Ex Parte Bennett

Patent Trial and Appeal Board

Sep 30, 2016

12356171 (P.T.A.B. Sep. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/356,171 0112012009
50855 7590 10/04/2016
Covidien LP
555 Long Wharf Drive
Mail Stop SN-I, Legal Department
New Haven, CT 06511
FIRST NAMED INVENTOR
Steven L. Bennett
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.
H-US-01158 (1603-36) 8293
EXAMINER
SERGENT, RABON A
ART UNIT PAPER NUMBER
1765
NOTIFICATION DATE DELIVERY MODE
10/04/2016 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):
mail@cdfslaw.com
SurgicalUS@covidien.com
medtronic_mitg-si_docketing@cardinal-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVEN L. BENNETT
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Technology Center 1700
Before PETERF. KRATZ, MONTE T. SQUIRE, andJEFFREYR. SNAY,
Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals the Examiner's final rejection of claims 10-12 and
14--18. 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellant identifies Covidien LP as the Real Party in Interest. App. Br. 1.
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The Claimed Invention
Appellant's disclosure relates to a biocompatible and bioabsorbable
block copolymer for use in fabricating surgical articles, and more
particularly to a block copolymer possessing hard and soft segments. Spec.
if 1; Abstract. Claim 10 is representative of the claims on appeal and is
reproduced below from the Claims Appendix to the Appeal Brief (App. Br.
10):
10. A bioabsorbable block copolymer possessing alternating
hard and soft segments comprising the reaction product of:
a) a biodegradable and biocompatible diisocyanate; and
b) a mixture of
i) an amino acid derivative having molecular formula
(V):
H-[-X-R7-CH(NHR8)-C(O)-]n-X-R7-CH(NHR8)-C(O)-Y-R9-0H
(V)
wherein X is oxygen or sulfur, R7 and R9 are independently
selected from an alkyl moiety having from 1 to about 6 carbon
atoms, aryl, or alkaryl having from 7 to about 12 carbon atoms;
R 8 is hydrogen or an alkyl moiety having from 1 to about 6
carbon atoms, Y is oxygen or --NH--, and n is an integer of from
1 to about 10; and
ii) an absorbable elastomeric polymer derived from the
reaction between dialkylene glycol and a cyclic bioabsorbable
monomer including at least one of trimethylene carbonate,
dioxanone or caprolactone.
The References
The Examiner relies on the following references in rejecting the
claims on appeal:
Roby US 6,206,908 B 1
Woodhouse et al., US 6,221,997 Bl
(hereinafter "Woodhouse")
Mar. 27, 2001
Apr. 24, 2001
Yoon et al.,
(hereinafter "Yoon")
US 2003/0236319 Al Dec. 25, 2003
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The Rejections
On appeal, the Examiner maintains the following rejections:
1. Claims 10-12 and 14--1 7 stand rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Woodhouse in view of Yoon.
Ans. 2.
2. Claims 10-12 and 14--18 stand rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Woodhouse in view of Roby.
Ans. 4.
OPINION
Having considered the respective positions advanced by the Examiner
and Appellant in light of this appeal record, we affirm the Examiner's
rejections for the reasons set forth in the Answer to the Appeal Brief, which
we adopt as our own. Nevertheless, we highlight and address specific
findirnrn and arn:uments for emnhasis as follows . .__, .__, '"
Rejection 1
Appellant argues claims 10-12 and 14--17 as a group. We select
claim 10 as representative of this group, and the remaining claims stand or
fall with claim 10. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that the combination of Woodhouse and Yoon
suggests a reaction product satisfying all of the limitations of claim 10 and
would have rendered claim 10 obvious. Ans. 2--4. The Examiner finds that
Woodhouse discloses the majority of claim lO's limitations, but that it does
not "disclose the use or incorporation of the claimed absorbable elastomeric
polymer" corresponding to the component "b )ii)" of the reactant mixture.
Id. at 2, 3 (citing Woodhouse, Abstract, col. 2, 11. 40--43, col. 6, 11. 17---67,
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col. 8, 11. 20-67, col. 9, 11. 1-13, col. 14, 11. 62----67, col. 15, 11. 1-11, col. 30,
Table 1, col. 10, 11. 34---67, col. 9, 11. 7-9). The Examiner, however, relies on
Yoon for disclosing this limitation. Id. at 3. In particular, the Examiner
finds that Yoon teaches that "the use of absorbable polymers that correspond
to the claimed elastomeric polymer in medical applications was known [in
the art] at the time of invention." Id. (citing Yoon, Abstract). The Examiner
finds further that Yoon discloses "the use of diethylene glycol as an initiator
in the production of the polymer," which reads on Appellant's "claimed
dialkylene glycol." Id. (citing Yoon i-fi-124, 25).
Based on the above findings, the Examiner concludes that it would
have been obvious to one of ordinary skill in the art at the time of invention
to utilize the absorbable polymer of Yoon within the biodegradable
polyurethane polymer of Woodside because of the "analogous utilities,
features, and properties, including biocompatibility I absorbability, of the
respective polymeric soft segments" and Woodside's teaching "that different
types of soft segments may be utilized depending on the properties desired."
Ans. 3.
Appellant argues that the Examiner's rejection should be reversed
because:
Nowhere does Woodhouse teach or suggest a block
copolymer formed by the reaction of a diisocyanate, with an
amino acid derivative of formula V, combined with an
absorbable elastomeric polymer derived from the reaction
between dialkylene glycol and a cyclic bioabsorbable monomer
including at least one of trimethylene carbonate, dioxanone or
caprolactone, as recited in claim 10.
App. Br. 3, 4. In particular, Appellant argues that: (1) Woodhouse does not
"disclose or suggest its backbone can include an absorbable elastomeric
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polymer derived from the reaction between dialkylene glycol and a cyclic
bioabsorbable monomer including at least one of trimethylene carbonate,
dioxanone or caprolactone" (id. at 4); (2) "One skilled in the art ... would
have no reason to look to Woodhouse in the formation of the recited
bioabsorbable block copolymer including a dialkylene glycol ... and cyclic
bioabsorbable monomer" (id. at 6, 7); and that (3) "Yoon fails to remedy the
deficiencies of Woodhouse" (id. at 5).
We are not persuaded by these arguments because Appellant attacks
the references individually rather than the collective teachings of the prior
art as a whole. One cannot show non-obviousness by attacking references
individually where the rejections are based on combinations of references.
See In re Keller, 642 F.2d 413, 425 (CCPA 1981) ("[T]he test [for
obviousness] is what the combined teachings of the references would have
suggested to those of ordinary skill in the art."). Appellant's arguments rest
primarily on what Appellant contends Woodhouse and Yoon teach
individually, and not the teachings of the prior art combination as a whole
and what the combined teachings of the references would have suggested to
one of ordinary skill in the art.
As the Examiner correctly points out (Ans. 7), Appellant's argument
fails to address the Examiner's rejection which is based on the "combined
teachings of the primary and secondary references" and the Examiner's
finding that Yoon, not Woodhouse, "teach[ es] an absorbable polymer that
corresponds to [A]ppellant's b)ii)" limitation recited in claim 10.
Moreover, based on the record before us and the combined teachings
of the prior art as a whole, the Examiner's finding (Ans. 2--4) that the
combination of Woodhouse and Yoon suggests all of claim 10' s limitations
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is supported by a preponderance of the evidence and based on sound
technical reasoning. Woodhouse, Abstract, col. 2, 11. 40-43, col. 6, 11. 17-
67, col. 8, 11. 20-67, col. 9, 11. 1-13, col. 14, 11. 62-67, col. 15, 11. 1-11, col.
30, Table 1, col. 10, 11. 34---67, col. 9, 11. 7-9; Yoon, Abstract, i-fi-124, 25.
As the Examiner found (Ans. 2), Woodhouse discloses a
"biodegradable polyurethane material having a backbone containing at least
one amino acid group," which reads on or suggests all of claim lO's
limitations except the claim's absorbable elastomeric polymer limitation.
Woodhouse, Abstract. In particular, as further found by the Examiner (Ans.
2), Woodhouse discloses a biodegradable polyurethane, wherein a
polyisocyanate, such as a lysine-based diisocyanate, is reacted with a chain
extender that is the reaction product of an amino acid and a diol and wherein
a soft segment, such as polycaprolactone, may additionally be incorporated
within the polymer. Woodhouse, Abstract, col. 2, 11. 40-43, col. 6, 11. 17----67,
col. 8, 11. 20-67, col. 9, 11. 1-13, col. 14, 11. 62----67, col. 15, 11. 1-11.
Woodhouse also teaches that the disclosed polyurethane material may be
"useful" in biomedical applications, such as "in the production of sutures ...
and drug release matrices." Woodhouse, col. 10, 11. 34---67; Ans. 2.
As the Examiner also found (Ans. 3), Yoon suggests the claimed
absorbable elastomeric polymer and teaches that the use of such polymers in
medical applications was known in the art at the time of invention. Yoon,
Abstract. Yoon also discloses the use of "diethylene glycol ... as an
initiator" in the production of the polymer (Yoon i-fi-124, 25), which reads on
claim 1 O's "dialkylene glycol" limitation. Appellant's argument exposes no
reversible error in the Examiner's analysis and factual findings in this
regard.
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Appellant's argument that Woodhouse does not suggest its backbone
can include an absorbable elastomeric polymer derived from the reaction
between dialkylene glycol and a cyclic bioabsorbable monomer as recited in
the claims (App. Br. 4), without more, is conclusory and insufficient to
establish reversible error in the Examiner's findings. In re De Blauwe, 736
F.2d 699, 705 (Fed. Cir. 1984).
The Examiner also provides a reasoned basis and identifies sufficient
evidence in the record to evince why one of ordinary skill would have
combined the teachings of the references to arrive at Appellant's claimed
invention. Ans. 3 (explaining that one of ordinary skill would have been
motivated to combine Woodhouse' s and Yoon' s teachings because of the
analogous utilities, features, and properties, including
biocompatibility/absorbability, of the respective polymeric soft segments
taught by both references and Woodside' s teaching that different types of
soft segments may be utilized depending on the properties desired);
Woodhouse, col. 9, 11. 7-9. See also KSR Int'! Co. v. Teleflex, Inc., 550 U.S.
398, 420 (2007) (explaining that any need or problem known in the art can
provide a reason for combining the elements in the manner claimed).
Appellant fails to direct us to sufficient evidence or provide an
adequate technical explanation to show why the Examiner's articulated
reasoning for combining the teachings of the prior art to arrive at the claimed
invention lacks a rational underpinning or is otherwise based on some other
reversible error.
Appellant argues that Woodhouse "teaches away from the recited
bioabsorbable block copolymer including both a dialkylene glycol ... and a
cyclic bioabsorbable monomer." App. Br. 5.
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We do not find this argument persuasive. Appellant does not identify
sufficient evidence to support it, and we will not read into the references a
teaching away where no such language exists. Cf DyStar Textilfarben
GmbH v. C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006). In
particular, Appellant's argument regarding the "major-differences between
PCL-based polyurethanes and PEO-based polyurethanes" (App. Br. 6, 7),
without more, is conclusory and insufficient to establish that the references
teach away from the claimed invention or adequately rebut the Examiner's
analysis and findings in this regard. De Blauwe, 736 F.2d at 705. We find
that Appellant does not identify any teaching in Woodhouse or Yoon which
discourages one of ordinary skill in the art from combining Yoon' s
absorbable elastomeric polymer with Woodhouse' s biodegradable
polyurethane material. In re Fulton, 391 F.3d 1195, 1201 (finding that there
is no teaching away where the prior art's disclosure "does not criticize,
discredit, or otherwise discourage the solution claimed").
As the Examiner points out (Ans. 6), the passage in Woodhouse
Appellant relies on for arguing the reference teaches away discloses that
PCL-based polyurethanes generally exhibit higher molecular weights than
PEO-based polymers, and that such difference "may be expected to impact"
certain properties (see Woodhouse, col. 14, 1. 62---col. 15, 1. 11 ). Elsewhere
within the reference, Woodhouse also discloses that PEO-based
polyurethanes have advantageous properties for certain other applications,
such as increased hydrophilicity and water vapor permeance (see id. at cols.
16, 17). Nonetheless, the Examiner correctly determines that these cited
disclosures have not been shown by Appellant to amount to a teaching away
from the claimed subject matter. See, e.g., Medichem, S.A. v. Rolabo, S.L.,
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437 F.3d 1157, 1165 (Fed. Cir. 2006) ("[O]bviousness nmst be determined
in light of all the facts, and there is no rule that a single reference that
teaches away will mandate a finding of nonobviousness."). Appellant has
not persuaded us that Woodhouse considered in its entirety teaches away
from the Examiner's findings and stated reasoning for why one of ordinary
skill would have combined the teachings of Woodhouse and Yoon to arrive
at Appellant's claimed invention. Id. ("A given course of action often has
simultaneous advantages and disadvantages, and does not necessarily
obviate the motivation to combine.")
Accordingly, we affirm the Examiner's rejection of claims 10-12 and
14--17 under pre-AIA 35 U.S.C. § 103(a) as unpatentable over the
combination of Woodhouse and Yoon.
Rejection 2
Appellant argues claims 10-12 and 14--18 as a group. We select
claim 18 as representative of this group, and the remaining claims stand or
fall with claim 18. 37 C.F.R. § 41.37(c)(l)(iv).
Claim 18 is similar to and recites largely the same limitations as
recited in claim 10. Compare claim 18 (App. Br. 11-12, Claims App'x) with
claim 10 (App. Br. 10, Claims App'x). The Examiner finds that the
combination of Woodhouse and Roby suggests all of claim 18' s limitations
and would have rendered claim 18, as well as claim 10, obvious. Ans. 3-5
(citing Woodhouse, Abstract, col. 2, 11. 40-43, col. 6, 11. 17----67, col. 8, 11. 20-
67, col. 9, 11. 1-13, col. 14, 11. 62----67, col. 15, 11. 1-11, col. 30, Table 1, col.
10, 11. 34----67, col. 9, 11. 7-9; Roby, Abstract, Examples 1--4).
Appellant argues that this rejection should be reversed for essentially
the same reasons presented above in response to the Examiner's Rejection 1
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and claim 10. App. Br. 7, 8. In particular, Appellant argues that the same
"deficiencies of Woodhouse with respect to claim 10 as noted above are
equally applicable to claim 18, as not only does Woodhouse fail to disclose
the recited bioabsorbable block copolymer, including a dialkylene glycol
and a cyclic bioabsorbable monomer, but it does not disclose or suggest
trimethylene carbonate and/or dioxanone." Id. at 7, 8. Appellant further
argues that the rejection should be reversed because "Roby fails to remedy
the deficiencies of Woodhouse" and "the Office Action has utilized
impermissible hindsight." Id. at 8.
Because Appellant relies on essentially the same arguments presented
above for the patentability of claim 10, and because Appellant fails to
provide an adequate technical explanation or direct us to evidence sufficient
to rebut the Examiner's findings regarding the combined teachings of the
cited prior art references, De Blauwe, 736 F.2d at 705, for the reasons
discussed above in affirming the Examiner's rejection of claim 10, we find
that Appellant has failed to establish reversible error in the Examiner's
factual findings and legal conclusions with respect to argued claim 18.
Accordingly, we affirm the Examiner's rejection of claims 10-12 and
14-18 under pre-AIA 35 U.S.C. § 103(a) as unpatentable over the
combination of Woodhouse and Roby.
DECISION/ORDER
The Examiner's rejections of claims 10-12 and 14-18 are affirmed.
It is ordered that the Examiner's decision is affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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