenhelm coating.
In the Final Rejection, the Examiner introduces an alternate position
in response to Appellant's arguments: due to the use of an electrolyte in
Weber '733, one skilled in the art would understand that a diamond-like
coating on the carbon particle containing region should be porous. Final
Act. 8-9. The Examiner appears to also rely on Tran to further support this
position. Ans. 9.
Weber '733 expressly describes a porous membrane 48 allowing for
proton and electron exchange between electrodes 30, 32 via the solution
comprising electrolyte 31. Weber '733, p. 5, para. 101. This occurs within
the interior of nano-particle containing nanopaper 32 relied on by the
Examiner. Non-Final Act. 20, citing Weber '733, p. 6, para. 103. There
does not appear to be any basis for providing porosity for electrolyte 31 at
the outer surface of nanopaper 32 as that surface is not between the
electrodes. The Examiner also does not make it apparent why a diamond-
like coating purported to be obvious because it "would have produced a
more durable balloon catheter" (Non-Final Act. 23) would have been applied
on an interior surface of the nanopaper, which might arguably require
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Appeal2014-004468
Application 11/266,862
porosity, or why there would have been a reasonable expectation of
maintaining porosity in doing so. As Appellant points out, it is difficult to
determine exactly what the Examiner relies on Tran for in rejecting the
claims on appeal. App. Br. 19, citing Final Act. 20-21.
Accordingly, the Examiner has not established the obviousness of the
claimed subject matter even under this alternative position regarding
porosity.
Our discussion above is dispositive as to the double-patenting
rejections as well. We additionally note that we also agree with Appellant's
argument that the double-patenting rejections are deficient for failing to
articulate any reasons for combining the teachings of the cited prior art with
the subject matter of the copending or issued claims that form the basis for
the double patenting rejections. App. Br. 25-26 (repeated in arguing each
rejection). See In re Langi, 759 F.2d 887, 892 n. 4 (Fed. Cir. 1985), citing In
re Braithwaite, 379 F.2d 594, 600, n. 4 (CCPA 1967) ("[T]he starting point
here is [the inventor's] patented [invention]"); ivIPEP § 804(I)(B)(2) ("Any
nonstatutory double patenting rejection made under the obviousness analysis
should make clear: ... (B) The reasons why a person of ordinary skill in the
art would conclude that the invention defined in the claim at issue would
have been an obvious variation of the invention defined in a claim in the
patent.") (emphasis added).
DECISION
The Examiner's rejections are reversed.
REVERSED
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