14773659 - (D) (P.T.A.B. May. 13, 2019)

Ex Parte Alsberg

Patent Trials and Appeals BoardMay 13, 2019

14773659 - (D) (P.T.A.B. May. 13, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/773,659 09/08/2015 Eben Alsberg 68705 7590 05/15/2019 TAROLLI, SUNDHEIM, COVELL & TUMMINO, LLP 1300 EAST NINTH STREET SUITE 1700 CLEVELAND, OH 44114 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 ATTORNEY DOCKET NO. CONFIRMATION NO. CWR-022097US PCT 5488 EXAMINER WHEELER, THURMAN MICHAEL ART UNIT PAPER NUMBER 1619 NOTIFICATION DATE DELIVERY MODE 05/15/2019 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): rkline@tarolli.com docketing@tarolli.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte EBEN ALSBERG Appeal2019-000024 Application 14/773,659 Technology Center 1600 Before ULRIKE W. JENKS, TIMOTHY G. MAJORS, and MICHAEL A. VALEK, Administrative Patent Judges. VALEK, Administrative Patent Judge. DECISION ON APPEAL Appellant1 submits this appeal under 35 U.S.C. Â§ 134(a) involving claims to a bioadhesive comprising a cross-linked biodegradable hydrogel. We have jurisdiction under 35 U.S.C. Â§ 6(b). We REVERSE. STATEMENT OF THE CASE Claims 1-21 and 23-25 are on appeal and can be found in the Claims Appendix of the Appeal Brief. All of the claims are directed to a 1 Appellant identifies the real party in interest as Case W estem Reserve University. App. Br. 2. Herein we refer to the Final Office Action mailed June 6, 2017 ("Final Act."), Appeal Brief filed April 9, 2018 ("App. Br."), Examiner's Answer mailed July 27, 2018 ("Ans."), and Reply Brief filed September 27, 2018 ("Reply Br."). Appeal2019-000024 Application 14/773,659 bioadhesive comprising a crosslinked biodegradable hydrogel that includes natural polymer macromers that are both "oxidized" and "acrylated or methacrylated." For example, claim 1 provides as follows: 1. A bioadhesive comprising: a crosslinked biodegradable hydrogel that includes a plurality of oxidized and acrylated or methacrylated natural polymer macromers crosslinked with a plurality of branched poly( ethylene glycol) macromers, wherein the bioadhesive upon application to injured tissue mechanically joins or seals the injured tissue. App. Br. 15. In claims 5, 14, 18-21, and 23-25 the natural polymer is further limited to alginate. For example, claim 18 provides as follows: 18. A bioadhesive comprising: a dual crosslinked biodegradable hydrogel that includes a plurality of oxidized and acrylated or methacrylated alginate macromers crosslinked with a plurality of branched poly( ethylene glycol) macromers, wherein the bioadhesive upon application to injured tissue mechanically joins or seals the injured tissue. App. Br. 18. Appellant seeks review of Examiner's rejection of claims 1-21 and 23-25 under 35 U.S.C. Â§ 103 as unpatentable over Kodokian, 2 in view of Alsberg, 3 Domb,4 and Wang. 5 App. Br. 7-13. 2 George K. Kodokian et al., US 2006/0078536 Al, published April 13, 2006 ("Kodokian"). 3 Eben Alsberg et al., US 2011/0008443 Al, published Jan. 13, 2011 ("Alsberg"). 4 Abraham J. Domb, US 2002/0012705 Al, published Jan. 31, 2002 ("Domb"). 5 Peng Wang et al., New Carbohydrate-Based Materials for the Stabilization of Proteins, J. AM. CHEM. Soc., Vol. 114, 378-380 (1992) ("Wang"). 2 Appeal2019-000024 Application 14/773,659 The issue is: Does the preponderance of evidence of record support Examiner's conclusion that the cited prior art renders obvious the claimed bioadhesive compositions? Analysis Examiner finds that Kodokian teaches a bioadhesive hydrogel formed by crosslinking an oxidized polysaccharide with a polyether amine (i.e., a "branched poly(ethylene glycol)" as recited in Appellant's claims). Final Act. 3. Examiner determines that Alsberg teaches "photocrosslinked hydrogels comprising methacrylated" alginate. Id. at 4. 6 Examiner states that it would be obvious to "further include crosslinked methacrylated" macromers in Kodokian' s bioadhesive "in order to control the degradation rate, swelling behavior, and mechanical properties of the bioadhesive in accordance with the teachings of Alsberg." Id. at 6. Appellant contends that Examiner has failed to articulate a "reasonable rationale as to why one skilled in the art would modify the bioadhesives of Kodokian to include acrylated or methacrylated natural polymer monomers." App. Br. 10. We agree. Kodokian and Alsberg teach different approaches that involve the use of different chemical modifications ( oxidation versus methacrylation) to form entirely distinct types of crosslink bonds. Examiner identifies no 6 Alsberg is the only reference Examiner cited as teaching the "acrylated or methacrylated" limitation of Appellant's claims. See Final Act. 4---6. Examiner's rejection does not rely on Domb or Wang for that limitation, nor does Examiner otherwise rely on those references to respond to any of Appellant's arguments on appeal. See generally Ans. 3-8 ("response to arguments" section). Accordingly, we need not address Domb or Wang further here. 3 Appeal2019-000024 Application 14/773,659 evidence to suggest that one of ordinary skill would consider these approaches to be complimentary to each other, nor has Examiner otherwise provided a rationale for combining them in the same hydrogel. Instead, Examiner points to Alsberg' s teaching that the physical properties of its hydrogel are controlled by varying the crosslinking through its methacrylate groups. Final Act. 6; see also Alsberg ,r,r 48--49. This is not sufficient because Kodokian teaches that the same properties are controlled by making changes that affect the existing type of crosslinks in that hydrogel. See Kodokian ,r,r 43, 88. Examiner has not articulated why one of ordinary skill in the art would find it obvious to add an entirely new chemical moiety, much less the particular one taught in Alsberg (methacrylate), to control the same properties that Kodokian teaches can be controlled without adding new types of crosslink bonds. 7 Because we determine that Examiner has not articulated a sufficient rationale to combine Alsberg' s methacrylate groups with Kodokian' s hydro gel, Examiner has not met the "initial burden" of presenting a prima facie case of obviousness. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 7 On Appeal, Examiner additionally states that one of skill would be motivated to add Alsberg's methacrylate groups "in order to provide an improved adhesive that would make an even stronger seal with tissue." Ans. 7-8. Appellant argues that Examiner's new finding is contradicted by Kodokian's teaching that it is "the aldehyde groups of the oxidized polysaccharide [that] covalently bind to amine groups on the tissue" to increase the strength of the seal. Reply Br. 3 ( citing Kodokian ,r,r 44, 51 ). We agree with Appellant. There is no evidence that one of ordinary skill would expect Alsberg's methacrylate groups to form similar bonds with the tissue. Accordingly, Examiner's finding that one of skill would be motivated to add such groups to form a stronger seal with the surrounding tissue is not supported by a preponderance of the evidence. 4 Appeal2019-000024 Application 14/773,659 1992). For this reason, we reverse. SUMMARY We reverse the rejection of claims 1-21 and 23-25 under 35 U.S.C. Â§ 103 as unpatentable over Kodokian, in view of Alsberg, Domb, and Wang. REVERSED 5