Nestor Rodriguez San Juan et al.Download PDFPatent Trials and Appeals BoardJul 19, 201913120109 - (D) (P.T.A.B. Jul. 19, 2019) 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. 13/120,109 03/21/2011 Nestor Rodriguez San Juan 4684-111109 7106 32182 7590 07/19/2019 Becton, Dickinson and Company / The Webb Firm 420 Ft. Duquesne Blvd., Suite 1200 Pittsburgh, PA 15222 EXAMINER YU, YUECHUAN ART UNIT PAPER NUMBER 1718 NOTIFICATION DATE DELIVERY MODE 07/19/2019 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): ip.docket@bd.com patents@webblaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte NESTOR RODRIGUEZ SAN JUAN and SRINIVASAN SRIDHARAN ____________ Appeal 2018-007497 Application 13/120,109 Technology Center 1700 ____________ Before JEFFREY B. ROBERTSON, JAMES C. HOUSEL, and MICHAEL G. McMANUS, Administrative Patent Judges. McMANUS, Administrative Patent Judge. DECISION ON APPEAL The Examiner rejected claims 1, 3–5, 8, 10, 12–15, 20, 24, 62, 63, and 69–81 of Application 13/120,109 under 35 U.S.C. § 103(a). Non-Final Act. (April 19, 2017) 3–31. Appellants1 seek reversal of these rejections pursuant to 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6. For the reasons set forth below, we AFFIRM. 1 Becton, Dickinson and Company is identified as the real party in interest. Appeal Br. 3. Appeal 2018-007497 Application 13/120,109 2 BACKGROUND The present application generally relates to thermal chemical vapor deposition (CVD) to provide barrier and/or lubricant coating(s) on the interior surface of a container, such as a syringe, tube, or medical collection device. Spec. ¶ 2. Barrier coatings may prevent leaching of materials from the container surface into the container contents and/or from the container contents into the container surface, and may also prevent gas and/or water permeability in containers. Id. ¶ 16. Lubricant coatings may reduce frictional forces so that smooth transition of two surfaces from stationary contact to sliding contact can be achieved. Id. Figure 1 of the Application is reproduced below. The Specification indicates that Figure 1 is “a schematic diagram of a system and apparatus for coating the interior of a container using a chemical vapor deposition process according to the present invention.” Spec. ¶ 26. In Appeal 2018-007497 Application 13/120,109 3 Figure 1, the container is a syringe barrel 12. Id. ¶ 49. Monomer gas 34 is supplied to the interior of the container (syringe barrel) through gas inlet duct 36. Id. ¶ 57. The feed gas may be a monomer which can be pyrolyzed (heat treated) to form a film on the container surface. Id. ¶¶ 63, 75. Claim 1 is illustrative of the subject matter on appeal and is reproduced below: 1. A system, comprising: (a) a medical article defining a container, of which at least a portion of an interior wall surface of the container is to be coated, the container comprising an open end, a second end opposite the open end, and a wall extending therebetween, the wall having an exterior wall surface and an interior wall surface, the container having a chamber within an area defined by the interior wall surface between the open end and the second end of the container, wherein the chamber of the container is sealed from an exterior of the container; (b) a monomer gas supply source for supplying at least one monomer gas; (c) a gas inlet duct positioned at the open end of the container and having a portion extending into a portion of the chamber for supplying at least one monomer gas received from the monomer gas supply source into the chamber; (d) a heated pyrolyzing surface disposed at least partially within the chamber for pyrolyzing, by the heat of the heated pyrolyzing surface, at least a portion of the monomer gas supplied to the chamber of the container to form a reactive gas comprising at least one reactive moiety from the monomer gas; (e) a temperature controller proximate to the exterior wall surface of the container to promote cooling of the exterior surface for maintaining the interior wall surface of the container at a temperature which is less than the temperature of the pyrolyzing surface to facilitate deposition and polymerization of the reactive moiety on at least a portion of the interior wall surface of the container; and Appeal 2018-007497 Application 13/120,109 4 (f) an outlet duct positioned at the open end of the container or the second end of the container for removing excess reactive gas from the chamber; wherein, with the pyrolyzing surface disposed at least partially within the chamber, the chamber of the container defines a reaction chamber during pyrolyzation; and wherein the exterior wall surface of the container is exposed to atmospheric pressure. Appeal Br. 25–26 (Claims App.). REJECTIONS The Examiner maintains the following rejections: 1. Claims 1, 3–5, 8, 15, 20, 24, 62, 63, 69–75, 77, 78, 80, and 81 are rejected under 35 U.S.C. § 103(a) (pre-AIA) as obvious over Bicker et al.2 in view of Sukai et al.3 and Mishima et al.4 Non- Final Act. 3–16. 2. Claims 10 is rejected under 35 U.S.C. § 103(a) (pre-AIA) as obvious over Bicker in view of Sukai, Mishima, and Gleason et al.5 Id. at 17. 2 DE 10 2005 040 266 A1, published March 1, 2007 (citation to U.S. counterpart US 2009/0155490 Al, published June 8, 2009 (collectively “Bicker”). 3 JP 2006-335379, published Dec. 14, 2006 (“Sukai”). 4 WO 2006/126677 Al, published Nov. 30, 2006 (citation to U.S. counterpart US 2009/0061111 Al, published Mar. 5, 2009) (collectively “Mishima”). 5 US 2003/0138645 Al, published July 24, 2003 (“Gleason”). Appeal 2018-007497 Application 13/120,109 5 3. Claim 12 and 13 are rejected under 35 U.S.C. § 103(a) (pre-AIA) as obvious over Bicker in view of Sukai, Mishima, and Mikami et al.6 Id. at 17–18. 4. Claim 14 is rejected under 35 U.S.C. § 103(a) (pre-AIA) as obvious over Bicker in view of Sukai, Mishima, Mikami, and Wheat et al.7 Id. at 18–19. 5. Claim 76 is rejected under 35 U.S.C. § 103(a) (pre-AIA) as obvious over Bicker in view of Sukai, Mishima, and Haines et al.8 Id. at 19–20. 6. Claims 1, 3–5, 8, 12–15, 20, 24, 62, 63, 69–77, and 79 are rejected under 35 U.S.C. § 103(a) (pre-AIA) as obvious over Mishima. Id. at 20–30. 7. Claim 10 is rejected under 35 U.S.C. § 103(a) (pre-AIA) as obvious over Mishima in view of Gleason. Id. at 31. DISCUSSION Rejection 1. The Examiner rejects claims 1, 3–5, 8, 15, 20, 24, 62, 63, 69–75, 77, 78, 80, and 81 as obvious over Bicker in view of Sukai and Mishima. Id. at 3–16. In support of the rejection, the Examiner finds that Bicker teaches syringe body 10 having an interior surface which is to be coated. Id. at 3. The Examiner further finds that the interior of the syringe is sealed to maintain a vacuum during the coating process. Id. at 4. The Examiner additionally finds that Bicker “teaches in [0075] the container may 6 JP 2005-200044, published July 28, 2005 (“Mikami”). 7 US 2003/0116278 Al, published June 26, 2003 (“Wheat”). 8 US 2007 /0187280 Al, published Aug. 16, 2007 (“Haines”). Appeal 2018-007497 Application 13/120,109 6 be cooled by air flow at atmospheric pressure over the external surface of the container and also during processing [0119, 0123, 0128, 0135, 0145-0203].” Answer 32. The Examiner finds that Sukai and Mishima teach the use of a heated surface for pyrolyzing a monomer gas to form a reactive gas. Final Act. 5. Appellants argue that none of the cited references teach a system having a container where “the chamber of the container is sealed from an exterior of the container” and where “the chamber of the container defines a reaction chamber during pyrolyzation; and wherein the exterior wall surface of the container is exposed to atmospheric pressure” as required by claim 1. Appeal Br. 13–21. Appellants similarly argue that none of the cited references teach a system having a container where “the chamber of the container is sealed from an exterior of the container” and where “the chamber defines the evacuated chamber in which pyrolysis occurs, and the exterior wall surface of the container is exposed to atmospheric pressure” as required by claim 81. Id.; Reply Br. 3. Appellants initially argue that neither Sukai nor Mishima teaches the features of these claim elements. Id. at 15–18. Such argument is not directly responsive to Rejection 1 as the Examiner relies on Bicker as teaching the limitations in question for this rejection. See Final Act. 3–16; Answer 31–32. Appellants additionally argue that Bicker does not teach the limitations at issue. Appeal Br. 18–20. Appeal 2018-007497 Application 13/120,109 7 Figure 1 of Bicker is reproduced below. Figure 1 shows “a syringe body 10 arranged in the reactor chamber 2 of the reactor 1.” Bicker ¶ 89. Bicker teaches that “the cavity of the syringe body 10 is evacuated through an opening at a first end–here accordingly the plunger opening 12–and the process gas is introduced through a further opening, i.e. the opening 16 in the Luer cone 15.” Appellants rely on Bicker’s teaching of a reactor chamber 2 external to the wall of the syringe being coated. Appeal Br. 19. Appellants argue Appeal 2018-007497 Application 13/120,109 8 that, in view of such reaction chamber, Bicker does not teach that “the chamber of the container defines a reaction chamber during pyrolyzation; and wherein the exterior wall surface of the container is exposed to atmospheric pressure,” as recited in claim 1, or “the chamber defines the evacuated chamber in which pyrolysis occurs, and the exterior wall surface of the container is exposed to atmospheric pressure” of claim 81. Id. at 19– 20; Reply Br. 3. We do not find such argument to be persuasive. The Examiner reads the “reaction chamber” (claim 1) / “evacuated chamber” (claim 81) on the interior of the syringe body of Bicker. Answer 32, 34. Appellants apparently contend that the Examiner’s determination is in error because the pyrolysis reaction occurs throughout the full area of reactor chamber 2. Appeal Br. 19–20. This is not supported by the reference. Bicker teaches the interior of the workpiece (such as a syringe) is a “treatment zone” which is evacuated and then supplied with a process gas for plasma treatment as follows: the invention provides a method for the plasma treatment of workpieces, particularly workpieces in the form of hollow bodies, in which a treatment zone in a reactor chamber is at least partially evacuated, a process gas is introduced into the treatment zone, for instance the cavity of the workpiece, and a plasma is ignited by means of injected electromagnetic energy in the process gas introduced into the treatment zone, wherein the process gas flows through the treatment zone between opposite ends of the zone during the plasma treatment. Bicker ¶ 9 (emphasis added). Bicker further teaches that, in an embodiment, “[t]he plasma treatment may be carried out exclusively on the inside . . . of the workpiece of the hollow body.” Id. ¶ 12. Bicker additionally teaches that “[i]f internal coating is carried out, for example, the workpiece may be Appeal 2018-007497 Application 13/120,109 9 cooled externally by a gas flow–in the simplest case a flow of air at atmospheric pressure.” Id. ¶ 75. The Examiner further cites to Bicker’s Example 1a where “[t]he interior of the syringe is subsequently evacuated until a base pressure < 0.05 mbar is reached. The exterior remains at atmospheric pressure throughout the treatment process.” Id. ¶ 123 (emphasis added). Bicker additionally teaches that “the syringe body 10 is both fixed and sealed off from the surrounding regions of the reactor chamber 2.” Id. ¶ 91. The Examiner finds that the interior of the syringe of Bicker is the “reaction chamber” of claim 1 and the “evacuated chamber” of claim 81. Answer 32, 34. The Examiner further finds that the exterior wall of the barrel of the syringe of Bicker is exposed to atmospheric pressure during pyrolyzation. These findings are well-supported by Bicker. Accordingly, Appellants have not shown error on this basis. To the extent that Appellants argue that the “reaction chamber” limitation of claim 1 should be read on the “reactor chamber 2” of Bicker merely because of the similarity of the terminology, we do not find such argument to be persuasive, given the structural and functional similarity between Bicker’s syringe barrel and the claimed reaction chamber. Appellants additionally argue that “there is no motivation for a skilled artisan to combine these references.” Appeal Br. 22. In support of such theory, Appellants reiterate their arguments regarding the references’ failure to teach that “the chamber of the container defines a reaction chamber during pyrolyzation; and wherein the exterior wall surface of the container is exposed to atmospheric pressure,” as recited in independent claim 1, and that “the chamber defines the evacuated chamber in which pyrolysis occurs, and the exterior wall surface of the container is exposed to atmospheric Appeal 2018-007497 Application 13/120,109 10 pressure,” as recited in independent claim 81. Id. We find these arguments unpersuasive for the reasons set forth above. In addition, they do not bear directly on whether a person of ordinary skill in the art would have had reason to combine the teachings of the references at issue. Rather, such arguments concern the scope of the prior art. Accordingly, Appellants have not shown error in this regard. Appellants rely on the same arguments in support of their appeal of dependent claims 3–5, 8, 15, 20, 24, 62, 63, and 69–75, 77, 78, and 80. Id. at 22–23. We find these arguments unpersuasive for the reasons set forth above. In view of the foregoing, Appellants have not shown error in the Examiner’s rejection of claims 1, 3–5, 8, 15, 20, 24, 62, 63, 69–75, 77, 78, 80, and 81 as obvious over Bicker in view of Sukai and Mishima. Rejections 2–5. The Examiner rejects claims 10, 12, 13, 14, and 76 over Bicker, Sukai, and Mishima and certain additional references. Non- Final Act. 17–20. Appellants rely on the same arguments described above in support of their appeal of these claims. Appeal Br. 22–23. We find these arguments unpersuasive for the reasons set forth above. Rejections 6 and 7. The Examiner rejects claims 1, 3–5, 8, 12–15, 20, 24, 62, 63, 69–77, and 799 over Mishima and claim 10 over Mishima in view of Gleason. Id. at 20–31. 9 All pending claims other than claim 79 stand rejected over Bicker in view of Sukai and Mishima in combination with certain other references. Appeal 2018-007497 Application 13/120,109 11 In support of these rejections, the Examiner finds that vacuum chamber 6 of Mishima teaches the “container” of claim 1. Non-Final Act. 20 (“the ‘container’ is interpreted as Mishima’s ‘vacuum chamber’ 6”); Answer 33 (“Mishima’s vacuum chamber 6 is the processing chamber in which all the processing/reactions occur, therefore serving as a reaction chamber”). The Examiner further finds that “the exterior wall surface of the container is exposed to atmospheric pressure (it would be obvious outside wall surface of 6 is exposed to atmosphere/world, as can be seen in the drawings . . .).” Non-Final Act. 23. Figure 1(a) of Mishima is reproduced below. Figure 1(a) is a schematic drawing showing an “apparatus 100 for manufacturing a gas barrier plastic container shown in FIG. l has a vacuum Appeal 2018-007497 Application 13/120,109 12 chamber 6 for housing a plastic container 11, an exhaust pump (not shown in the drawings) which evacuates the vacuum chamber 6.” Mishima ¶ 92. Appellants argue that the Examiner does not accord proper weight to the claim 1 limitation requiring “the chamber of the container defines a reaction chamber during pyrolyzation.” Appeal Br. 17, 21. In the Answer, the Examiner finds that “Mishima’s vacuum chamber 6 is the processing chamber in which all the processing/reactions occur, therefore serving as a reaction chamber.” Answer 33; see also Non-Final Act. 23. Accordingly, the Examiner has accorded appropriate weight by making a finding regarding this claim limitation. Appellants additionally argue that the Examiner’s findings regarding Mishima are ambiguous as to what structure teaches the reaction chamber limitation. Appeal Br. 17–18. This is not persuasive. As above, the Examiner makes a clear finding in this regard. Appellants further argue that claim 1 recites a “container having a chamber within an area defined by the interior wall surface between the open end and the second end of the container” but that Mishima does not teach the chamber of a container as claimed. Id. at 18. Appellants do not adequately support their argument. The Examiner finds that “Mishima’s vacuum chamber 6 is the processing chamber in which all the processing/reactions occur, therefore serving as a reaction chamber.” Answer 33; see also Non-Final Act. 20 (“the ‘container’ is interpreted as Mishima’s ‘vacuum chamber’ 6”). Appellants do not clearly articulate a theory as to why this finding is in error. Accordingly, Appellants have not shown error in this regard. See 37 C.F.R. 41.37(c)(1)(iv) (“the brief shall contain . . . . The arguments of appellant with respect to each ground of Appeal 2018-007497 Application 13/120,109 13 rejection, and the basis therefor . . . . The arguments shall explain why the examiner erred as to each ground of rejection contested by appellant.”). CONCLUSION The rejections of claims 1, 3–5, 8, 10, 12–15, 20, 24, 62, 63, and 69– 81 are 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 Copy with citationCopy as parenthetical citation