Greg M. Schorn

Patent Trials and Appeals BoardAug 28, 2019

13597775 - (D) (P.T.A.B. Aug. 28, 2019)

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. 13/597,775 08/29/2012 Greg M. Schorn COD5136USCNT1 2499 27777 7590 08/28/2019 JOSEPH F. SHIRTZ JOHNSON & JOHNSON ONE JOHNSON & JOHNSON PLAZA NEW BRUNSWICK, NJ 08933-7003 EXAMINER JOHNSON, CHRISTINA ANN ART UNIT PAPER NUMBER 1742 NOTIFICATION DATE DELIVERY MODE 08/28/2019 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): jnjuspatent@corus.jnj.com lhowd@its.jnj.com pair_jnj@firsttofile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE _________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte GREG M. SCHORN __________ Appeal 2018-006558 Application 13/597,7751 Technology Center 1700 ___________ Before ADRIENE LEPIANE HANLON, BEVERLY A. FRANKLIN, and CHRISTOPHER C. KENNEDY, Administrative Patent Judges. HANLON, Administrative Patent Judge. DECISION ON APPEAL A. STATEMENT OF THE CASE This is a decision on appeal under 35 U.S.C. § 134(a) from an Examiner’s decision rejecting claims 1 and 2 under 35 U.S.C. § 103(a) as unpatentable over the combination of Williamson2 and Shetty et al.3 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 The real party in interest is said to be DePuy Synthes Products, Inc. Appeal Brief dated June 5, 2017 (“Br.”), at 1. 2 US 3,419,010 issued December 31, 1968 (“Williamson”). 3 US 5,057,108 issued October 15, 1991 (“Shetty”). Appeal 2018-006558 Application 13/597,775 2 The claims on appeal are directed to a method of treating a disposable stylet using a glass shot peening process to facilitate removal of the stylet from a catheter. Claim 1 is reproduced below from the Claims Appendix to the Appeal Brief. The limitations at issue are italicized. 1. A method of treating a disposable stylet so that it can be easily removed from a catheter, wherein the catheter is made of an elastomeric material, and the disposable stylet is made of a rigid material, the disposable stylet having an elongate stylet body having a proximal end, a distal end and an outer surface, said disposable stylet being substantially cylindrical at least for a majority of its length, the method comprising the steps of: subjecting the stylet body of the disposable stylet to a glass shot peening process for at least 10 minutes with a glass shot size of about 100µm and with an intensity range between 30-60 psi. Br. 6. B. DISCUSSION The Examiner finds Williamson discloses a stainless steel stylet having a roughened surface which facilitates its removal from a catheter. Ans. 3.4 The Examiner finds Williamson discloses that roughing can be done by conventional abrading means but does not specifically teach that the surface is roughened using a glass shot peening process as recited in claim 1. Ans. 4. The Examiner finds Shetty uses glass beads to treat the surface of a stainless steel implant to enhance the fatigue properties of the implant. Ans. 4. The Examiner concludes that it would have been obvious to one of ordinary skill in the art to roughen the surface 4 Examiner’s Answer dated August 7, 2017. Appeal 2018-006558 Application 13/597,775 3 of Williamson’s stylet using glass beads as disclosed in Shetty to improve the fatigue properties of the stylet.5 Ans. 4–5. The Appellant argues that Shetty does not teach or suggest subjecting a stylet body to a glass shot peening process for at least 10 minutes with a glass shot size of about 100µm and with an intensity range between 30-60 psi as recited in claim 1. Br. 4. The Appellant’s argument is not persuasive of reversible error. The Examiner finds Shetty uses glass beads having a size of 0.0029 inch (74 microns) and an air pressure of 40 psi. Ans. 4. The Examiner finds the air pressure disclosed in Shetty is within the range recited in claim 1. Ans. 4. As for the size of the glass beads, the Examiner finds, and the Appellant does not dispute, that “[t]he size is not quite about 100 microns [as claimed], but is close, and ‘about 100 microns’ is not defined in the specification.” Ans. 5; see also Pall Corp. v. Micron Separations, Inc., 66 F.3d 1211, 1217 (Fed. Cir. 1995) (“The use of the word ‘about,’ avoids a strict numerical boundary to the specified parameter. Its range must be interpreted in its technologic and stylistic context.”); In re Ayers, 154 F.2d 182, 185 (CCPA 1946) (Court found that at least about 10% is anticipated by about 8% because, inter alia, the term “about” as used in the claim permits “some tolerance”). Shetty also discloses that the nominal size of the glass beads is preferably one-tenth to one-half that of stainless steel shot used in Shetty’s method. Shetty, col. 2, ll. 60–61. Shetty discloses that the approximate uniform nominal size of the stainless steel shot may be any one of 0.0070, 0.0110, 0.0170, and 0.0280 inch. 5 See In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996) (“the motivation in the prior art to combine the references does not have to be identical to that of the applicant to establish obviousness”). Appeal 2018-006558 Application 13/597,775 4 Shetty, col. 4, ll. 9–14. Thus, we find that the range of nominal glass bead sizes taught in Shetty encompasses a glass bead size of “about 100µm” as recited in claim 1. The Examiner finds Shetty is silent with respect to the claimed shot peening treatment time. Ans. 5. The Examiner, however, finds Shetty teaches that treatment time is dependent upon several variables including the material being processed, the type and size of shot, and the velocity, flow rate, and angle of impact. Ans. 5 (citing Shetty, col. 5, ll. 44–49). Therefore, the Examiner finds that treatment time is a result-effective variable in Shetty’s method. Ans. 5; see also In re Boesch, 617 F.2d 272, 276 (CCPA 1980) (“discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art”). The Appellant argues: If one were to discover an optimal variable by modifying Shetty, one would have to increase the time of glass shot peening by a factor of 5.[6] But in so doing it seems logical that the intensity range would need to be reduced significantly from 40psi, thus likely falling outside of the claimed range. Br. 4. The Appellant, however, does not direct us to any evidence to support that argument. See In re Schulze, 346 F.2d 600, 602 (CCPA 1965) (“Argument in the brief does not take the place of evidence in the record.”). Finally, the Appellant argues that “each of the identified features [i.e., pressure, glass shot size, and treatment time] is not a matter of routine optimization because these features have been discovered by the Appellant to allow the stylet to 6 In one exemplary shot blasting set-up, Shetty discloses that fatigue strength increased over an elapsed time of approximately two minutes. Shetty, col. 5, ll. 49–53. We understand the Appellant to be referring to that example. Appeal 2018-006558 Application 13/597,775 5 be removed from a silicone catheter with significantly lower removal force.” Br. 4 (emphasis added). The Appellant’s argument is not persuasive of reversible error. First, the Appellant does not direct us to any evidence establishing that the removal force achieved by the claimed invention is “significantly lower” than the removal force in prior art devices.7 Second, the Appellant does not direct us to any evidence establishing that the removal force achieved by the claimed invention would have been unexpected by one of ordinary skill in the art. See In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973) (for a showing of “unexpected results” to be probative evidence of non-obviousness, the applicant must establish that the difference between the results obtained through the claimed invention and those of the prior art would not have been expected by one skilled in the art at the time of invention). Based on the foregoing, a preponderance of the evidence of record weighs in favor of the Examiner’s conclusion of obviousness. Therefore, the obviousness rejection of claims 1 and 2 is sustained.8 C. DECISION The decision of the Examiner 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). AFFIRMED 7 Notably, neither the Appellant’s Specification nor the claims on appeal identify a specific removal force. 8 The Appellant does not present arguments in support of the separate patentability of claim 2.