Reissue
For reissue applications filed on or after September 16, 2012, all references to 35
U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions.
Consent
This application is objected to under 37 CFR 1.172(a) as lacking the written consent of all assignees owning an undivided interest in the patent. The consent of the assignee must be in compliance with 37 CFR 1.172. See MPEP § 1410.01.
A proper assent of the assignee in compliance with 37 CFR 1.172 and 3.73 is required in reply to this Office action.
Specifically, the Consent filed 12 May 2025 lacks a typed or printed name of the person signing for assignee.
Improper Amendment
The amendment filed 12 May 2025 proposes amendments to claim 1 that does not comply with 37 CFR 1.173(b), which sets forth the manner of making amendments in reissue applications.
Specifically, matter to be omitted by reissue must be enclosed in single brackets. Strike-through is not permitted in reissue. See MPEP 1453.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2009/0017210 to Andrianov et al. (hereinafter Andrianov) in view of US 2019/0070630 to Surma et al. (hereinafter Surma).
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With respect to claims 1, 3, and 5, Andrianov teaches a batch coating apparatus 3, comprising a fixing mechanism 108, a liquid holding mechanism 116, a liquid injection mechanism 124,134, and a control device 114, wherein: the fixing mechanism comprises a plurality of fixing portions for fixing work-pieces to be coated (see para [0095] teaching “an array 104 of microneedles 106 secured to a substrate 108”); the liquid holding mechanism 116 comprises an array of liquid tanks 118 arranged side by side (see Figure 6), wherein the plurality of liquid tanks hold a coating liquid (Abstract) and the plurality of liquid tanks 118 comprise a tank body portion having an accommodating space and an opening portion connected to the tank body portion, as shown in Figure 6 above.
Andrianov teaches the liquid holding mechanism 116 and the fixing mechanism 108 are relatively movable via X-Y-Z positioning systems 112 and 120 (para [0095]) and the liquid injection mechanism 124,134 comprises a liquid storage portion 126 and an infusion portion 134, wherein, the liquid storage portion 126 is configured to accommodate the coating liquid, the infusion portion 134 is connected with the liquid storage portion, the infusion portion is configured to supply the coating liquid, and the liquid injection mechanism and the liquid holding mechanism are relatively movable via X-Y-Z positioning system 120 (see para [0095]).
The control device is configured to control at least one of a relative movement between the fixing mechanism and the liquid holding mechanism and a relative movement between the liquid holding mechanism and the liquid injection mechanism. For example, Andrianov teaches that “[t]he x-y-z positioning system 112 may be represented by the platform 56 controller of the system 54” and “[t]he x-y-z positioning system 120…may also be controlled by an appropriately programmed system such as the controller of system 54 or other x-y-z positioning controllers that are commercially available.” See para [0095].
The control device is configured to control the liquid injection mechanism to supply the coating liquid via the infusion portion (para [0095]; “control 114 also operates valve 132 to meter the coating fluid via conduit 134 to selected ones of the reservoirs 118”). As to the recitations found within the clause beginning with “when,” these recitations are an intended use of the device and do not further limit the structure of the apparatus. Regardless, Andrianov discloses the control device controls a relative movement between the liquid injection mechanism and the liquid holding mechanism so that the infusion portion aligns with the plurality of liquid tanks (para [0095]; “microneedles are positioned by the positioning system 112 to simultaneously insert the microneedles into the corresponding reservoirs 118…determined by the program of control 114”), and the control device controls the infusion portion to supply a predetermined volume of coating liquid into the plurality of liquid tanks (discussed above); and the control device controls the liquid holding mechanism and the fixing mechanism to relatively move so that the work-pieces to be coated fixed to the fixing mechanism are immersed into the coating liquid in the plurality of liquid tanks and left from the coating liquid in the plurality of liquid tanks, thereby forming a coating film of a predetermined thickness on the work-pieces to be coated (discussed above and taught in para [0095] of Andrianov).
Andrianov does not disclose that a cross-sectional area of the opening portion of each liquid tank/reservoir 118 is greater than that of the tank body portion. However, Surma discloses that funnel shaped tanks, having an opening portion tapered from an upper end to a lower end with a tank body connected to the lower end, are standard in industrial practice and have a known use in the coating of medical instruments. See paras [0005, 0065, 0071] and Figures 3A-F. A POSITA would have found it obvious to use a funnel shaped opening in the tanks/reservoirs 118 of Andrianov as funnel shaped tanks are conventional in the coating art for accommodating a greater volume of displaced liquid than a cylindrical tank, thus reducing fluid loss/waste as compared to a cylindrical tank.
As to claim 2, the control unit 114 is capable of being programmed to dispense any desired volume of liquid. Furthermore, it would have been obvious to dispense a volume less than the accommodating space in order to avoid waste.
With respect to claim 4, Andrianov is silent with respect to a hemispherical shape in the bottom area of tanks 118. Surma discloses coating tubes 56 having a hemispherical distal end 57. See Figure 2. One of ordinary skill in the art would have found it obvious to provide hemispherical end walls in the tanks of Andrianov for ease of cleaning between uses.
As to claim 6, while Andrianov is silent to a chamber for enclosing the liquid injection mechanism and a chamber for enclosing the fixing mechanism and liquid tanks. However, chambers are known in an industrial context and it would have been obvious to provide such as a means to minimize environmental contamination of the coating and coating liquid.
With respect to claim 7, Andrianov teaches the liquid injection mechanism may comprise a piston disposed in the liquid storage portion 34,36; the liquid injection mechanism moves along a lengthwise direction of the liquid storage portion; the piston is connected to an actuating part 44; the actuating part actuates the piston to move in the lengthwise direction of the liquid storage portion; the actuating part is connected to the control device 54,35 and is controlled by the control device (paras [0063-0064]); and the control device controls an actuating distance and an actuating direction of the actuating part to supply a predetermined volume of the coating liquid to the plurality of liquid tanks via the infusion portion (para [0065]). See Figure 9. Note that Andrianov discloses “pump 124, valve 132 and the conduit 134 in one embodiment may be represented by the device 32” of Figure 9. See para [0095].
As to claims 8 and 9, the work-piece is an article worked on by the claimed apparatus. A claim is only limited by positively recited elements. Thus, "[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935). See MPEP 2115. As to the profile of the fixing portions of Andrianov, it is well within the skill of an ordinary practitioner to fabricate the fixing mechanism to securely support the item to be coated in the desired manner. Surma teaches a coating apparatus similar to that of Andrianov wherein the apparatus may be used to coat a variety of medical devices such as catheters, stents, implants, sensors, etc. See para [0064]. It would have been obvious to fabricate the fixing mechanism to have a shape/profile adapted for the particular device being coated.
Related Proceedings
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to
timely apprise the Office of any prior or concurrent proceeding in which Patent No.
12,257,598 is or was involved. These proceedings would include any trial before the
Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental
examinations, and litigation.
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to
timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application. These obligations rest with each
individual associated with the filing and prosecution of this application for reissue. See
also MPEP §§ 1404, 1442.01 and 1442.04.
Conclusion
Any inquiry concerning this communication or earlier communications from the
examiner should be directed to ELIZABETH L MCKANE whose telephone number is 5.
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/ELIZABETH L MCKANE/Specialist, Art Unit 3991
Conferees:
/LEE SANDERSON/Reexamination Specialist, Art Unit 3991
/Patricia L Engle/SPRS, Art Unit 3991
Prosecution Insights