Ex Parte Cichocki et al

Patent Trial and Appeal Board

Dec 22, 2015

11611353 (P.T.A.B. Dec. 22, 2015)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111611,353 12/15/2006
27777 7590 12/24/2015
BERNARD F. PLANTZ
JOHNSON & JOHNSON
ONE JOHNSON & JOHNSON PLAZA
NEW BRUNSWICK, NJ 08933-7003
FIRST NAMED INVENTOR
Frank R. Cichocki JR.
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.
ETH5318USNP 4247
EXAMINER
KIECHLE, CAITLIN ANNE
ART UNIT PAPER NUMBER
1733
NOTIFICATION DATE DELIVERY MODE
12/24/2015 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 FRANK R. CICHOCKI, JR, EUGENE D. REYNOLDS,
and ROBERT E. MAURER
Appeal2014-003089
Application 11/611,353
Technology Center 1700
Before ADRIENE LEPIANE HANLON, MICHAEL P. COLAIANNI, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 the rejection of claims 1, and
3-13. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
We REVERSE.
Appellants' invention is directed to tungsten alloy suture needles
having a desirable combination of stiffness, strength, and ductility and a
process of forming heat treated tungsten alloy suture needles that exhibit
superior bending stiffness properties (Spec. 1:4-7; claim 1 ).
Appeal2014-003089
Application 11/611,353
Claim l is illustrative:
1. A method for making a tungsten alloy suture needle comprising the
steps of:
forming needle blanks or suture needles comprising a tungsten alloy
such that the needle blanks or needles are curved, wherein the needles or needle
blanks comprise tungsten alloy;
then heating the needle blanks or suture needles from room temperature
to a temperature below the recrystallization temperature of the alloy, wherein
said temperature is in the range of about 900°C to about 1250°C; and,
cooling the needle blanks or needles to room temperature,
thereby improving the bending strength and bending stiffness of the
curved needle blanks or needles at room temperature.
Appellants appeal the following rejection:
Claims 1 and 3-13 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bendel (US 5,410,707 issued May 16, 1995) in view of
Mutoh ("Effect of Rhenium Addition on Fracture Toughness at Tougsten at
Elevated Temperatures," Journal of Materials Science 30, (1995) 770-775).
FINDINGS OF FACT AND ANALYSES
The Examiner's findings and conclusions are located on pages 3 to 5
of the Non-final Action dated September 26, 2012 1. The Examiner finds
that Bendel teaches the limitations of claim 1, except for the step for heating
from room temperature to temperature below the recrystallization
temperature of the alloy and then cooling the heated alloy to room
temperature (Non-final Act. 3). The Examiner finds that Mutoh teaches
heating a tungsten alloy containing rhenium to a temperature between 600°C
and 1600°C, a temperature range that overlaps with the claimed temperature
range, in order to improve ductility and decrease embrittlement of the alloy
(Non-Final Act. 3-4). The Examiner further finds that Mutoh begins heating
1 In the Final Action, the Examiner refers to this Non-final Action for the
substance of the rejection. Therefore, we refer to the Non-final Action.
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Appeal2014-003089
Application 11/611,353
at room temperature (Non-final Act. 4). The Examiner finds that iviutoh
does not teach cooling the alloy after heating to room temperature (Non-final
Act. 4 ). The Examiner concludes that it would have been obvious to cool
the alloy to room temperature in order to use the alloy for its desired purpose
(Non-final Act. 4). The Examiner finds that Bendel and Mutoh fail to teach
performing the heating step so as to improve the bending strength and
bending stiffness of the curved needle blanks (Non-final Act. 4). The
Examiner finds that Bendel's alloy composition is the same and Mutoh's
temperature range overlap so that the once the heating step is combined with
Bendel' s process the resulting bending strength and bending stiffness would
have naturally flowed from the teachings of the references (Non-final Act.
5).
Appellants argue that the Examiner engaged in impermissible
hindsight reasoning in combining the teachings of Mutoh and Bendel (App.
Br. 14). Appellants contend that the Examiner's reason for combining
Mutoh's temperature range (i.e., "in order to improve ductility and decrease
embrittlement of the alloy") is based on an erroneous reading of Mutoh
(App. Br. 12). Appellants contend that Mutoh solely discusses the effect of
rhenium on the high temperature properties of a tungsten alloy. Id.
The Examiner's rejection is based upon an error-in-fact. Mutoh
teaches testing the high temperature properties of a rhenium-containing
tungsten alloy by heating the alloy to a temperature between 600° C and
1600° C. Contrary to the Examiner's finding, Mutoh does not teach that
heating the tungsten alloy to a temperature within the range improves
ductility or decreases embrittlement (Non-final Act. 4, Ans. 7, Mutoh 775).
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Appeal2014-003089
Application 11/611,353
Rather, iviutoh teaches that by using rhenium the high temperature ductility
and brittleness properties can be improved (Mutoh 77 5).
In other words, Mutoh does not teach a positive heat treating step for
the tungsten alloy, but rather, merely testing a tungsten alloy at high
temperatures. This understanding of Mutoh is supported by Mutoh's
disclosure that the tungsten alloys are usually used in the aerospace or
nuclear industries: industries where the alloy may be exposed to very high
temperature environments (Mutoh 770). It is not entirely clear the ordinary
skilled artisan would have combined Mutoh's testing temperatures for a
tungsten alloy usually used in the aerospace and nuclear industries with
Bendel's tungsten alloy used to make surgical needles. The Examiner seems
to indicate that Bendel, Mutoh and Appellants are directed to improving the
ductility tungsten-rhenium alloys (Ans. 9) (i.e., reasonably pertinent to
Appellants' problem). Even if that is true, Mutoh does not teach heating to a
temperature within the range to effect any change to the properties of the
alloy. Rather, Mutoh's heating is merely to test the alloy's performance at
high temperatures which in our view would not have suggested heating
Bendel' s tungsten alloy surgical needles to within the claimed temperature
range.
Accordingly, the Examiner has not provided reasoning with rational
underpinning as to why one of ordinary skill in the art would use Mutoh's
testing temperatures on Bendel's tungsten alloy surgical needle absent
hindsight.
On this record, we reverse the Examiner's§ 103(a) rejection.
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Appeal2014-003089
Application 11/611,353
DECISION
The Examiner's decision is reversed.
sl
ORDER
REVERSED
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