Ex Parte Atanasoska et alDownload PDFPatent Trial and Appeal BoardFeb 12, 201612841895 (P.T.A.B. Feb. 12, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/841,895 07/22/2010 11050 7590 02/17/2016 SEAGER, TUFTE & WICKHEM, LLP 100 South 5th Street Suite 600 Minneapolis, MN 55402 FIRST NAMED INVENTOR Liliana Atanasoska 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. 1001.2448101 2969 EXAMINER LYNCH, ROBERT A ART UNIT PAPER NUMBER 3731 NOTIFICATION DATE DELIVERY MODE 02/17/2016 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): BSC.USPTO@stwiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte LILIANA AT ANASOSKA, DAVID J. SOGARD, ROBERT W. WARNER, MICHAEL ROOT, RAJESH RADHAKRISHNAN, MOURAD RAHI, SCOTT R. SMITH, JAN WEBER, and ERIC PETERSEN Appeal2014-000313 Application 12/841,895 1 Technology Center 3700 Before MICHAEL C. ASTORINO, CYNTHIA L. MURPHY, and KENNETH G. SCHOPPER, Administrative Patent Judges. ASTORINO, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. § 134 from the Examiner's decision rejecting claims 1-10 and 18-20. Claims 11-17 have been withdrawn from the patent application. Appeal Br. 5. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We REVERSE. 1 According to the Appellants, "[t]he real party in interest is the assignee of record, Boston Scientific Scimed, Inc." Appeal Br. 5. Appeal2014-000313 Application 12/841,895 Claimed Subject Matter Claims 1 and 18 are the independent claims on appeal. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A bioabsorbable anchor for a vascular closure device comprising: a magnesium anchor; a biodegradable polymer coating associated with the magnesium anchor; a conductive element connected to the magnesium anchor; and a biodegradable electroactive polymer associated with one or more of the magnesium anchor, the biodegradable polymer, and the conductive element. Rejections Claims 1-3, 9, and 10 are rejected under 35 U.S.C. § 103(a) as unpatentable over Atanasoska (US 2006/0184092 Al, pub. Aug. 17, 2006) and Stinson (US 2008/0071350 Al; pub. Mar. 20; 2008). Claim 4 is rejected under 35 U.S.C. § 103(a) as unpatentable over Atanasoska, Stinson, and Plieth (US 2008/0305341 Al, pub. Dec. 11, 2008). Claim 5 is rejected under 35 U.S.C. § 103(a) as unpatentable over Atanasoska, Stinson, and Boismier (US 2008/0071348 Al, pub. Mar. 20, 2008). Claim 6 is rejected under 35 U.S.C. § 103(a) as unpatentable over Atanasoska, Stinson, Boismier, and Plieth. Claim 7 is rejected under 35 U.S.C. § 103(a) as unpatentable over Atanasoska, Stinson, and Bonutti (US 2007/0141106 Al, pub. June 21, 2007). 2 Appeal2014-000313 Application 12/841,895 Claim 8 is rejected under 35 U.S.C. § 103(a) as unpatentable over Atanasoska, Stinson, Bonutti, and Plieth. Claims 18 and 20 are rejected under 35 U.S.C. § 103(a) as unpatentable over Atanasoska, Stinson, and Plieth. Claim 19 is rejected under 35 U.S.C. § 103(a) as unpatentable over Atanasoska, Stinson, Plieth, and Boismier. ANALYSIS Independent claim 1 recites, "a biodegradable electroactive polymer associated with one or more of [a] magnesium anchor, [a] biodegradable polymer, and [a] conductive element." Appeal Br. 19, Claims App. (emphasis added). It is notable that the Appellants' Specification provides guidance that a biodegradable electroactive polymer augments conduction, i.e., enhances electrical conductivity. See Spec. 5, 11. 20-24, 6, 11. 8-11. Moreover, the Specification provides examples of a biodegradable electroactive polymer, i.e., poly(3,4-ethylenedioxythiophene) and/or copolymers thereof. See Spec. 5, 11. 20-24. The Examiner finds that Atanasoska's "anchor medical device [, i.e., 1200a,] may comprise polymeric regions in the form of layers of conductive polymers including[,] but not limited to[,] polyethylenedioxythiophenes." See Final Act. 3--4, 5 (citing Atanasoska, paras. 40, 41, 64, 73, 85-87). Additionally, the Examiner relies on Atanasoska's device depicted in Figure 12 to disclose substantially all or, alternatively, all of the remainder of the requirements of claim 1. Final Act. 5; see also Ans. 9-10. More particularly, the Examiner finds that anchor 1200a, biodegradable polylactide or polyglycolide, and a conductor with suture 1200e, correspond 3 Appeal2014-000313 Application 12/841,895 to the anchor, biodegradable polymer, and conductive element required by claim 1, except that anchor 1200a is not a magnesium anchor. Final Act. 5; see also Ans. 9-10. Alternatively, the Examiner finds that anchor 1200a is provided with one or more magnesium electrodes 1218a, and as such, can be understood as a "magnesium anchor." See Ans. 10; see Atanasoska, para. 158. The Examiner's rejection does not rely on Stinson to teach a biodegradable electroactive polymer. The Appellants contend that although Atanasoska discloses electroactive polymers, for example in the embodiment depicted in Figures 6 and 6B, "there is no disclosed utility which would be associated with the incorporation of an electroactive polymer in the anchor of Fig. 12." Reply Br. 3 (citing Atanasoska, para. 138); see also Appeal Br. 13, Amendment in Accordance with 37 CPR §1.111, p. 9, filed Oct. 4, 2012. The Appellants' contention is persuasive. First, the Examiner's rejection is based on the device of Figure 12 of Atanasoska and supported by other cited disclosure of Atanasoska to help explain the particulars of the embodiment/device. Final Act. passim. Second, the device of Figure 12 fails to include a conductive polymer, e.g., polyethylenedioxythiophene, as a material in anchor 1200a. Rather, the device of Figure 12 includes an ion-conductive polymer. 2 More specifically, the device of Figure 12 may include an anchor 1200a having one or more electrodes 1218a, "which are preferably covered with one or more drug- containing regions (not separately illustrated), for example, a polymeric region containing a charged drug and an ion-conductive polymer." 2 Atanasoska distinguishes ion-conductive polymers from conductive polymers. See, e.g., Atanasoska, paras. 63, 64, 73. 4 Appeal2014-000313 Application 12/841,895 Atanasoska, para. 158. And, although Atanasoska discloses conductive polymers as a type of electroactive polymer (see Atanasoska, paras. 67, 138), conductive polymers and/or electroactive polymers are not described as being used in association with the device of Figure 12. More importantly, the Examiner's findings and reasoning fail to explain whether an ion- conductive polymer is a conductive polymer and/or an electroactive polymer. Further, the Examiner refers to Atanasoska's paragraph 85, which discloses that polymeric regions can be made of numerous polymeric layers. Final Act. 3. However, the Examiner does not explain how the device of Figure 12 of Atanasoska includes a conductive polymer layer or an electroactive polymer layer. The Examiner also does not explain why it would be useful to modify the device of Figure 12 to include an electroactive polymer layer. Thus, for the reasons provided above, the Examiner's rejection of independent claim 1, and dependent claims 2, 3, 9, and 10, as unpatentable over Atanasoska and Stinson is not sustained. The remaining claims on appeal each require biodegradable electroactive polymer. See Appeal Br. 19-20, 21, Claims App. The remaining rejections on appeal, based on Atanasoska and Stinson in combination with Plieth, Boismier, Boismier and Plieth, Bonutti, and Bonutti and Plieth, rely on the same errant finding discussed above. As such, we cannot sustain the rejections of claims 4--8 and 18-20. 5 Appeal2014-000313 Application 12/841,895 DECISION We REVERSE the Examiner's decision rejecting claims 1-10 and 18-20. REVERSED 6 Copy with citationCopy as parenthetical citation