Ethicon, Inc.Download PDFPatent Trials and Appeals BoardOct 4, 20212021002974 (P.T.A.B. Oct. 4, 2021) Copy Citation 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. 15/467,239 03/23/2017 Julian Quintero ETH5855USNP 4659 27777 7590 10/04/2021 JOSEPH F. SHIRTZ JOHNSON & JOHNSON ONE JOHNSON & JOHNSON PLAZA NEW BRUNSWICK, NJ 08933-7003 EXAMINER BACHMAN, LINDSEY MICHELE ART UNIT PAPER NUMBER 3771 NOTIFICATION DATE DELIVERY MODE 10/04/2021 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): jnjuspatent@its.jnj.com lhowd@its.jnj.com pair_jnj@firsttofile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JULIAN QUINTERO, LEO B. KRIKSUNOV, and ROBERT J. TANNHAUSER Appeal 2021-002974 Application 15/467,239 Technology Center 3700 ____________ Before JOHN C. KERINS, MICHAEL L. HOELTER, and BENJAMIN D. M. WOOD, Administrative Patent Judges. KERINS, 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 1–10. Claims 11–20 are withdrawn from consideration. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 The term “Appellant” is used herein to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Ethicon, Inc., as the real party in interest. Appeal Br. 3. Appeal 2021-002974 Application 15/467,239 2 THE CLAIMED SUBJECT MATTER Appellant’s invention relates to a scaffold device for joining two layers of tissue. Claim 1 is illustrative, and is reproduced below: 1. A device for joining two layers of tissue, comprising: a) a substantially flat and flexible scaffold having an upper surface, a lower surface and sidewalls; b) a plurality of first passages penetrating said scaffold from said upper surface to said lower surface; c) a plurality of second passages penetrating said scaffold from said upper surface to said lower surface; d) a substantially flat and flexible top cover releasably attached to said upper surface and covering all of said upper surface; and e) said top cover having a plurality of top cover passages aligned with said first plurality of passages forming uninterrupted through-holes or apertures going all the way from the top cover to the lower surface of the scaffold, wherein said second passages are uninterrupted and configured to not intersect any of said first passages and are covered by the top cover and are not exposed on a top cover upper surface, and wherein said device without said top cover is configured for sandwiching the device between a first tissue and a second tissue being joined. Appeal Br. 11 (Claims Appendix). THE REJECTIONS The Examiner rejects: (i) claims 1–3 and 5–7 under 35 U.S.C. §102(a)(1) as being anticipated by Clark (US 5,259,835, issued Nov. 9, 1993); (ii) claims 1, 6, 7, and 10 under 35 U.S.C. §102(a)(1) as being anticipated by Gingras (US 2006/0141012 A1, published June 29, 2006); Appeal 2021-002974 Application 15/467,239 3 (iii) claim 10 under 35 U.S.C. § 103 as being unpatentable over Clark in view of Appellant’s Admitted Prior Art (hereafter “AAPA”); (iv) claim 4 under 35 U.S.C. § 103 as being unpatentable over Clark in view of Tetreault (US 6,652,559 B1, issued Nov. 25, 2003); (v) claims 8–10 under 35 U.S.C. § 103 as being unpatentable over Clark in view of Hickey (US 2002/0192107 A1, published Dec. 19, 2002); (vi) claims 2, 4, and 8 under 35 U.S.C. § 103 as being unpatentable over Gingras in view of Stopek (US 2011/0236459 A1, published Sept. 29, 2011); (vii) claim 3 under 35 U.S.C. § 103 as being unpatentable over Gingras in view of Stopek and LaGreca (US 7,576,257 B2, issued Aug. 18, 2009); (viii) claim 5 under 35 U.S.C. § 103 as being unpatentable over Gingras in view of Sostek (US 2014/0141152 A1, published May 22, 2014); and (ix) claim 9 under 35 U.S.C. § 103 as being unpatentable over Gingras in view of Stopek and Coneski (US 2014/0221495 A1, published Aug. 7, 2014). ANALYSIS Claims 1–3 and 5–7--Anticipation by Clark Appellant argues claims 1–3, and 5–7 as a group. The rejection of claim 1 is addressed below, and claims 2, 3, and 5–7, which ultimately depend from claim 1, stand or fall with claim 1. The Examiner finds that Clark discloses a substantially flat and flexible scaffold (pad 36) having a plurality of first passages, and a plurality Appeal 2021-002974 Application 15/467,239 4 of second passages, with both the first and second passages penetrating the scaffold from an upper surface thereof to a lower surface thereof, and a top cover having passages aligned with the plurality of first passages, “forming apertures going all the way from the top cover to the lower surface of the scaffold.” Final Act. 4–5. The Examiner finds that the plurality of first passages define “apertures” because the entire pad 36 (erroneously designated as 32) is porous. Id. at 5. The Examiner takes the position that the first and second passages in Clark are “uninterrupted” because they are continuous through the porous material. Id. The Examiner additionally finds that the plurality of second passages are pores in pad 36 not directly under openings 34 in the top cover, and since those pores are spaced to the edges of the pad, they do not intersect with the plurality of first pores disposed directly under the openings. Id. Appellant maintains that the Examiner’s position that porous pad 36 includes uninterrupted through-holes or apertures that are not intersected by the plurality of second passages is untenable. Appeal Br. 6. We agree. The interstitial spaces or pores in pad 36, disclosed as being a knitted or woven mesh, nonwoven mesh, or foam (Clark 3:54–59), do not constitute uninterrupted through-holes, apertures, or passages. The Examiner unsuccessfully attempts to establish that pad 36 has uninterrupted through- holes by citing to a dictionary definition that defines “uninterrupted” as “continuous.” Final Act. 3. This overlooks the fact that a tortured path through a fiber matrix or foam would not be regarded by a person of ordinary skill in the art as a through-hole, even if the interstitial spaces or pores provide the ability for a liquid to flow through from a top surface to a bottom surface. Additionally, the Examiner does not explain how the Appeal 2021-002974 Application 15/467,239 5 second passages allegedly present in Clark’s porous pad, which are essentially just tortured paths through the matrix, can be said to not intersect with any of the first passages. The rejection of claim 1 and of claims 2, 3, and 5–7, as being anticipated by Clark, is not sustained. Claims 1, 6, 7, and 10--Anticipation by Gingras Appellant argues claims 1, 6, 7, and 10 as a group. The rejection of claim 1 is addressed below, and claims 6, 7, and 10, which depend from claim 1, stand or fall with claim 1. The Examiner, relying on the Figure 6 embodiment of Gingras, and, in particular, Figures 6A and 6E, finds that Gingras discloses a flat and flexible scaffold (film layer 138) including a plurality of first passages (alignment holes 90), and a plurality of second passages (cut out sections 150, 154), both meeting all requirements in claim 1 for the passages, and a flat, flexible top cover releasably attached to the scaffold, and having openings aligned with the openings of the plurality of first passages to form through-holes or apertures extending all of the way through the top cover and scaffold. Final Act. 8. Appellant argues that, whereas the “first and second passages of the present invention do not form [a] continuous path through the scaffold,” and any interconnection between first and second passages is outside the scope of claim 1, “Gingras clearly shows interconnecting passages.” Appeal Br. 6. Appeal 2021-002974 Application 15/467,239 6 Appellant reproduces Figure 6E of Gingras in attempting to establish this position, and we reproduce that figure here as well: Depicted above is Figure 6E of Gingras, which is “a perspective view of twenty seven films combined to make a tissue scaffold with delivery channel openings within the scaffold with a cut out section and isolated on the top and bottom in partial section.” Gingras ¶ 76. Appellant maintains that, although the Examiner relies on alignment holes 90 as corresponding to the plurality of first openings in claim 1, “the second plurality of passages shown in the embodiment of Fig. 6E are interconnected with alignments holes (lower left part of Fig. 6E, . . . and also are shown to breach the top and bottom [] covers of scaffold 146.” Appeal Br. 8. Appellant asserts that the intersection of first and second passages and Appeal 2021-002974 Application 15/467,239 7 the breach of the top cover by the second passages result in Gingras not identically disclosing the invention as recited in claim 1. Id. The Examiner responds that delivery channels 150, 154 (as seen in Figure 6D of Gingras) are relied on as corresponding to the claimed plurality of second passages, and not delivery channel opening 158 illustrated in Figure 6E and argued by Appellant. Ans. 5–6. The Examiner points to the right-most exploded view provided in Figure 6E as showing alignment hole 90 as not being connected or intersected with passages 150 and 154. Id. at 6. The Examiner buttresses the position by pointing out that at least Figures 3K, 4H, and 5A, depicting other embodiments in Gingras, also show alignment holes that do not connect with the interconnecting passages formed at the interior of each layer. As such, according to the Examiner, Appellant’s arguments address aspects of Gingras not relied on in the rejection. Id. Appellant’s reply continues to focus on the passages identified with reference numeral 158 in Figure 6E of Gingras, despite the Examiner’s refutation of reliance on those particular passages. Reply Br. 9 (“if the second set of passages are considered to be those shown in [the left-most exploded view appearing in Figure 6E] these passages penetrate the top cover which is not an element of claim 1.”). Appellant does not address the Examiner’s finding that holes of the type seen as alignment hole 90 in the right-most exploded view in Figure 6E of Gingras provide a plurality of first passages, while the plurality of second passages is provided by delivery Appeal 2021-002974 Application 15/467,239 8 channels 150, 154, and thus does not indicate where error might exist in applying Gingras in that manner to anticipate claim 1. Accordingly, the rejection of claim 1 as being anticipated by Gingras is sustained. Claims 6, 7, and 10 fall with claim 1. Claim 10--Unpatentability over Clark and AAPA The Examiner does not rely on AAPA in any manner that cures the deficiencies in Clark noted above with respect to the rejection of claim 1, and therefore the rejection of claim 10 as being unpatentable over Clark and AAPA is not sustained. Claim 4--Unpatentability over Clark and Tetreault The Examiner does not rely on Tetreault in any manner that cures the deficiencies in Clark noted above with respect to the rejection of claim 1, and therefore the rejection of claim 4 as being unpatentable over Clark and Tetreault is not sustained. Claims 8–10--Unpatentability over Clark and Hickey The Examiner does not rely on Hickey in any manner that cures the deficiencies in Clark noted above with respect to the rejection of claim 1, and therefore the rejection of claims 8–10 as being unpatentable over Clark and Hickey is not sustained. Claims 2, 4, and 8--Unpatentability over Gingras and Stopek Appellant argues only that Stopek does nothing to cure the deficiencies of the rejection of claim 1 based on Gingras, for the reasons Appeal 2021-002974 Application 15/467,239 9 stated in traversing that rejection. Appeal Br. 9. For the reasons discussed above, we are not apprised of any deficiency in Gingras nor of any error in the rejection. The rejection of claims 2, 4, and 8 is sustained. Claim 3--Unpatentability over Gingras, Stopek, and LaGreca Appellant argues only that Stopek and LaGreca do nothing to cure the deficiencies of the rejection of claim 1 based on Gingras, for the reasons stated in traversing that rejection. Appeal Br. 9. For the reasons discussed above, we are not apprised of any deficiency in Gingras nor of any error in the rejection. The rejection of claim 3 is sustained. Claim 5--Unpatentability over Gingras and Sostek Appellant argues only that Sostek does nothing to cure the deficiencies of the rejection of claim 1 based on Gingras, for the reasons stated in traversing that rejection. Appeal Br. 9–10. For the reasons discussed above, we are not apprised of any deficiency in Gingras nor of any error in the rejection. The rejection of claim 5 is sustained. Claim 9--Unpatentability over Gingras, Stopek, and Coneski Appellant argues only that Stopek and Coneski do nothing to cure the deficiencies of the rejection of claim 1 based on Gingras, for the reasons stated in traversing that rejection. Appeal Br. 10. For the reasons discussed Appeal 2021-002974 Application 15/467,239 10 above, we are not apprised of any deficiency in Gingras nor of any error in the rejection. The rejection of claim 9 is sustained. CONCLUSION The rejections of claims 1–10 having Clark as the primary reference are reversed. The rejections of claims 1–10 having Gingras as the primary reference are affirmed. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–3, 5–7 102(a)(1) Clark 1–3, 5–7 1, 6, 7, 10 102(a)(1) Gingras 1, 6, 7, 10 10 103 Clark, AAPA 10 4 103 Clark, Tetreault 4 8–10 103 Clark, Hickey 8–10 2, 4, 8 103 Gingras, Stopek 2, 4, 8 3 103 Gingras, Stopek, LaGreca 3 5 103 Gingras, Sostek 5 9 103 Gingras, Sostek, Coneski 9 Overall Outcome 1–10 Appeal 2021-002974 Application 15/467,239 11 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) (2019). AFFIRMED Copy with citationCopy as parenthetical citation