Ex Parte Al-Lamee et al

Patent Trial and Appeal Board

Feb 24, 2015

12160255 (P.T.A.B. Feb. 24, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte KADEM AL-LAMEE and MARTYN LOTT
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Appeal 2013-000069
Application 12/160,255
Technology Center 1700
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Before ADRIENE LEPIANE HANLON, JEFFREY T. SMITH,
and BEVERLY A. FRANKLIN, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 17–22, 24, 25, 27, 28, 30, 31, 33–51, 53, and 55. We have
jurisdiction under 35 U.S.C. § 6.
Appellants’ invention is directed to a method of applying a
hydrophilic coating to the surface of a medical device. Claim 17 is
representative of the subject matter on appeal and is reproduced below:
17. A method of applying a hydrophilic coating to a
surface of a medical device comprising the steps of:
(a) applying to the medical device a first coating
comprising a polyvinyl chloride copolymer; and
(b) applying to the first coating a second coating
comprising a mixture of a poly (N–vinyl lactam) and a
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polyvinyl chloride copolymer, and wherein the second coating
additionally comprises a zwitterionic compound.
The Examiner maintains the following § 103 rejection:
Claims 17–22, 24, 25, 27, 28, 30, 31, 33–51, 53, and 55 are rejected
under 35 U.S.C. § 103(a) over Chen (US 2006/0240065A1, pub. Oct. 26,
2006) as evidenced by West et al., The biocompatibility of crosslinkable
copolymer coatings containing sulfobetaines and phosphobetaines,
Biomaterials, 25 (2004), 1195–1204) .
A complete statement of the appealed rejection appears in the Final
Office Action. After review of the arguments presented by Appellants in the
Briefs and the responses presented by the Examiner in the Final Office
Action and the Answer, we affirm the appealed rejection. We adopt the
findings of fact and responses to Appellants’ arguments that have been
presented by the Examiner in the Final Office Action and the Examiner’s
Answer. We add the following for emphasis.
Appellants argue that Chen teaches a medical device that may
comprise an unlimited number of exemplary polymers and provides no
guidance for arriving at the recited combination of polymers from the
virtually unlimited number of polymers taught. (App. Br. 3–5, 9–10).
Appellants argue that Chen provides no guidance to form the specific layers
that will lead to the claimed invention. (App. Br. 5–7). Appellants further
argue that Chen does not suggest incorporating a zwitterionic compound in a
medical device coating as required by claim 53. (App. Br. 10–11)
Appellants’ arguments not persuasive. The Examiner found Chen
discloses coating compositions for medical devices that comprise active
agents. According to the Examiner, Chen discloses coatings suitable for
application to medical devices which include any combination of polymers,
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copolymers, and agents. (Final Act. 4–5). The Examiner found Chen
discloses suitable polymers and agents include polyvinyl chloride
copolymer, and a mixture of a poly(N-vinyl lactam), a polyvinyl chloride
and phosphorylcholine (a zwitterionic compound). (Id.). The Examiner
recognizes that Chen discloses multilayered coatings are suitable for
application to medical devices. (Ans. 8; Chen ¶¶ 97 and 102). The Examiner
found it would have been obvious to one of ordinary skill in the art to choose
a first agent containing layer comprised of polyvinyl chloride copolymer and
a second agent containing layer comprised of a mixture of poly(N-vinyl
lactam) and polyvinyl chloride copolymer in which the agent is a
zwitterionic compound (i.e.. phosphorylcholine), because Chen discloses
each of the components are suitable for forming coatings on medical
devices. (Final Act. 5–6).
It is well established that a reference is available for all that it teaches
to a person of ordinary skill in the art. See Merck & Co. v. Biocraft Labs.,
Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (holding that the prior art’s
disclosure of over 1200 possible combinations rendered all possible
formulations obvious). Appellants have not disputed that Chen discloses
polymers and agents suitable for application to medical devices. A person of
ordinary skill in the art would have reasonably expected that the components
described by Chen would have been suitable for application as multilayered
coatings to medical devices.
The Examiner found Chen discloses phosphorylcholine is a
zwitterionic compound. Appellants have failed to dispute this finding.
Appellants have also failed to explain why a person of ordinary skill in the
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art would not have expected hydrophilic properties from a coating
composition containing phosphorylcholine.
Appellants further argue the Examiner’s rejection is premised on the
optimization of parameters which in this case is improper. (App. Br. 7–8).
This argument is not persuasive because the Examiner has provided
alternative rationale in making the appealed rejection. (Final Act. 5–6; Ans.
12). Particularly, the coating compositions and structure were known in the
art of coating medical devices. A person of ordinary skill in the art would
have reasonably expected that the components described by Chen would
have been suitable for application as multilayered coatings to medical
devices.
Appellants, in the Briefs, have not directed us to evidence of
unexpected results in rebuttal to the appealed rejection.
Accordingly, we affirm the Examiner’s obviousness rejection of
claims 17–22, 24, 25, 27, 28, 30, 31, 33–51, 53, and 55 for the reasons
presented by the Examiner and given above.

ORDER
The Examiner’s obviousness rejection is AFFIRMED.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).

AFFIRMED

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