Ex Parte AugusteDownload PDFPatent Trials and Appeals BoardMay 22, 201913643482 - (D) (P.T.A.B. May. 22, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/643,482 12/10/2012 3000 7590 05/24/2019 CAESAR RIVISE, PC 7 Penn Center, 12th Floor 1635 Market Street Philadelphia, PA 19103-2212 FIRST NAMED INVENTOR Stephane Auguste 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. Cl279/20015 5174 EXAMINER NELSON, KERI JESSICA ART UNIT PAPER NUMBER 3786 NOTIFICATION DATE DELIVERY MODE 05/24/2019 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): patents@crbcp.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte STEPHANE AUGUSTE Appeal 2018-002110 Application 13/643,482 Technology Center 3700 Before LINDA E. HORNER, LISA M. GUIJT, and NATHAN A. ENGELS, Administrative Patent Judges. GUIJT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's rejection of claims 10-28.2 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Laboratories Urgo is identified as the real party in interest. Appeal Br. 2. 2 Appeal is taken from the Final Office Action dated Dec. 27, 2016. Appeal 2018-002110 Application 13/643,482 CLAIMED SUBJECT MATTER Claim 10, reproduced below as the sole independent claim on appeal, is exemplary of the subject matter on appeal. 10. A wound dressing which comprises a hydrocolloid adhesive mass comprising: - a hydrophobic elastomer matrix comprising poly(styrene- olefin-styrene) block copolymers, - particles of hydrocolloid( s) dispersed in said elastomer matrix, - at least two hydrogenated-hydrocarbon tackifying resins, the difference between the softening temperatures of a first hydrogenated-hydrocarbon tackifying resin and of a second hydrogenated-hydrocarbon tackifying resin comprised in the hydrocolloid adhesive mass being at least 1 OQC and at most 40QC. THE REJECTIONS I. Claims 10-12, 14, 16, 18, 20, 22, 24, and 27 stand rejected under 35 U.S.C. § I03(a) as unpatentable over Auguste (US 6,051,748; issued Apr. 18, 2000), Nielsen '945 (US 2002/0037945 Al; published Mar. 28, 2002), Lipman (US 2004/0241246 Al; published Dec. 2, 2004), and Nielsen '886 (US 6,458,886 Bl; issued Oct. 1, 2002). II. Claims 13, 15, 17, 19, 21, 23, 25, 26, and 28 stand rejected under 35 U.S.C. § I03(a) as unpatentable over Auguste, Nielsen '945, Lipman, Nielsen '886, and Lykke (US 7,259,190 B2; issued Aug. 21, 2007). ANALYSIS Rejection I Appellant argues independent claims 10-12, 14, 16, 18, 20, 22, 24, and 27 as a group. Appeal Br. 6-13. We select independent claim 10 as 2 Appeal 2018-002110 Application 13/643,482 representative, and claims 11, 12, 14, 16, 18, 20, 22, 24, and 27 stand or fall with claim 10. See 37 C.F.R. § 4I.37(c)(l)(iv). Regarding independent claim 10, the Examiner finds, inter alia, that Auguste generally discloses the claimed wound dressing, including a hydrocarbon tackifying resin. Final Act. 2 (citing Auguste 2:26-41, 3:26- 31 ); see also Ans. 8 (finding that Wingtack 86 resin is disclosed as a particularly preferred tackifying resin for Auguste's hydrocolloid adhesive mass); see also Nielsen '945 ,r 62 (identifying Wingtack 86 resin as an "aromatically modified terpene-co-hydrocarbon tackyfier resin) from GOODYEAR"). The Examiner determines that Auguste fails to disclose that the tackifier includes at least two tackifying resins having the claimed difference in softening temperatures, and the Examiner relies on Nielsen '945 for disclosing this limitation, because Nielsen '945 discloses, in Example 4, the use of Wingtack 86 and Wingtack 95 resins, with softening temperatures of 87QC and 98QC, respectively. Final Act. 2; Nielsen '945 ,r 81 (Example 4). The Examiner also determines that Auguste fails to disclose the use of hydrogenated-hydrocarbon tackifying resins, and again relies on Nielsen '945 for disclosing that the use of hydrogenated-hydrocarbon tackifying resins in hydrocolloid adhesive masses (i.e., Arkon P903 resin) is known. Final Act. 3 ( citing, e.g., Nielsen ,r 45 ( disclosing "hydrogenated hydrocarbon resins," and specifically, Arkon P90 resin); cf Spec. 6:30-7:5 (identifying products sold by the company Arakawa under the name Arkon® 3 Appellant does not dispute the Examiner's finding that Nielsen '945 discloses a hydrogenated-hydrocarbon tackifying resin by disclosing Arkon P90 resin. 3 Appeal 2018-002110 Application 13/643,482 as tackifying resins of hydrogenated hydrocarbon( s ), wherein the softening point temperature is indicated in the tradename, for example, Arkon® P90 resin has a softening point temperature of 90QC). The Examiner further relies on Nielsen '886 for disclosing that several hydrogenated-hydrocarbon resins (i.e., Arkon P70, Arkon P90, and Arkon Pl 15 resins) are recognized in the prior art as suitable hydrocolloid adhesive mass tackifying agents. 4 Final Act. 3 (citing Nielsen '886 (3:13-25, 7:11-20)); Ans. 14. Notably, in Table 5 of Nielsen '886, a hydrocolloid adhesive mass composition using two hydrogenated-hydrocarbon tackifying resins, namely, Arkon P70 and Ark on P 115 resins, is disclosed, albeit with a temperature difference of 45QC, which is outside of the claimed range. Nielsen '886 9:15-26 (Table 5); cf Claim 10, supra(" ... at most 40QC"). In view of the teachings in the prior art, the Examiner reasons, inter alia, that it would have been obvious to modify Auguste's wound dressing to include at least two hydrogenated-hydrocarbon tackifying resins, as taught by Nielsen '886, with the claimed difference in softening temperatures, for example, by selecting Arkon P90 and Arkon P 115 resins with a softening temperature difference of 25QC, because "it has been held to be within the general skill of a worker in the art to select a known material on the basis of 4 Notably, Nielsen '886 discloses the use of two and three tackifyng resins, including two hydrogenated-hydrocarbon resins, as identified by Appellant: Arkon P70 and Arkon Pl 15. See Nielsen '886 9:20-30 (Tables 3, 5); cf Spec. 1 :33-36 (admitting that, with reference to the prior art, "[g]enerally, these adhesive masses comprise, in addition to the elastomer matrix containing hydrocolloid particles, one ( or more) compound( s) intended to confer adherence properties on said mass, known as 'tackifying' compound( s). "). 4 Appeal 2018-002110 Application 13/643,482 its suitability for the intended use as a matter of obvious design choice." Final Act. 3--4 ( citation omitted). Appellant argues that the Examiner's rejection "ignores the teaching of the prior art as a whole" and "cherry picks" disclosures from the prior art, relying on "impermissible hindsight" to arrive at the claimed invention. Appeal Br. 6-7. For example, Appellant argues that "Auguste places no limits on the use of tackifying resins in the hydrocolloid adhesive mass," as compared to the specific requirements of claim 10. Id. at 7-8 ( citing Auguste 3:25-35). Appellant further submits that Auguste teaches a preference for Wingtack 86 resin, which is not a hydrogenated hydrocarbon tackifying resin as claimed. Reply Br. 3. Appellant's argument supports the Examiner's reasoning that one skilled in the art is invited by Auguste to select from a broad range of tackifying agents disclosed in the prior art. For example, Auguste states that "[a]mong the tackifying resins which are suitable according to the invention, there may be mentioned the resins generally employed in the field of adhesives by those skilled in the art." Auguste 3:25-27. Moreover, by listing Arkon P90 resin alongside Wingtack 86 resin as available tackifying resins for hydrocolloid adhesive masses, Nielsen '945 teaches that Auguste's preferred non-hydrogenated-hydrocarbon tackifying resin (i.e., Wingtack 86 resin) and known hydrogenated-hydrocarbon resins (i.e., Arkon P90 resin) are considered together by those skill in the art as viable choices for use in hydrocolloid adhesive masses. See Nielsen '945 ,r 62 ("Resins" : "WINGTACK 10 and 95 ... and 86 ... Arkon P90 ... "). Nielsen '886 further expands this list by disclosing that Arkon P70, Arkon P90, and Arkon P 115 resins ( along with other hydrogenated resins) are available as 5 Appeal 2018-002110 Application 13/643,482 tackifying resins for hydrocolloid adhesive masses (see Nielsen '886 7: 11- 20), and further provides an example wherein Arkon P70 and Arkon Pl 15 resins are selected as at least two hydrogenated-hydrocarbon resins in a hydrocolloid adhesive mass composition (see id. 9:25-26 (Table 5)). Appellant also argues that "[n]othing in Nielsen ['945] directs one to modify Auguste with the specific tackifying resins as claimed." Appeal Br. 8; see also id. at 9 (arguing that neither Nielsen '945 nor Lipman provides motivation to modify Auguste's hydrocolloid adhesive mass "with the specific hydrogenated-hydrocarbon tackifying resins with the softening temperature difference recited in claim 1 O"). Appellant submits that Nielsen '945 is directed to an adhesive composition comprising amorphous poly-a-olefins .... This is not the same hydrocolloid adhesive mass in Auguste. Nielsen '945 states that its adhesive composition is a different class of adhesives from the styrene block copolymers in Auguste .... Thus, any teaching in Nielsen '945 directed to a preference for a particular resin is for a different type of adhesive system. Nielsen '945 makes this clear, stating that: "[a]s opposed to polyisobutylenes, the adhesives according to the invention inherently covers a wider range which influences the need of modification using resins." Appeal Br. 8 (citing Nielsen ,r,r 6, 14--16, 41, 56). Notably, a teaching, suggestion, or motivation from Nielsen '945 to modify Auguste's wound dressing is not required. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,415 (2007). Nor does Appellant provide any evidence that Nielsen '945 teaches that the tackifying resins disclosed in Nielsen '945 are only suitable for the amorphous poly-a-olefin hydrocolloid adhesive mass of Nielsen '945, and not for the styrene block copolymer hydrocolloid adhesive mass of Auguste. Rather, Nielsen '945 discloses that by using an amorphous poly-a-olefin hydrocolloid adhesive mass there is a 6 Appeal 2018-002110 Application 13/643,482 greater need for modification using resins, as Appellant notes supra. Nielsen '945 ,r 56. Auguste also does not qualify the use of tackifying resins based on the class of hydrocolloid adhesive mass. To the contrary, as set forth supra, Auguste discloses that tackifying resins generally employed in the field of adhesives may be suitable. See Auguste 3 :25-27. Thus, a preponderance of the evidence supports the Examiner's reasoning that one skilled in the art would recognize Arkon P90 resin (and further, Arkon Pl 15, together with Arkon P90 resins, as suggested by Nielsen '886), as available tackifying agents for selection and use in Auguste's hydrocolloid adhesive mass. Regarding the Examiner's reliance on Example 4 of Nielsen '945 for teaching a composition including at least two different tackifying resins, Appellant argues that [t]he Examiner does not give a reason why one of ordinary skill in the art . . . would: (1) ignore that Nielsen '945 discloses suitable tackifying resins for a different hydrocolloid adhesive composition and (2) ignore the broader scope of Nielsen '945 and instead be motivated to modify Auguste with the specific combination of tackifying resins in Nielsen '945. Appeal Br. 9. Appellant also argues that nothing in Lipman suggests: (1) the specific type of tackifying resins: hydrogenated-hydrocarbon tackifying resins or (2) the softening temperature difference between at least two resins as claimed in claim 10. Lipman merely discloses that tackifiers are known additions to hydrocolloid adhesives. . . . Lipman also discloses that there are numerous types of tackifying resins where hydrogenated-hydrocarbons are just one of many .... Moreover, Lipman states that there is a preference for hydrocolloid adhesives to be free of any tackifiers as the presence of tackifiers makes compositions too sticky. 7 Appeal 2018-002110 Application 13/643,482 Id. at 10 (citing Lipman ,r 51). In sum, Appellant argues that "[t]he combination of references cited by the Examiner ... does not direct a [person of ordinary skill in the art] to modify the composition in Auguste with the specific type of (hydrogenated-hydrocarbon) and the properties of tackifying resins ( softening temperature difference) recited in claim 10." Id. First, as discussed supra, Nielsen '945 is relied on for disclosing at least two tackifying resins having the claimed difference in softening temperatures and also hydrogenated-hydrocarbons are recognized in the art of adhesives as available tackifying resins for use in hydrocolloid adhesive masses; and second, it is well established that a reference disclosure is not limited only to its preferred embodiments, but is available for all that it discloses and suggests to one of ordinary skill in the art. In re Lamberti, 545 F.2d 747, 750 (CCPA 1976); see also Ans. 10 (wherein the Examiner determines that "disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments"). In other words, Appellant's argument does not apprise us of error in the Examiner's finding that Example 4 of Nielsen '945 discloses the use of at least two tackifying resins of differing softening temperatures in the range claimed (i.e., Wingtack 86 and Wingtack 95 resins). See Nielsen '945 ,r 81. Appellant's argument also does not address the Examiner's reliance on Lipman, as set forth supra, as evidence that tackifiers may be ingredients added to hydrocolloid adhesives, for example, "to modify tack and optimize adhesion properties," while recognizing that there may be tradeoffs (i.e., stickiness). See Lipman ,r 51; see also Ans. 11. Appellant further argues that the prior art demonstrates that "a [person of ordinary skill in the art] modifying an adhesive mass is not simply 8 Appeal 2018-002110 Application 13/643,482 concerned with modifying adhesion ( with a tackifying resin) but the delicate balance of components and all properties to improve staying power over time when the adhesive is used as [a] wound dressing." Appeal Br. 11 (citing Auguste 1:43---65; Nielsen '945 ,r,r 1-3, 13; Lipman ,r,r 6-8). We are not persuaded by Appellant's argument. The Examiner has provided a sound basis for the conclusion that it would have been obvious to modify Auguste's hydrocolloid adhesive mass to include at least two hydrogenated-hydrocarbon tackifying resins with the claimed softening temperature difference as a 1natter of design choice, for example, by selecting from known tackifying agents for hydroco1loid adhesive masses, including Arkon P90 and Arkon Pl 15 resins. Fina] Act. 4-5. As discussed supra, Auguste invites the selection of known tackifying resins by routine experimentation, and Nielsen '945 and '886 disclose the use of at least two tackifying resins and provide examples of hydrogenated-hydrocarbon resins, including Arkon P90 and P 115 resins ( alongside Auguste's prefe1Ted tackifying resin, \Vingack 86 resin) as available for selection for use in hydrocolloid adhesive masses. Further, as argued by Appellant, the prior art recognizes that certain qualities of a wound dressing are modified by tackifying resins, and thus, advantages and disadvantages must be weighed in determining the final composition. In other words, although tradeoffs may be required in balancing the benefits and drawbacks of modifying Auguste's hydrocolloid adhesive mass to include, for example, Arkon P90 and Arkon P 115 resins, such tradeoffs do not necessarily prevent the proposed combination or negate the obviousness of the claimed subject matter. See Medichem, S. A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) ("a given course of action often has simultaneous advantages and 9 Appeal 2018-002110 Application 13/643,482 disadvantages, and this does not necessarily obviate motivation to combine"); see also Winner Int'! Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n. 8 (Fed. Cir. 2000) ("The fact that the motivating benefit comes at the expense of another benefit, however, should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another."). Appellant argues that "[t]he claimed invention shows unexpected improvement in staying power over time." Appeal Br. 11 (emphasis omitted). For example, Appellant submits that "the Specification shows a difference in adhesive composition with two tackifying resins softening temperature difference within and outside the claims" and concludes that "[t]he final propeiiy of the adhesive mass is thus not predictable." Id.; see also id. at 12 ("the unpredictability and unexpected improvements of the claimed adhesive mass support non-obviousness of the claimed composition; modification of August with two hydrogenated-hydrocarbon tackifying resins with softening temperature differences as claimed is not an obvious design choice"). Appellant, however, fails to submit sufficient argument or evidence that the test results documented in the Specification are unexpected and not merely the outcome of routine experimentation based on selecting known tackifying resins suggested by the prior art. For example, the Specification provides a comparison of "creep distance d" and detachment from a test plate ( and therefore, also viscosities) between "Comparative example 1" (comprising Arkon P90 and P140 resins with a 50QC softening temperature difference) and "Example l ," a "formulation according to the invention" (comprising Arkon P90 and Arkon Pl25 resins with a 25QC softening 10 Appeal 2018-002110 Application 13/643,482 temperature ditlerence ). 5 Spec., pp. 16-----18. The Specification tabulates the resulting failure times and types, and viscosities, and concludes that [Exarnple 1] deforms the most and, consequently, is more accommodating (has a better capacity to mold to the bumps in the surface on which it is applied). It can be imagined that such a mass therefore penetrates the folds of the skin more easily and this would have the effect of increasing the surface area of adhesion of the mass and, consequently, of improving its staying power over time. By virtue of the results observed, the applicant considers that the hydroco11oid adhesive mass according to the invention should preferably have a viscosity ... between at least 1.5 and at most 4.0 l\t1Pa.s .... Spec., p. 20:9 (table), 20: 19 (table), 20:20-21 :5. An ordinary definition of the term "viscosity" is "a thick and sticky consistency or quality," and similarly, "tack" means "sHght stickiness." lVficrosoft Encarta College Dictionary 1463, 1607 (2001). As discussed supra, it is well recognized in the field of hydrocolloid adhesive masses that tackifying resins "modify tack and optimize adhesion properties" and affect "stickiness." Lipman~ 51. Although the Specification relates viscosity to staying power over thne, the Specification fails to demonstrate that selecting 5 A commercial adhesive mass identified by the trademark "Compeed®" was also included in the test, however, the composition of tackifying resins in the Compeed adhesive mass is not provided by the Specification. Spec 1: 16--20, 4:25-27 (with reference to Figure 3), 20:5-20. To the extent Appellant relies on detachment tests between Compeed® dressings and "dressings according to the invention," as evidenced in Figure 3 of the Specification, we are unable to determine the compositions of either the Compeed® dressing or the dressing according to the invention to assess whether such a comparison is evidence of an unexpected improvement. Spec., pp. 21-23 ("Results on wearers"). 11 Appeal 2018-002110 Application 13/643,482 the claimed tackifying resins is not merely optimizing a known variable by routine experimentation, or an obvious design choice. "Cornparative example of formulation 2" is comprised of a single tackifying resin (Le., Arkon P 125 resin), and therefore, is not the closest prior art for comparison to the claimed wound dressing. Spec., pp. 22-----25. In sum, _.Appellant's arguments are conc1usory without sufficient factual basis, and we are instructed by our reviewing court to the effect that lawyer arguments and conclusory statements which are unsupported by factual evidence are entitled to little probative value. See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) ("Attorney's arguments in a brief cannot take the place of evidence."); In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Appellant has not shown error in the Examiner's rationale. See In re Kuhle, 526 F.2d 553, 555 (CCPA 1975) (use of claimed feature solves no stated problem and presents no unexpected result and "would be an obvious matter of design choice within the skill of the art" (citations omitted)). See also In re Chu, 66 F.3d 292, 298-99 (Fed. Cir. 1995) ("design choice" is appropriate where an applicant fails to set forth any reason why the differences between the claimed invention and the prior art would result in a different function). Accordingly, we sustain the Examiner's rejection of independent claim 10, and claims 11, 12, 14, 16, 18, 20, 22, 24, and 27 fall therewith. Re} ection II Claim 26 Claim 26, which depends from independent claim 10, requires the claimed difference in softening temperature to be "at least 30QC and at most 40QC." Appeal Br. 17 (Claims App.). The Examiner relies on Lykke for 12 Appeal 2018-002110 Application 13/643,482 disclosing "a hydrocolloid adhesive composition comprising tackifiers, wherein suitable tackifiers include Arkon Pl 15 and Arkon P125." Final Act. 5 (citing Lykke 3:6-9, 10:13-20, 48-51, 12:61, col. 15 (Table 7)). The Examiner reasons that it would have been obvious to select at least two hydrogenated-hydrocarbon tackifying resins for use in the hydrocolloid adhesive mass of Auguste, in view of the teachings of Nielsen '945 and Nielsen '886, and in further view of Lykke, to have the claimed difference in softening temperatures, for example, by selecting Arkon P90 and Arkon P125 resins, as a matter of obvious design choice. Id. at 5---6. Appellant submits that "[l]ike Nielsen '945 and Nielsen '886, Lykke focuses on the advantages of microcolloid absorbent particles with tackifiers as an optional component" and that "Lykke does not seem to disclose a preference for any particular number or type of tackifier." Appeal Br. 13. Appellant also submits that "[n]othing in Lykke teaches or suggests the use of multiple tackifiers, much less hydrogenated-hydrocarbon tackifying resins with softening temperature differences as claimed." Id. Appellant concludes that "[f]or the same reasons stated above, claim 26 and all dependent claims are not obvious in view of the combination of Auguste, Nielsen '945, Lipman, Nielsen '886 and in further in view of Lykke." Id. For the reasons discussed above, we are not persuaded by Appellant's argument. Appellant does not dispute that Lykke discloses Arkon P125 resin as an available tackifying agent for hydrocolloid adhesive masses, such that we are not apprised of error in the Examiner's reasoning that one skilled in the art would recognize Arkon P90 and Arkon P125 resins as an available combination of tackifying agents for use in the hydrocolloid adhesive mass of Auguste. 13 Appeal 2018-002110 Application 13/643,482 Accordingly, we sustain the Examiner's rejection of claim 26. Claims 13, 15, 17, 19, 21, 23, 25, and 28 As discussed supra, Appellant does not present arguments for the patentability of claims 13, 15, 17, 19, 21, 23, 25, and 28 apart from the arguments presented for independent claim 10 and claim 26. Accordingly, for essentially the same reasons as set forth supra, we also sustain the Examiner's rejection of claims 13, 15, 17, 19, 21, 23, 25, and 28. DECISION The Examiner's decision rejecting claims 10-28 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). See 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 14 Copy with citationCopy as parenthetical citation