Ex Parte CHON et al

Patent Trials and Appeals Board

Apr 18, 2019

14060826 - (D) (P.T.A.B. Apr. 18, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/060,826 10/23/2013
26356 7590 04/22/2019
ALCON
IP LEGAL
6201 SOUTH FREEWAY
FORT WORTH, TX 76134
FIRST NAMED INVENTOR
JAMES CHON
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.
PAT905139-US-NP 1129
EXAMINER
GAER, MOHAMED GAMIL
ART UNIT PAPER NUMBER
3771
NOTIFICATION DATE DELIVERY MODE
04/22/2019 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):
patent. docketing@alcon.com
alcon_pair@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES CHON, KRISTINE VELASCO, and
RUDOLPH ZACHER
Appeal2018-007744
Application 14/060,826 1
Technology Center 3700
Before JOSEPH A. FISCHETTI, PHILIP J. HOFFMANN, and
TARA L. HUTCHINGS, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellants appeal from the
Examiner's rejection of claims 10, 11, and 15-18. We have jurisdiction
under 35 U.S.C. § 6(b ).
We AFFIRM.
According to Appellants, their "invention relates ... to
phacoemulsification cutting needles." Spec. 1, 11. 5---6. Claim 10 is the sole
independent claim on appeal. Below, we reproduce claim 10 as
representative of the appealed claims.
1 According to Appellants, "[t]he real party in interest is Novartis AG."
Br. 2.
Appeal2018-007744
Application 14/060,826
10. A phacoenmlsification needle comprising:
a rigid hollow shaft with an interior surface, an exterior
surface, and a distal end terminating in a rigid distal edge, the
shaft having a central bore extending there through, the central
bore defined by the interior surface of the hollow shaft, the
exterior surface of the hollow shaft defining a cylindrical surface;
and
a first over mold located on the exterior surface and distal
edge of the hollow shaft, the first over mold covering at least a
portion of a periphery of the exterior surface of the hollow shaft,
and extending radially outward from the exterior surface of the
hollow shaft, such that the first over mold extends from a
rounded trailing edge located on the exterior surface of the
hollow shaft to a front edge located at the distal end of the hollow
shaft, the front edge of the first over mold having a rounded front
edge that extends circumferentially around a perimeter of the
hollow shaft, the front edge of the first over mold covering the
distal edge of the hollow shaft and terminating at the central bore,
the outer surface of the first over mold being cylindrical along a
length of the first over mold between the rounded trailing edge
andtheroundedfrontedge;and
a second over mold located on the first over mold, the
second over mold covering at least a portion of a periphery of an
exterior surface of the first over mold, the second over mold
covering the front edge of the first over mold and terminating at
the central bore.
REJECTIONS AND PRIOR ART
The Examiner rejects the claims as follows:
I. Claims 10 and 15-18 under 35 U.S.C. § I03(a) as unpatentable
based on Jones (US 6,015,403, iss. Jan. 18, 2000), Toth et al.
(US 6,491,670 Bl, iss. Dec. 10, 2002) (hereinafter "Toth"), and
Thurmond, II et al., (US 2009/0318746 Al, pub. Dec. 24,
2009); and
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Appeal2018-007744
Application 14/060,826
II. Claim 11 under 35 U.S.C. § 103(a) as unpatentable based on
Jones, Toth, Thurmond, and Berg et al. (US 5,762,637, iss.
June 9, 1998) (hereinafter "Berg").
ANALYSIS
Reiection I
With respect to the Examiner's rejection of claim 10, Appellants argue
that the Examiner errs because
Thurmond discloses dipping or coating catheters with various
materials but d[ o Jes not disclose the arrangement of the multiple
coatings. Thurmond does not mention the arrangement of a
second over mold or coating covering the front edge of the first
over mold or coating and terminating at the central bore.
Br. 8. Although we have carefully reviewed Appellants' arguments,
Appellants do not persuade us of error.
With respect to Appellants' argument above that "Thurmond ...
d[o]es not disclose the arrangement of the multiple coatings," the Examiner
relies on Thurmond's paragraph 34 to disclose "a second over mold located
on the first over mold." Answer 3; see also Final Action 6. Appellants'
argument does not set forth facts countering the Examiner's specific finding,
sufficient to persuade us that the Examiner errs. The mere existence of
differences between the prior art and the claim does not establish
nonobviousness. Dann v. Johnston, 425 U.S. 219,230 (1976).
Regarding Appellants' argument above that "Thurmond does not
mention the arrangement of a second over mold or coating covering the front
edge of the first over mold or coating and terminating at the central bore,"
the Examiner finds that Thurmond' s "[p] aragraph [] 3 3 discloses coating by
dipping[,] which would cover the front edge . . . . Paragraph []30 states that
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Appeal2018-007744
Application 14/060,826
the coating can extend to the lumen of the needle and therefore the coating
would terminate at the central bore as" claimed. Answer 3; see also Final
Action 6. However, Appellants' argument does not address the Examiner's
specific findings, sufficient to persuade us that the Examiner errs.
Regarding the Examiner's rejection of dependent claim 15, Appellants
argue that the Examiner errs because "Thurmond ... fails to disclose the
second over mold embedded in the first over mold." Br. 9. This argument
does not show error in the Examiner's specific finding that
[p]aragraph[s] []32 and []33 of Thurmond teach[] that the
coatings may be layered, which would embed the top coating
in/onto the bottom coating. Furthermore, [p]aragraph []31 states
that the coating may be deposited into divots, voids, or grooves
in the structure[;] therefore it is the Examiner[']s position that
Thurmond does indeed teach a second over mold embedded in
the first over mold.
Answer 4; see also Final Action 6.
Regarding the Examiner's rejection of dependent claim 16, Appellants
argue that the Examiner errs because "Thurmond ... fails to disclose the
second over mold extends circumferentially around the entire perimeter of
the exterior surface of the hollow shaft." Br. 9. This argument does not
show error in the Examiner's specific finding that
[p ]aragraph []33 of Thurmond discloses coating by dipping[,]
which would cover the front edge[,] and [p ]aragraph []30 states
that the coating can extend to the lumen of the needle and[,]
therefore[,] it is the Examiner's position that the second over
mold coating, when dipped, would extend circumferentially
around the entire perimeter of the exterior of the surface of the
hollow shaft.
Answer 4; see also Final Action 7.
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Application 14/060,826
Thus, based on the foregoing, we sustain the Examiner's obviousness
rejection of dependent claim 10, and its dependent claims 15-18.
Reiection II
With respect to the Examiner's rejection of dependent claim 11,
Appellants argue that the Examiner errs because
Berg fails to disclose an overmold with a rounded trailing edge
extending radially outward from the exterior surface of the
hollow shaft as in ... claim 10. The exterior surface of ... tip 28
is coextensive with the exterior surface of . . . catheter 26 and
does not have a rounded trailing edge that extends radially
outward from the exterior surface of the hollow shaft. In
addition, Berg fails to disclose a second over mold.
Br. 9-10. According to the Examiner, however, "Berg is not being relied on
to teach the first or second over mold. Berg is only used to teach a through
hole which provide the advantage of securing a tubular tip to the distal end
of a tubular shaft." Answer 4; see also Final Action 8 ("It would have been
obvious to ... modify the hollow shaft of the combination of Jones and Toth
to include the through hole teachings of Berg."). Thus, Appellants'
argument does not persuade us of error.
DECISION
We AFFIRM the Examiner's obviousness rejections of claims 10, 11,
and 15-18.
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Application 14/060,826
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.I36(a)(l)(iv). See
37 C.F.R. § 41.50(±).
AFFIRMED
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