Covidien LP

Patent Trials and Appeals Board

Jun 17, 2020

14582257 - (D) (P.T.A.B. Jun. 17, 2020)

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.
14/582,257 12/24/2014 RICHARD STEVENSON 355696 (203-10423) 8486
50855 7590 06/17/2020
Covidien LP
60 Middletown Avenue
Mailstop 54, Legal Dept.
North Haven, CT 06473
EXAMINER
AHMED ALI, MOHAMED K
ART UNIT PAPER NUMBER
1743
NOTIFICATION DATE DELIVERY MODE
06/17/2020 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):
docket@carterdeluca.com
rs.patents.two@medtronic.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RICHARD STEVENSON and SETH GLEIMAN
____________

Appeal 2019-005044
Application 14/582,257
Technology Center 1700
____________

Before: LINDA M. GAUDETTE, MONTÉ T. SQUIRE, and
JANE E. INGLESE, Administrative Patent Judges.

INGLESE, Administrative Patent Judge.

DECISION ON APPEAL
Appellant requests our review under 35 U.S.C. § 134(a) of the
Examiner’s decision to finally reject claims 13–32.1, 2 We have jurisdiction
over this appeal under 35 U.S.C. § 6(b).
We REVERSE.
CLAIMED SUBJECT MATTER
Appellant claims a method of making a nonwoven fiber mat
(independent claim 13), and a method of making a nonwoven fabric surgical

1 We use the word “Appellant” to refer to the “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Covidien LP as the real party in interest.
Appeal Brief, filed April 17, 2019 (“Appeal Br.”). Appeal Br. 1.
2 Final Office Action, dated December 11, 2018 (“Final Act.”).
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implant (independent claim 26). Appeal Br. 4–6. Independent claims 13
and 26 illustrate the subject matter on appeal, and read as follows:
13. A method of making a nonwoven fiber mat, comprising:
providing a material, an extruder and a bimodal
spinneret, wherein the spinneret defines first holes each having
a first diameter and second holes each having a second
diameter different than the first diameter, the first and second
holes disposed along a longitudinal axis of the spinneret, at a
nadir of a cavity of the spinneret, in a pattern of alternating
first and second diameters wherein each of the first holes is
disposed axially adjacent to one of the second holes;
coupling the spinneret to the extruder;
feeding the material into the extruder;
melting the material in the extruder;
passing the melted material into the spinneret;
extruding an equal number of first and second fibers
through the respective first and second holes of the spinneret in
the pattern of alternating first and second diameters; and
collecting the first and second fibers onto a conveyer
surface to form a nonwoven fiber mat.

26. A method of making a nonwoven fabric surgical implant,
the method comprising:
passing melted bioabsorbable material into a spinneret
defining first holes each having a first diameter and second
holes each having a second diameter different from the first
diameter, the first and second holes disposed along a
longitudinal axis of the spinneret, at a nadir of a cavity of the
spinneret, in a pattern of alternating first and second diameters
wherein each of the first holes is disposed axially adjacent to
one of the second holes;
extruding an equal number of first and second fibers
through the respective first and second holes of the spinneret in
the pattern of alternating first and second diameters;
depositing the first and second fibers on a conveyor
surface; and
cooling the first and second fibers on the conveyor
surface to form a nonwoven fabric surgical implant.
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Appeal Br. 14, 16 (Claims Appendix) (emphasis added).
REJECTIONS
The Examiner maintains the following rejections in the Examiner’s
Answer dated May 14, 2019 (“Ans.”):
I. Claim 13 under 35 U.S.C. § 103 as unpatentable over Gibbon;3
II. Claims 13, 16–22, 25, and 32 under 35 U.S.C. § 103 as
unpatentable over Brandner,4 in view of Hartge;5
III. Claims 14 and 15 under 35 U.S.C. § 103 as unpatentable over
Brandner in view of Hartge and Hayes;6
IV. Claims 23 and 24 under 35 U.S.C. § 103 as unpatentable over
Brandner in view of Hartge and McKean;7 and
V. Claims 26–31 under 35 U.S.C. § 103 as unpatentable over
Brandner in view of McKean and Hartge.
FACTUAL FINDINGS AND ANALYSIS
Upon consideration of the evidence relied upon in this appeal and
each of Appellant’s contentions, we reverse the Examiner’s rejections of
claims 13–32 under 35 U.S.C. § 103 for reasons set forth in the Appeal and
Reply Briefs, and below.

3 Gibbon et al., US 5,266,255, issued November 30, 1993, (hereinafter
“Gibbon”).
4 Brandner et al., US 2008/00126659 A1, published January 31, 2008
(hereinafter “Brandner”).
5 Hartge, US 2007/0057414 A1, published March 15, 2007.
6 Hayes, US 2001/0000189 A1, published April 5, 2001.
7 McKean et al., US 5,542,594, issued August 6, 1996, (hereinafter
“McKean”).
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Rejection I
We first address the Examiner’s rejection of claim 13 under 35 U.S.C.
§ 103 as unpatentable over Gibbon.
The Examiner finds that Gibbon discloses a method of making a
nonwoven fiber mat that comprises providing bimodal spinneret 14 defining
first holes 30 each having a first diameter and second holes 31 each having a
second diameter different than the first diameter. Final Act. 3 (citing
Gibbon col. 4, ll. 27–30; Fig. 1). The Examiner finds that Gibbon discloses
that first 30 and second 31 holes are disposed along a longitudinal axis of
spinneret 14 in a pattern of alternating first and second diameters such that
each of first holes 30 is disposed axially adjacent to one of second holes 31.
Final Act. 3 (citing Gibbon col. 4, ll. 1–5; col. 5, ll. 34–39; Fig. 2).
On the record before us, however, the Examiner does not provide a
sufficient factual basis to establish that the relied-upon disclosures of
Gibbon teach or would have suggested a method of making a nonwoven
fiber mat that involves providing a spinneret having the features recited in
claim 13, for reasons expressed by Appellant and discussed below.
We point out initially that claim 13 recites providing a spinneret
defining first holes each having a first diameter and second holes each
having a second diameter different than the first diameter. Claim 13
explicitly recites that “the first and second holes [are] disposed along a
longitudinal axis of the spinneret. . . in a pattern of alternating first and
second diameters wherein each of the first holes is disposed axially adjacent
to one of the second holes.” And claim 13 further recites “extruding an equal
number of first and second fibers through the respective first and second
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holes of the spinneret in the pattern of alternating first and second
diameters.”
We interpret these elements of claim 13 in view of the description
provided in Appellant’s Specification. In re Smith Int’l, Inc., 871 F.3d 1375,
1382 (Fed. Cir. 2017) (“‘[T]he protocol of giving claims their broadest
reasonable interpretation . . . does not include giving claims a legally
incorrect interpretation’ ‘divorced from the specification and the record
evidence.’”) (internal citation omitted); In re ICON Health and Fitness, Inc.,
496 F.3d 1374, 1379 (Fed. Cir. 2007) (During prosecution of patent
applications, “the PTO must give claims their broadest reasonable
construction consistent with the specification. . . . Therefore, we look to the
specification to see if it provides a definition for claim terms, but otherwise
apply a broad interpretation.”).
The Specification describes Appellant’s spinneret as “including a
body defining a longitudinal axis, wherein the body includes a first side
surface and a second side surface, and a top surface and a bottom surface;
and at least two holes disposed along the longitudinal axis of the spinneret,
each of the at least two holes having a hole diameter.” Spec. ¶ 6; see also
claim 1 (“A bimodal spinneret, comprising: a body defining a longitudinal
axis”). The Specification describes exemplary bimodal spinneret 100
including body portion 101 that defines longitudinal axis 102 extending
from proximal end 103 to distal end 104 of body portion 101. Spec. ¶ 34;
Fig. 2. The Specification indicates that body portion 101 further defines
cavity 107 having nadir 109 formed along longitudinal axis 102 of body
portion 101. Id. The Specification indicates that through holes 120 having
diameter D1 and through holes 130 having diameter D2 are disposed along
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longitudinal axis 102 an alternating pattern, such that through holes 120
having first diameter “D1” alternate one after the next with through holes
130 having second diameter “D2.” Spec. ¶¶ 32–34; Figs. 2 and 3.
The Specification thus consistently indicates that Appellant’s
spinneret includes a single longitudinal axis. In view of this description in
Appellant’s Specification, we interpret “first and second holes disposed
along a longitudinal axis of the spinneret” as recited in claim 13 as first and
second holes disposed along the same longitudinal axis—or along a single
longitudinal axis.
We further interpret claim 13—consistent with the above disclosures
in Appellant’s Specification—to require the spinneret to define holes of a
first diameter that alternate one after the other with holes of a second
diameter along a single longitudinal axis of the spinneret, such that every
other hole has a first diameter and each of the intervening holes has a second
diameter, because such an arrangement is necessary in order for equal
numbers of first and second fibers to be extruded through the respective first
and second holes of the spinneret in a pattern of alternating first and second
diameters, as explicitly recited in claim 13.
Gibbon discloses spinneret 14 including nine rows 20, 21, 22 . . . 28
of orifices. Gibbon col. 5, ll. 34–35; Fig. 2. Gibbon discloses that the
diameter of orifices 30 in first row 20 are larger than the diameter of orifices
31 in second row 21, and the diameter of orifices 32, 33, 34, . . 38 in each
successive row 22, 23, 24, . . . 28 decrease successively so that the diameter
of orifices 38 in last row 28 are the smallest. Gibbon col. 5, ll. 37–43;
Fig. 2.
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As discussed above, the Examiner finds that Gibbon’s first 30 and
second 31 holes are disposed along a longitudinal axis of spinneret 14 in a
pattern of alternating first and second diameters such that each of first holes
30 is disposed axially adjacent to one of second holes 31. Final Act. 3
(citing Gibbon col. 4, ll. 1–5; col. 5, ll. 34–39; Fig. 2). Appellant argues that
Gibbon discloses orifices 30 of the same diameter disposed in first
longitudinal row 20, and orifices 31 of a smaller diameter disposed in second
longitudinal row 21, which is adjacent to and axially offset from first
longitudinal row 20, rather than disclosing holes “disposed along a
longitudinal axis . . . in a pattern of alternating first and second diameters,”
wherein, the pattern includes, ‘each of the first holes . . . disposed axially
adjacent to one of the second holes,’ as recited in claim 13.” Appeal Br. 6.
The Examiner responds to Appellant’s arguments in the Answer by
stating that “Gibbon discloses each of the first holes (30) is disposed axially
adjacent to one of the second holes (31) ([see] [F]ig.2).” Ans. 12. Claim 13
as we have interpreted it, however, requires holes of a first diameter to
alternate one after the other with holes of a second diameter along a single
longitudinal axis of a spinneret. Gibbon discloses that first orifices 30 and
second orifices 31 are disposed along separate, axially offset rows, and
discloses six additional axially offset rows of orifices having successively
smaller diameters, rather than disclosing orifices of a first diameter that
alternate one after the other with orifices of a second diameter along a single
longitudinal axis. Gibbon col. 5, ll. 34–43; Fig. 2.
The Examiner also states in the Answer that:
Gibbon teaches that although spinnerets show in fig.2 is oval
shape, the spinneret can have various shape such as circular,
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annular or any shape (see column 9, lines 22-25), thus it would
have been obvious to one having ordinary skill in the art at the
time the invention was made would envision that the spinneret
can have square shape which has equal dimensional length
which will allow the first holes (30) is disposed axially adjacent
to one of the second holes (31) in order to have uniform flow
arrangement.

Ans. 12.
Even if one of ordinary skill in the art would have modified Gibbon’s
spinneret to have a square shape as the Examiner proposes, however, such a
spinneret would still include rows of orifices having successively smaller
diameters. The Examiner’s proposed modification of Gibbon, therefore,
would not result in orifices of a first diameter alternating one after the other
with orifices of a second diameter along a single longitudinal axis of
Gibbon’s spinneret.
The Examiner does not identify any disclosure in Gibbon that teaches
or would have suggested a spinneret having orifices of a first diameter that
alternate one after the other with holes of a second diameter along a single
longitudinal axis of the spinneret. Nor does the Examiner provide
persuasive technical reasoning that explains why one of ordinary skill in the
art would have modified Gibbon’s spinneret to include such orifices
arranged in this manner.
On the record before us, therefore, the Examiner does not provide a
sufficient factual basis to establish that Gibbon discloses or would have
suggested a method of making a nonwoven fiber mat that comprises
providing a bimodal spinneret defining first holes that each have a first
diameter and second holes that each have a second diameter different than
the first diameter, where the first and second holes are disposed along a
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longitudinal axis of the spinneret in a pattern of alternating first and second
diameters, such that each of the first holes is disposed axially adjacent to one
of the second holes, and extruding an equal number of first and second fibers
through the respective first and second holes of the spinneret in the pattern
of alternating first and second diameters, as required by claim 13.
We, accordingly, do not sustain the Examiner’s rejection of claim 13
under 35 U.S.C. § 103 as unpatentable over Gibbon.
Rejections II–V
We turn now to the Examiner’s rejections of claims 13–32 under 35
U.S.C. § 103 as unpatentable over Brandner in view of Hartge and additional
prior art references. We need address only independent claims 13 and 26.
Similar to claim 13, independent claim 26 recites a method
comprising, in part, passing material into a spinneret defining first holes
each having a first diameter and second holes each having a second diameter
different than the first diameter, where the first and second holes are
disposed along a longitudinal axis of the spinneret in a pattern of alternating
first and second diameters, such that each of the first holes is disposed
axially adjacent to one of the second holes, and extruding an equal number
of first and second fibers through the respective first and second holes of the
spinneret in the pattern of alternating first and second diameters. Like claim
13 discussed above, we interpret the plain language of claim 26 to require
holes of a first diameter that alternate one after the other with holes of a
second diameter along a single longitudinal axis of the spinneret, such that
every other hole has a first diameter and each of the intervening holes has a
second diameter, because such an arrangement is necessary in order for
equal numbers of first and second fibers to be extruded through the
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respective first and second holes of the spinneret in a pattern of alternating
first and second diameters, consistent with Appellant’s Specification.
The Examiner finds that Brandner teaches a method of making a
nonwoven fiber mat comprising providing spinneret 206 defining first holes
308 each having a first diameter, and second holes 306 each having a second
diameter different than the first diameter, with first 308 and second 306
holes disposed along a longitudinal axis of the spinneret in a pattern of
alternating first and second diameters, such that each of the first 308 holes is
disposed axially adjacent to one of second 306 holes. Final Act. 4, 8 (citing
Brandner, Abst., ¶¶ 46, 47; Figs. 2 and 3).
The Examiner finds that “Brandner does not explicitly teach extruding
an equal number of a first and second fibers through respective first and
second holes of the spinneret.” Final Act. 4. The Examiner finds, however,
that Brandner discloses different ratios between the number of first holes
308 and the number of the second holes 306 in Brandner’s spinneret. Id.
(citing Brandner ¶ 47). Based on this disclosure, the Examiner determines
that “it would have been obvious to one having ordinary skill in the art at the
time the invention was made to have modified a method of making a
nonwoven fiber mat as taught by Brandner with extruding an equal number
of a first and second fibers through respective first and second holes of the
spinneret for the purpose of obtaining a uniform numbers of fibers produced
and uniform shape.” Id.
On the record before us, however, the Examiner does not provide a
sufficient factual basis to establish that the relied-upon disclosures of
Brandner teach or would have suggested a method of making a nonwoven
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fiber mat that involves providing a spinneret having the features recited in
claims 13 and 26, for reasons expressed by Appellant and discussed below.
Brandner discloses that its “invention provides . . . a process for
forming a monocomponent nonwoven web that comprises flowing fiber-
forming material through a die cavity having larger size orifices and at least
five times as many smaller size orifices to form filaments . . . attenuat[ing]
the filaments into fibers . . . wherein there are at least five times as many
microfibers as larger size fibers.” Brandner ¶ 7. Brandner discloses that
nonwoven webs formed with such a die “have a number of beneficial and
unique properties,” including improved moldability imparted by the larger
size fibers, and increased surface area imparted by the smaller fibers,
resulting in improved filter performance. Brandner ¶¶ 7–8.
Brandner discloses die 206 including row 304 of larger orifices 306
and smaller orifices 308 that “define a plurality of flow passages through
which liquefied fiber-forming material exits die 206 and forms the
filaments.” Brandner ¶ 47, Fig. 3. Brandner discloses that in the
embodiment shown in Figure 3, “there are 9 smaller orifices 308 for each
larger orifice 306,” but “[o]ther ratios of the number of smaller orifices per
larger orifice may also be used, for example ratios of 5:1 or more, 6:1 or
more, 10:1 or more, 12:1 or more, 15:1 or more, 20:1 or more or 30:1 or
more.” Brandner ¶ 47.
Although Brandner discloses larger orifices 306 and smaller orifices
308 disposed along row 304 (a single longitudinal axis) of die 206, Brandner
does not disclose that larger orifices 306 and smaller orifices 308 alternate
one after the other along row 304. Rather, Bradner discloses that “there are
9 smaller orifices 308 for each larger orifice 306,” in die 206. Brandner
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¶ 47. Nor does Brandner disclose extruding an equal number of filaments
(fibers) through larger orifices 306 and smaller orifices 308 of die 206.
Rather, Brandner repeatedly and consistently discloses that its invention
provides a process for forming a nonwoven web that has at least five times
as many microfibers as larger size fibers. Brandner ¶¶ 6, 7 (claims 1 and
15).
Although (as discussed above) the Examiner determines that it would
have been obvious to modify Brandner’s method to involve extruding an
equal number of first and second fibers through respective first holes each
having a first diameter and second holes each having a second diameter of
Brandner’s die (spinneret) “for the purpose of obtaining uniform numbers of
fibers produced and uniform shape,” the Examiner does not provide any
objective evidence establishing that so modifying Brandner’s method would
actually result in production of a uniform number of fibers and a uniform
shape.
Nor does the Examiner provide sound technical reasoning that
explains why obtaining a uniform number of fibers and uniform shape would
have been useful or desirable in a nonwoven mat formed according to
Brandner’s method, particularly in view of Brandner’s disclosure that the
nonwoven webs of Brandner’s invention formed of at least five times as
many microfibers as larger size fibers “have a number of beneficial and
unique properties.” Brandner ¶¶ 7–8.
Consequently, on the record before us, the Examiner does not provide
sound technical reasoning having rational underpinning that explains why
one of ordinary skill in the art would have been led to modify Brandner’s
method to involve providing a bimodal spinneret defining first holes that
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each have a first diameter and second holes that each have a second diameter
different than the first diameter, where the first and second holes are
disposed along a longitudinal axis of the spinneret in a pattern of alternating
first and second diameters, such that each of the first holes is disposed
axially adjacent to one of the second holes, and extruding an equal number
of first and second fibers through the respective first and second holes of the
spinneret in the pattern of alternating first and second diameters, as required
by claims 13 and 26.
We, accordingly, do not sustain the Examiner’s rejections of claims
13–32 under 35 U.S.C. § 103.
DECISION SUMMARY

Claims

35 U.S.C. § Reference(s)/Basis Affirmed Reversed
13 103 Gibbon 13
13, 16–22,
25, 32
103 Brandner, of
Hartge
13, 16–22, 25,
32
14, 15 103 Brandner, Hartge,
Hayes
14, 15
23, 24 103 Brandner, Hartge,
McKean
23, 24
26–31 103 Brandner McKean,
Hartge
26–31
Overall
Outcome
13–32
REVERSED