Ex Parte MacKenzieDownload PDFPatent Trial and Appeal BoardJul 28, 201612011579 (P.T.A.B. Jul. 28, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/011,579 22913 7590 Workman Nydegger 60 East South Temple Suite 1000 01/28/2008 08/01/2016 Salt Lake City, UT 84111 FIRST NAMED INVENTOR Craig MacKenzie 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. 19793.208.1 9036 EXAMINER WATKINS, MARCIAL YNN ART UNIT PAPER NUMBER 3774 NOTIFICATION DATE DELIVERY MODE 08/01/2016 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): Docketing@wnlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CRAIG MACKENZIE Appeal2014-008389 Application 12/011,579 Technology Center 3700 Before JENNIFER D. BAHR, LINDA E. HORNER, and BRANDON J. WARNER, Administrative Patent Judges. WARNER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Craig MacKenzie ("Appellant") 1 appeals under 35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 1, 3, 4, 6, 7, 9-12, 14--18, and 20-24, which are all the pending claims. See Appeal Br. 1. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. According to Appellant, the real party in interest is Evolution Industries, Inc. Appeal Br. 2. Appeal2014-008389 Application 12/011,579 CLAIMED SUBJECT MATTER Appellant's disclosed invention relates to "prosthetic and orthotic liners and/or sleeves (i.e. skin-socket interface liners and sleeves)." Spec. i-f 2. Claims 1, 7, and 12 are independent. Claim 1, reproduced below with emphasis added, is illustrative of the subject matter on appeal. 1. A liner for use as a skin interface between a limb and a prosthetic or orthotic device, the liner comprising: an elastomeric material defining a tubular member having exterior and interior surfaces; and a matting agent mixed within the elastomeric material to reduce the coefficient of friction of the exterior and interior surfaces of the tubular member; wherein the matting agent is mixed with the elastomeric material at or less than 10% of a total weight of the elastomeric material; wherein each of the exterior and interior surfaces formed by the elastomeric material and matting agent has a roughened surface. EVIDENCE The Examiner relied on the following evidence in rejecting the claims on appeal: Rudness Chen us 3,787,229 us 5,742,943 2 Jan.22, 1974 Apr. 28, 1998 Appeal2014-008389 Application 12/011,579 REJECTIONS The following rejections are before us for review: 2 I. Claims 1, 3, 4, 6, 7, 9-12, 14--18, and 20-24 stand rejected under 35 U.S.C. § 102(b) as anticipated by Chen. II. Claims 1, 3, 4, 6, 7, 9-12, 14--18, and 20-24 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Chen and Rudness. ANALYSIS Rejection I - Claims 1, 3, 4, 6, 7, 9-12, 14-18, and 20--24 as anticipated by Chen Claim 1 recites, in relevant part, a liner for use as an interface between a limb and a prosthetic or orthotic device including "an elastomeric material 2 We note that all the pending claims (i.e., claims 1, 3, 4, 6, 7, 9-12, 14--18, and 20-24) have been subject to additional rejections. First, the Examiner expressly withdrew a rejection of all the claims under 35 U.S.C. § 112, first paragraph, as failing to comply with the enablement requirement. Ans. 2. Second, the Non-Final Office Action (dated Sept. 24, 2013) includes rejections of many of the claims under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement, and under 35 U.S.C. § 112, second paragraph, as being indefinite. Non-Final Act. 4--6. Appellant subsequently filed an Amendment (dated Apr. 8, 2014), which was entered by the Examiner, that appears to have removed the bases of these rejections. However, neither the Advisory Action (dated Apr. 15, 2014) nor the Examiner's Answer (dated June 2, 2014) formally withdraws these rejections. As these rejections are not contested in the appeal (they are neither identified as rejections under appeal by Appellant nor mentioned in the Examiner's Answer), we consider them effectively withdrawn and conclude that they are not before us for review. Should there be further prosecution of this application, the Examiner may wish to address a formal withdrawal of these rejections. 3 Appeal2014-008389 Application 12/011,579 defining a tubular member having exterior and interior surfaces" and "a matting agent mixed within the elastomeric material." Appeal Br., Claims App. (emphasis added). Similarly, independent claims 7 and 12 recite a liner and a method of making a liner, respectively, which include a matting agent mixed within an elastomeric material. See id. Appellant argues that Chen does not disclose a matting agent mixed within the elastomeric material. See Appeal Br. 17-19; Reply Br. 2-5. In particular, Appellant asserts that Chen discloses imparting slip properties to an elastomeric article using a lubricant composition, but that "Chen does not state that the lubricant composition is mixed within the substrate layer of the article." Appeal Br. 18 (citing Chen, col. 5, 11. 9-12). According to Appellant, Chen applies the lubricant composition to the surface of an elastomeric article, but does not mix the lubricant composition within the elastomeric material. See id. We agree. The Examiner found that Chen discloses all of the limitations recited in independent claims 1, 7, and 12. See Non-Final Act. 7-8. Specifically, the Examiner found that Chen discloses "an elastomeric material (including elastomeric material combination of polyurethane substrate layer and silicone modified layer or the like ... )" and "a matting agent (i.e., agent forming a lubrication composition) to reduce the coefficient of friction of and create a roughened exterior and interior surfaces of the tubular member." Id. at 7 (citing Chen, col. 3, 11. 12-17, 20-22, 33-37; col. 4, 11. 9-10; col. 5, 11. 10-23). The Examiner took the position that "[b]ecause the silicone modified layer includes a matting agent mixed therein, it appears the disclosure of Chen inherently includes 'the matting agent mixed within the elastomeric material.'" Id. at 7-8 (emphasis added). 4 Appeal2014-008389 Application 12/011,579 Chen discloses an "article ... comprised of a substrate layer having an elastomeric material, the layer having a wearer-contacting surface and a damp slip-conferring amount of a lubricant composition applied to the wearer-contacting surface." Chen, col. 2, 11. 16-20. Chen describes the lubricant composition as a modified silicone coating applied after forming the elastomeric article. See id., col. 7, 11. 48---65. However, the Examiner did not provide any factual evidence or persuasive technical reasoning regarding why the silicone modified layer of Chen necessarily includes a matting agent mixed therein, and such asserted inherency is not otherwise self-evident from the record. "Inherency ... may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient." In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (internal citations omitted). An inherent characteristic must be inevitable, and not merely a possibility of probability. See In re Oelrich, 666 F.2d 578, 581(CCPA1981). Therefore, we agree with Appellant that the Examiner's reliance on inherency fails to establish a finding that Chen necessarily discloses a matting agent mixed within the elastomeric material, as required by the claims. See Reply Br. 3. Accordingly, based on the record before us-because an anticipation rejection requires a finding of each and every limitation as set forth in the claim in a single reference-we cannot sustain the rejection of independent claims 1, 7, and 12, and associated dependent claims 3, 4, 6, 9-11, 14--18, and 20-24, as anticipated by Chen. 5 Appeal2014-008389 Application 12/011,579 Rejection II - Claims 1, 3, 4, 6, 7, 9-12, 14-18, and 2{}-24 as unpatentable over Chen and Rudness Appellant presents arguments against the obviousness rejection of claims 1, 3, 4, 6, 7, 9-12, 14--18, and 20-24 together as a group. See Appeal Br. 19-25. We select claim 1 as the representative claim to decide the appeal of the rejection of these claims, with claims 3, 4, 6, 7, 9-12, 14--18, and 20-24 standing or falling therewith. See 37 C.F.R. § 41.37(c)(l)(iv). In the obviousness rejection, the Examiner found that, if Chen does not inherently disclose a matting agent mixed within the elastomeric material, "Rudness teaches a homogenous mixture of a binder (i.e. silicone or polyurethane) (col. 6, lines 20-22; col. 3, lines 30-35[;] and col. 5, line 32) and [a] matting agent in order to provide a matte finish (col. 6, lines 16-27)." Non-Final Act. 8. The Examiner concluded that, given the teachings of the prior art, it would have been obvious to one of ordinary skill in the art at the time of the invention to try the known, finite solution of a method of forming the materials in a homogenous mixture of binder and matting agent[,] as taught by Rudness[,] in place of the means for forming the low-friction material on inner and outer surfaces in the invention of Chen, as a functional equivalent method of forming a liner with low-friction/roughened interior and exterior surfaces with predictable results and a reasonable expectation for success. Id. at 8-9. Appellant argues that Rudness does not cure the deficiency of Chen because, "[l]ike Chen, there is no understanding from Rudness that the wear- resistant material is mixed within the matrix material." Appeal Br. 22. In particular, Appellant asserts that "Rudness teaches layering applications of a binder and wear-resistant particles where there is an underlying substrate or 6 Appeal2014-008389 Application 12/011,579 deposition surface on a metal or non-metal substrate." Id. at 22-23 (citing Rudness, col. 2, 11. 54--58). According to Appellant, "Rudness does not disclose the known, finite solution of forming materials in a homogenous mixture as suggested by the rejection." Id. at 23 (citing Non-Final Act. 8). We are not persuaded by Appellant's argument. The Examiner correctly found that Rudness discloses a matting agent mixed within a binder material. See Non-Final Act. 8 (citing Rudness, col. 6, 11. 19-24). Specifically, Rudness discloses "a homogeneous material composed of wear- resistant particles uniformly dispersed in a binder or the like." Rudness, col. 6, 11. 17-19 (emphasis added). We understand the uniformly dispersed particles of Rudness' s homogenous material to be mixed within the binder. 3 Appellant argues that one of ordinary skill in the art would not have been motivated to combine the teachings of Chen and Rudness. See Appeal Br. 23-24. In particular, Appellant asserts that "Rudness would teach modification of Chen by using the layering method of applying a thin layer of binder to cover the substrate," and that "[t]he skilled person would not understand to apply a homogenous mixture and molding technique[] to Chen." Id. This argument is unpersuasive for two reasons. First, to the extent that the argument appears to urge us to apply a strict teaching, suggestion, or motivation ("TSM") test for obviousness, rigid application of the TSM test was explicitly disavowed by the Supreme Court in KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 415, 419 (2007). Second, Appellant's 3 We note that Rudness also discloses that "[t]he substrate may also be composed of the uniformly disposed particles thus forming a homogeneous material." Rudness, col. 1, 11. 12-14 (emphasis added); see id., col. 2, 11. 40-43. 7 Appeal2014-008389 Application 12/011,579 argument does not address the Examiner's articulated reasoning for the conclusion of obviousness. Here, the Examiner provided articulated reasoning with a rational underpinning for the combination of teachings used in the rejection, as discussed supra, which Appellant does not persuasively refute. Thus, Appellant does not apprise us of error in the Examiner's findings or reasoning for the conclusion of obviousness. Appellant argues that "Rudness discloses experimentation with concentrations requiring [that] the wear-resistant material contain at least 35 percent by volume of wear-resistant particles and preferably above about 50 percent by volume," whereas "the matting agent of the pending claims is identified as at or less than 10 percent of the total weight of the elastomer." Id. at 23-24 (citing Rudness, col. 3, 11. 42--46). This argument against Rudness does not apprise us of error because it attacks the reference individually when the rejection is predicated upon a combination of prior art disclosures. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)). Here, the Examiner relied on Chen for disclosing a matting agent at less than ten percent of the total weight of the elastomeric material. See Non-Final Act. 8. Nevertheless, to the extent that Rudness discloses that the wear-resistant particles comprise at least a certain percentage by volume of a material, such disclosure does not establish that the particles comprise more than a particular percentage of the total weight of the material. Appellant argues that "Rudness fails also to disclose a roughness formed by an elastomer material and instead relies on spheres or spheroids partially embedded in a matrix material with exposed segments to provide 8 Appeal2014-008389 Application 12/011,579 surface faces." Appeal Br. 24. We are not persuaded by this argument, which is not commensurate in scope with representative claim 1. As stated by our reviewing court in In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998), "the name of the game is the claim." It is well established that limitations not appearing in the claim cannot be relied upon for patentability. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982). Here, claim 1 recites, in relevant part, that each of "the exterior and interior surfaces formed by the elastomeric material and matting agent has a roughened surface." Appeal Br., Claims. App. (emphasis added). In this regard, we agree with the Examiner that Rudness discloses a roughened surface formed by a homogenous mixture of a binder material and a matting agent in the form of wear-resistant particles. See Non-Final Act. 8; see also Ans. 3. Thus, Appellant does not apprise us of error in the Examiner's findings, which are supported by a preponderance of the evidence. Appellant also argues that "[t]he liner of the pending claims possesses the unexpected result of providing roughness along a surface to decrease a coefficient of friction of the substrate material itself." Appeal Br. 24. In particular, Appellant asserts that the declaration of Hogna Hringsd6ttir (the "Hringsd6ttir Declaration"), dated Oct. 19, 2012, "provides objective evidence through experimental results that show that the liner having the matting agent according to the claims ... is an improvement over known conventional liners without the matting agent of the claims." Id. (citing Hringsd6ttir Declaration i-fi-14, 13-24). We recognize that evidence of secondary considerations, such as that presented by Appellant, must be considered in route to a determination of obviousness or non-obviousness under 35 U.S.C. § 103. In the present case, 9 Appeal2014-008389 Application 12/011,579 however, we find Appellant's rebuttal evidence to be insutlicient to persuade us of error in the Examiner's rejection. According to the Hringsd6ttir Declaration, "it was found that the matting agent of the skin-colored liner unexpectantly [sic] reduced the frictional force required to make it slide relative to the transparent liner which had the same composition as the skin-colored liner with the exception of the matting agent (and a coloring pigment)." Hringsd6ttir Declaration i-f 13. In particular, Appellant asserts that "[t]he inclusion of the matting agent is found to make the liner easier to apply to a user's affected area in comparison to a liner without the matting agent" because "the liner having the matting agent requires significantly less frictional force to remove from the user's limb, particularly without moist conditions." Appeal Br. 24--25 (citing Hringsd6ttir Declaration i-fi-14, 13-34). To the extent that Appellant relies on the Hringsd6ttir Declaration as evidence of surprising or unexpected results, the evidence falls short because the results described in the Hringsd6ttir Declaration have not been shown to be unexpected compared with the closest prior art. See In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) ("[W]hen unexpected results are used as evidence of nonobviousness, the results must be shown to be unexpected compared with the closest prior art.") (citing In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984)). Here, the closest prior art is the article disclosed in Chen, which includes a substrate layer having an elastomeric material and a damp slip-conferring amount of a lubricant composition applied to the wearer-contacting surface. Furthermore, Appellant's Specification explains that "matting agent 20 preferably creates roughened exterior and interior surfaces 16, 18." Spec. 10 Appeal2014-008389 Application 12/011,579 if 21; see id. if 24 (describing that "matting agent 20 or additive is used to create a matted surface or micro-roughness of the liner surfaces 16, 18"). According to the Specification, such a matting agent was known commercially in the art at the time of the invention. See id. if 25 ("[a]n example of a preferable matting agent is manufactured by Quantum Silicones, ... http://www.quantumsilicones.com"). Rudness also discloses that the addition of wear-resistant particles to a binder "will produce a 'matte' type surface having low-friction, wear-resistant characteristics." Rudness, col. 4, 11. 34--36 (emphasis added). As such, the evidence before us shows that using a matting agent to create a roughened surface was a known alternative for reducing friction, and we discern no error in the Examiner's reasoned explanation that the "use of a matting agent to produce a roughness along a surface to decrease a coefficient of friction of the device is exactly what would be expected" by one of ordinary skill in the art. Ans. 5. The claimed invention does not represent "more than the simple substitution of one known element for another or the mere application of a known technique to a piece of prior art ready for the improvement" (KSR, 550 U.S. at 417), and the secondary consideration advanced by Appellant is inadequate to establish nonobviousness as a matter of law. Finally, we note that Appellant presents new arguments for the first time in the Reply Brief that address the reasoning articulated by the Examiner in the rejection. See Reply Br. 8-9 (asserting that "[t]he subject matter of claims 1, 7, and 12 would not have been obvious to try," and that "the rejection relied on hindsight"). Appellant does not, however, present any showing of good cause for why these new arguments were not presented in the Appeal Brief. We further note that the reasoning articulated in the 11 Appeal2014-008389 Application 12/011,579 Response to Arguments in the Examiner's Answer (see Ans. 3--4) appears to reiterate the reasoning articulated in the rejection of record (see Non-Final Act. 8-9), from which the instant appeal is taken, such that these new arguments are not responsive to an argument raised or a position taken in the Examiner's Answer. We need not consider these new arguments, which are deemed waived, and we decline to do so here. See 37 C.F.R. § 41.41(b)(2); see also Ex parte Borden, 93 USPQ 2d 1473, 1474--75 (BPAI 2010) (informative) (explaining that "the reply brief [is not] an opportunity to make arguments that could have been made in the principal brief on appeal to rebut the Examiner's rejections, but were not," and that "the failure to raise all issues and arguments diligently, in a timely fashion, has consequences"). The new arguments, which relate to the reasoning articulated by the Examiner in support of the proposed combination of Chen and Rudness, could have been presented in the Appeal Brief to address the outstanding rejection of record, but were not. Here, the absence of any opportunity for the Examiner to respond to these untimely arguments precludes meaningful appellate review. Accordingly, we reiterate that Appellant's arguments presented in the Appeal Brief do not apprise us of error in the Examiner's findings or conclusion of obviousness. We sustain the rejection of claim 1, and of claims 3, 4, 6, 7, 9-12, 14--18, and 20-24 falling therewith, under 35 U.S.C. § 103(a) as being unpatentable over Chen and Rudness. 12 Appeal2014-008389 Application 12/011,579 DECISION We REVERSE the Examiner's decision rejecting claims 1, 3, 4, 6, 7, 9-12, 14--18, and 20-24 under 35 U.S.C. § 102(b) as anticipated by Chen. We AFFIRM the Examiner's decision rejecting claims 1, 3, 4, 6, 7, 9-12, 14--18, and 20-24 under 35 U.S.C. § 103(a) as being unpatentable over Chen and Rudness. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 13 Copy with citationCopy as parenthetical citation