Ethicon, Inc.

Patent Trials and Appeals Board

Jan 4, 2022

2021004007 (P.T.A.B. Jan. 4, 2022)

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. 15/496,389 04/25/2017 Julian Quintero ETH5907USNP 5574 27777 7590 01/04/2022 JOSEPH F. SHIRTZ JOHNSON & JOHNSON ONE JOHNSON & JOHNSON PLAZA NEW BRUNSWICK, NJ 08933-7003 EXAMINER NELSON, KERI JESSICA ART UNIT PAPER NUMBER 3786 NOTIFICATION DATE DELIVERY MODE 01/04/2022 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 and LEO B. KRIKSUNOV Appeal 2021-004007 Application 15/496,389 Technology Center 3700 Before PHILLIP J. KAUFFMAN, BENJAMIN D. M. WOOD, and BRETT C. MARTIN, 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 1-5, 7, 8, and 13-15. Claims 9-12 have been withdrawn. Final Act. 1 (Summary). Claim 6 is deemed allowable if rewritten in independent form. Id. at 7. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to the applicant as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Ethicon, Inc. Appeal Br. 3. Appeal 2021-004007 Application 15/496,389 2 CLAIMED SUBJECT MATTER The claims are directed to skin closure devices with self-forming exudate drainage channels. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A device for application onto incisions or wounds with a liquid rapidly polymerizable adhesive for forming skin closure systems, comprising a thin flexible flat porous tape elongated along a longitudinal axis and having a lower side or wound facing side and an opposing upper side, a periphery, and central portion in immediate vicinity of the axis; said tape coated or impregnated with an initiator or accelerator of polymerization; said tape having a plurality of elongated traces of exudate soluble pressure sensitive adhesive (PSA) disposed on the wound facing side; said traces covering from about 3% to about 50% of area of said tape and extending from the central portion to the periphery of said tape. REFERENCES Name Reference Date Kase US 5,861,348 Jan. 19, 1999 Jonn US 2005/0182443 A1 Aug. 18, 2005 Abbott US 2015/0209186 A1 July 30, 2015 Blanco US 2015/0297413 A1 Oct. 22, 2015 Locke US 9,440,010 B2 Sept. 13, 2016 Appeal 2021-004007 Application 15/496,389 3 REJECTIONS Claims Rejected 35 U.S.C. § References 1, 7, 8, 13-15 103 Jonn, Locke 2, 14 103 Jonn, Locke, Kase 3, 14 103 Jonn, Locke, Abbott 4, 5, 14 103 Jonn, Locke, Blanco OPINION Claims 1, 7, 8, and 13-15-§ 103-Jonn and Locke Appellant argues claims 1, 7, 8, and 13-15 as a group. Appeal Br. 5- 7. We select claim 1 as representative of the group, and 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 Jonn teaches the device of claim 1, including a thin flexible porous tape with a plurality of elongated traces of soluble pressure sensitive adhesive (PSA) disposed on the wound-facing side of the tape, the traces extending from a central portion to the periphery of the tape and covering from about 3% to about 50% of an area of the tape, but that “Jonn fails to teach that the PSA is exudate soluble.” Final Act. 3 (citing Jonn ¶¶ 20, 38, 55-56, 65, 70, 98-99, Figs. 7a-7b). The Examiner further finds that Locke teaches a device for application onto incisions or wounds comprising a tape and an exudate-soluble adhesive. Id. at 3-4 (citing Locke 6:65-66, 7:11-13). The Examiner determines that it would have been obvious to one of ordinary skill in the art “to modify the PSA of the device taught by Jonn to be exudate soluble as taught by Locke for the purpose of minimizing the adhesive from adhering directly to the wound.” Id. at 4. Appellant responds that “the Examiner fails to provide motivation to modify the PSA of Jonn to an exudate soluble PSA.” Appeal Br. 7. Appellant asserts that one of ordinary skill in the art would not have been Appeal 2021-004007 Application 15/496,389 4 motivated to minimize the adhesive from adhering directly to the wound because Jonn “use[s] adhesive to adhere to the wound for wound approximation purposes (i.e. wound closure [)].” Id. (citing Jonn ¶ 14, 15, Figs. 6a-6c). Thus, according to Appellant, “[a]ny purpose to ‘minimize the adhesive from adhering directly to the wound’ is counter to the teachings and purpose of Jonn to achieve wound approximation.” Id. The Examiner responds that Jonn teaches embodiments in which “the wound is substantially not in contact with the adhesive substance.” Ans. 4 (citing Jonn ¶ 48). The Examiner submits that because Jonn teaches embodiments where the adhesive does not come into contact with a wound (as well as embodiments where the adhesive substance would contact the wound), “there is no criticality for the adhesive substance to be directly adhered to the wound for the wound closure device taught by Jonn to operate as intended.” Id. In the Reply Brief, Appellant counters that “the Examiner’s statement about ‘lack of criticality’ in Jonn are actually elements in appealed claim 1.” Reply Br. 3. Appellant’s contention that “[a]ny purpose to ‘minimize the adhesive from adhering directly to the wound’ is counter to the teachings and purpose of Jonn to achieve wound approximation” (Appeal Br. 7) is not supported by the record. Jonn does not teach that the adhesive substance used on its wound-closure device must directly adhere to the wound to close the wound. On the contrary, as the Examiner notes, Jonn teaches embodiments in which the adhesive substance would not touch the wound, as well as embodiments in which the adhesive substance would adhere to the wound. Ans. 4 (citing Jonn ¶¶ 48-49, 55, 65, 98, Figs. 1-5, 7a, 7b). Thus, the adherence of the adhesive directly to the wound is not “critical” to the operation of Jonn’s Appeal 2021-004007 Application 15/496,389 5 device. Id. Appellant responds that what the Examiner identifies as lacking criticality “are actually elements in appealed claim 1.” Reply Br. 3. We understand this argument to be suggesting that the Examiner is admitting that Jonn does not teach certain claim elements. We disagree. Indeed, Appellant does not expressly dispute any of the Examiner’s findings as to what Jonn teaches. Because we are not persuaded that the Examiner erred in rejecting claim 1, we sustain the Examiner’s rejection of claims 1, 7, 8, and 13-15 as unpatentable over Jonn and Locke. The Remaining Rejections The Examiner also rejects, under § 103: (1) claims 2 and 14 as unpatentable over Jonn, Locke, and Kase; (2) claims 3 and 14 as unpatentable over Jonn, Locke, and Abbott; and (3) claims 4, 5, and 14 as unpatentable over Jonn, Locke, and Blanco. Final Act. 4-7. Appellant does not separately argue the patentability of claims 2-5 and 14, but instead relies on their dependency on claim 1 for patentability. Appeal Br. 7-9. As we find no deficiency in the Examiner’s rejection of claim 1 as unpatentable over Jonn and Locke, we sustain the above rejections of claims 2-5 and 14. CONCLUSION The Examiner’s rejections are affirmed. Appeal 2021-004007 Application 15/496,389 6 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 7, 8, 13- 15 103 Jonn, Locke 1, 7, 8, 13- 15 2, 14 103 Jonn, Locke, Kase 2, 14 3, 14 103 Jonn, Locke, Abbott 3, 14 4, 5, 14 103 Jonn, Locke, Blanco 4, 5, 14 Overall Outcome 1-5, 7, 8, 13-15 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