Ex Parte Kempers et al

Patent Trial and Appeal Board

Nov 13, 2014

11416893 (P.T.A.B. Nov. 13, 2014)

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.
11/416,893 05/03/2006 Roger S. Kempers LU06001USU 7333
51029 7590 11/14/2014
Jay M. Brown
JAY BROWN LAW FIRM
P.O. Box 1407
Cary, NC 27512
EXAMINER
HOOK, JAMES F
ART UNIT PAPER NUMBER
3754
MAIL DATE DELIVERY MODE
11/14/2014 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ROGER S. KEMPERS, ALAN D. O’LOUGHLIN, and
ALAN M. LYONS
____________

Appeal 2012-009880
Application 11/416,8931
Technology Center 3700
____________

Before HUBERT C. LORIN, MICHAEL W. KIM, and
BRUCE T. WIEDER, Administrative Patent Judges.

WIEDER, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s rejection of claims 26–31 and 39. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

CLAIMED SUBJECT MATTER
Appellants’ claimed invention relates to a monolithic conduit body
having raised micro-scale features. (Spec. ¶ 5 and claim 26.2)

1 According to Appellants, the real parties in interest are Lucent
Technologies Inc., its successor entity, Alcatel-Lucent USA Inc., and its
parent company Alcatel-Lucent. (Appeal Br. 3.)
Appeal 2012-009880
Application 11/416,893

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Claim 26, the sole independent claim on appeal is reproduced below:
26. An apparatus, comprising:
a monolithic conduit body having a lining that bounds a
channel, the channel having a longitudinal axis;
the lining including a lining base;
the lining including raised micro-scale features having
average diameters of less than about 1,000 micrometers
measured at the lining base;
wherein the raised micro-scale features are monolithic
with the lining base and with the lining and with the monolithic
conduit body; and
wherein the longitudinal axis of the channel includes a
curved axial region.

REJECTIONS
Claims 26–31 and 39 are rejected under 35 U.S.C. § 103(a)3 as being
unpatentable over Extrand (US 2005/0145285 A1, pub. July 7, 2005) in
view of Shastri (US 2006/0085063 A1, pub. Apr. 20, 2006) and as being
unpatentable over Shastri in view of Extrand.

ANALYSIS
Claim 26 is the only independent claim. The dependent claims are not
argued separately. All claims stand or fall together.

2 The specification is titled “Superhydrophobic Surfaces and Fabrication
Process.” However, the independent claim-at-issue, claim 26, does not
recite a superhydrophobic surface.
3 Now 35 U.S.C. § 103.
Appeal 2012-009880
Application 11/416,893

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“Monolithic”
The Specification states: “Throughout this specification, the term
‘monolithic’ means that the device elements so described, such as the raised
micro-scale features 112 and the lining base 110, are a single, unitary body
of the same material.” (Spec. ¶ 22.)

The Rejection over Extrand in view of Shastri
The Examiner asserts that “Extrand discloses the recited conduit body
22 [sic, 102] having a monolithic lining provided with raised micro scale
features . . .” and “discloses all of the recited structure with the exception of
having different diameters and the specific size of the micro features.”
(Answer 4.) The Examiner explains that
Extrand describes [that] the surface 20 [on the interior of the
conduit] is formed directly on the inwardly faced surface of
body 102 with body 102 serving as the substrate as an
alternative to a separate substrate layer, and therefore would
inherently have to be formed of the same material, even though
this feature is not a claimed feature.
(Answer 6.)
Appellants respond that “[t]he Office Action does not point to any
portion of Extrand teaching that the device shown in Figure 1c can include
an ultraphobic fluid contact surface 20 being monolithic with inner surface
114, and with the conduit body being monolithic.” (Appeal Br. 6.)
Claim 26 recites that “the raised micro-scale features are monolithic
with the lining base and with the lining and with the monolithic conduit
body . . . .” Therefore, it is relevant whether the surface on the interior of an
Extrand conduit would inherently have to be formed of the same material as
the body when the body serves as the substrate.
Appeal 2012-009880
Application 11/416,893

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Extrand discloses that a film insert can be molded onto the substrate,
i.e., onto the interior surface of a conduit. (Extrand ¶ 49 and US Ser. No.
10/304,459 cited therein.) The ‘459 application is specifically related to
molding a thin film to a substrate. Therefore, a monolithic body and inner
surface is not inherent in Extrand even where the body serves as the
substrate.
Thus, we must disagree with the Examiner and reverse the rejection of
claim 26 over Extrand in view of Shastri. For the same reason, we reverse
the rejection of dependent claims 27–31 and 39 over Extrand in view of
Shastri.

The Rejection over Shastri in view of Extrand
The Examiner asserts that Shastri “discloses all of the recited structure
with the exception of forming the tube as a curved section” (Final Action 3–
4, citing Shastri ¶¶ 115–125) and, in particular, that Shastri discloses a
“single unitary body” with “micro features.” (Answer 7, citing Shastri
¶¶ 70, 90, and 116.)
Appellants argue with regard to Shastri that
the Examiner's Answer does not, as recited in Appellants' claim
26, point to any teaching in Shastri that the “tubular body
comprising substantially circumferential polymer fibers” so
relied on as being a conduit body, can be or inherently must be
monolithic with the “... microscale features disposed at the
interior surface ...” so relied on as being raised micro-scale
features, that is, in a single, unitary body of the same
material.
(Reply Br. 5.)
Paragraph 70 of Shastri states that “the invention combines the
nanoscale engineering of polymeric fibers with micro-scale patterning of
Appeal 2012-009880
Application 11/416,893

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surfaces to design and fabricate superior synthetic conduits . . . .” Paragraph
90 states that “the polymer fibers comprise polyurethane fibers.” And
paragraph 116 states that “the rotating mandrel used to collect electro spun
polymer fibers during preparation of the conduit if [sic] the invention can
function as a pattern. In this respect, before preparation of the conduit, the
mandrel is adapted to include complementary micro-scale features.”
Paragraph 119 states that “the micro-scale features can be protrusions or
wells.”
In other words, the rotating mandrel acts like a core to collect polymer
fibers. The mandrel can be prepared to have micro-scale features and
because Shastri discloses using only polymer fibers, the conduit with micro-
scale features that is formed will be monolithic. We are not persuaded by
Appellants’ arguments that Shastri does not disclose raised micro-scale
features in a monolithic conduit body.
With regard to the recitation in claim 26 of a “curved axial region,”
Appellants do not respond directly to the Examiner’s statement that
paragraph 63 of Shastri “discloses use in catheters which are known to have
curved sections . . . .” (Answer 9.) The Examiner also notes that Extrand
shows a curved conduit in Figure 1c. (Id. at 4.) We agree with the
Examiner (id. at 9) that both
Extrand and Shastri deal with the same type of ultraphobic and
micro-scale features used on the inside surfaces of conduits to
affect flow there through [sic] and one reference clearly would
provide an equivalent manner to form the conduit and/or the
features in that the [sic] are drawn to the same equivalent
structures and as set forth in the KSR decision, combining prior
art elements according to known methods to yield predictable
results are in fact obvious to one skilled in the art.

Appeal 2012-009880
Application 11/416,893

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We are not persuaded by Appellants’ arguments that it would not have
been obvious to provide the monolithic conduit body of Shastri with a
curved axial region.

DECISION
The Examiner’s rejection of claims 26–31 and 39 as obvious under 35
U.S.C. § 103(a) over Extrand in view of Shastri is reversed. The Examiner’s
rejection of claims 26–31 and 39 as obvious under 35 U.S.C. § 103(a) over
Shastri in view of Extrand is affirmed.
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)(1)(iv).

AFFIRMED

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