Ex Parte Gueret

Board of Patent Appeals and Interferences

May 1, 2008

10107410 (B.P.A.I. May. 1, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JEAN-LOUIS H. GUERET
____________

Appeal 2008-0002
Application 10/107,410
Technology Center 1600
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Decided: May 1, 2008
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Before TONI R. SCHEINER, LORA M. GREEN, and
RICHARD M. LEBOVITZ, Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal1 under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1-63. We have jurisdiction under 35
U.S.C. § 6(b). Claim 1, 45, 60, and 61 are the independent claims on appeal,
and read as follows:

1 This Appeal was heard on April 17, 2008.
Appeal 2008-0002
Application 10/107,410

1. A treatment device, comprising:
a cover defining a cavity, the cavity being configured to receive a part
of a body, the cover comprising
at least one sheet having a composite structure, the composite
structure comprising
at least two layers, at least one of the two layers being
permeable to a solvent, and
at least one adhesive matrix situated between the two layers, the
two layers being permanently bonded to the adhesive matrix, the adhesive
matrix containing at least one active agent that is soluble in the solvent,
wherein, when the active agent is dissolved in the solvent, the active
agent is released from at least one side of the cover, and
wherein the device is configured so that the active agent is released
into the cavity.

45. A method of manufacturing a device for treating a part of the body,
the method comprising: providing at least one sheet comprising a composite
structure of at least one adhesive matrix between at least two layers, at least
one of the two layers being permeable to a solvent, the two layers being
permanently bonded to the adhesive matrix, the adhesive matrix containing
at least one active agent soluble in the solvent, the at least one active agent
being released through at least one side of the sheet when dissolved; and
at least one of folding the at least one sheet over onto itself, shaping
the at least one sheet into a bag, and assembling the at least one sheet with at
least one other sheet, so as to form a cover defining a cavity in which a part
of a body may be received.

60. A treatment device, comprising:
a cover defining a cavity, the cavity being configured to receive a part
of a body; the cover comprising
at least one sheet having a composite structure, the composite
structure comprising
at least two layers, at least one of the two layers being permeable to a
solvent, wherein at least one of two layers is at least partially impermeable,
and
at least one adhesive matrix situated between the two layers, the two
layers being permanently bonded to the adhesive matrix, the adhesive matrix
containing at least one active agent that is soluble in the solvent,
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Application 10/107,410

wherein, when the active agent is dissolved in the solvent, the active
agent is released from at least one side of the cover, and
wherein the adhesive matrix is between the at least partially
impermeable layer and the cavity.

61. A treatment device, comprising:
a cover defining a cavity, the cavity being configured to receive a part
of a body, the cover comprising
at least one sheet having a composite structure, the composite
structure comprising
a first layer and a second layer, the first layer and second layer
being permeable to a solvent, and
a first adhesive matrix situated between the first layer and the
second layer, the first layer being permanently bonded to the first adhesive
matrix, the first adhesive matrix containing at least a first active agent that is
soluble in the solvent,
a second adhesive matrix situated between the first layer and
the second layer, the second adhesive layer being permanently bonded to the
first adhesive matrix and the second layer, the second adhesive matrix
containing at least a second active agent that is soluble in the solvent,
wherein the cover is configured such that when the first active agent is
dissolved in the solvent, the first active agent is released through the first
layer and, when the second active agent is dissolved in the solvent, the
second active agent is released through the second layer.

The Examiner relies upon the following references:
Shlenker 5,965,276 Oct. 12, 1999
Gueret 5,026,552 Jun. 25, 1991

JEX CO LTD (translation) JP 54-22300 Sept. 13, 1979
We reverse.

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Application 10/107,410

DISCUSSION
Claims 1, 2, 4, 7-9, 14, 15, 19, 22-25, 27, 31-35, 37-55, 58, 59, 62,
and 63 stand rejected under 35 U.S.C. § 102(b) as being anticipated by
Shlenker.
Shlenker is cited for teaching a glove that is made of single or
multiple layers or membranes, some or all of which are permeable or semi-
permeable, as well as also having an intermediate layer, constructed in a
manner that is triggered to release an active agent from the inner layer (Ans.
3). Shlenker is also cited for teaching an inner needle treatment layer that
includes an adhesive (id.).
It is well settled that to anticipate, every element and limitation of the
claimed invention must be found in a single prior art reference, arranged as
in the claim. Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376,
1383 (Fed. Cir. 2001).
Appellant argues that Shlenker “fails to disclose or suggest, . . . at
least one ‘adhesive matrix containing at least one active agent that is soluble
in the solvent, wherein, when the active agent is dissolved in the solvent, the
active agent is released from at least one side of the cover.’” (App. Br. 14.)
Appellant argues further that Schlenker “does not disclose or necessarily
require that ‘when the active agent is dissolved in the solvent, the active
agent is released from at least one side of the cover,’” and also does not
disclose “‘at least one active agent being released through at least one side of
the sheet when dissolved,’ as recited in claim 45.” (Id. at 15.) According to
Appellants, Schlenker discloses other triggers for the release of active agent,
such as mechanical shearing or puncture (id.).
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Application 10/107,410

The Examiner responds that Shlenker “clearly discloses an inner
needle-treatment layer, which, at least in one embodiment, is a gummy
coating, which is disclosed to be an adhesive (col. 4, ll. 53-58).” (Ans. 8.)
Thus, according to the Examiner, Shlenker “does disclose an adhesive
matrix situated between the two layers, wherein the two layers are bound to
the adhesive matrix.” (Id.)
We find that Appellant has the better argument. We agree with the
Examiner that Shlenker teaches the use of an adhesive containing an active
agent as an intermediate layer. But that teaching is in the context of a needle
treating layer, and there is no teaching or suggestion in Shlenker that such an
intermediate layer is sandwiched between two layers, wherein at least one of
the two layers is permeable to a solvent.
Specifically, Shlenker teaches that the “needle or sharp object treating
layer comprises a gummy coating such as . . . an adhesive, . . . with or
without an admixed biocide, antiseptic, or sterilizing agent, as an inner
layer.” (Shlenker, col. 4, ll. 53-58.) According to Shlenker, as “the needle
or other object pierces the membrane, the treatment substance tends to stick
to it, coat it, cleanse it, or otherwise deactivate any harmful substances
which might adhere thereto.” (Col. 4, ll. 59-62.) Thus, in the embodiment
of Shlenker relied upon by the Examiner for the adhesive, it is not the
permeability or semi-permeability of one of the layers that allows for
deployment of the active agent, but rather, it is a mechanical piercing by a
sharp object such as a needle. That is supported by Shlenker, who further
teaches that as “an alternative to permeability, substantially impermeable
layers may transmit the substance or agent upon rupture or piercing and
completely contain the substances at all other times.” (Col. 2, ll. 5-8.)
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Therefore, while Shlenker teaches an article having at least one
semipermeable outer layer, as well as an article having an adhesive layer
inner layer containing an active agent, the Examiner does not point to, nor
can we find, a teaching or suggestion in Shlenker of an article that has both
at the same time. Thus, Shlenker does not teach all of the limitations of the
independent claims, and we are compelled to reverse the rejection.

Claims 3, 5, 6, 26, 29, 30, 36, and 56-61 stand rejected under 35
U.S.C. § 103(a) as being obvious over Shlenker.
The obviousness rejection over Shlenker is written to cover additional
limitations of the dependent claims, such as using any shape that is suitable
to the use, such as a bag or mitten, or incorporating polyamide power (Ans.
4-5.) Thus, the rejection does not overcome the deficiencies of the
anticipation rejection over Shlenker, and the rejection is reversed.

Claims 10-13, 16-21, and 28 stand rejected under 35 U.S.C. § 103(a)
as being obvious over the combination of Shlenker as combined with
Gueret.
Shlenker is relied upon as for the anticipation rejection (Ans. 5).
Gueret is relied upon for its teaching of separating agents (id. at 6). Thus,
Gueret does not remedy the deficiencies of Shlenker, and the rejection is
reversed.

Claims 29, 30, and 36 stand rejected under 35 U.S.C. § 103(a) as
being obvious over the combination of Shlenker and JEX.
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Shlenker is relied upon as for the anticipation rejection (Ans. 6). JEX
is relied upon for its teaching the use of a non-woven fabric layer (id. at 6-7).
Thus, JEX does not remedy the deficiencies of Shlenker, and the rejection is
reversed.

CONCLUSION
In summary, the rejections on appeal are reversed.

REVERSED

lp

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WASHINGTON DC 20001-4413

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