Ex Parte Bennett

Patent Trial and Appeal Board

Jun 28, 2017

12573176 (P.T.A.B. Jun. 28, 2017)

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.
12/573,176 10/05/2009 Steven Bennett H-US-01195 (203-5973) 5567
50855 7590
Covidien LP
60 Middletown Avenue
c/o Legal - Mailstop MS 54
North Haven, CT 06473
06/30/2017 EXAMINER
OU, JING RUI
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
06/30/2017 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):
SurgicalUS@covidien.com
medtronic_mitg-si_docketing@cardinal-ip.com
mail @ cdfslaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVEN BENNETT
Appeal 2015-006853
Application 12/573,176
Technology Center 3700
Before STEFAN STAICOVICI, WILLIAM A. CAPP, and
SEAN P. O’HANLON, Administrative Patent Judges.
O’HANLON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Steven Bennett (Appellant)1 appeals under 35 U.S.C. § 134 from the
Examiner’s September 3, 2014 final decision (“Final Act.”) rejecting claims
1, 3, 5—8, 11, and 34—38.2 We have jurisdiction over this appeal under 35
U.S.C. § 6(b).
1 According to Appellant, the real party in interest is Covidien LP. Appeal
Br. 1.
2 Claims 26—30 are canceled and claims 2, 4, 9, 10, 12—25, and 31—33 are
withdrawn. Id. at 10-14 (Claims App.).
Appeal 2015-006853
Application 12/573,176
SUMMARY OF THE DECISION
We AFFIRM.
SUMMARY OF THE INVENTION
Appellant’s disclosure is directed to hemostatic implants. Spec. 12.
Claim 1 is the sole independent claim on appeal and is reproduced below
from page 10 (Claims Appendix) of the Appeal Brief, with paragraph
structure added:
1. A hemostatic implant comprising
a porous substrate having a first hydrogel precursor
applied to the porous substrate and
a film containing a second hydrogel precursor applied to
the porous substrate, the first hydrogel precursor and the second
hydrogel precursor spatially separated from each other,
wherein the first hydrogel precursor and the second
hydrogel precursor react to form a hydrogel when exposed to
physiologic fluid.
REJECTIONS
Claims 1, 5—8, and 11 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Khosravi (US 2006/0099238 Al, published May 11,
2006).
Claim 3 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Khosravi and Eldridge (US 5,716,408, issued Feb. 10,
1998).
Claims 34—38 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Khosravi.
2
Appeal 2015-006853
Application 12/573,176
ANALYSIS
Anticipation Rejection
The Examiner finds that Khosravi discloses a hemostatic implant as
recited in independent claim 1, including, inter alia, first hydrogel precursor
applied to a porous substrate, and a film containing a second hydrogel
precursor applied to the substrate. Final Act. 2—3 (citing Khosravi Tflf 37, 38,
41, 45, 47, Fig. 2). The Examiner elaborates that “Khosravi discloses the
first and second precursors may be applied to the porous substrate
successively (for example, see paragraph 41), thus are considered spatially
separated from each other as recited in amended claim 1.” Id. at 4.
Appellant traverses, arguing that Khosravi fails to disclose first and
second hydrogel precursors being spatially separated and a film containing
the second precursor. Appeal Br. 3^4; see also Reply Br. 1—2. Appellant
asserts that Khosravi discloses a mixture of precursors, in liquid form, which
is not a film and does not provide spatial separation of the precursors.
Appeal Br. 3^4 (citing Khosravi H 41, 45).
The Examiner answers:
When the first and second precursors of Khosravi are applied to
[sic] successively onto the carrier/porous substrate 4 and are in
a solid state once they are applied onto the carrier, the following
conditions (limitations of claim 1) would be met: 1) the first
hydrogel is applied to the porous substrate because the first
hydrogel is applied to the porous substrate/carrier; 2) a film
containing a second hydrogel precursor applied to the porous
substrate because the second hydrogel precursors is in a solid
state which forms a film (a solid layer of hydrogel precursor is
considered as a film); and 3) the first hydrogel precursor and
the second hydrogel precursor are spatially separated from each
other the same way as the first and second hydrogel precursors
of the pending application are spatially separated as shown in
3
Appeal 2015-006853
Application 12/573,176
Figure 2 or Figure 5 of the pending application because each of
the first hydrogel precursor and second hydrogel precursor of
[Khosravi] occupies a different space on the carrier/porous
substrate 4.
Ans. 2—3 (emphasis omitted) (referring to Khosravi H 41, 42, Fig. 2).
Appellant replies by reiterating arguments from the Appeal Brief, and
asserting that “[sequential application of liquid precursors does not. . .
suggest the first precursor, the solid film containing the second precursor,
nor the spatial separation of these precursors on the implant itself.” Reply
Br. 1-2.
In paragraph 41, Khosravi discloses that, as an alternative to the first
and second hydrogel precursors being “sufficiently mixed before being
loaded onto the carrier” (see Khosravi 140), first and second hydrogel
precursors 6, 7 may be provided in liquid form, into which carrier 4 may be
successively dipped. Paragraph 41 further discloses that once loaded onto
carrier 4 in this manner, first and second hydrogel precursors 6, 7 may be in
a solid state. Paragraph 47 discloses that additional layers of hydrogel
precursors may subsequently be applied. Thus, a preponderance of the
evidence supports the Examiner’s interpretation that Khosravi discloses
application of first and second hydrogel precursors to a porous substrate, the
second such precursor being in the form of a film, such that the precursors
are spatially separated from each other. Appellant’s arguments fail to
apprise us of error. We note that Appellant describes a method of making
the claimed implant that is essentially the same as that disclosed by Khosravi
and described above (see Spec, 50-51 (describing successive dipping of
the substrate into liquid forms of the precursors)), and Appellant fails to
4
Appeal 2015-006853
Application 12/573,176
persuasively apprise us why Appellant’s method results in a precursor film
separated from the other precursor while Khosravi’s method does not.
Appellant also argues that the Declaration of Steven Bennett (the
inventor) under 37 C.F.R. § 1.132 establishes the unexpected results of the
claimed implant. This argument is unpersuasive because, although
unexpected results may show that a claimed invention is not obvious in view
of the prior art, unexpected results are not effective in overcoming an
anticipation-type rejection.
Accordingly, for the foregoing reasons, we sustain the rejection of
claim 1, and its dependent claims 5—8 and 11, which are not argued
separately, as being anticipated by Khosravi.
Obviousness Rejection Based on Khosravi and Eldridge
Claim 3 depends directly from claim 1 and further requires that “the
porous substrate is a knitted textile.” Appeal Br. 10 (Claims App.). The
Examiner finds that Khosravi fails to disclose the substrate is a knitted
textile, but finds that Eldridge discloses an implant including a porous
substrate in the form of a knitted textile. Final Act. 3. The Examiner
reasons that it would have been obvious to one of ordinary skill in the art to
utilize a mesh substrate in Khosravi’s implant to facilitate tissue ingrowth,
enhancing proper healing of the defect, as taught by Eldridge. Id. at 3^4
(citing Eldridge, 3:21—26).
Appellant argues that “[i]t is only with impermissible hindsight that
the Examiner has been able to assert the hemostatic implants of claim 3 are
obvious over Khosravi in view of Eldridge.” Appeal Br. 7; see also Reply
Br. 3^4.
5
Appeal 2015-006853
Application 12/573,176
This argument is unpersuasive because when the Examiner has
articulated a reason having rational underpinnings for making a proposed
combination of prior art teachings, as is the case here, then that articulated
reasoning demonstrates the combination is not based on hindsight. See In re
Cree, 818 F.3d 694, 702, n.3 (Fed. Cir. 2016); see also Eldridge 3:21—26.
Appellants have not apprised us of error in the Examiner’s findings and
reasoning.
Accordingly, for the foregoing reasons, we sustain the rejection of
claim 3 as being obvious over Khosravi and Eldridge.
Obviousness Rejection Based on Khosravi
With respect to the rejection of claims 34—38, Appellant relies on the
arguments presented above in regard to the rejection of claim 1. Appeal Br.
8. Accordingly, for the same reasons as discussed above, we also sustain the
rejection of claims 34—38 as being unpatentable over Khosravi.
DECISION
The Examiner’s decision to reject claims 1,3, 5—8, 11, and 34—38 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)(l)(iv).
AFFIRMED
6