Ex Parte DING

Patent Trial and Appeal Board

Nov 21, 2016

12851420 (P.T.A.B. Nov. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/851,420 08/05/2010
45159 7590 11/23/2016
SQUIRE PB (Abbott)
275 BATTERY STREET, SUITE 2600
SAN FRANCISCO, CA 94111-3356
FIRST NAMED INVENTOR
NI DING
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.
050623.01391 1682
EXAMINER
MILLIGAN, ADAM C
ART UNIT PAPER NUMBER
1612
NOTIFICATION DATE DELIVERY MODE
11/23/2016 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):
sfripdocket@squirepb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NI DING
Appeal2015-005434
Application 12/851,420
Technology Center 1600
Before JEFFREY T. SMITH, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 from the Examiner's
rejection under 35 U.S.C. § 103(a) of claims 1, 3-10, 12, and 13. We have
jurisdiction under 35 U.S.C. § 6.
We REVERSE.
Appeal2015-005434
Application 12/851,420
Claim 1 reads as follows:
1. A kit, comprising:
a pouch;
a medical device with a drug in the pouch;
a porous or permeable container in the pouch; and
an antioxidant in the porous or permeable container such
that the medical device with the drug is placed outside of the
porous or permeable container;
wherein the antioxidant is a volatile antioxidant and
evaporates and fills the space of the pouch.
Appellant requests review of the Examiner's rejection of claims 1, 3-
10, 12 and 13 rejected under 35 U.S.C. § 103(a) as unpatentable over Sirhan
(US 2003/0083646 Al, published May 1, 2003), Carlyle (US 2003/0204239
Al, published October 30, 2003), and Hui (US 2002/0081228 Al, published
June 27, 2002). Final Act. 3--4; App. Br. 5. We need only address claim 1.
Independent claim 1 is directed to a kit that is essentially a package
(pouch) enclosing a medical device and a porous/permeable container
containing a volatile antioxidant that fills the package (pouch) to protect the
medical device. App. Br. 8.
We refer to the Examiner's Final Action for a statement of the
rejection. Final Act. 3--4.
After review of the respective positions provided by Appellant and the
Examiner, we REVERSE the Examiner's prior art rejection for the reasons
presented by Appellant. We add the following.
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Appeal2015-005434
Application 12/851,420
The Examiner found Sirhan's vapor deposition chamber corresponds
to the claimed pouch. Ans. 6; Sirhan i-f 149. Alternatively, the Examiner
found Hui discloses a pouch acting as a vapor deposition chamber and, thus,
determined it would have been obvious to replace Sirhan's vapor deposition
chamber with the gas permeable pouch of Hui in view of Hui's teachings.
Final Act. 4; Ans. 5---6; Hui Figure 15, i-f 95.
Appellant's position that one of ordinary skill would not consider a
pouch as recited in claim 1 to encompass the vapor deposition chamber of
Sirhan's device is persuasive. App. Br. 8, 10. We agree with Appellant that
the Examiner has not adequately explained why one skilled in the art would
have substituted Hui's sterilization pouch for Sirhan's vapor deposition
chamber. App. Br. 12. The Examiner has not provided an adequate
technical explanation of how one skilled in the art would modify Sirhan's
device to operate with Hui's sterilization pouch given that Sirhan's device is
for a highly controlled vapor deposition under vacuum \'l1hile Hui's pouch is
for gas diffusion that does not lead to deposition. Id. at 13.
Moreover, the Examiner has not adequately explained how Sirhan's
fence, which serves to mask portions of the medical device (stent) from
being coated by the therapeutic material (antioxidant), operates as a porous
or permeable container holding the therapeutic material (antioxidant).
Sirhan i-fi-1 60, 1 72, 183, 189.
Accordingly, we reverse the Examiner's prior art rejection of claims
1, 3-10, 12, and 13 for the reasons presented by Appellant and given above.
Related Appeal No. 2014-009457 (Application No. 12/851,414 by the
same inventor; and identified as a related appeal at App. Br. 3) involved
method claims directed to similar subject matter, that is, packaging of a
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Appeal2015-005434
Application 12/851,420
medical device by providing an antioxidant in a container within the
packaging/pouch containing the medical device. The rejection of those
claims under 35 U.S.C. § 103 over primarily the combined teachings of
Pettersson (US 6,065,597, issued May 23, 2000) and Cotterman (US
2002/0153511 Al, published October 24, 2002) was affirmed. Although the
Examiner has already indicated that Petterson and Cotterman were
considered on the signed Information Disclosure Statement dated February
12, 2014, we leave it to the Examiner and Appellant to determine whether
prior art issues are raised by the references applied in that related appeal to
the claims here in light of the decision in Appeal No. 2014-009457. The
Board relies on the involved parties to focus the issues and decides those
issues based on facts and arguments presented by the involved parties. See
Ex Parte Frye, 293 F. 1013 (BPAI 2010 (precedential)). While the Board is
authorized to enter a new ground of rejection, this authority is discretionary.
See 37 C.F.R. § 41.77(b). \Ve decline to consider the obviousness of the
currently appealed claims in light of the above noted references as such a
rejection is not before us for review on appeal.
ORDER
The Examiner's prior art rejection under 35 U.S.C. § 103(a) is
reversed.
REVERSED
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