DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 9-11, 21-29 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Pui et al US 2003/0143315.
Per claims 9-10, Pui teaches an installation for depositing a substance on a substrate comprising a chamber comprising a conducting ejector having an opening (conducting spraying nozzle, abstract [0025], electrospray), a support for placing the substrate at a distance away (abstract, [0025]), a liquid feed line for feeding liquid composition comprising the substance to the nozzle [0089], a gas inlet for feeding compressed gas to the chamber [0100], and equipment for generating an electric field within the chamber [0081] (Fig. 4).
Per claim 11, Pui teaches connecting the generator to a high voltage supply [008] and also connecting the substrate support to ground [0092], [0174].
Per claims 21-25, 28, it is noted that the material worked upon by an apparatus is not given patentable weight, as it would not change the structure of the apparatus (MPEP 2115). The apparatus would inherently be capable of applying various substances or using various compressed gasses since Pui teaches that the coating apparatus is the same (see claim 9). As such, the prior art reads on the claimed limitation.
Per claims 26-27, it is noted that these are considered the intended use of the claimed apparatus. Since Pui teaches substantially the same coating apparatus as outlined in claim 9, the prior art would inherently read on the claimed invention and have been capable of spraying at the claimed flow rate with a reasonable expectation for success and predictable results.
Per claim 29, Pui teaches a holder device for holding a stent on which a surface of the stent is coated (considered a patch) [0033].
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 12-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pui et al US 2003/0143315.
Per claims 12-13 and 15-18, Pui teaches that the diameter is microns to 2 mm, which overlaps with the claimed range. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). It would have been obvious to one of ordinary skill in the art to have selected a value within the disclosed workable range of the prior art to arrive at the desired result with a reasonable expectation for success.
Per claims 14 and 19-20, Pui is silent regarding the claimed distance. However, Pui teaches that the distance (see Fig. 5a) as claimed, and the distance between the dispensing apparatus and medical device controls the evaporation amount [0110]. As such, it would have been obvious to one of ordinary skill in the art to have controlled the distance as claimed to arrive at the claimed invention via routine experimentation (see MPEP 2144.05), especially in the absence of unexpected results.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NATHAN T. LEONG whose telephone number is (571)270-5352. The examiner can normally be reached M-F 10:00-6:00pm.
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/NATHAN T LEONG/Primary Examiner, Art Unit 1718
