Ex parte Bourgeois
| Decision Date | 22 May 2019 |
| Docket Number | 197,Appeal 2017-006265,Application 13/686 |
| Court | Patent Trial and Appeal Board |
| Parties | Ex parte PHILIP BOURGEOIS Technology Center 3700 |
Before JOHN C. KERENS, MICHAEL L. HOELTER, and SEAN P. O'HANLON Administrative Patent Judges.
O'HANLON, ADMINISTRATIVE PATENT JUDGE.
Appellant[1] appeals under 35 U.S.C. § 134(a) from the Examiner's final decision rejecting claims 1-16 and 22-36.[2] Appellant's representative presented oral argument on May 7, 2019. We have jurisdiction over this appeal under 35 U.S.C. § 6(b).
We AFFIRM.
In explaining our Decision, we refer to the Specification filed November 27, 2012 ("Spec"), the Final Office Action dated February 16, 2016 ("Final Act."), the Appeal Brief filed May 18, 2016 ("Appeal Br."), the Claims Appendix filed September 14, 2016 ("Claims App.") [3] the Examiner's Answer dated January 18, 2017 ("Ans."), and the Reply Brief filed March 7, 2017 ("Reply Br.").
Appellant's disclosure is directed to "polymeric tubing . . . having multiple layers of different polymeric materials." Spec. ¶ 2. Claims 1, 22, 27, 29, 30, 33, and 36 are independent. Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A tube having a wall comprising an inner layer, an outer layer and a middle layer, wherein the inner layer comprises a thermoplastic polyurethane, the outer layer comprises a thermoplastic polyurethane and the middle layer comprises an ethylene ethyl acrylate copolymer or an ethylene methyl acrylate copolymer or an anhydride grafted ethylene methyl acrylate copolymer, a copolymer of two or more of said acrylates or a mixture of two or more of the foregoing.
Claims App. 27.
The Examiner relies on the following prior art references in rejecting the claims on appeal:
Ostoich
US 4, 211, 741
July 8, 1980
Greenwood
US 5, 004, 455
Apr. 2, 1991
Helmus
US 5, 569, 463
Oct. 29, 1996
Mueller
US 5, 681, 627
Oct. 28, 1997
I. Claims 1, 2, 4-7, 10-16, 22-24, 27, 28, and 30-32 stand rejected under 35 U.S.C. § 102(b) as anticipated by Mueller or, in the alternative, under 35 U.S.C. § 103(a) as being unpatentable over Mueller and Ostoich.
II. Claims 8, 9, 29, and 36 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Mueller and Ostoich.
III. Claims 33-35 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Mueller, Ostoich, and Greenwood.
IV. Claims 3, 25, and 26 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Mueller, Ostoich, and Helmus.
The Examiner rejects claims 1, 2, 4-7, 10-16, 22-24, 27, 28, and 30-32 as anticipated by or, in the alternative, as being unpatentable over Mueller and Ostoich. Final Act. 2-10. Each of these alternative rejections is discussed below.
The Examiner finds that Mueller discloses a tube as recited in independent claim 1, relying on the disclosure at column 10 lines 44-50 to disclose a tube. Id. at 3. Appellant argues that Mueller only discloses a cast film extrusion process, that Mueller rolls the film into a roll, and that a roll of film is not a tube. Appeal Br. 9-13.
Mueller discloses a multilayer film. See, e.g., Mueller, 1:5. The film can be formed into a flexible medical pouch, such as an I.V. bag, ostomy pouch, or air-bladder portion of a compression device, by heat-sealing peripheral portions of the inner layer. Id. at 6:9-40. We agree with Appellant that Mueller's reference to a "tubular film" relied upon by the Examiner, taken in context with the totality of the Mueller disclosure, would not be regarded by a person of ordinary skill in the art as a tube as the term is used in the Appellant's Specification and claims. See, e.g., Spec. Fig. l.
As the Examiner has not explained adequately how each term of independent claim l is disclosed by Mueller, we do not sustain the rejection of claim l or its dependent claims as being anticipated by Mueller. As the Examiner relies on similar erroneous findings to reject independent claims 22, 27, and 30 (see Final Act. 6, 7-8, 9), we do not sustain the rejection of these claims or their dependent claims as being anticipated by Mueller.
Claims l, 2, 4, 5, 10-16, 22, and 31
Appellant presents arguments contesting the rejection of claims 1, 2 4, 5, 10-16, 22, and 31 collectively. We select claim 1 as representative, treating claims 2, 4, 5, 10-16, 22, and 31 as standing or falling with representative claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner relies on Mueller to disclose a three-layer film having inner and outer layers comprising a thermoplastic polyurethane and a middle layer comprising an anhydride grafted ethylene methyl acrylate copolymer. Final Act. 3. The Examiner relies on Ostoich to teach a three-layer tube with inner and outer layers of polyurethane. Id. The Examiner reasons that it would have been obvious to a person having ordinary skill in the art to use the materials disclosed by Mueller to construct a medical tube, determining that Ostoich evidences that three layer medical tubes with inner and outer layers of polyurethane are well known in the art due to the flexibility, strength, and compatibility of the materials. Id.
Appellant traverses, arguing first that Ostoich does not disclose a tube having an adhesive layer between inner and outer layers. Appeal Br. 13-15. Appellant characterizes this as a "teaching away" from an adhesive layer. Id. at 13.
Mueller discloses that its middle layer, referred to as an "interior layer" (see Mueller, 5:22-24), is an adhesive. Id. at 7:58-67, 8:60-61. The Examiner relies on Ostoich to show that a tube having inner and outer polyurethane layers is well known, and relies on Mueller to disclose the materials used to make such a tube. Final Act. 3. Thus, we are note persuaded by Appellant's arguments.
Nor are we persuaded that Ostoich teaches away from an adhesive layer. Appellant's arguments rely on the two-layer embodiment illustrated in Ostoich's Figure 2. Appeal Br. 14-15. However, the Examiner relies on the three-layer embodiment illustrated in Ostoich's Figure 4. See Final Act. 3 ( "Ostoich teaches a three layer tube" and referencing Ostoich, Fig. 4). Ostoich describes this embodiment as having a middle layer of "polyvinyl chloride or the like [that] is sandwiched between inner and outer polyurethane layers." Ostoich, 5:22-25. Appellant's attempt to differentiate the claimed tube from Ostoich's tube by the manufacturing process is unpersuasive as both Ostoich (see Ostoich, 4:21-23) and Appellant (see Spec. ¶ 2) use a co-extrusion manufacturing process to form their respective tubes. As Appellant has failed to identify any criticism in Ostoich of an adhesive middle layer. Appellant has not shown persuasively any teaching away. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
Appellant argues that the thicknesses of Ostoich's layers are "multiple times the thicknesses of the film layers of Mueller's films" and that the processing equipment used by the two references is "profoundly different." Appeal Br. 13. These arguments fail to apprise us of error, as the Examiner's rejection proposes to make a tube as disclosed by Ostoich using the materials disclosed by Mueller; the Examiner does not suggest using Mueller's equipment or films to form a tube. We additionally note that both Mueller and Ostoich disclose a three-layer medical device having inner and outer layers comprising polyurethane. See Mueller, 8:59-62; Ostoich, 5:18-25. Additionally, Mueller and Ostoich disclose similar materials for the middle layer. See Mueller, 7:48-54 ("Suitable materials from which the interior layer may be selected include, without limitation, polymeric adhesive, . . . polyvinylidene chloride, . . . and mixtures of the foregoing materials."), 8:25-34 ( that a middle layer comprising polyvinylidene chloride acts as a gas barrier), 12:7-8 ( that SARAN is a polyvinyl chloride copolymer), 13:36-45 (disclosing an example embodiment using SARAN as the middle layer between two polyurethane layers); Ostoich, 3:52-54 ("a suitable inexpensive plastic such as polyvinyl chloride" (emphasis added)), 5:22-25 ("polyvinyl chloride or the like is sandwiched between inner and outer polyurethane layers" (emphasis added)). As Mueller further discloses that its middle layer can be a polymeric adhesive such as anhydride-modified ethylene/methyl acrylate (EMA) copolymer (Mueller, 7:58-67), using Mueller's polymeric adhesive in place of Ostoich's polyvinyl chloride to form the middle layer amounts to the replacement of one known element by another known element, the results of which substitution would be predictable, as both the references use the materials as middle layers between polyurethane layers. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (). The obviousness of this substitution is buttressed by the fact that Appellant's Specification, Mueller, and Ostoich each recognize that polyurethane is relatively expensive and use a different material for the middle layer to reduce the cost of the end product. See Spec. ¶ 9; Mueller, 7:44-47; Ostoich, 2:3-7.
Next Appellant notes that it has submitted, under 37 C.F.R. § 1.132, a declaration of Dr. Philip Bourgeois (the inventor), which Appellant argues "explains how and why the prior art cited by the [E]xaminer does not disclose or suggest the claimed tubular structures." Appeal Br. 19. Appellant asserts that the Bourgeois Declaration explains how "the...
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