Ex Parte Guo et al

Patent Trial and Appeal Board

Mar 10, 2017

11482814 (P.T.A.B. Mar. 10, 2017)

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.
11/482,814 07/10/2006 Xiaoping Guo 0B-048001US / 82410.0005 7821
55962 7590
Wiley Rein LLP
Patent Administration
1776 K Street, NW
Washington, DC 20006
EXAMINER
ROGERS, JAMES WILLIAM
ART UNIT PAPER NUMBER
1618
NOTIFICATION DATE DELIVERY MODE
03/14/2017 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte XIAOPING GUO and RICHARD E. STEHR1
Appeal 2016-004786
Application 11/482,814
Technology Center 1600
Before DONALD E. ADAMS, JOHN E. SCHNEIDER,
and RACHEL H. TOWNSEND, Administrative Patent Judges.
SCHNEIDER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35U.S.C. § 134 involving claims to polymer
compositions, which have been rejected as obvious. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
The Specification describes polymer compositions with enhanced
anti-friction properties for use in medical applications and devices for
1 Appellants identify the Real Party in Interest as St. Jude Medical, Atrial
Fibrillation Division, Inc. (Appeal Br. 2.)
Appeal 2016-004786
Application 11/482,814
reduced friction. Spec. 12. Medical devices incorporating the invention
include tubing, gaskets, valves and insertions devices. Id.
Claims 1, 3, 5, 44, and 47—52 are on appeal. Claim 1 is illustrative
and reads as follows:
1. A biocompatible, self-lubricating polymer composition
consisting essentially of:
a polymer matrix of dimethyl and methylvinyl siloxane
copolymers, wherein the polymer matrix is selected from the
group consisting of: (a) a polymer matrix, measured as in-mold
cured for 10 minutes at 116°C, that has a specific gravity of
about 1.11, a durometer of about 22 in Shore A hardness scale,
and a tensile strength of about 1347 psi and (b) a polymer
matrix, measured as in-mold cured for 10 minutes at 116°C,
that has a specific gravity of about 1.12, a durometer of about
35 in Shore A hardness scale, and a tensile strength of about
1427 psi, and
a polyfluoropolyether (PFPE) synthetic oil at a
concentration of about 1 to about 20 parts per hundred by
weight (phr), wherein the PFPE synthetic oil is capable of
migrating through the polymer matrix during the use of the
biocompatible, self-lubricating polymer composition, and
wherein the migration of PFPE synthetic oil maintains
consistent surface lubricity when exposed to frictional force.
Claims 1,3,5, 44, and 47—52 have been rejected under 35 U.S.C.
§ 103(a) as unpatentable over Davila2 in view of Oki.3
2 Davila et al., US 5,562,632, issued Oct. 8, 1996 (“Davila”).
3 Oki et al., US 5,208,293, issued May 4, 1993 (“Oki”).
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Application 11/482,814
DISCUSSION
Issue
The issue with respect to this appeal is whether the evidence of record
supports the Examiner’s conclusion that the rejected claims would have been
obvious over Davila combined with Oki under 35 U.S.C. § 103(a).
The Examiner finds that Davila discloses a self-lubricating catheter
valve comprising a silicone polymer with the same physical characteristics
as the instant claims and a solid lubricant dispersed throughout the
elastomer. Non-Final Act. 8.4 The Examiner finds that Oki teaches the use
of PFPE as a lubricant for elastomers. Id. The Examiner finds that:
[i]t would have been prime facie [sic] obvious at the time of the
invention to a person of ordinary skill in the art to modify the
silicone rubber composition containing solid lubricants
disclosed in Davila and add the liquid lubricants disclosed
within Oki. It is generally considered to be prime facie [sic]
obvious to combine compounds each of which is taught by the
prior art to be useful for the same purpose in order to form a
composition that is to be used for an identical purpose. The
motivation for combining them flows from their having been
used individually in the prior art, and from them being
recognized in the prior art as useful for the same purpose. As
shown by the recited teachings, instant claims are no more than
the combination of conventional lubricants for use in silicone
4 Non-Final Action, mailed May 16, 2013. The Final Action appealed from
refers back to this Action as setting forth the basis for the rejection under 35
U.S.C. § 103(a). Final Act. 3.
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Application 11/482,814
rubber compositions. It therefore follows that the instant claims
define prime facie [sic] obvious subject matter.
Non-Final Act. 9.
Appellants contend that there is nothing in the cited references that
teaches or suggests that the liquid lubricant would migrate to the surface of
the polymer. Appeal Br. 9. Appellants argue that there is no rationale for
combining the references and that Davila teaches away from the proposed
composition. Id. Appellants contend that one skilled in the art would not
have reasonably expected success in using the lubricant of Oki in Davila as
adding the oil to the polymer of Davila would potentially be detrimental to
the attributes of the polymer. Appeal Br. 10. Appellants argue that the
Examiner engaged in improper hindsight in reaching the conclusion of
obviousness. Id.
Findings of Fact
We adopt as our own the Examiner’s findings and analysis. The
following findings are included for emphasis and reference convenience.
FF1. Davila discloses a self-lubricating catheter valve comprising a
silicone polymer having a tensile strength of from 11.5 megapascals to 15
megapascals and a Shore A hardness of from 20 to 50. Davila col. 2,11. 29-
39.
FF2. The preferred polymers used in Davila are “Silastic Q7-47-20,
35, or 50 medical grade ETR elastomer.” Davila col. 2,11. 42-43.
FF3. The Specification teaches that Silastic Q7-4720 and Q7-4735
can be used in the practice of the invention. Spec. 133.
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Application 11/482,814
FF4. The catheter valve of Davila also comprises an effective amount
of a lubricity enhancing additive which is “substantially uniformly
distributed throughout the elastomer material.” Davila col. 2,11. 52—60.
FF5. Oki discloses rubber (elastomer) compositions having low
friction. Oki Abstract.
FF6. The elastomer compositions of Oki contain a low-molecular
weight fluorine-containing polymer such as fluoropolyether to impart good
sliding properties to the elastomer. Oki col. 3,11. 43—57.
Principles of Law
“The factual predicates underlying an obviousness determination
include the scope and content of the prior art, the differences between the
prior art and the claimed invention, and the level of ordinary skill in the art.”
In reRouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998).
It is obvious to those skilled in the art to substitute one known
equivalent for another. See In re Omeprazole Patent Litigation, 483 F.3d
1364, 1374 (Fed. Cir. 2007) (“[T]his court finds no . . . error in [the]
conclusion that it would have been obvious to one skilled in the art to
substitute one ARC [alkaline reactive compound] for another.”).
“A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant. The degree of teaching away will
of course depend on the particular facts; in general, a reference will teach
away if it suggests that the line of development flowing from the reference’s
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Application 11/482,814
disclosure is unlikely to be productive of the result sought by the applicant.”
In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
Limitations which refer to things which may be done, but are not
required to be done are not regarded “as positive limitations in a claim
directed to structure. They cannot therefore be relied upon to distinguish
from the prior art.” In re Collier, 397 F.2d 1003, 1006 (CCPA 1968).
“Attorneys’ argument is no substitute for evidence.” Johnston v.
IVAC Corp., 885 F.2d 1574, 1581 (Fed. Cir. 1989).
“Any judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning, but so long as it takes into
account only knowledge which was within the level of ordinary skill at the
time the claimed invention was made and does not include knowledge
gleaned only from applicant’s disclosure, such a reconstruction is proper.”
In re McLaughlin, 443 F.2d 1392, 1395, 170 USPQ 209, 212 (CCPA 1971)
Analysis
Claim 1 is representative of the rejected claims and is directed to a
self-lubricating polymer composition consisting essentially of a silicone
elastomer and a PFPE lubricating oil.
The evidence of record supports the Examiner’s conclusion that the
subject matter of claim 1 would have been obvious to one of ordinary skill in
the art at the time the invention was made. Davila discloses devices
comprising a silicone elastomer and a solid lubricant. FF1—3. Oki discloses
the use of PFPE as a lubricant for elastomers. FF. 5 and 6. We agree with
the Examiner that it would have been obvious to one skilled in the art to
substitute one known elastomer lubricant for another. Ans. 3.
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Application 11/482,814
Appellants contend that neither of the references teach that the
lubricious properties of the polymer are the “result of a lubricating agent that
migrates through the polymer matrix.” Appeal Br. 9. As the Examiner
points out, the claimed phrase is “capable of migrating through the polymer
matrix”. Ans. 4. Such a limitation in a composition claim is analogous to
limitations in a claim to structures that refer to things which may be done,
but are not required, which are not regarded “as positive limitations”
regarding the structure that can be used to “distinguish from the prior art” In
re Collier, 397 F2d at 1004. That is, there is no requirement that the
lubricant actually perform the migrating function, and as such, it also cannot
be deemed a positive limitation on the compositional element. Thus, the
“capable of’ phrase here also cannot be used to distinguish the claimed
composition from the prior art.
Appellants argue that Davila teaches away from the claimed
composition in that Davila teaches that the lubricant should be uniformly
distributed through the polymer matrix. Appeal Br. 9. We are unpersuaded.
The portion of Davila cited by Appellants does not discourage or lead away
from the use of a liquid lubricant. Thus Davila does not teach away. In re
Gurley, 27 F.3d at 553.
Appellants contend that one skilled in the art would not have a
reasonable expectation of success in combining the references as the
addition of PFPE to the elastomers of Davila could be detrimental to the
physical properties of the compositions. Appeal Br. 10. We are
unpersuaded. Appellants point to nothing in the prior art to support this
contention, therefore, we find Appellants’ contention is unsupported
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Application 11/482,814
attorney argument. “Attorneys’ argument is no substitute for evidence.”
Johnston v. IVAC Corp., 885 F.2d 1574, 1581 (Fed. Cir. 1989).
Finally, Appellants argue that the Examiner has engaged in
impermissible hindsight. Appeal Br. 10. We are unpersuaded. As the
Examiner points out, the cited references disclose all of the elements of the
claims and the Examiner’s analysis only takes into account what was known
in the art at the time the invention was made and does not use information
gleaned from the specification. See Ans. 5.
Conclusion of Law
We conclude that the evidence of record support the Examiner’s
conclusion that the subject matter of claim 1 would have been obvious over
Davila combined with Oki under 35 U.S.C. § 103(a).
Claims 3, 5, 44, and 47—52 have not been argued separately and
therefore fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
SUMMARY
We affirm the rejection based on 35 U.S.C. § 103(a).
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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