Hanson, Eric L. et al.

Patent Trials and Appeals Board

Oct 1, 2019

13507981 - (D) (P.T.A.B. Oct. 1, 2019)

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.
13/507,981 08/10/2012 Eric L. Hanson Aculon-1607 3625
36787 7590 10/01/2019
BLYNN L. SHIDELER
THE BLK LAW GROUP
3500 BROKKTREE ROAD
SUITE 200
WEXFORD, PA 15090
EXAMINER
PATTERSON, MARC A
ART UNIT PAPER NUMBER
1782
NOTIFICATION DATE DELIVERY MODE
10/01/2019 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):
blynn@BLKLawGroup.com
cbelleci@BLKLawGroup.com
patents@BLKLawGroup.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ERIC L. HANSON and ERIC L. BRUNER
____________

Appeal 2019-000951
Application 13/507,981
Technology Center 1700
____________

Before MONTÉ T. SQUIRE, MICHAEL G. McMANUS, and
JANE E. INGLESE, Administrative Patent Judges.

SQUIRE, Administrative Patent Judge.

DECISION ON APPEAL1

1 In this Decision, we refer to the Specification filed Aug. 10, 2012
(“Spec.”); Final Office Action dated Nov. 30, 2017 (“Final Act.”); Appeal
Brief filed May 30, 2018 (“Appeal Br.”); Examiner’s Answer dated Sept. 13,
2018 (“Ans.”); and Reply Brief filed Nov. 13, 2018 (“Reply Brief”).
Appeal 2019-000951
Application 13/507,981
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Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 19, 21, 22, 24–28, 31 and 35–37.3 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The Claimed Subject Matter
Appellant’s disclosure relates to treating the interior walls of a fluidic
channel with a substance that repels the fluid from the interior walls thereby
preventing interaction between the fluid and the interior walls. Spec. ¶¶ 2, 6;
Abstract. Claim 19 is illustrative of the claimed subject matter on appeal
and is reproduced below from the Claims Appendix to the Appeal Brief:
19. A fluidic channel having interior walls with a
self-assembled monolayer of an organophosphorus acid
adhered directly or through an intermediate
organometallic coating to the interior walls,
wherein the organophosphorus acid is an
organophosphonic acid or derivative thereof comprising a
compound or a mixture of compounds of the structure:

wherein x is 0 to 1, y is 1, z is 1 to 2 and x+y+z=3;
R and R" are each independently a hydrocarbon or
substituted hydrocarbon radical having a total of 1 to 30

2 We use the word “Appellant” to refer to “Applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies Aculon, Inc. as the real party in
interest. Appeal Br. 3.
3 Claims 1–18, 20, 23, 29, 30 and 32 are withdrawn and claims 33 and 34 are
cancelled. Appeal Br. 5.
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Application 13/507,981
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carbon atoms or an oligomeric group, and R' is lower
alkyl, and
wherein the channel is configured for the in-situ
adherence of the self-assembled monolayer of an
organophosphorus acid through the dissolution or
dispersion of the organophosphorus acid in a diluent to
form a solution which is applied to the fluidic channel
surface by pumping the solution through the channel.
Appeal Br. 17 (key disputed claim language italicized and bolded).
The References
The Examiner relies on the following prior art references as evidence
in rejecting the claims on appeal:
Moriuchi et al. (“Moriuchi”) US 2003/0105513 A1 June 05, 2003
Hanson US 2008/0152930 A1 June 26, 2008
Hofer et al. (“Hofer”) US 7,517,546 B2 Apr. 14, 2009
Kim KR 2006088699 A Aug. 07, 2006
The Rejections
On appeal, the Examiner maintains (Ans. 3) the following rejections:
1. Claims 19, 21, 24–28, 31 and 35–37 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Hanson in view of Hofer and
Moriuchi (“Rejection 1”). Ans. 3; Final Act. 2.
2. Claim 22 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hanson in view of Hofer and Moriuchi and further in
view of Kim (“Rejection 2”). Ans. 5; Final Act. 4.
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OPINION
Having considered the respective positions advanced by the Examiner
and Appellant in light of this appeal record, we affirm the Examiner’s
rejections based on the fact-finding and reasoning set forth in the Answer
and Final Office Action, which we adopt as our own. We add the following
primarily for emphasis.
Rejection 1
Appellant argues claims 19, 21, 24–28, 31 and 35–37 as a group.
Appeal Br. 10. We select independent claim 19 as representative and the
remaining claims subject to the Examiner’s rejection stand or fall with
claim 19. 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner determines that the combination of Hanson, Hofer, and
Moriuchi suggests a fluidic channel satisfying all of the limitations of claim
19 and concludes the combination would have rendered the claim obvious.
Ans. 3–4 (citing Hanson ¶¶ 3, 18, 22, 28; Hofer 3:35–45, 6:18–24, 10:12,
12:30–35, 15:22–30, 15:46–52, 16:10; Moriuchi ¶ 2).
Appellant argues that the Examiner’s rejection of claim 19 should be
reversed because the prior art
teaches away from the present claimed channel having
in-situ adherence of the self-assembled monolayer of an
organophosphorus acid through the dissolution or
dispersion of the organophosphorus acid in a diluent to
form a solution which is applied to the fluidic channel
surface by pumping the solution through the channel.
Appeal Br. 10–11.
In particular, Appellant contends that, in contrast to the claimed
invention, the primary reference (Hanson) expressly teaches the immersion
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of the substrate to apply the subject coating. Id. at 11; see also Reply Br. 3
(asserting “the applied prior art teaches immersion which yields a distinctly
different structure” and the “medical stents of the prior art are NOT
configured for In-Situ application”).
Appellant further contends the application of the coating by
immersion that Hanson teaches “results in a distinctly different structure
with differing characteristics than the present claimed structure.” Appeal
Br. 11. Appellant also contends the “channel of the present claimed
invention has distinct practical advantages in formation and the resulting
structural channel is structurally distinct from the applied prior art
teachings.” Id. at 11; see also id. at 12 (asserting the secondary reference
(Hofer) “teaches a titanium implant or medical stent that is also coated by
immersion” and “a resulting . . . structure distinctly different from the
present claimed invention”).
We do not find Appellant’s arguments persuasive of reversible error
in the Examiner’s rejection. On the record before us, we find a
preponderance of the evidence and sound technical reasoning support the
Examiner’s analysis and determination that the combination of Hanson,
Hofer, and Moriuchi suggests a fluidic channel satisfying all of the
limitations of claim 19, and conclusion that the combination would have
rendered the claim obvious. Hanson ¶¶ 3, 18, 22, 28; Hofer 3:35–45, 6:18–
24, 10:12, 12:30–35, 15:22–30, 15:46–52, 16:10; Moriuchi ¶ 2.
Appellant’s teaching away argument (Appeal Br. 10–11) is not
persuasive of reversible error in the Examiner’s rejection because it is
conclusory and Appellant does not direct us to sufficient evidence in the
record or provide a persuasive technical explanation to support it. In re De
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Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); see also In re Fulton, 391 F.3d
1195, 1201 (finding that there is no teaching away where the prior art’s
disclosure “does not criticize, discredit, or otherwise discourage the solution
claimed”). We will not read into the references a teaching away where no
such language exists. Cf. DyStar Textilfarben GmbH v. C.H. Patrick Co.,
464 F.3d 1356, 1364 (Fed. Cir. 2006).
The fact that Hanson teaches the “organometallic composition can be
applied to the substrate by conventional means such as immersion coating”
(Hanson ¶ 22) or “may be dissolved or dispersed in a diluent and applied by
coating (id. ¶ 18), without more, does not negate or teach away from the
reference’s broad disclosure regarding use of the material for self-assembled
films or layers on various substrates and in various applications, including
for medical use (id. ¶ 3). In re Susi, 440 F.2d 442, 445-46 (CCPA 1971)
(explaining that disclosure of particular preferred embodiments does not
teach away from a prior art reference’s broader disclosure); see also In re
Mills, 470 F.2d 649, 651 (CCPA 1972) (“[A] reference is not limited to the
disclosure of specific working examples.”).
Appellant’s contentions that Hanson’s immersion coating “results in a
distinctly different structure with differing characteristics than the present
claimed structure” (Appeal Br. 11) and that Hofer “teaches a titanium
implant or medical stent that is also coated by immersion” (id. at 12) are not
persuasive of reversible error because Appellant attacks the references
individually rather than the combined teachings of the prior art as a whole.
One cannot show non-obviousness by attacking references individually
where the rejection is based on a combination of references. In re Keller,
642 F.2d 413, 425 (CCPA 1981). Appellant’s argument is premised on what
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Appellant contends the Hanson and Hofer references each teaches
individually, and not the combined teachings of the prior art references as a
whole and what the combined teachings would have suggested to one of
ordinary skill in the art.
As the Examiner finds (Ans. 3), Hanson is relied upon in the rejection
for disclosing a self-assembled monolayer of an organophosphorus acid
having the claimed formula and its use as a self-assembled layer for coating
various substrates, including titanium implants (Hanson ¶¶ 3, 22, 28); while
Hofer is relied upon in the rejection for disclosing a substrate comprising a
titanium implant, which is a stent having a coating of organophosphorus acid
as a self-assembled monolayer (Hofer 6:18–24, 10:12, 12:30–35, 15:46–52,
16:10). As the Examiner further finds (Ans. 4), Moriuchi discloses that
stents are tubular appliances implanted in blood vessels (Moriuchi, Abstract,
¶ 2), which corresponds to the fluidic channel recitation of the claim.
Appellant’s arguments do not reveal reversible error in the
Examiner’s factual findings or analysis in this regard. Appellant’s repeated
assertions regarding the prior art channel being structurally distinct from and
resulting in a distinctly different structure than the claimed invention
(Appeal Br. 11–12; Reply Br. 1–3) are not persuasive of reversible error
because they are conclusory and Appellant does not provide an adequate
technical explanation or direct us to persuasive evidence in the record to
support them. De Blauwe, 736 F.2d at 705.
Appellant’s contention that the “channel of the present claimed
invention has distinct practical advantages in formation and the resulting
structural channel” (Appeal Br. 11) is equally unpersuasive because it, too,
is conclusory and the fact that Appellant may have “recognized another
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advantage which would flow naturally from following the suggestion of the
prior art cannot be the basis for patentability when the difference would
otherwise [have been] obvious.” Ex parte Obiaya, 227 USPQ 58, 60 (BPAI
1985).
Moreover, as the Examiner finds and explains at pages 4 and 6–7 of
the Answer, Appellant’s arguments are misplaced because the claims require
that the “channel is configured for the in-situ adherence of the
self-assembled monolayer,” which defines the capability of the channel.
Appellant, however, does not identify or direct us to persuasive evidence
that the fluid channel, as suggested by the prior art, would not have that
same capability or be capable of performing the claimed functional
limitation, i.e., in-situ adherence of the self-assembled monolayer. Indeed, it
is well-settled that the patentability of an apparatus claim depends on the
claimed structure, not on the use or purpose of that structure, Catalina Mktg.
Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002), or
the function or result of that structure, In re Danly, 263 F.2d 844, 848
(CCPA 1959).
On the record before us, we find a preponderance of the evidence
supports the Examiner’s finding (Ans. 4, 6–7) that the channel, as suggested
by the prior art, would have been capable of having a solution pumped
through it and thus, depending on the fluid, the in-situ adherence of a
self-assembled monolayer on the interior walls. See Hofer 16:10; Moriuchi
¶ 2.
Accordingly, we affirm the Examiner’s rejection of claims 19, 21,
24–28, 31 and 35–37 under 35 U.S.C. § 103(a) as obvious over the
combination of Hanson, Hofer, and Moriuchi.
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Rejection 2
Claim 22 depends from claim 21 and recites “wherein fluidic channel
is a dispensing device of a printing head of an inkjet printer.” Appeal Br. 18
(Claims Appendix). The Examiner determines that the combination of
Hanson, Hofer, Moriuchi, and Kim suggests a fluidic channel satisfying all
of the limitations of claim 22 and concludes the combination would have
rendered the claim obvious. Ans. 5–6.
Appellant contends the Examiner’s rejection should be reversed
because the “Kim publication essentially only merely discloses that inkjet
heads are known” and “[t]here is nothing in this reference to teach or
remotely suggest the coating of the interior fluid engaging surfaces of this
channel as claimed.” Appeal Br. 12.
Appellant’s contentions are not persuasive of reversible error in the
Examiner’s rejection because they are conclusory and unsupported by
persuasive evidence in the record. De Blauwe, 736 F.2d at 705.
Accordingly, we affirm the Examiner’s rejection of claim 22 under
35 U.S.C. § 103(a) as obvious over the combination of Hanson, Hofer,
Moriuchi, and Kim.
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CONCLUSION
In summary:
Claim(s)
Rejected
Basis Affirmed Reversed
19, 21, 24–28,
31, 35–37
§ 103(a)
Hanson, Hofer,
Moriuchi
19, 21, 24–28,
31, 35–37

22 § 103(a)
Hanson, Hofer,
Moriuchi, Kim
22
Overall
Outcome
19, 21, 22,
24–28, 31,
35–37

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)(iv).
AFFIRMED