Ex Parte Weilbacher

Patent Trial and Appeal BoardMay 9, 2013

11517043 (P.T.A.B. May. 9, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/517,043 09/07/2006 Eugene E. Weilbacher 1502-193 (H-KN-00221) 1434 55825 7590 05/09/2013 Tyco Healthcare Group LP d/b/a Covidien 15 Hampshire Street Mansfield, MA 02048 EXAMINER SCHMIDT, EMILY LOUISE ART UNIT PAPER NUMBER 3767 MAIL DATE DELIVERY MODE 05/09/2013 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte EUGENE E. WEILBACHER ____________ Appeal 2011-001193 Application 11/517,043 Technology Center 3700 ____________ Before TONI R. SCHEINER, DONALD E. ADAMS, and SHERIDAN K. SNEDDEN, Administrative Patent Judges. ADAMS, Administrative Patent Judge. DECISION ON APPEAL1 This appeal under 35 U.S.C. § 134 involves claims 1-10 (App. Br. 2; Ans. 2). Examiner entered rejections under 35 U.S.C. § 103(a). We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 The Real Party in Interest is Covidien AG. Appeal 2011-00193 Application 11/517,043 2 STATEMENT OF THE CASE The claims are directed to a syringe assembly. Claim 1 is representative and is reproduced in the Claims Appendix of Appellants’ Brief. Claims 1, 4, 9, and 10 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Geiger2 and Reiling.3 Claims 2 and 3 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Geiger, Reiling, and Sudo.4 Claims 5-7 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Geiger, Reiling, and Hock.5 Claim 8 stands rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Geiger, Reiling, and Ramsahoye.6 ISSUE Does the preponderance of evidence relied upon by Examiner support a conclusion of obviousness? 2 Geiger, US 4,074,715, issued February 21, 1978. 3 Reiling, et al., US 3,287,288, issued November 22, 1966. 4 Sudo et al., US 5,009,646, issued April 23, 1991. 5 Hock et al., US 2002/0100998 A1, published August 1, 2002. 6 Ramsahoye, US 2006/0084925 A1, published April 20, 2006. Appeal 2011-00193 Application 11/517,043 3 FACTUAL FINDINGS (FF) FF 1. Geiger’s Figure 10 is reproduced below: “FIG. 10 is a cross-sectional in-part view of a syringe showing the plunger end … mounted therein” (Geiger, col. 1, ll. 67-68). FF 2. Examiner finds that Geiger suggests a syringe assembly comprising: (1) an annular syringe body 40, (2) a plunger 16 adapted to travel therein in response to manual force, wherein plunger 16 terminates in (3) an elastomeric seal 28 that is in sealing engagement with the interior surface of the syringe body 40, wherein the seal comprises (4) a lubricant capable of migrating through the elastomeric seal 28 to bloom on the surface of the elastomeric seal 28 to impart enhanced lubricity to the seal 28 thereby reducing the movement forces necessary to enable controlled plunger movement (Ans. 4; Cf. Appellant’s Claim 1). FF 3. Examiner finds that “Geiger does not teach the seal to comprise a fluropolymer matrix” (id.). FF 4. Examiner finds that Reiling suggests “adding powdered tetrafluroethlyene resin into styrene butadiene resins to provide the material with low frictional properties” (id.). Appeal 2011-00193 Application 11/517,043 4 FF 5. Examiner finds that the combination of Geiger and Reiling does not suggest “a plunger body being made from glass or a syringe body being made from glass or a polymeric resin” and relies on Sudo to make up for this deficiency in the combination of Geiger and Reiling (id. at 5-6). FF 6. Examiner finds that while the combination of Geiger and Reiling suggest an amide based lubricant, the combination fails to “specifically disclose waxes, esters, or oils” or the use of a lubricant in an amount “ranging from about 0.05-0.50 or 0.2-0.4 percent by weight” and relies on Hock to make up for this deficiency in the combination of Geiger and Reiling (id. at 6-7). FF 7. Examiner finds that the combination of Geiger and Reiling fails to suggest a seal containing “a colorant additive” and relies on Ramsahoye to make up for this deficiency in the combination of Geiger and Reiling (id. at 7). ANALYSIS Based on the combination of Geiger and Reiling, Examiner concludes that, at the time Appellant’s invention was made, it would have been prima facie obvious “to add tetrafluroethlyene resin to the styrene butadiene elastomer of Geiger because Reiling teaches such an additive to lower the friction of the material” (Ans. 4-5). Examiner reasons that Reiling is [R]easonably pertinent to Geiger as it applies to providing a low friction material. One of ordinary skill in the art would reasonably look to various teachings of material properties and not so narrowly as to only look to materials used with syringes Appeal 2011-00193 Application 11/517,043 5 and/or syringe plungers. The properties of the material of Reiling are not changed when used with Geiger. (id. at 7-8.) See In re Clay, 966 F.2d 656, 658-9 (Fed. Cir. 1992) (Prior art is analogous even if the reference is not within the field of the inventor’s endeavor, if it is reasonably pertinent to the particular problem with which the inventor is involved). Accordingly, we are not persuaded by Appellant’s contention that Geiger and Reiling are non-analogous art (App. Br. 7-8; Reply Br. 1-2). Appellant contends that Examiner’s reasoning that the properties of Reiling’s material is not supported by the Reiling or Geiger disclosures (Reply Br. 3-4). We are not persuaded. Appellant recognizes that Reiling suggests incorporating the resinous powder into various plastic materials and Examiner reasons that Reiling’s material will have no effect on Geiger’s material (id.; Ans. 7-8). Appellant fails to provide persuasive evidence or reasoning to support a contrary conclusion. For the reasons set forth above, Examiner’s rationale supports a conclusion that a person of ordinary skill in this art would have a reasonable expectation of successfully combining Reiling and Geiger. See In re O'Farrell, 853 F.2d 894, 903 (Fed. Cir. 1988). Accordingly, the evidentiary burden was properly shifted to Appellant. On this record, Appellant failed to carry that burden. We find no error in Examiner’s reasoning that a person of ordinary skill in this art would have found it advantageous at the time of Appellant’s claimed invention to use a lubricant in addition to “a low friction plunger material … to further help reduce the friction between a plunger and a syringe barrel” (Ans. 8). Accordingly, we are not persuaded by Appellant’s contention “that one skilled in the art would not be motivated to combine” Geiger and Reiling, which are “cumulative in nature” (App. Br. 8-9; Reply Appeal 2011-00193 Application 11/517,043 6 Br. 2-3). See In re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980) (“it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition which is to be used for the very same purpose.”). For the foregoing reasons, we are not persuaded by Appellant’s contention that Examiner’s rejection is based in hindsight (App. Br. 9; Reply Br. 4; Cf. Ans. 8). We recognize, but decline to address, Appellant’s new contention that “the proposed modification is simply not feasible” as presented in Appellant’s Reply Brief. See Ex parte Borden, http://www.uspto.gov/ip/ boards/bpai/decisions/inform/fd08004312.pdf (informative) (Appellant fails to “explain what ‘good cause’ there might be to consider the new argument. On this record, Appellant’s new argument is belated.”). Having found no deficiency in the combination of Geiger and Reiling, we are not persuaded by Appellant’s contention that Sudo, Hock, or Ramsahoye fail to make up for the deficiency in the combination of Geiger and Reiling (App. Br. 9-10; Reply Br. 5). CONCLUSION OF LAW The preponderance of evidence relied upon by Examiner supports a conclusion of obviousness. The rejection of claim 1 under 35 U.S.C. § 103(a) as unpatentable over the combination of Geiger and Reiling is affirmed. Claims 4, 9, and 10 are not separately argued and fall with claim 1. The rejection of claim 2 under 35 U.S.C. § 103(a) as unpatentable over the combination of Geiger, Reiling, and Sudo is affirmed. Claim 3 is not separately argued and falls with claim 2. Appeal 2011-00193 Application 11/517,043 7 The rejection of claim 5 under 35 U.S.C. § 103(a) as unpatentable over the combination of Geiger, Reiling, and Hock is affirmed. Claims 6 and 7 are not separately argued and fall with claim 5. The rejection of claim 8 under 35 U.S.C. § 103(a) as unpatentable over the combination of Geiger, Reiling, and Ramsahoye is affirmed. TIME PERIOD FOR RESPONSE 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 dm