Ex Parte Bennett et alDownload PDFPatent Trial and Appeal BoardMay 18, 201612938491 (P.T.A.B. May. 18, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/938,491 11/03/2010 50855 7590 05/20/2016 Covidien LP 555 Long Wharf Drive Mail Stop SN-I, Legal Department New Haven, CT 06511 FIRST NAMED INVENTOR Steven 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-01195 CIP (203-5973 EXAMINER CAO, PING 3564 ART UNIT PAPER NUMBER 1611 NOTIFICATION DATE DELIVERY MODE 05/20/2016 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 BENNETT and TIMOTHY SARGEANT Appeal2014-003407 Application 12/938,491 1 Technology Center 1600 Before ERIC B. GRIMES, MELANIE L. McCOLLUM, and RYAN H. FLAX, Administrative Patent Judges. FLAX, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) involving claims directed to collagen-containing implants including a porous substrate and spatially separated first and second hydrogel precursors. Claims 1-22 are on appeal as rejected under 35 U.S.C. § 103(a) and under the doctrine of obviousness-type double patenting. We have jurisdiction under 35 U.S.C. § 6(b ). We affirm the double patenting rejections. 1 The Real Party in Interest is Covidien LP. App. Br. 1. Appeal2014-003407 Application 12/938,491 STATEMENT OF THE CASE The Specification describes collagen-containing implants, useful as tissue scaffolds or to repair cartilage defects. Spec. i-fi-1 2-7. The implant is described as having a porous substrate. Id. i15. Upon this porous substrate is provided a first hydrogel precursor, which includes collagen. Id. i15. The implant also includes a second hydrogel precursor, which can be provided on the porous substrate, e.g., as a particle coating, or over the porous substrate, e.g., as a non-porous film. Id. i-fi-15, 21, 44. The Specification describes the first and second hydrogel precursors as different materials that, when combined to react, form a hydrogel. Id. i121. The first and second hydrogel precursors can be physically separate from each other until the implant is applied in contact with tissue and physiological fluid is soaked up by the implant, which dissolves the first and second hydrogel precursors and allows them to combine and react with one another to form the hydrogel. Id. i121. The hydrogel is a biocompatible cross-linked material that can assist tissue ingrowth and remodeling as the scaffold degrades and may provide anti-adhesive properties. Id. i121. Figures ID and 5C illustrate exemplary embodiments of the disclosed invention. Fig. 1 D is reproduced below: 2 Appeal2014-003407 Application 12/938,491 10 ·"~~~~~~ 24 . ··"~~~~~~~~~ ..... 40 30 .FIG.10 22 Fig. ID, above, shows an implant (10), which has a first portion (22) and a second portion (24). Id. iii! 55-56. The first portion is a porous substrate (20), upon which particles containing a first hydrogel precursor (30) have been applied. Id. if 55. The second portion is a film (40), which is a second hydrogel precursor, over the porous substrate. Id. if 56. Fig. 5C is reproduced below: 3 Appeal2014-003407 Application 12/938,491 330 330 340 340 FIG.5G Fig. 5C, above, shows another embodiment where a porous substrate (320) is divided into a first portion (322), to which is applied particles containing a first hydrogel precursor (330), and a second portion (324), to which is applied particles containing a second hydrogel precursor (340). Id. i-fi-1 59---62. The Specification states that the first portion (322) is spatially separated from the second portion (324). Id. ,-r 62. The appealed claims can be found in the Claims Appendix of the Appeal Brief. Claims 1 and 11 are the only independent claims on appeal. Claim 1 reads as follows: 1. An implant comprising: a porous substrate having a first hydrogel precursor comprising collagen applied to the porous substrate; and a film containing a second hydrogel precursor applied to the porous substrate, 4 Appeal2014-003407 Application 12/938,491 wherein the first hydrogel precursor is initially spatially separate from the second hydrogel precursor. App. Br. 12 (Claims Appendix). Claim 11 reads as follows: 11. An implant comprising: Id. 13. a porous substrate having a first hydrogel precursor comprising collagen applied to a first portion of the porous substrate; and a second hydrogel precursor applied to a second portion of the porous substrate, wherein the first portion of the substrate is spatially separated from the second portion of the porous substrate and the first hydrogel precursor is initially spatially separate from the second hydrogel precursor. The following grounds of rejection are on appeal: A. Claims 1-22 rejected under 35 U.S.C. § 103(a) over Khosravi2 and Hunter. 3 B. Claims 1-22 rejected on the ground of nonstatutory obviousness- type double patenting over claims 1, 2, 4---6, 11-13, 16-18, 20, and 23 of U.S. Patent 8,470,355 B2 (issued June 25, 2013 from U.S. Patent Application Ser. No. 12/888,084; hereinafter "the '355 patent") in view of Hunter and Khosravi. C. Claims 1-22 provisionally rejected on the ground of nonstatutory obviousness-type double patenting over claims 1-25 of U.S. Patent 2 U.S. Patent Application Pub. No. US 2006/009238 Al (published May 11, 2006) (hereinafter "Khosravi"). 3 U.S. Patent Application Pub. No. US 2005/0175665 Al (published Aug.11, 2005) (hereinafter "Hunter"). 5 Appeal2014-003407 Application 12/938,491 Application Ser. No. 12/573, 176 (hereinafter "the '176 application") in view of Hunter and Khosravi. DISCUSSION A. The rejection of claims 1-22 under 35 US.C. § 103(a) over Khosravi and Hunter. The Examiner determined that Khosravi and Hunter rendered the claimed subject matter obvious, based, in part, on the determination: that it would be obvious to one of ordinary skill in the art at the time of invention to make improvement to the configuration of the two hydrogel precursors disposed on a carrier disclosed in Khosravi et al. by separating the two portion[ s] of the substrate containing hydrogel precursor from each other spatially for the advantages taught in Khosravi et al. to place two reactive agent[ s] at different location[ s] of the carrier substrate. Final Action 5. We find that the evidence of record does not support this determination. The claims recite, "the first hydrogel precursor is initially spatially separate from the second hydrogel precursor." The Examiner determined that this language "does not require spatial separation in the claimed structure." We disagree. Such an interpretation of the claims ignores the plain language thereof and the disclosure of the Specification. Appellants argue that the separation of the first and second hydro gel precursors is an important aspect of the invention to avoid premature reaction thereof to form a hydro gel. App. Br. 6. Moreover, while the Specification describes various embodiments of the invention, each is described as comprising an implant having at least two hydrogel precursors 6 Appeal2014-003407 Application I2/938,49I that are initially spatially separated on the body of the implant and only combined upon subjecting the implant to physiological fluids that serve to combine the two hydrogel precursors. See, e.g., Spec. i-fi-15-7, 2I, 55-70, Figs. ID, 2, 3, 5C, 6C, 8C, 9C, and IO-I2. Khosravi discloses an implant with first and second precursors that are either mixed together before being applied thereto or mixed together thereon. Khosravi i-fi-140-4I, 45, 47; Figs. ID, 2. In our view, the Examiner's interpretation of the claims as only requiring separation "at molecular level" is unreasonably broad when the claims are read in light of the Specification. See Ans. I 6. Appellants' arguments are persuasive and the evidence of record does not support that the appealed claims would have been obvious over the cited prior art combination. For this reason, the rejection of claims I-22 under 35 U.S.C. § I03(a) is reversed. B. The rejection of claims 1-22 on the ground of nonstatutory obviousness-type double patenting over claims 1, 2, 4-6, 11-13, 16-18, 20, and 23 of the '355 patent in view of Hunter and Khosravi. Appellants present no arguments pertaining to the double patenting rejection, therefore, we sustain the rejection. See MPEP § I205.02, 9th ed., Rev. 7, Mar. 20I5 ("If a ground of rejection stated by the examiner is not addressed in the appellant's brief, that ground of rejection will be summarily sustained by the Board."). The rejection is affirmed. 7 Appeal2014-003407 Application 12/938,491 C. The provisional rejection of claims 1-22 on the ground of nonstatutory obviousness-type double patenting over claims 1-25 of the '176 application in view of Hunter and Khosravi. Appellants present no arguments pertaining to the provisional double patenting rejection, therefore, we sustain the rejection. See MPEP § 1205.02, 9th ed., Rev. 7, Mar. 2015. The rejection is affirmed. SUMMARY The rejection of claims 1-22 under 35 U.S.C. § 103(a) over Khosravi and Hunter is reversed. The rejection of claims 1-22 on the ground of nonstatutory obviousness-type double patenting over claims 1, 2, 4---6, 11-13, 16-18, 20, and 23 of the '355 patent in view of Hunter and Khosravi is affirmed. The provisional rejection of claims 1-22 on the ground of nonstatutory obviousness-type double patenting over claims 1-25 of the '176 application in view of Hunter and Khosravi is affirmed. TIME PERIOD FOR RESPONSE 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 8 Copy with citationCopy as parenthetical citation