Ex Parte Wilcher et al

Patent Trial and Appeal Board

Feb 1, 2017

11610443 (P.T.A.B. Feb. 1, 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.
11/610,443 12/13/2006 Steve A. Wilcher UOPl 10340 CIP - 4517 2759
118711 7590 02/03/2017
HONFYWFT T /RDRFRTN
EXAMINER
115 Tabor Road ALAWADI, SARAH
P.O. Box 377
MORRIS PLAINS, NJ 07950 ART UNIT PAPER NUMBER
1619
NOTIFICATION DATE DELIVERY MODE
02/03/2017 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):
patentservices-us @ honey well, com
rrobertsjr@robertspatent.com
DL-SM-IP@honeywell.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVE A. WILCHER and ROBERT L. BEDARD1
Appeal 2015-001393
Application 11/610,443
Technology Center 1600
Before ERIC B. GRIMES, JOHN G. NEW, and
DEVON ZASTROW NEWMAN, Administrative Patent Judges.
NEWMAN, Administrative Patent Judge.
DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims to a hemostatic
article containing inorganic materials. The Examiner entered final rejections
for obviousness and, for one claim, failing to include all the limitations of
the claim from which it depends. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
1 Appellants identify the Real Party in Interest as Honeywell International
Inc. Br. 3.
Appeal 2015-001393
Application 11/610,443
STATEMENT OF THE CASE
Background
The Specification discloses the use of “inorganic materials
incorporated into adsorbent media such as nonwoven materials or films
where a sufficient amount of these adsorbents are present to stop blood loss
while minimizing increased temperature resulting from the adsorption of
water by the adsorbents.” Spec. 12.
Claims 1, 3, 4, 13, 24—28 and 32—38 pending. Br. 1.
Appellants do not contest the rejection of claim 38 under 35 U.S.C.
§112, 4th paragraph, as being of improper dependent form for failing to
further limit the subject matter of the claim upon which it depends. Br. 6.
Appellants state “the claim will be canceled pending the outcome of this
appeal with respect to the rejections under 35 U.S.C. § 103.” Id.
Accordingly, we summarily affirm the rejection. See 37 C.F.R.
§ 41.37(c)(l)(iv) (requiring that “arguments shall explain why the examiner
erred as to each ground of rejection . . . [and that] any arguments or
authorities not included in the appeal brief will be refused consideration by
the Board”); see also Ex parte Frye, 94 USPQ2d 1072 (BPAI 2010)
(precedential) (“If an appellant fails to present arguments on a particular
issue—or, more broadly, on a particular rejection—the Board will not, as a
general matter, unilaterally review those uncontested aspects of the
rejection”).
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Application 11/610,443
Appellants do not appeal the rejection of claims 1 and 24 under 35
U.S.C. § 103(a) as obvious over Russell,2 DuPont,3 and Mandell,4 or the
rejection of claims 1, 3, 4, 13, 25, 27, 33, and 36—38 under 35 U.S.C.
§ 103(a) as obvious over Russell, DuPont, Diegelmann5 and Errede.6
Instead, Appellants state they “are only requesting review of claims 28, 32,
24 and 35.” Br. 7. We understand Appellants intended to specify claim 34
for appeal, not claim 24, consistent with the arguments in the brief and the
claim listing in the concluding paragraph. Br. 22. Accordingly, we
summarily affirm the rejection of claims 1,3,4, 13, 24—27, 33, and 36—38.
See 37 C.F.R. § 41.37(c)(l)(iv) and Ex parte Frye, 2010 WL 889747 *4
(BPAI 2010) (precedential).
The following rejection is before us to review:
Claims 28, 32, 34, and 35 are rejected under 35 U.S.C. § 103(a) as
obvious over Russell, DuPont, Diegelmann, and Errede. Final Act. 4—5.
Independent claim 28 is illustrative of the appealed subject matter and
reads as follows:
28. A hemostatic article comprising a mixture of a carrier
and an inorganic hemostatic material, the carrier comprising
aramid pulp, wherein the inorganic hemostatic material is
selected from the group consisting of diatomaceous earth, glass
powder or fibers, precipitated or fumed silica, kaolin and
montmorillonite clays, and Ca exchanged permutites, and
2 US 2004/0242108 Al, published Dec. 2, 2004 (“Russell”)
3 DuPont Chemical Company Kevlar® product information from DuPont,
available at www.dupont.com/products-and-services
4 US 6,229,062 Bl, issued May 8, 2001 (“Mandell”)
5 US 2009/0155342 Al published June 18, 2009 (“Diegelmann”)
6 US 4,373,519, issued Feb. 15, 1983 (“Errede”)
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Application 11/610,443
wherein the inorganic hemostatic material comprises from
about 75 wt.% to about 90 wt. % of said article.
Br. 24 (Claims App’x.).
We adopt and incorporate by reference the Examiner’s findings and
conclusions with respect to these references as presented in the Final Action
and Answer. Final Act. 3—12; Ans. 3—15. The findings of fact set forth
below are provided only to highlight certain evidence of record relevant to
our analysis.
FINDINGS OF FACT
FF1. The Examiner cites Russell for teaching “non-woven articles
(fabric) made of fibers” including “Kevlar®,” an aramid fiber that provides
“good thermal stability.” The Examiner finds that the non-woven fabrics are
“preferably] made of Kevlar® [aramid] fibers.” Final Act. 5 (citing Russell
Abstract, H 10—12).
FF2. The Examiner cites Russell for teaching the fibers “can be
mixed with other particulate materials such that they are enmeshed within
the fibers” such as odor control agents such as “clays” or antimicrobial
compounds. Final Act. 5 (citing Russell H 14—20, and 24).
FF3. The Examiner cites Russell for teaching the fibrous article “can
be suitable for the intended use as a wound dressing which provides release
of one or more medicaments.” Final Act. 5 (citing Russell 133, claim 29).
FF4. The Examiner cites Russell for teaching the fibrous article can
be in pulp fiber form, consolidated, and/or shaped. Final Act. 5 (citing
Russell H10, 28, and 38).
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FF5. The Examiner concludes that “it would have been obvious to
incorporate antimicrobials with the wound dressings suggested by Russell in
order to minimize the risk of obtaining an infection.” Final Act. 5.
FF6. The Examiner cites Diegelmann for teaching “compositions
which control hemorrhaging and promote homeostasis [sic, hemostasis]”
including “clay minerals such as montmorillonite or kaolin (inorganic
material).” Final Act. 6 (citing Diegelmann Abstract, || 2, 34, and 37).
FF7. Diegelmann discloses:
The present invention is based in part on the surprising
discovery that clay minerals and related materials are highly
effective in causing rapid blood clotting. Thus, they are
excellent candidates for use in compositions and methods to
treat hemorrhage. In addition, clay minerals are readily
available and relatively inexpensive, and they are amenable to
manipulation into a variety of forms.
Diegelmann 132.
FF8. The Examiner cites Diegelmann for teaching “[t]he clay
materials . . . may be incorporated into bandages.” Final Act. 6 (citing
Diegelmann p. 1).
FF9. The Examiner concludes it “would have beenprima facie
obvious to one of ordinary skill in the art at the time of the invention to
incorporate clay minerals such as kaolin or montomorillonite clays with the
Kevlar® compositions of Russell,” that the ordinary artisan would “have
been motivated to do so as Russell suggests the articles can comprise clay
materials, and Diegelmann et al. teach that clay minerals kaolin or
montmorillonite are highly effective in causing blood clotting,” and that the
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artisan would have a “reasonable expectation of success as Russell already
teaches that the articles can further comprise clay materials.” Final Act. 6.
FF10. The Examiner cites Errede as teaching “fibril wound dressing[]
that comprise^] about 76% kaolin.” Final Act. 6 (citing Errede Example 7,
Table II).
FF11. The Examiner concludes “it would have been obvious to
incorporate clay materials with bandages at ranges which overlap the
instantly claimed range (e.g. about 76%) as it was art recognized that wound
dressings can be created by incorporating clay minerals in these ranges and
Diegelmann suggests that they function as hemostatic agents” and that the
artisan would have had a reasonable expectation of success “as the modified
Russell already teaches incorporating inorganic clay materials into wound
dressings.” Final Act. 7.
DISCUSSION
The Examiner has set forth a prima facie case that claims 28, 32, 34,
and 35 would have been obvious over Russell, DuPont, Diegelmann, and
Errede. We find the subject matter of these claims is prima facie obvious in
view of Russel, Diegelmann and Errede alone.7 The Board may rely upon
fewer than all the references cited by the Examiner. See In re May, 574 F.2d
7 We recognize that the Examiner relied on DuPont to address elements
pertaining to certain limitations of Appellants’ dependent claims; however,
the claims on appeal do not include the relevant limitation, so we need not
address the teachings of DuPont.
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1082, 1090 (CCPA 1978). We adopt and incorporate by reference the
Examiner’s findings and conclusions with respect to these references as
presented in the Final Action mailed November 22, 2013 and Examiner’s
Answer mailed September 12, 2014. We address the arguments raised by
Appellants on appeal below.
Appellants argue there is no motivation to modify Russell to include
“kaolin or clay content of from 50—80 wt % or from 75—90 wt % as
claimed.” Br. 10. Appellants argue that “Russell et al. teaches fabrics
composed of waste materials, with an explicitly stated preference of
maximizing fiber content” and disclose “a product having 50% of non-
fibrous material as unacceptable.” Id. at 10 (citing Russell 2—3).
Appellants acknowledge that the Examiner’s rejection is based on
teachings of Russell in combination with Diegelmann, who teaches that clay
materials promote hemostasis, combined with Errede, which is cited to teach
an amount of the odor control agent to incorporate in the fabric of Russell.
Id. at 10-11. However, Appellants argue that Errede “states that their
articles may contain from 80-90% of a particulate material, up to 50% of
that particulate material can be inert diluents particles such as kaolin (i.e.
40-45% max kaolin)” and that the disclosure in Table II of a “composition
composed of 24% PTFE and 76% kaolin [] is inconsistent with this
disclosure.” Id. at 11, citing Errede col. 4, line 67—col. 5, line 3. Appellants
argue this teaching of 76% kaolin in the articles of Errede “does not
constitute motivation to modify Russell et al. to incorporate that
concentration of kaolin/clay, and the Examiner has not shown why one
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skilled in the art would be motivated to include 50%-80% or 75-90% of an
odor controlling agent in the Russell et al. compositions.” Id. at 11.
Appellants argue “[t]here is no evidence in the cited art to show that a
clay content of from 50-95 wt.% is suitable for controlling odors” in the
fabric of Russell and “there is no teaching or suggestion in Errede et al. that
kaolin may be used apart from being in a mixture with PCTFE [sic, PTFE],
[Errede does] not teach or suggest the use of kaolin [alone] for any purpose.”
Id. at 12. Appellants further argue that “the composition in Errede et al.
which contains 76% kaolin does also contain 24% PTFE, and Errede
requires that their materials have a low amount of resin binder, i.e. 15 wt. %
or less.” Id. at 12—13 (citing Errede85 and 6). Appellants argue that
Russell “is not concerned with blood clotting or hemostasis, and their only
disclosed reason for using clays is to control odors.” Id. at 13. According to
Appellants, a skilled artisan “would not be motivated to use such a
substantial amount of clay/kaolin as claimed to control odors simply because
the clay/kaolin would coincidentally also promote coagulation.” Id. These
arguments are not persuasive.
The Examiner uses Russell as a base disclosure of the majority of the
claim elements for creating a hemostatic article comprising a mixture of a
carrier (Kevlar®) and an inorganic hemostatic material (kaolin/clay) in
which the range of the hemostatic material is 75—90 wt %. FF1—5. Russell
teaches use of Kevlar® as a carrier and the use of clay as an odor control
agent. FF1,FF2. Therefore, one of skill in the art would know that clay is
8 Appellants mistakenly cite Errede. The quoted paragraphs are Russell ^fl[ 5
and 6.
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Application 11/610,443
compatible with Kevlar® in hemostatic fabrics and can be incorporated for
antimicrobial or odor control purposes. FF2—9.
Recognizing that Russell does not disclose a suitable amount of clay
for incorporation in embodiments using clay, and recognizing the teachings
of Diegelmann that clay functions as a capable hemostatic agent, the
Examiner looked to the analogous reference Errede for a suitable range.
FF10—11. The Examiner consequently determined that, in view of these
teachings, the skilled artisan would expect that kaolin in the range of about
76% by weight could be incorporated into the non-woven fabric of Russell.
Id.
The skilled artisan reading Diegelmann would learn that clay minerals
are relatively inexpensive, are highly effective in causing rapid blood
clotting and promoting hemostasis, that clay materials can be incorporated
into bandages, and that kaolin is a suitable clay for such uses. FF6—8.
Therefore, one of skill in the art would recognize that kaolin could be
economically used in the bandages of Russell to assist in controlling
hemostasis. FF9.
The skilled artisan reading Errede would learn that about 76% by
weight of kaolin is suitable in a fibril wound dressing. FF12. Therefore, one
of skill in the art would recognize that kaolin could be added to the non-
woven fiber of Russell in the amount of about 76 wt% to assist in controlling
hemostasis. FF11.
We agree with the Examiner that the teachings of Russell,
Diegelmann, and Errede would motivate one of ordinary skill to create an
aramid fiber and kaolin composition containing about 76% clay for use as a
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wound dressing. Id. Absent evidence to the contrary, Appellants have not
established that this composition would not work as claimed, nor have
Appellants established that the claimed ranges of 50-80% (claim 34) or 75—
90% by weight (claim 28) are critical. “A prima facie case of obviousness
typically exists when the ranges of a claimed composition overlap the ranges
disclosed in the prior art.” In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir.
2003).
Appellants further argue the skilled artisan “would recognize that
Russell et al. teaches and desires less than 33% clay content in their
articles.” Br. 15. Appellants argue that the particles disclosed for
incorporation into the fabrics of Russell, including clay particles, “are waste
materials.” Br. 15, 18. According to Appellants, because the proportion of
the waste materials is described “by weight of the fiber, not by weight of the
overall composite article,” the amount of particles is a maximum of “33% by
weight of the overall fabric structure.” Br. 15. This argument is not
persuasive.
We do not read Russell to state that clay is a waste material; rather,
Russell discloses clay as an odor control agent. FF2. Russell does teach that
waste materials may be used in the invention, but also discloses an
embodiment “wherein a substantial proportion of the fibres may be Aramin
(e.g. Kevlar®) fibres. In such nonwoved fabrics the amount of aramid fibres
may be up to 100% w/w.” Russell 111. Accordingly, Russell need not use
any waste materials in its invention, and the incorporation of clay into the
fibrous material is unrelated to use of waste materials.
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Appellants also argue the Examiner’s conclusion that it would be
“obvious to use 76% clay/kaolin content in the articles of Russell et al. in
order to optimize blood coagulation” is in error because “although 76%
kaolin content is useful [in] their wound dressing, their article is optimized
by including inert diluent particles such as kaolin in the range of 40-45 wt.
%, not greater than 50%9, or more particularly, not in the ranges of 50-80
wt% or 75-90% as presently claimed.” Br. 19. This argument is not
persuasive.
Errede teaches a composite wound-dressing comprising a
polytetrafluoroethylene fibril matrix and hydrophilic absorptive particles
enmeshed in the matrix. Errede 2:6—17. The hydrophilic absorbent particles
may include clay, and kaolin is provided as a suitable clay for use in the
invention. Id. at 4:44—65. The particulate material accounts for from 40 to
90%, and preferably 80-90%, by weight of the total composition, with the
most preferred amount of total particulates being “about 85%” by weight.
Errede 4:67—5:3, claims 5, 6. Example 7 teaches a composition with 76%
kaolin that falls within the stated range. FF10. Accordingly, the Examiner’s
suggested combination falls squarely within the teachings of Errede.
Appellants also argue that Mandell {supra, footnote 4) teaches use of
0.01—10% by weight of an odor-controlling compound is “sufficient to
provide superior odor control” and that the Examiner has not shown why the
skilled artisan would be motivated to add at least 50 wt% of a zeolite in light
of Mandell’s teachings. Br. 19—20. This argument is not persuasive.
9 Appellants do not cite a source for this stated range.
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Mandell teaches odor-controlling superabsorbent polymers. Mandell
does not disclose materials for use in controlling hemorrhage or in making
wound dressings. Mandell does not contain any teachings regarding the use
of clay. Accordingly, we find the teachings of Mandell are not instructive to
the skilled artisan on the use of clay as an odor controlling substance or in
wound dressings, and we are not persuaded that the skilled artisan would be
motivated to rely on Mandell for guidance on use of clay particles.
Appellants next argue “[t]he Final Rejection has not provided any
evidence to establish that a clay/kaolin content of 50-80% or 75-90 wt.%
would optimize the odor controlling property of Russell et al., nor has the
Final Rejection shown that it would optimize the effectiveness of a
hemostatic article.” Br. 21. This argument is not persuasive.
With regard to optimization, the Examiner stated “absent evidence of
criticality, it would have been prima facie obvious to one of ordinary skill in
the art at the time the invention was made to optimize the inorganic
materials used in the modified Russell.” Final Act. 7. As discussed in detail
above, the Examiner’s rejection using 76% kaolin was based upon kaolin’s
efficacy in stopping hemorrhage, not its use in controlling odor, although its
compatibility with the fibers of Russell was recognized in the context of its
odor-controlling capacity rather than its capacity to stop hemorrhage. FF1—
11. Therefore, the Examiner did not seek to “optimize the odor controlling
property” as suggested by Appellants, nor was it necessary, given the basis
of the rejection. The Examiner’s statement above recognizes that the skilled
artisan would use 76% kaolin based on the teachings of Errede, and would
optimize the kaolin concentration from that point forward as needed. Final
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Act. 7. Nor is it necessary for the Examiner to demonstrate optimization to
establish obviousness:
An examiner bears the initial burden of presenting a prima facie
case of obviousness. Once the examiner establishes a prima facie
case of obviousness, the burden shifts to the applicant to rebut
that case. . . . However, once the applicant has come forward
with rebuttal evidence, the examiner must consider the totality of
the evidence to determine whether the obviousness rejection
should stand.
In re Huai-Hung Kao, 639 F.3d 1057, 1066 (Fed. Cir. 2011) (citations
omitted). The Examiner sufficiently established that an ordinary artisan
reading Russell, Diegelmann, and Errede would have reasonably expected
that a composition of aramid fibers and kaolin clay, with kaolin at 76% by
weight, could be used to construct a hemostatic article.
With specific regard to claim 32, Appellants argue the cited references
fail[] to teach or suggest a hemostatic article wherein the
kaolin/clay is incorporated into the carrier to thereby avoid direct
application of the adsorbent to a wound. Although Russell et al.
teaches in paragraph [0015] that their fabrics “may comprise a
proportion of particles enmeshed within the fibres,” (emphasis
added) it does not state that all of their particles would be
enmeshed and thereby avoid direct contact of the zeolite with a
wound in a wound dressing application. As stated in our
application, direct contact of an adsorbent like kaolin/clay with a
wound creates heat that can be uncomfortable or even dangerous
if used on internal wounds. One would not be led to fully enmesh
the odor control particles of Russell et al. within their fabric
structure based upon knowledge from the combined references
such that no particles are located on the outer surfaces of their
articles.
Br. 21-22.
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These arguments are not persuasive. We agree with the Examiner that
claim 32 does not require the incorporation of all of the clay into the carrier
and does not “preclude particles from both being coated and enmeshed with
the carrier fabrics of Russell given that there is no recited amount of clay
material which is incorporated directly as a part of the fiber.” Ans. 14.
Russell teaches that “the nonwoven fabrics may comprise a portion of
particles enmeshed within the fibers.” Russell 115. Russell explains “such
particles may comprise odour control agents.” Id. at 116. Russell teaches
clay as an “odour-control agent used in the present invention.” Id. at 124.
In light of these express teachings, we find Russell suggests to the skilled
artisan that clay may be “incorporated into the carrier” as taught by claim
32. Furthermore, the record before us does not contain any evidence
suggesting that “direct contact of an adsorbent like kaolin/clay with a wound
creates heat that can be uncomfortable,” as suggested by Appellants. Rather,
Diegelmann teaches “clay minerals and related materials are highly effective
in causing rapid blood clotting.” FF7.
Appellants have provided insufficient persuasive evidence, and
provided only attorney argument, that the skilled artisan would not have
been motivated to create the Examiner’s suggested combination in light of
the express teachings of Russell, Diegelmann, and Errede. Appellants’
arguments without more do not meet this requirement. See In re Geisler,
116 F.3d 1465, 1470 (Fed. Cir. 1997) (“[Attorney argument [is] not the
kind of factual evidence that is required to rebut a prima facie case of
obviousness”).
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Conclusion of Law
We affirm the rejection of claims 28, 32, 34, and 35 as obvious.
SUMMARY
We affirm the rejection of claim 38 under 35 U.S.C. § 112, fourth
paragraph, for failing to include all the limitations of the claim from which it
depends.
We affirm the rejection of claims 1,3,4, 13, 25—28, and 32—38 under
35 U.S.C. § 103(a) as obvious over Russell, DuPont, Diegelmann, and
Errede.
We affirm the rejection of claims 1 and 24 under 35 U.S.C. § 103(a)
as obvious over Russell, DuPont, and Mandell.
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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