Ex Parte Parsonage et al

Patent Trial and Appeal Board

Mar 15, 2016

13402141 (P.T.A.B. Mar. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/402,141 02/22/2012
11050 7590 03/17/2016
SEAGER, TUFTE & WICKHEM, LLP
100 South 5th Street
Suite 600
Minneapolis, MN 55402
FIRST NAMED INVENTOR
Edward Parsonage
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.
1001.2334103 1004
EXAMINER
REUTHER, ARRIE L
ART UNIT PAPER NUMBER
1763
NOTIFICATION DATE DELIVERY MODE
03/17/2016 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):
BSC.USPTO@stwiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EDWARD PARSON AGE, DANIEL J. HORN,
JOHN J. CHEN, PAUL J. MILLER,
DOUGLAS A. DEVENS JR., and JAN WEBER
Appeal2014-005422
Application 13/402,141
Technology Center 1700
Before TERRY J. OWENS, CATHERINE Q. TIMM, and
AVEL YN M. ROSS, Administrative Patent Judges.
ROSS, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 appeal under 35 U.S.C. § 134 from the Examiner's final
rejection of claims 2---6 and 9-22, under 35 U.S.C. § 102(b). We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 In our opinion below, we refer to the Final Office Action filed June 18,
2013 (Final), the Appeal Brief filed November 18, 2013 (Appeal Br.), the
Examiner's Answer filed January 31, 2014 (Ans.), and the Reply Brief filed
March 31, 2014 (Reply Br.).
2 Appellants identify the real party in interest as Boston Scientific SciMed,
Inc., the assignee of the subject patent application. Appeal Br. 3.
Appeal2014-005422
Application 13/402,141
STATEMENT OF CASE
The claims are directed to medical devices comprising
nanocomposites. Claim 2, reproduced below, is illustrative of the claimed
subject matter:
2. A medical device, comprising:
at least one component prepared from a nanocomposite
material, the nanocomposite material comprising:
a matrix material;
a first plurality of nanoparticulate filler particles; and
a second plurality of nanoparticulate filler particles;
wherein the first plurality of nanoparticulate filler particles
comprises a different material than the second plurality of
nanoparticulate filler particles;
wherein one of the first plurality of nanoparticulate filler
particles or the second plurality of nanoparticulate filler particles
is dispersed throughout the matrix material in a substantially
non-uniform distribution.
Claims Appendix at Appeal Br. 14.
The Examiner rejected claims 2---6 and 9-22 under 35 U.S.C § 102(b)
as being anticipated by Acquarulo, Jr. et al. 3 as evidenced by Nanocor4 and
Cloisite5 Product Information.
OPINION
Appellants contest the findings of the Examiner and argue the
Examiner erred in rejecting claims 2---6 and 9-22. According to Appellants,
the issues arising for claim 2 are relevant for all claims. Appellants present
3 Acquarulo et al., US 6,833,392 Bl, issued December 21, 2004 (hereinafter
"Acquarulo").
4 Nanocor, Nanoclay Structures, http://www.nanocor.com/nano_struct.asp
(last visited June 14, 2013) (hereinafter "Nanocor").
5 Southern Clay Products/Rockwood Additives, Cloisite® 30B Typical
Physical Properties Bulletin (undated) (hereinafter "Closite").
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Application 13/402,141
additional arguments against the rejection of claims 9 and 11 6 as well as
claims 21 and 22.
Claims 2-6, 9-20, and 227
The Examiner finds that Acquarulo teaches the medical device of
claim 2 of the instant application and explains
Acquarulo, Jr. et al. teach an intravascular catheter having a
tubular shaft comprising a nylon block copolymer and a nano
clay filler (col. 3, line 52). Acquarulo, Jr. et al. acknowledge the
use of additives within a polymer matrix such as talc, clays and
mica of micron size (col. 1, line 16). Acquarulo, Jr. et al.
specifically teach nano clays wherein the nano clays can be
different types and mixtures thereof (col. 2, line 59).
Furthermore, Acquarulo, Jr. et al. demonstrate the use of two
different types of nano clays: Cloisite 308 and Nanocor in a
matrix material (Example 1 ). The Nanocor micro clay is made
from montmorillonite which is a smectite clay mineral with a
platelet structure (Nanocor Product Information). The Cloisite
308 is an alkyl quaternary ammonium salt bentonite (Cloisite
product information). Due to the different properties of the nano
clays, one of the nano clays will have properties better suited to
dispersion within the polymer matrix, thereby creating a uniform
distribution. The second nanoclay will be less dispersible in the
polymer matrix and will create a non-uniform distribution.
Therefore the use of two different types of nanoclays with
different dispersion properties within the polymer matrix will
meet the limitations set forth by the instant claims.
6 Because we reverse the rejection of independent claim 2, the rejections of
claims 9 and 11 are similarly reversed by virtue of their dependency.
7 The issues presented for claim 2 are similar to those for claim 22.
Therefore, we discuss claim 2 (and claims depending therefrom) and claim
22 together. We discuss claim 21 separately below.
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Application 13/402,141
Final 3; Ans. 2. The Examiner also finds that Acquarulo teaches using
mixtures of different nanoclays. Ans. 4--5; see also Acquarulo, col. 2, 11. 59-
61.
Appellants argue first that while Acquarulo does teach the use of
Cloisite and Nanocor clays, Acquarulo "teach[ es] using either Cloisite 30B
or Nanocor in a series of polymer matrices modified by the addition of one
of the filler materials. Not a single example is provided by Acquarulo, Jr. et
al. of a nanocomposite material comprising a first plurality of
nanoparticulate filler particles and a second plurality of nanoparticulate filler
particles .... " Appeal Br. 5. Appellants next argue that Acquarulo fails to
disclose "one of the first plurality of nanoparticulate filler particles or the
second plurality of nanoparticulate filler particles is dispersed throughout the
matrix material in a substantially non-uniform distribution" as required by
claim 2. Id. at 6. And, Appellants discredit the Examiner's position that the
"substantially non-uniform distribution" is inherently present as being
unsupported by any facts in Acquarulo or any extrinsic source. Id. at 7.
According to Appellant,
Acquarulo, Jr. remains silent with regard to the express or
inherent state of distribution [uniform v. non-uniform] of a
plurality of nanoparticulate filler particles dispersed throughout
such a composition. Indeed, Acquarulo, Jr. does not characterize
the uniformity of distribution of even the disclosed
nanoparticulate filler particles compositions, said disclosed
compositions being limited to a single plurality of
nanoparticulate filler particles dispersed within a matrix.
Reply Br. 2; see also Appeal Br. 8.
The dispositive issue for claim 2 (and claims depending therefrom)
and claim 22, is: Have Appellants identified a reversible error in the
Examiner's finding that the polymer composite of Acquarulo inherently
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Application 13/402,141
results in a composite where the first or second plurality of nanoparticulate
fillers is "dispersed throughout the matrix material in a substantially non-
uniform distribution" as recited by the claims? On this record, we must
agree with Appellants and cannot sustain the Examiner's rejection. Our
reasons follow.
To be anticipatory, a reference must describe, either expressly or
inherently, each and every claim limitation, arranged or combined as
required by the claimed invention, and enable one of skill in the art to
practice an embodiment of the claimed invention without undue
experimentation. See, e.g., In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir.
2009). Our reviewing court has also explained that, "[t]o establish
inherency, the extrinsic evidence must make clear that the missing
descriptive matter is necessarily present in the thing described in the
reference." In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (internal
quotation and citation omitted). It is settled law that "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
Oelrich, 666 F.2d 578, 581(CCPA1981) (internal quotations and citations
omitted). The Examiner has the burden of providing reasonable proof that a
claim limitation is an inherent characteristic. In re Spada, 911 F .2d 705, 708
(Fed. Cir. 1990).
Acquarulo, like the instant invention, teaches a composite of a
polymer matrix, for use in medical devices, where nano clay fillers are
dispersed within the matrix. See Acquarulo, col. 2, 11. 5-20. But, Acquarulo
more specifically is directed toward combining the polymer/nano clay
matrix with a crosslinking promotor to improve certain mechanical
properties of the matrix. Id.; see also id. at col. 3, 11. 47-50 ("upon
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Application 13/402,141
incorporation of a crosslinking promotor, the effect of the nano clay is
enhanced").
The Examiner finds that Acquarulo teaches use of multiple nano
clays, including "hydrotalcite, montmorillonite, mica flouride, octasilicate,
and mixtures thereof," within the polymer matrix. Ans. 4-5 (quoting
Acquarulo, col. 2, 11. 59---60). But, the Examiner continues that:
[d]ue to the different properties of the nano clays, one of the nano
clays will have properties better suited to dispersion within the
polymer matrix, thereby creating a uniform distribution. The
second nanoclay will be less dispersible in the polymer matrix
and will create a non-uniform distribution.
Final 3; Ans. 2. The difficulty with the Examiner's position is that it rests
on an incomplete evidentiary basis. Acquarulo suggests a strong preference
toward a uniform distribution of the of the nanoparticulate filler within the
polymer matrix. In particular, Acquarulo notes that "without some
additional treatment, the polymer will not infiltrate into the space between
the layers of the additive sufficiently and the layers of the layered inorganic
material will not be sufficiently uniformly dispersed in the polymer."
Acquarulo col. 1, 11. 23-27. Acquarulo further discusses known methods "to
provide a more uniform distribution." See id. at col. 1, 11. 28-57. By way of
example, Acquarulo discusses using montmorillite clay and
[b ]ecause montmorillonite clay is hydrophilic, it is not
compatible with most polymers and should be chemically
modified to make its surface more hydrophobic. The most widely
used surface treatments are amonium cations which can be
exchanged for existing cations already on the surface of the clay.
The treated clay is then preferably incorporated into the polymer
matrix herein, by melt mixing by extrusion or more preferably,
twin-screw extrusion.
Id. at col. 2, 1. 65---col. 3, 1. 6.
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And, as Appellants note, the Examiner creates a combination of
Closite 30B and Nanocor-a combination not (expressly) taught by
Acquarulo. Appeal Br. 5-6. Although we agree with the Examiner that one
filler might disperse somewhat differently than the other, the Examiner has
not established a reasonable basis to believe that one of the nano clay fillers
would be distributed "substantially non-uniformly" as required by claim 2.
The Examiner's findings fall short of meeting the requisite burden to
establish a prima facie case of unpatentability.
To anticipate claims 2---6, 9-20, and 22 Acquarulo must teach a
composite having nanoparticulate filler particles "dispersed throughout the
matrix material in a substantially non-uniform distribution"-the Examiner
has not established that Acquarulo' s composite has such a distribution.
Accordingly, we reverse the§ 102 rejection of claims 2---6, 9-20, and 22.
Claim 21
Independent claim 21, while seemingly similar to independent claim
2, additionally requires "a dispersant in solution with one of the first
plurality of nanoparticulate filler particles or the second plurality of
nanoparticulate filler particles" and "wherein the one of the first plurality of
nanoparticulate filler particles or the second plurality of nanoparticulate
filler particles in solution with the dispersant is dispersed throughout the
matrix material in a substantially uniform distribution." Claims Appendix at
Appeal Br. 17-18 (emphasis added).
The Examiner finds that these requirements are met by Acquarulo
where it
teach[es] the montmorillonite clay (Nanocor micro clay) is
hydrophilic and is therefore not compatible with most polymers.
As such, the montmorillonite clay is chemically modified to
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Application 13/402,141
make its surface more hydrophobic. Acquarulo, Jr. et al. teach a
surface treatment such as ammonium cations are used to
exchange cations already existing on the surface of the clay (col.
2, line 65). As such, the ammonium cations read on the
requirement of a dispersant. The treatment of the N anocor micro
clay with the ammonium cations will disperse thought the matrix
material in a substantially uniform distribution . . . thereby
meeting the limitations set forth by the instant claims.
Final 5; Ans. 4.
Appellants argue that, like claim 2, Acquarulo is silent as to the
distribution of the clay particles within the polymer matrix. Appeal Br. 10.
And, Acquarulo does not teach "a dispersant in solution" with one of the
clay particles. Id.
Therefore, the issue for claim 21 becomes: Have Appellants identified
a reversible error in the Examiner's finding that Acquarulo discloses "a
dispersant in solution with one of the first plurality of nanoparticulate filler
particles or the second plurality of nanoparticulate filler particles" where one
is "is dispersed throughout the matrix material in a substantially uniform
distribution"? For the reasons provided by the Examiner in the Final Office
Action and the Examiner's Answer, Appellants have not persuaded us of a
reversible error in the Examiner's finding.
Unlike claim 2, claim 21 does not involve inherency. Here,
Acquarulo teaches the nanoparticulate filler in solution with a dispersant and
that the solution with the nanoparticulate filler particles is dispersed
throughout the matrix in a substantially uniform distribution. As the
Examiner finds, Acquarulo teaches surface treatment of the montmorillonite
clay with ammonium cations to make the surface more hydrophobic so that
the nanoparticulate filler (the montmorillonite clay) will disperse throughout
the matrix. Final 5. Acquarulo explains that chemically treated clay
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provides for a more uniform dispersion within the matrix. See Acquarulo,
col. 1, 11. 23-3 5 and col. 2, 1. 65---col. 3, 1. 3.
Therefore, a preponderance of the evidence supports the finding of the
Examiner.
CONCLUSION
The Examiner did not err in rejecting claim 21, under § 102(b ), as
being anticipated by Acquarulo. But, the Examiner did err in rejecting
claims 2-20 and claim 22, under § 102(b ), as being anticipated by
Acquarulo.
DECISION
For the above reasons, the Examiner's rejection of claim 21 is
affirmed and the Examiner's rejection of claims 2-20 and 22 is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a)(l )(iv) (2009).
AFFIRMED-IN-PART
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