Ex Parte Chan et al

Patent Trial and Appeal Board

Mar 3, 2017

12402154 (P.T.A.B. Mar. 3, 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.
12/402,154 03/11/2009 Edwin Chan 0492611-0892 (MIT13131) 7169
24280 7590 03/07/2017
CHOATE, HALL & STEWART LLP
TWO INTERNATIONAL PLACE
BOSTON, MA 02110
EXAMINER
AUER, LAURA A
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
03/07/2017 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):
patentdocket @ choate. com
jnease@choate.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EDWIN CHAN, JEFFREY M. KARP, and ROBERT S. LANGER
Appeal 2014-004071
Application 12/402,154
Technology Center 1700
Before LINDA M. GAUDETTE, MARK NAGUMO, and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2014-004071
Application 12/402,154
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s decision2
finally rejecting claims 5—8, 10, 11, 13—15, 17—19, 21, 25, 26, 28—37, 40, and 74—
80. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
The invention relates to a material that is capable of promoting adhesion by
transitioning reversibly between first and second states in response to a specific
external stimulus, such as hydration. Specification filed Mar. 11, 2009 (“Spec.”),
2:2—5, 24. The invention encompasses a material that, in its first state, has a
relatively smooth surface texture. See id. at 25:17; Fig. 13. Upon application of a
stimulus, e.g., hydration, the material transitions to a second state wherein the
material surface is irregular with increased texture amplitude. Id. at 25:13—14, 17—
18; Fig. 13. When applied to a superstrate, the increased surface topology of the
material in its second state provides an increased line of contact between the
material and the superstrate, resulting in greater adhesion as compared to the
adhesion between the superstrate and the material in its first state. See id. at
18:22—25. In medical applications (e.g., wound healing, drug delivery, etc.), the
material can be attached to biological tissue where adhesion is promoted by
hydration supplied by the tissue. See id. at 1:21—22, 12:5—6; see also id. at 12:13—
13:2. Claim 74, reproduced below, is illustrative of the claimed invention:
74. A composition comprising:
a hydration-responsive material consisting of a polymer that
transitions between a first state and a second state in response to
hydration, the first state having a first texture and achieving a first
level of adhesion with a superstrate and the second state having a
1 Appellants identify the real party in interest as Massachusetts Institute of
Technology and Brigham and Women’s Hospital. Appeal Brief filed Aug. 22,
2013 (“App. Br.”), 2.
2 Final Office Action mailed Oct. 22, 2012 (“Final Act.”).
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Application 12/402,154
second texture and achieving a second level of adhesion with the
superstrate,
wherein the hydration-responsive material reversibly transitions
from the second state to the first state in response to dehydration or
application of one or more stimuli, and
wherein the hydration-responsive material has a thickness of at
least about 1 um.
App. Br. 19-20 (Claims App’x).
The claims stand rejected under 35 U.S.C. § 103(a) as unpatentable over the
following combinations of references:
1. claims 5—8, 11, 13—15, 17, 18, 25, 26, 28—37, and 74—80 over Livne
(US 2008/0280085 Al, pub. Nov. 13, 2008) and Shadduck (US 2004/0193095 Al,
pub. Sep. 30, 2004));
2. claim 10 over Livne, Shadduck and Stanford et al. (US 2004/0074062
Al, pub. Apr. 22, 2004); and
3. claims 19, 21, and 40 over Livne, Shadduck, and Lendlein et al. (US
2008/0305545 Al, pub. Dec. 11, 2008).
Appellants’ arguments in support of patentability as to all appealed claims
are based on limitations found in claim 74, the sole independent claim on appeal.
See generally, App. Br. 6—15.
The Examiner finds Livne discloses a material (plurality of fibers) having
adhesive properties that change when an external stimulus is applied. Final Act. 2.
The Examiner finds, more specifically, that Livne discloses “the use of shape
memory polymer [(“SMP”)] in a fibrillar adhesive allows for differing adhering
states (a non-adhesive state of collapsed fibers and a rigid fiber state)” (id.) having
different textures (id. at 8). The Examiner further finds Livne discloses that the
material’s adhesive properties can be changed by electric, magnetic, photonic,
chemical/solution, and mechanical stimuli (Examiner’s Answer mailed Oct. 22,
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Application 12/402,154
2013 (“Ans.”), 3), but that Livne does not explicitly disclose hydration as a
stimulus (Final Act. 2).
The Examiner finds Shadduck discloses a stent or ocular implant body
comprising an SMP that changes from a first texture to a second texture after
exposure to a stimulus. See Final Act. 3. The Examiner finds Shadduck explicitly
describes hydration as a stimulus for altering the SMP. Id. (citing Shadduck 136).
The Examiner concludes “[i]t would have been obvious to one of ordinary skill in
the art at the time of the invention to use hydration as an alternative to the stimuli
disclosed in [Livne] in order to transform shape memory polymers from one state
to another.” Id.
The respective positions of Appellants and the Examiner raise the following
issue for our consideration:3 Does a preponderance of the evidence support the
Examiner’s finding that one of ordinary skill in the art at the time of the invention
would have had a reasonable expectation of success in replacing the SMP in
Livne’s adhesive material with a hydration-responsive SMP as taught by
Shadduck? We answer this question in the negative for the reasons discussed
below.
Appellants argue that although Livne lists a number of mechanisms for
changing adhesive properties of materials, temperature is the only mechanism
described as effecting a change in adhesive properties when the material comprises
an SMP. App. Br. 10-11; see generally, Livne ^fl[ 197—200. Shadduck likewise
3 In the Response to Argument section of the Answer, the Examiner makes a new
finding that Livne inherently discloses a hydration-responsive material as claimed,
because Livne uses the same material (polyurethane) as Appellants. Ans. 4.
Appellants have argued persuasively in their Reply Brief that the Examiner has not
identified sufficient evidence to support this finding. Reply Brief filed Dec. 23,
2013 (“Reply Br.”), 5.
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Appeal 2014-004071
Application 12/402,154
focuses on the use of temperature to effect a change in the SMP material used in
forming its stent. See, e.g., Shadduck 130 (noting an advantage of using SMP
foams for intraocular implants is that “shape recovery can be designed at a selected
temperature between about 30° C. and 60° C. which . . . [is] useful for the
treatment system”). Shadduck describes the inflow and outflow ends of its stent as
being “fabricated to have a first memory shape [] that is compactable or
deformable to a second temporary shape [] to allow for a more minimally invasive
entry path to implant the stent in the eye” (Shadduck || 20, 23) and, in a preferred
embodiment, at least the inflow end is “adapted to expand at about body
temperature and generate sufficient expansion forces to increase in surface area”
(id. 123).
The Examiner relies on Shadduck’s disclosure that “[i]n one embodiment,
the outflow end 104 of the device is of a shape memory polymer that shortens
axially after implantation in response to hydration or another stimulus (other than
body temperature) to ax[ia]lly retract into the dissected path” (id. 136). Final Act.
3. As indicated by Appellants, however, Shadduck does not describe the shape
memory polymer as capable of reversibly transitioning from the retracted state to
its pre-hydration state in response to dehydration, or another stimulus. See App.
Br. 8—9. The Examiner has not identified, nor do we find, a teaching or suggestion
in Shadduck that exposure of the SMP material to hydration would alter the
material’s texture and level of adhesion with a superstrate. See, e.g., Ans. 4
(finding Shadduck discloses hydration as a known stimulus in activating SMPs, but
failing to identify a teaching that hydration could be used as a stimulus in
activating changes in texture and level of adhesion in an SMP).
We find, therefore, that the facts and reasons relied on by the Examiner are
insufficient to support a finding that one of ordinary skill in the art would have had
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Application 12/402,154
a reasonable expectation of success in replacing the SMP in Livne’s adhesive
material with a hydration-responsive SMP as taught by Shadduck. Accordingly,
we do not sustain the Examiner’s rejections of claims 5—8, 10, 11, 13—15, 17—19,
21, 25, 26, 28-37, 40, and 7^80.
REVERSED
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