2020003700 (P.T.A.B. Feb. 12, 2021)

Covidien LP

Patent Trials and Appeals BoardFeb 12, 2021

2020003700 (P.T.A.B. Feb. 12, 2021)

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. 15/072,402 03/17/2016 Lauren Vernlund H- US-04166.USU1(203-10730 5467 50855 7590 02/12/2021 Covidien LP 60 Middletown Avenue Mailstop 54, Legal Dept. North Haven, CT 06473 EXAMINER LABRANCHE, BROOKE N ART UNIT PAPER NUMBER 3771 NOTIFICATION DATE DELIVERY MODE 02/12/2021 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): docket@carterdeluca.com rs.patents.two@medtronic.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte LAUREN VERNLUND, WALTER SKALLA, NATHANIEL MAST, and STEVEN L. BENNETT Appeal 2020-003700 Application 15/072,402 Technology Center 3700 Before MICHAEL L. HOELTER, BENJAMIN D. M. WOOD, and WILLIAM A. CAPP, Administrative Patent Judges. WOOD, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1, 3–12, and 14–25. See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 “Appellant” refers to the applicant as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Medtronic, LP. Appeal Br. 1. Appeal 2020-003700 Application 15/072,402 2 CLAIMED SUBJECT MATTER The claims are directed to biocompatible adhesives. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A biocompatible adhesive comprising: a first component including at least one linear polyethylene glycol having a molecular weight from about 1,000 to about 10,000 Daltons, in combination with at least one multi- arm polyethylene glycol having a molecular weight from about 1,000 to about 3,000 Daltons, the at least one linear polyethylene glycol and the at least one multi-arm polyethylene glycol present at a weight ratio from about 99:1 to about 90:10; and a second component including a lactone. Appeal Br. 7 (Claims Appendix). REFERENCES Name Reference Date Paul US 8,435,307 B2 May 7, 2013 Sehl US 2006/0210602 A1 Sept. 21, 2006 Palese US 2012/0316594 A1 Dec. 13, 2012 Skalla US 2016/0250013 A1 Sept. 1, 2016 REJECTIONS Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis 1, 3– 7, 10–12, 14–18, 21–23 103 Sehl, Myung, Skalla 8, 9, 19, 20 103 Sehl, Myung, Palese 24, 25 103 Sehl, Myung, Paul OPINION Claims 1, 3–7, 10–12, 14–18, and 21–23: Rejected as Unpatentable over Sehl, Myung, and Skalla Appellant argues the claims subject to this rejection as a group. Appeal Br. 3–4. We select claim 1 as representative of the group, and Appeal 2020-003700 Application 15/072,402 3 decide the appeal of this rejection on the basis of claim 1 alone. 37 C.F.R. § 41.37(c)(1)(iv). The Examiner finds that Sehl discloses a biocompatible adhesive comprising a first component including at least one linear polyethylene glycol having a molecular weight from about 1,000 to about 10,000 Daltons, in combination with at least one multi-arm polyethylene glycol having a molecular weight from about 1,000 to about 3,000 Daltons, and a second component including a lactone. Final Act. 2–3 (citing Sehl ¶¶ 17, 49, 144, 145, 155, 170, Fig. 1). The Examiner acknowledges that Sehl “is silent regarding the at least one linear polyethylene glycol and the at least one multi-arm polyethylene glycol being present at a weight ratio from about 99:1 to about 90:10.” Id. at 3. The Examiner finds, however, that Myung teaches a biocompatible adhesive comprising a hydrophilic polymer using a linear PEG (polyethylene glycol) with a molecular weight of 4600 Daltons to increase tensile strength. Id. (citing Myung ¶ 43). The Examiner determines that it would have been obvious to one of ordinary skill in the art to use Myung’s PEG having a molecular weight of 4600 Daltons as the linear PEG in Sehl’s adhesive to “achiev[e] the desired elastic moduli and tensile strength.” Id. The Examiner finds that Sehl’s adhesive, so modified, would have the claimed weight ratio. Id.2 Appellant argues that “Myung’s materials are used to form corneal implants,” and thus the skilled artisan “would have no reason to combine Myung’s teachings with Sehl.” Appeal Br. 4; see Reply Br. 1 (asserting that Myung’s materials “are used to form corneal implants” and “are not 2 Other than listing Skalla in the list of references applied in this rejection, the Examiner does not discuss Skalla in the Final Action or Answer. Appeal 2020-003700 Application 15/072,402 4 adhesives or hernia patches possessing such adhesive materials”). According to Appellant, the proposed combination is based on “the use of impermissible hindsight.” Id. The Examiner responds, inter alia, that: (1) “[t]he linear PEG of Sehl and the linear PEG of Myung are used in the same [field] of invention of polymer networks for use on biocompatible implants”; (2) “both references disclose a desire for increased tensile strength”; and (3) Sehl discloses that “the compositions it teaches can be applied as a coating to solid implants such as corneal lenticules and/or hernia meshes, among other things.” Ans. 12–13 (citing Sehl ¶¶ 36, 169-170; Myung ¶ 43). The Examiner also notes that the rejection “takes into account only knowledge which was within the level of ordinary skill at the time, and does not include knowledge gleaned only from applicant’s disclosure.” Id. at 13. We are not persuaded of Examiner error. Appellant does not dispute the Examiner’s findings of fact that support the Examiner’s reason to combine Sehl and Myung in the proposed manner, and we agree with the Examiner that such findings firmly support the Examiner’s determination that one of ordinary skill in the art would have made the combination. We give little weight to Appellant’s unsupported assertion to the contrary. See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (Appellant’s attorney’s unsupported arguments in the briefs do not take the place of evidence in the record.). Further, we agree with the Examiner that the rejection does not rely on knowledge obtained only from Appellant’s disclosure. Therefore, we are not persuaded that the Examiner engaged in impermissible hindsight. See In re McLaughlin 443 F.2d 1392, 1395 (CCPA 1971) (“Any judgment on obviousness is in a sense necessarily a reconstruction based on hindsight Appeal 2020-003700 Application 15/072,402 5 reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill in the art at the time the claimed invention was made and does not include knowledge gleaned only from applicant's disclosure, such a reconstruction is proper.”). For the above reasons, we affirm the Examiner’s rejection of claims 1, 3–7, 10–12, 14–18, and 21–23. Remaining Rejections Appellant does not separately argue the patentability of claims 8, 9, 19, 20, 24, and 25, but relies on the arguments made in support of the patentability of independent claims 1, 12, and 23, which we found unpersuasive. Appeal Br. 5–6. Accordingly, we sustain the Examiner’s rejection of claims 8, 9, 19, and 20 as unpatentable over Sehl, Myung, and Palese; and of claims 24 and 25 as unpatentable over Sehl, Myung, and Paul. CONCLUSION The Examiner’s rejections are affirmed. DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3–7, 10– 12, 14–18, 21–23 103 Sehl, Myung, Skalla 1, 3–7, 10– 12, 14–18, 21–23 8, 9, 19, 20 103 Sehl, Myung, Palese 8, 9, 19, 20 24, 25 103 Sehl, Myung, Paul 24, 25 Overall Outcome 1, 3–12, 14– 25 Appeal 2020-003700 Application 15/072,402 6 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). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED