Ex Parte Job

Patent Trial and Appeal Board

Mar 31, 2016

11573666 (P.T.A.B. Mar. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111573,666 02/06/2008
27777 7590 04/04/2016
BERNARD F PLANTZ
JOHNSON & JOHNSON
ONE JOHNSON & JOHNSON PLAZA
NEW BRUNSWICK, NJ 08933-7003
FIRST NAMED INVENTOR
Keith Job
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
ETH5487USCNT1 4419
EXAMINER
SELLMAN, CACHET I
ART UNIT PAPER NUMBER
1715
NOTIFICATION DATE DELIVERY MODE
04/04/2016 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
pairjnj@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEITH JOB
Appeal2014-007134
Application 11/573,666
Technology Center 1700
Before JEFFREY T. SMITH, KAREN M. HASTINGS,
and MICHAEL P. COLAIANNI, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner's
decision to reject claims 1-3, 5-10, 12-24, 27-30, 45--48 and 55. We have
jurisdiction under 35 U.S.C. § 6(b).
Appeal2014-007134
Application 11/573,666
The claimed invention is directed to a method for creating a silicone
shell. App. Br. 3. Claim 1 illustrates the subject matter on appeal and is
reproduced below:
1. A method for creating a silicone shell, the method comprising:
a) providing a mandrel suitably sized and shaped for forming a
desired shell for an implantable mammary prosthesis;
b) applying a first coating of a silicone dispersion to the mandrel by
spraying the silicone dispersion at less than 15 psi to create a shell having a
desired thickness, wherein the silicone dispersion having a defined percent
solids;
c) partially curing the silicone shell for 10 to 20 minutes in a
devolatilization step between applying the first coating and a second coating
of the silicone dispersion to the mandrel, without allowing the silicone to
fully cure, the first coating and the second coating of silicone being applied
by an electrostatically operated rotary atomizer configured to control
applying silicone to both an entirety of the mandrel and a portion thereof;
and
d) removing the silicone shell from the mandrel.
Appellant requests review of the following rejections from the
Examiner's Final Office Action:
I. Claims 1-3, 5, 7, 12, 14--16, 28, and 45--47 rejected under
35 U.S.C. § 103(a) as being unpatentable over Dogan et al.,
(US 5,630,844, issued May 20, 1997), Iversen et al., (US
5,961,552, issued October 5, 1999), Stephenson et al., (US
2003/0197311 Al, published October 23, 2003), Leidner et al.,
(US 6,056,993, issued May 2, 2000) and Hufstetler et al., (US
4,761,299, issued August 2, 1988). 1
1 The Examiner denominated this rejection as a new ground in the Answer
because the statement of rejection erroneously omitted the reference to
Iversen. Ans. 13. Therefore, for the purposes of this opinion, we refer to the
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Appeal2014-007134
Application 11/573,666
IL Claim 48 rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dogan, Iversen, Stephenson, Leidner, Hufstetler and
Frisch (US 4,992,312, issued February 12, 1991).
III. Claims 1-3, 6-10, 12-24, and 27-30 rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Falcon et al., (US 2002/0143396 Al,
published October 3, 2002), Prewett (US 2005/0216094 Al, published
September 29, 2005), Iversen, Stephenson, Leidner, and Hufstetler.
OPINION2
The Prior Art Rejections3
After review of the respective positions provided by Appellant and the
Examiner, we AFFIRM the Examiner's prior art rejections under 35 U.S.C.
§ 103(a) for the reasons presented by the Examiner and add the following for
emphasis.
Independent claim 1 is directed to a method for creating a silicone
shell by spraying silicone dispersion coatings on a mandrel at less than 15
psi to create a shell having a desired thickness and partially curing the
silicone shell between application of coatings.
Answer and the Reply Brief for the respective positions of the Examiner and
Appellant with respect to this rejection.
2 For Rejections I and III, Appellant argue independent claims 1 and 2
together and do not present separate arguments for any dependent claim.
Reply Br. 3; App. Br. 11. Further, in addressing the separate rejection of
claim 48 (Rejection II), Appellant relies on the arguments presented in
Rejection I when discussing independent claim 1. App. Br. 11.
Accordingly, we select claim 1 as representative of the subject matter before
us on appeal and limit our discussion to this claim. Independent claim 2 and
all dependent claims stand or fall with independent claim 1.
3 Appellant relies on common arguments in addressing Rejections I and II.
See Appeal Brief and Reply Brief, generally. Accordingly, we address these
rejections together in the opinion.
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Appeal2014-007134
Application 11/573,666
The Examiner found the prior art, as represented by Dogan, Falcon
and Prewett, discloses as known to form a silicone shell for a mammary
prosthesis by providing a suitably shaped mandrel for forming the desired
shell, coating a silicone dispersion having a defined percent solids onto the
mandrel, setting the applied coating, and removing the shell from the
mandrel. Ans. 13-14; Final Act. 8; Dogan Abstract, col. 4, 11. 42--43, col. 8,
11. 30-60; Falcon i-fi-f l, 9, 17, 29; Prewett i-fi-f 18, 38. The Examiner relied on
Iversen to establish Dogan's heat setting of the silicone dispersion at 130 °F
and Falcon's partial curing of Falcon are partial curing steps resulting in
devolatization of the solvent in the silicone rubber dispersion. Ans. 14--15;
Final Act. 9; Iversen col. 7, 11. 44--col. 8, 11. 25. The Examiner also found
the prior art, as represented by the teachings of Stephenson and Leidner,
disclose as well known to electrostatically spray coat a silicone or
elastomeric dispersion onto a mandrel to form an article, with Stephenson
disclosing the use of an electrostatic rotary atomizer as an alternative to dip
coating to accomplish this goal. Ans. 14--16; Final Act. 10-11; Dogan col.
8, 11. 60-65; Stephenson i-fi-f 10, 18, 19, 27; Leidner Abstract, col. 2, 11. 33-
4 7. The Examiner concluded that it would have been obvious to one having
ordinary skill in the art to spray coat the elastomeric dispersion of either
Dogan or Falcon to a mandrel using an electrostatic rotary atomizer in view
of the teachings of Stephenson and Leidner. Ans. 16; Final Act. 11. The
Examiner found Stephenson and Leidner do not disclose electrostatically
spraying the silicone dispersion at less than 15 psi to create a shell. Ans. 17;
Final Act. 11. However, the Examiner found Hufstetler discloses it was
known to operate a high volume low pressure electrostatic atomizer/sprayer
at an air pressure of less than 15 psi to coat the surface to ensure higher
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Appeal2014-007134
Application 11/573,666
transfer etliciency as compared to conventional spray guns. Ans. 17; Final
Act. 12; Hufstetler Abstract, col. 4, 11. 50-53. The Examiner determined it
would have been obvious to one having ordinary skill in the art to apply the
elastomeric dispersion of Dogan and Falcon using an electrostatic atomizer
at pressures of less than 15 psi for the reasons taught by Hufstetler' s
disclosure. Ans. 17; Final Act. 12.
Appellant argues the subject matter distinguishes the claimed
invention from dip casting methods because the claims recite the silicone
dispersion having a defined percent solids as opposed to a defined viscosity.
Reply Br. 7.
We are unpersuaded by this argument. As noted by the Examiner,
Dogan discloses spray coating the silicone dispersion having defined solids
contents onto a mandrel to form the silicone shell. Ans. 14; Dogan col. 8, 11.
60-65. The Examiner also found Stephenson discloses electrostatically
spraying an elastomeric dispersion onto a mandrel as an alternative to a
dipping process. Ans. 16; Stephenson i-f 8. Thus, the Examiner provided a
reasonable basis for one skilled in the art to use electrostatic spraying to
form the silicone shell on a mandrel instead of the dipping process.
Appellant has not adequately explained why one skilled in the art would not
have been capable of adapting the methods of forming silicone shells of
either Dogan or Falcon by using the electrostatic spraying method of
Stephenson and Leidner to coat the mandrel given the disclosures of Dogan
and Stephenson. While Appellant argues there is no recognition whatsoever
in the art that a silicone shell could be produced using electrostatic sprayers
at the claimed pressures, Appellant has not adequately explained why one
skilled in the art would not have been capable of determining the appropriate
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Appeal2014-007134
Application 11/573,666
operating pressure to maximize coating etliciency, as disclosed by
Hufstetler. Reply Br. 10; Ans. 17, 20; Final Act. 12; Hufstetler Abstract,
col. 4, 11. 50-53. See In re Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985) (skill
is presumed on the part of one of ordinary skill in the art); In re Bozek,
416 F.2d 1385, 1390 (CCPA 1969).
Appellant argues the claims are directed to forming a mammary
prosthesis and, thus, are distinguishable from the cited references
(Stephenson, Leidner and Hufstetler) that are unrelated to this subject
matter. Reply Br. 7. Appellant further argues the prior art cannot be
properly combined to teach the claimed subject matter without using
improper hindsight. Reply Br. 7-8.
We are again unpersuaded. The Examiner found Stephenson and
Leidner disclose as known to us electrostatic spraying for the purpose of
spraying an elastomeric dispersion onto a mandrel. Ans. 14--16; Final Act.
10-11; Dogan col. 8, 11. 60-65; Stephenson i-fi-f 10, 18, 19, 27; Leidner
Abstract, col. 2, 11. 33--47. The Examiner also found Hufstetler discloses as
known to operate electrostatic spraying devices at pressures within the
claimed range to ensure efficient coating. Ans. 17; Final Act. 12; Hufstetler
Abstract, col. 4, 11. 50-53. We find no error in the Examiner's determination
that these references would have led one skilled in the art to apply a silicone
dispersion over a mandrel using an electrostatic spraying device because
Appellant's arguments do not address the Examiner's reasons for relying on
the references. Ans. 13-15.
Appellant argues the Examiner provided no objective reasoning for
incorporating the Iversen' s partial curing of the elastomeric dispersion into
the methods of Dogan and Falcon. Reply Br. 7-8; App. Br. 14--15.
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Appeal2014-007134
Application 11/573,666
We are unpersuaded by this argument as well. Contrary to
Appellant's argument, the Examiner did not propose to incorporate the
teachings of Iversen. As noted above, the Examiner relied on Iversen to
establish Dogan's heat setting of the silicone dispersion at 130 °F and
Falcon's partial curing are partial curing steps resulting in devolatization of
the solvent in the silicone rubber dispersion. Ans. 14--15; Final Act. 9;
Iversen col. 7, 11. 44--col. 8, 11. 25. Appellant's argument does not address
the reasons for which the Examiner relied on Iversen.
Accordingly, we sustain the Examiner's prior art rejections of claims
1-3, 5-10, 12-24, 27-30, 45--48, and 55 under 35 U.S.C. § 103(a) for the
reasons presented by the Examiner and given above.
ORDER
The Examiner's prior art rejections of claims 1-3, 5-10, 12-24, 27-
30, 45--48, and 55 under 35 U.S.C. § 103(a) are affirmed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
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