SILCOTEK CORP.

Patent Trials and Appeals BoardAug 24, 2021

2020005280 (P.T.A.B. Aug. 24, 2021)

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. 14/680,669 04/07/2015 David A. SMITH 002938.00018 1057 174989 7590 08/24/2021 SilcoTek/ Saxton & Stump LLC 280 Granite Run Drive Suite 300 Lancaster, PA 17601 EXAMINER ORTMAN JR., KEVIN C ART UNIT PAPER NUMBER 1782 NOTIFICATION DATE DELIVERY MODE 08/24/2021 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): geoff.white@silcotek.com ip@silcotek.com patents@saxtonstump.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DAVID A. SMITH, MIN YUAN, JAMES B. MATTZELA, and PAUL H. SILVIS Appeal 2020-005280 Application 14/680,669 Technology Center 1700 BEFORE BEVERLY A. FRANKLIN, MICHAEL P. COLAIANNI, and RAE LYNN P. GUEST, Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as SilcoTek Corporation. Appeal Br. 1. Appeal 2020-005280 Application 14/680,669 2 CLAIMED SUBJECT MATTER Claim 1 is illustrative of Appellant’s subject matter on appeal and is set forth below: 1. A thermal chemical vapor coated article, comprising: a coating on the thermal chemical vapor coated article, the coating formed by thermal decomposition, oxidation then functionalization; wherein the thermal chemical vapor coated article is a medical device requiring resistance to protein adsorption; wherein the coating is resistant to the protein adsorption and is on a substrate heated during the thermal decomposition. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Rypacek US 2003/0219562 A1 Nov. 27, 2003 Smith WO 2012/047945 A2 Apr. 12, 2012 Matthew Ruiter, French, Gauge, OD/ID, mm, inches: what does it all mean? 1–16 (Aug. 26, 2011), available at https://www.alnmag.com/article/2011/08/French-gauge-odid-mm- inches-what-does-it-all-mean THE REJECTIONS2 2 On pages 2–4 of the Final Office Action, the Examiner presents certain objections to the Specification and to the claims. On pages 3–4 of the Appeal Brief, Appellant presents arguments to the objections. These issues are outside the Board’s jurisdiction and therefore not appealable. Manual of Patent Examining Procedure §1000. Appeal 2020-005280 Application 14/680,669 3 1. Claims 1–15, 17, 21, and 22 are rejected under 35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with the written description requirement. 2. Claims 1–15, 17, 21, and 22 are rejected under 35 U.S.C. § 112(b) or 35 U.S.C. § 112 (pre-AIA), second paragraph, as being indefinite. 3. Claims 1–7, 9, 10, 17, 21, and 22 are rejected under 35 U.S.C. § 102(a)(1) as anticipated by Smith. 4. Claim 8 is rejected under 35 U.S.C. § 103 as being unpatentable over Smith, as applied to claim 1, in view of Rypacek. 5. Claims 11–15 are rejected under 35 U.S.C. § 103 as being unpatentable over Smith, as applied to claim 1 above. 6. Claims 11–14 are rejected under 35 U.S.C. § 103 as being unpatentable over Smith in view Ruiter. OPINION We review the appealed rejections for error based upon the issues Appellant identifies, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections.”). After considering the argued claims and each of Appellant’s arguments, we are persuaded of reversible error for essentially the reasons stated by Appellant in the record, and we add the following for emphasis. Appeal 2020-005280 Application 14/680,669 4 Rejection 1 Regarding the claimed phrase in claim 1 of “wherein the coating is resistant to the protein adsorption and is on a substrate heated during the thermal decomposition,” the Examiner takes the position that it is unsupported by the Specification for the reasons stated on page 5 of the Final Office Action and on pages 3–4 of the Answer. Therein, it is the Examiner’s position that Appellant does not disclose in the Specification an active heating step, per se, of the coating while being on a substrate during the thermal decomposition. In taking the aforementioned position, it appears the Examiner believes that claim 1 requires an active step of heating the coating once on the substrate, and that there is no support for such a limitation in the Specification. This is not a reasonable interpretation if this claim phrase of claim 1, as it is an unreasonably narrow claim interpretation. As explained by Appellant (on page 5 of the Appeal Brief), the Specification, on page 5, lines 27–28, on page 6, lines 4–5, and in Figure 2, indicates that it is the substrate that is heated during thermal decomposition, and that this is what is meant by “substrate heated during thermal decomposition.” We add that a claim must be read in accordance with the precepts of English grammar. In re Hyatt, 708 F.2d 712, 715 (Fed. Cir. 1983). In the instant case, the claimed phrase of “substrate heated during the thermal decomposition” indicates that the word “heated” is an adjective for the word “substrate.” Thus, it is the substrate that is heated during the thermal decomposition as explained by Appellant. The Examiner’s misinterpretation of claim 1 in this regard has led to error in connection with the written description rejection. Appeal 2020-005280 Application 14/680,669 5 The proper claim interpretation is supported by the Specification as explained by Appellant in the record. Regarding claim 21, the Examiner does not find support for the limitation “the coating is amorphous” in the Specification. Ans. 4. The Examiner states that the Specification has support for “amorphous carbosilane,” but this one material would not provide support for all amorphous materials. However, we agree with Appellant that such a rejection is improper. Appeal Br. 5. As Appellant points out, page 10, line 12 of the Specification describes amorphous carboxysilanes, and amorphous arrays of Si-C bonds are described on page 9, lines 30–31 of the Specification. Id. Hence, the Specification has more general support for coatings that are amorphous. In view of the above, we reverse Rejection 1. Rejection 2 On page 4 of the Answer, the Examiner states that it is not clear as to what is meant by the recitation of “wherein the coating . . . is on a substrate heated during the thermal decomposition.” We refer to our discussion of the proper meaning of this claimed phrase of claim 1, mentioned supra, and for those reasons, we agree with Appellant that the rejection under 35 U.S.C. § 112, second paragraph, as being indefinite, is in error. We thus reverse Rejection 2. Appeal 2020-005280 Application 14/680,669 6 Rejections 3–6 We refer to pages 6–7 of the Answer regarding the Examiner’s stated position for Rejection 3. With specific regard to the claim requirement that claim 1 requires that the thermal vapor coated article is a medical device, the Examiner states that this limitation involves an intended use limitation. Ans. 13. The Examiner states that if the prior art structure is capable of performing the intended use, then it meets the claim. Id. However, we agree with Appellant that the claim requires that the chemical vapor coated article is a medical device requiring resistance to protein adsorption. Appeal Br. 5. We also agree with Appellant that Smith does not disclose a medical device. Rather Smith is directed to equipment and parts for use in the oil and gas industry (¶ 84), and the Examiner has not explained why tubing, fittings and cylinders suitable for use in the oil and gas industry would also be suitable for contacting proteins in a medical environment. We therefore are persuaded by Appellant’s argument that Smith does not anticipate claim 1 in this regard. We therefore reverse Rejection 3. We also reverse Rejections 4–6 for the same reasons. CONCLUSION We reverse the Examiner’s decision. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–15, 17, 21, 22 112(a) Written Description 1–15, 17, 21, 22 Appeal 2020-005280 Application 14/680,669 7 1–15, 17, 21, 22 112(b) Indefiniteness 1–15, 17, 21, 22 1–7, 9, 10, 17, 21, 22 102 Smith 1–7, 9, 10, 17, 21, 22 8 103 Smith, Rypacek 8 11–15 103 Smith 11–15 11–14 103 Ruiter 11–14 Overall Outcome 1–15, 17, 21, 22 REVERSED