Ex Parte Ribi

Patent Trial and Appeal Board

Mar 2, 2017

13678463 (P.T.A.B. Mar. 2, 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.
13/678,463 11/15/2012 Hans O. Ribi SGAN-007CON2 1263
24353 7590 03/06/2017
BOZICEVIC, FIELD & FRANCIS LLP
Bozicevic, Field & Francis
201 REDWOOD SHORES PARKWAY
SUITE 200
REDWOOD CITY, CA 94065
EXAMINER
KHATRI, PRASHANT J
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
03/06/2017 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):
docket@bozpat.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HANS O. RIBI
Appeal 2016-000728
Application 13/678,463
Technology Center 1700
Before ROMULO H. DELMENDO, DONNA M. PRAISS, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL1
1 In our Opinion below, we refer to the Final Action delivered electronically
on November 6, 2014 (“Final Act.”); the Advisory Action delivered
electronically on February 20, 2015 (“Adv. Act.”); the Appeal Brief filed
June 1, 2015 (“App. Br.”); and the Examiner’s Answer delivered
electronically on August 14, 2015 (“Ans.”). A Reply Brief was not filed.
Appeal 2016-000728
Application 13/678,463
STATEMENT OF THE CASE
Appellant2 appeals under 35 U.S.C. § 134(a) from a rejection of
claims 1, 4—6, 8—13, and 32-41. Final Act. 4. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
The claims are directed to composite materials consisting of a shape
memory polymer consisting of a thermoplastic polyurethane that changes
shape, and a thermochromic pigment or color change compound that
changes color. Claims 1, 37, and 39. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A composite material consisting of:
(a) a shape memory polymer consisting of a
thermoplastic polyurethane that changes shape in response to a
first applied stimulus; and
(b) a thermochromic pigment that changes color in
response to a second applied stimulus.
App. Br. 20 (Claims App’x).
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Coran et al. (“Coran”) US 4,141,863
Yee et al. (”Yee”) US 4,215,208
Kamada et al. US 5,208,132
(“Kamada”)
Langer et al. US 6,388,043 B1
(“Langer”)
21 C.F.R. § 172.615 (“FDA Rule”)
Feb. 27, 1979
July 29, 1980
May 4, 1993
May 14, 2002
2 Appellant identifies the real party in interest as Segan Industries, Inc. App.
Br. 3.
2
Appeal 2016-000728
Application 13/678,463
REJECTIONS
The Examiner maintains the following rejections under 35 U.S.C.
§ 103(a): (1) claims 1, 4—6, 8—13, and 32—36 over Langer in view of Yee;
(2) claims 37 and 38 over Langer in view of Yee and Kamada; and (3)
claims 39-41 over Coran in view of Yee with evidence from FDA Rule.
Final Act. 4—6. The Examiner withdrew the rejections of claim 41 under
35 U.S.C. § 112,111 and 2. Adv. Act. 2.
OPINION
Appellant argues the patentability of independent claim 1 and
dependent claims 4—6, 12, 32, and 35—36 as a group (Group I), and
separately argues for patentability of other claims dependent on claim 1,
specifically, claims 8 and 9 (Group II), claims 10 and 11 (Group III), claim
13 (Group IV), and claims 33 and 34 (Group V). App. Br. 5, 10, 11.
Appellant also argues the patentability of claims 37 and 38 (Group VI) and
claims 39-41 (Group VII), which do not depend from claim 1.
Because all of the Examiner’s claim rejections are founded on at least
the improper combination of Langer with Yee (Final Action 4—6), we
address our discussion of the claims to claim 1, which is representative of
the issue before us.
The Examiner finds that Langer discloses a shape memory
composition that is a block copolymer consisting of polyester and
polyurethane, which is a thermoplastic urethane. Final Act. 4 (citing Langer
Abstract, Fig. 5, cols. 5—13, and 17—18). The Examiner further finds that
Langer’s composition can include fillers and other additives, but is silent as
to the addition of a thermochromic pigment. Id.', Ans. 8. With respect to
3
Appeal 2016-000728
Application 13/678,463
Yee, the Examiner finds that the reference discloses a thermochromic
compound wherein polydiacetylene used as a thermochromic pigment
allows for different color transitions at different temperatures wherein the
compound is disposed in a thermoplastic material. Id. (citing Yee cols. 4—
17). On this basis, the Examiner concludes that it would have been obvious
to one of ordinary skill in the art to add thermochromic compounds to the
thermoplastic shape memory polymer compositions of Langer in order to
provide a color change function. Id. at 5. The Examiner states that
[F]or the specific end-use and behavior, one of ordinary skill in
the art would have been motivated to add the desired additive for
the desired behavior. As such, in order to add a color change
feature, one of ordinary skill in the art would have been
motivated at add a color change compound to exhibit such a
feature.
Ans. 8—9. However, the Examiner does not explain why one of ordinary
skill in the art would seek to add a thermochromic pigment to a shape
memory polymer without using the instant application as a guide.
Appellant argues that the Examiner provides no objective motivation
to combine Langer and Yee in the manner asserted. App. Br. 6. We agree.
“[A] patent composed of several elements is not proved obvious
merely by demonstrating that each of its elements was, independently,
known in the prior art.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418
(2007). Neither will mere conclusory statements sustain an obviousness
rejection; “instead, there must be some articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness,” In re
Kahn, 441 F,3d 977, 988 (Fed. Cir. 2006). The Examiner must provide an
adequate reason for a person of ordinary skill in the art at the time the
invention to have modified the reference or combination of references to
4
Appeal 2016-000728
Application 13/678,463
arrive at the claimed invention. See KSR, 550 U.S. at 418 (“[I]t can be
important to identify a reason that would have prompted a person of
ordinary skill in the relevant field to combine the elements in the way the
claimed new invention does.”). In the absence of such an explanation, the
rejection must be reversed. In re Kahn, 441 F.3d at 988; In re Rouffet, 149
F.3d 1350, 1358 (Fed. Cir. 1998) (“hindsight” is inferred when the specific
understanding or principal within the knowledge of one of ordinary skill in
the art leading to the modification of the prior art in order to arrive at
appellant’s claimed invention has not been explained); Perfect Web Techs.
Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1330 (Fed. Cir. 2009) (“[T]o invoke
‘common sense’ or any other basis for extrapolating from prior art to a
conclusion of obviousness, [the factfinder] must articulate its reasoning
with sufficient clarity for review.”).
Langer is directed to shape memory polymer compositions, especially
those that can hold more than one shape in memory, articles of manufacture
thereof, and methods of preparation and use thereof. Langer col. 2,1. 66-
col. 3,1. 3. As Appellant explains, “[t]o the extent that Langer discloses
incorporating any additional components with the shape memory polymers,
Langer is specific to the use of the shape memory polymers for implanted
biomedical applications and internal use (i.e., inside the body.)” App. Br. 7
(citing Langer col. 15,1. 55—col. 16,1. 20). Langer contains no motivation or
reason for one of ordinary skill in the art at the time of the invention to
modify the reference by including a thermochromic pigment, which would
not be visible inside a body.
The burden is on the Examiner to cite evidence in the references or
provide articulated reasoning with some rational underpinning to support the
5
Appeal 2016-000728
Application 13/678,463
conclusion of obviousness. See In re Kahn, 441 F.3d at 988. The Examiner
has not met this burden. Thus, Appellant persuasively argues that Yee, in
combination with Langer, fails to establish a prima facie case of obviousness
of claim 1. For the same reasons, the Examiner also fails to establish a
prima facie case of obviousness of claims 4—6, 8—13, 32-41.
DECISION
For the reasons set forth above, we reverse the obviousness rejections
of claims 1, 4—6, 8—13, and 32-41.
REVERSED
6