Ex Parte Sowinski et al

Patent Trial and Appeal Board

Apr 28, 2017

13706277 (P.T.A.B. Apr. 28, 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.
13/706,277 12/05/2012 Krzysztof Sowinski 06-01260US03 9327
99185 7590 05/02/2017
(Retinae TTS» T eaal Shared .Services;
EXAMINER
1300 MacArthur Boulevard
Mahwah, NJ 07430
FISCHER, JUSTIN R
ART UNIT PAPER NUMBER
1747
NOTIFICATION DATE DELIVERY MODE
05/02/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KRZYSZTOF SOWINSKI, RONALD RAKOS, JERRY DONG,
DENNIS KUJAWSKI, PATRICK A. HAVERKOST,
and PAUL F. CHOUINARD
Appeal 2016-003582
Application 13/706,277
Technology Center 1700
Before CHUNG K. PAK, JULIA HEANEY, and JANE E. INGLESE,
Administrative Patent Judges.
INGLESE, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appellants request rehearing of our Decision mailed February 17,
2017 (“Dec.”), affirming the Examiner’s rejections of claims 1, 4, 5, 7, 10,
12-15, 20, 22, 23, 25, 32, 33, 42, 44, 45, and 47^9 under 35 U.S.C.
§ 103(a). Request for Rehearing filed April 4, 2017 (“Req. Reh.”), 1.
We deny Appellants’ request to change our Decision for the following
reasons.
Appellants argue that we overlooked their Wands1 factor analysis of
Schmitt, Du, and Chouinard individually, and overlooked their Wands factor
1 In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).
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Application 13/706,277
analyses of the following combinations of references: Schmitt, Du, and
Pinchuk; Schmitt, Du, Richter, and Pinchuk; Schmitt, Du, Richter, Burnside,
and Pinchuk; Chouinard, Du, and Pinchuk; and Chouinard, Du, Richter, and
Pinchuk. Req. Reh. 2—7. Appellants further argue that we failed to consider
the first and second Declarations of Jerry Dong and explain why the
Declarations are insufficient to establish that the applied prior art does not
enable the claimed invention. Req. Reh. 3. Appellants also argue that we
ignored Exhibits C, I, K, and L.2 Req. Reh. 9.
However, our Decision indicates that we considered Appellants’
arguments, which include Appellants’ Wands factor analyses, the first and
second Declarations of Jerry Dong, and Exhibits A—I, K, and L,3 together
with the evidence of record tending to show that the prior art is enabling,
particularly the disclosures of Du, and we concluded that, on balance, the
preponderance of the evidence weighs in favor of the Examiner’s
determination that Appellants do not meet their burden of establishing that
the applied prior art does not enable the claimed subject matter. Dec. 9—11.
In re Antor Media Corp., 689 F.3d 1282, 1288 (Fed. Cir. 2012) (A prior art
printed publication, like a prior art patent, “is presumptively enabling
barring any showing to the contrary by a patent applicant or patentee.”).
2 Full citations to the applied prior art, Declarations, and Exhibits are of
record.
3 Our Decision makes clear that we considered Appellants’ arguments,
which include Appellants’ Wands factor analyses, by citing pages 16—22,
24—29, and 32—37 of Appellants’ Appeal Brief. Dec. 9-10. Our Decision
also indicates that we considered both Declarations of Jerry Dong (Dec. 10—
11) and considered Appellants’ Exhibits, including Exhibits A, B, C, D, E,
G, H, I, K, and L (Dec. 8—10). Our failure to explicitly mention Exhibit F
was an inadvertent and harmless error.
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As our Decision indicates, Appellants’ arguments (including
Appellants’ Wands factor analyses), the statements made in both
Declarations, and Exhibits A—I, K, and L, do not take into consideration the
express disclosure in Du that polycarbonate urethanes are suitable adhesives
for use in stents to bond woven textiles to PTFE. Dec. 9—11. This
disclosure in Du constitutes part of the state of the art at the time of
Appellants’ invention and informs the level of ordinary skill in the art, which
are both factors to consider when evaluating whether sufficient evidence
exists to support a determination that a disclosure does not satisfy the
enablement requirement. In re Wands, 858 F.2d 731, 737 (Fed, Cir. 1988).
By ignoring Du’s disclosure that polycarbonate urethanes are suitable
adhesives for use in stents to bond woven textiles to PTFE, Appellants’
arguments and Wands factor analyses, as well as the statements made in both
Declarations and Exhibits A—I, K, and F, do not fairly characterize the state
of the art at the time of Appellants’ invention and inaccurately represent the
level of ordinary skill in the art.
Therefore, as set forth in our Decision, because Appellants’ arguments
and Wands factor analyses, the statements made in both Declarations, and
the relied-upon Exhibits, do not take into consideration the actual level of
ordinary skill in the art, and the actual state of the art in its entirety, at the
time of Appellants’ invention, Appellants fail to carry their burden of
establishing that the applied prior art does not enable the claimed subject
matter. Dec. 9—11.
Moreover, any failure to explicitly discuss every issue or every piece
of evidence in our Decision does not establish that we did not consider it.
Charles G. Williams Const., Inc. v. White, 326 F.3d, 1376, 1380 (Fed. Cir.
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2003) (“The Board’s failure to discuss the evidence upon which Williams
relies does not mean that it did not consider it”); cf Carolina Tobacco Co. v.
Bureau of Customs & Border Prot., 402 F.3d 1345, 1350 (Fed. Cir. 2005)
(“[T]he failure of Customs to explicitly discuss the six factors when it
initially increased Carolina’s bond does not establish that it did not consider
them.”); Lab. Corp. of Am. Holdings v. Chiron Corp., 384 F.3d 1326, 1332
(Fed. Cir. 2004) (stating that a district court’s failure to discuss an issue does
not necessarily establish that the court did not consider it).
Appellants assert that “the Board contends a Wands factor analysis
cannot be relied upon in the context of an obviousness analysis,” citing page
10 of our Decision. Req. Reh. 5.
Page 10 of our Decision, however, indcludes no such statement.
Rather, citing Symbol Techs., Inc. v. Opticon, Inc., 935 F.2d 1569, 1578
(Fed. Cir. 1991) we indicated that a non-enabling reference may qualify as
prior art for the purpose of determining obviousness under § 103. Dec. 10.
We also indicated that Appellants’ reliance on Impax Laboratories, Inc. v.
Aventis Pharmaceuticals Inc., 545 F.3d 1312 (Fed. Cir. 2008) is misplaced
because Impax held that a prior art reference must enable claimed subject
matter to anticipate a claimed invention rather than render it obvious.
Impax, 545 F.3d at 1315—1316. Dec. 10. We further indicated that a prior
art reference is presumptively enabling, and Appellants bear the burden of
demonstrating otherwise. Dec. 10 (citing In re Antor Media Corp., 689 F.3d
1282, 1288 (Fed. Cir. 2012).
Appellants further argue that “[t]he Board found that Exhibits A, B,
D, E ‘discuss the difficulty of bonding’ substances such as silicon to the
surface of Teflon (PTFE) and ePTFE.’ This finding constitutes evidence
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supporting a conclusion that the art relied upon by the Board does not
enable the claimed invention.” Req. Reh. 6 (citations omitted).
Appellants, however, take our statement out of context by omitting the
next sentence in our Decision. Our statement in its entirety reads as follows:
Many of the Exhibits submitted by Appellants discuss the
difficulty of bonding substances such as silicon to the surface of
Teflon (PTFE) and ePTFE. See, e.g., Ex. A, B, D, E. However,
Appellants’ and the Declarant’s reliance on the Exhibits ignores
the express disclosure in Du that polycarbonate urethanes are
suitable adhesives for use in stents to bond woven textiles to
Teflon (PTFE). Thus, although the difficulty of bonding
substances to PTFE may have been known, Du provides a
solution to this known problem by indicating that polycarbonate
adhesives are suitable for bonding woven textiles to PTFE in
stents. By ignoring this disclosure in Du, Appellants’ arguments
and the Declarations only partially consider the state of the art,
rather than the art as a whole at the time of Appellants’ invention.
Dec. 10-11.
Thus, as explained in our Decision, Du provides a solution to the
known problem of bonding substances to PTFE by disclosing that
polycarbonate adhesives are suitable for bonding woven textiles to PTFE in
stents. Id. As discussed above, we considered Du’s disclosures, as well as
Appellants’ arguments and relied-upon evidence, including Exhibits A, B,
D, and E, and concluded that, on balance, the evidence weighs in favor of
the Examiner’s determination that Appellants do not meet their burden of
establishing that the applied prior art does not enable the claimed subject
matter. Dec. 9—11.
Appellants further argue that they alleged in their Reply Brief that
“none of the disclosures by Schmitt, Du, Richter, Burnside, Chouinard and
Pinchuk ’431 disclose any working example of a thermoplastic textile
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successfully bound to an ePTFE material by the use of a polycarbonate
urethane adhesive . . . [and] disclose how to make and use a polycarbonate
urethane adhesive.” Appellants contend that the Board did not “substantially
dispute” these allegations, and therefore “concedes” them. Req. Reh. 6.
However, as discussed above, our Decision indicates that we
considered Appellants’ arguments, which include Appellants’ Wands factor
analyses, and supporting evidence, together with the additional evidence of
record tending to show that the prior art is enabling, and we concluded that
Appellants do not meet their burden of establishing that the applied prior art
does not enable the claimed subject matter. Dec. 9—11. The Board is “not
require[d] ... to address every argument raised by a party or explain every
possible reason supporting its conclusion.” Synopsys, Inc. v. Mentor
Graphics Corp., 814 F.3d 1309, 1322 (Fed. Cir. 2016). Accordingly, any
lack of a “substantial dispute” of Appellants’ assertions does not indicate
that we “concede” the assertions.
Appellants further argue that
[t]he Board contends that ‘polycarbonate urethanes as described
in Pinchuk’ constitute ‘conventional adhesives’ that are suitable
for binding a PTFE stent component to a polypropylene textile.
The Board’s contention is incorrect. The art relied upon by the
Board includes no such teaching. . . the Board has not shown
where in Pinchuk ’431 an adhesive made of polycarbonate
urethane is found.
Req. Reh. 4 (citations omitted).
Appellants, however, mischaracterize our statement, which reads as
follows:
Du’s disclosure of conventional adhesives used in the stent art,
such as polycarbonate urethanes as described in Pinchuk, which
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are suitable for binding a PTFE stent component to a
polypropoylene textile, would have led one of ordinary skill in
the art to use such a polycarbonate urethane adhesive to laminate
the ePTFE polymer lining to the knitted polypropylene textile
disclosed in Schmitt.
Dec. 8.
Accordingly, contrary to Appellants’ arguments, our Decision
indicates that Du discloses that polycarbonate urethanes as described in
Pinchuk are conventional adhesives used in the stent art that are suitable for
binding a PTFE stent component to a polypropoylene textile. Dec. 8.
Appellants further contest our indication at page 9 of our Decision
that “[a]s evident from Du’s disclosure, one of ordinary skill in the art would
have had sufficient skill to select a suitable solvent to combine with the
polycarbonate urethane, and also would have had sufficient skill to use an
appropriate technique for spraying the adhesive onto the ePTFE lining.”
Appellants assert that “no such teaching is found in Du.” Req. Reh. 6.
However, as discussed above, our Decision indicates that Du discloses
that polycarbonate urethanes as described in Pinchuk are conventional
adhesives used in the stent art that are suitable for binding a PTFE stent
component to a polypropoylene textile. Dec. 8. As we also indicated in our
Decision, Du discloses that the adhesive can be applied by spraying a
solution formed from the adhesive and a solvent onto the stent component.
Dec, 5,9. Du discloses suitable solvents in which to disperse the adhesive
so that it can be applied by spraying, and Du also describes various
alternative procedures for application of the adhesive. Du 8,11. 1—16.
Accordingly, in view of Du’s disclosures, and the level of skill in the art at
the time of Appellants’ invention, one of ordinary skill in the art would have
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had sufficient skill to use an appropriate technique, such as spraying, for
applying the polycarbonate urethane adhesive onto the ePTFE stent
component, and would have had sufficient skill to select an appropriate
solvent to use to disperse the adhesive for application by spraying. KSR Int 7
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (explaining that prior art
references must be read in context, taking into account “the background
knowledge possessed by a person having ordinary skill in the art” and “the
inferences and creative steps that a person of ordinary skill in the art would
employ.”)
Appellants also assert that the Board overlooked the Examiner’s
admission that “bonding between ePTFE and a polycarbonate urethane
adhesive is not expected” based on the indication in Exhibit L that the
surface energy of ePTFE is substantially lower than the surface energy of
polycarbonate urethane. Req. Reh. 8.
However, “[pjatent examiners are quasi-judicial officials” and
therefore do not make admissions, but rather make findings of fact and
conclusions based on their factual findings. Western Electric Co. v. Piezo
Technology, Inc., 860 F.2d 428, 431 (Fed. Cir. 1988). In addition, as
discussed above, we considered Exhibit L, as well as the other relied-upon
Exhibits, the first and second Declarations of Jerry Dong, and Appellants’
arguments, together with the evidence of record tending to show that the
prior art is enabling, particularly the disclosures of Du, and we concluded
that, on balance, the preponderance of the evidence weighs in favor of the
Examiner’s determination that Appellants do not meet their burden of
establishing that the applied prior art does not enable the claimed subject
matter. Dec. 9—11.
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Appellants further assert that the Board’s reliance on Exhibits A and
H to sustain the obviousness rejections constitutes new grounds of rejection,
which necessitate remand to the Examiner. Req. Reh. 10—11.
However, we did not rely on Exhibits A and H as prior art references
applied in an obviousness rejection. Dec. 9, 11. Instead, we pointed out in
our Decision that disclosures in Exhibits A and H support our determination
that Appellants’ arguments, including Appellants’ Wands factor analyses,
the first and second Declarations of Jerry Dong, and the remaining relied-
upon Exhibits, fail to take into consideration the level of ordinary skill in the
art, and the state of the art in its entirety, at the time of Appellants’
invention. Dec. 9—11.
CONCLUSION
In conclusion, based on the foregoing, we grant Appellants’
Request for Rehearing to the extent that we have reconsidered our Decision,
but we deny Appellants’ request to make any change therein.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).
DENIED
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