Ex Parte Hadba et al

Patent Trial and Appeal Board

Mar 15, 2017

11883993 (P.T.A.B. Mar. 15, 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.
11/883,993 06/04/2008 Ahmad R. Hadba H-US-00101 (203-3236) 8745
50855 7590
Covidien LP
60 Middletown Avenue
c/o Legal - Mailstop MS 54
North Haven, CT 06473
EXAMINER
KARST, DAVID THOMAS
ART UNIT PAPER NUMBER
1767
NOTIFICATION DATE DELIVERY MODE
03/17/2017 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):
SurgicalUS@covidien.com
medtronic_mitg-si_docketing@cardinal-ip.com
mail @ cdfslaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AHMAD R. HADBA, JOHN KENNEDY
and MARK ROBY1
Appeal 2014-003937
Application 11/883,993
Technology Center 1700
Before CATHERINE Q. TIMM, JEFFREY T. SMITH,
and BEVERLY A. FRANKLIN, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 1—3, 5, 9-15, 17—20, and 26. We have jurisdiction
under 35 U.S.C. § 6(b).
1 According to the Appeal Brief, the real party in interest is Covidien LP.
(App. Br. 1.)
Appeal 2014-003937
Application 11/883,993
Claim 1 illustrates the subject matter on appeal and is reproduced
from the Claims Appendix to the principal Brief.
1. A biocompatible synthetic macromer composition
comprising
a first polymer of formula
H2N-[Ri-Q-R2]-NH2 (I)
where Ri and R2 are the same or different and are derived
from an alkoxy or alkoxy with bioabsorbable groups, and Q is
derived from a compound selected from the group consisting of
bisphenol A, biphenyl, diglycidyl ethers of bisphenol A,
ethoxylated bisphenol A, phenylene diamines, toluene diamine,
and imides;
a second component having amine-reactive groups of the
formula
R3(X)n (IV)
wherein n> 1, X is selected from the group consisting of
succinimidyl groups, isocyanate groups, and combinations
thereof, and R3 is derived from a compound selected from the
group consisting of sorbitol, mannitol, dextran, cyclodextrin,
polyalkylene oxides, polyethylene glycols with lactide linkages,
and polyethylene oxide copolymers with polypropylene oxide;
and,
a coupling agent,
wherein the composition has a viscosity from about 200
centipoise to about 100,000 centipoise.
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Appeal 2014-003937
Application 11/883,993
The Examiner maintains, and Appellants appeal, the rejection of
claims 1—3, 5, 9-15, 17—20, and 26 under 35 U.S.C. § 103(a) as unpatentable
over Yeakey (US 3,654,370, issued Apr. 4, 1972) in view of Murray et al
(US 4,822,841, issued Apr. 18, 1989), Roby (US 2003/0032734 Al,
published Feb. 13, 2003), and Choi (US 6,046,305, issued Apr. 4, 2000).
OPINION
Prior Art Rejection under 35 U.S.C. § 103(a)
The dispositive issue on appeal is: Did the Examiner err in
determining that the combined teachings of Yeakey in view of Murray,
Roby, and Choi would have led one skilled in the art to a biocompatible
synthetic macromer composition comprising a first polymer of formula (I), a
second component having amine-reactive groups of the formula (IV), and a
coupling agent, wherein the composition has a viscosity from about 200
centipoise to about 100,000 centipoise as required by the subject matter of
independent claim l?2
After review of the respective positions provided by Appellants and
the Examiner, we REVERSE for the reasons presented by Appellants.
We refer to the Examiner’s Final Office Action for a complete
statement of the rejection. Final Act. 3—15.
Appellants argue Yeakey in view of Murray, Roby, and Choi fails to
teach or suggest a biocompatible synthetic macromer composition
comprising a first polymer of formula (I), a second component having
amine-reactive groups of the formula (IV), and a coupling agent. App. Br.
2 We limit our discussion to independent claim 1.
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Appeal 2014-003937
Application 11/883,993
5—14. Appellants argue Yeakey does not disclose, and there is no suggestion
to add, (1) stiffening linkages “Q”; (2) a second component having amine-
reactive groups; and (3) coupling agent. App. Br. 6. Appellants further
argue Yeakey fails to disclose or suggest a composition having a viscosity of
from about 200 centipoise to about 100,000 centipoise. App. Br. 7.
The Examiner found Yeakey teaches that the first polymer is useful as
intermediates in the preparation of polyureas. Final Act. 3. The Examiner
reasons this disclosure suggests reacting the first polymer with a second
component “that contains isocyanate groups since in order to prepare
polyureas, the amine groups of Yea key’s first polymer must react with a
second component that contains isocyanate groups.” Id. The Examiner
found Murray teaches that the alkylene oxide adduct of bisphenol A is
suitable for reacting with a diisocyanate to produce a polyurea. Final Act. 4.
The Examiner determined it would have been obvious to use bisphenol A as
Yeakey’s R group. The Examiner specifically states:
[0]ne of ordinary skill in the art would have found it obvious to use
Murray's bisphenol A to substitute for Yeakey’s aliphatic polyhydric
alcohol as the compound from which the R group in Yeakey’s
formula for the first polymer is derived, which reads on the claimed Q
being derived from a compound that is bisphenol A, and would have
been motivated to do so because Murray’s bisphenol A (4:20-23) has
two aromatic groups, which are beneficial for improving the
mechanical properties of Murray’s first polymer due to the greater
rigidity of the aromatic groups compared to the aliphatic groups of
Yeakey’s aliphatic polyhydric alcohol, which Yeakey teaches is an
aliphatic polyhydric alcohol containing 2-12 carbon atoms and 2-8
hydroxyl groups (1 :65-68), and because Murray teaches that their
bisphenol A is useful for reacting it with an alkylene oxide (4:20-23)
and reacting the product with a diisocyanate to produce a polyurea
(2:16-21, 25-36), which means that it is suitable for being used to
form Yeakey's first polymer since Yeakey teaches that their aliphatic
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Appeal 2014-003937
Application 11/883,993
polyhydric alcohol is oxyalkylated (1 :65-68) and that it is useful in
the production of a polyurea (1 :72-2:17).
Final Act. 4.
The Examiner found Yeakey does not teach the second component as
required by the claimed invention. Final Act. 5. The Examiner found Roby
teaches an isocyanate substituted polyalkylene oxide which reads on formula
(IV) of the claimed invention. Final Act. 5. The Examiner determined it
would have been obvious to utilize an isocyanate substituted polyalkylene
oxide with Yeakey’s first polymer component to form a polyurea. Final Act.
5-6.
The Examiner found Yeakey does not teach the coupling agent
required by the claimed invention. The Examiner found Choi teaches
coupling agents that are useful in the presence of amine containing
components. Final Act. 6. The Examiner determined it would have been
obvious to utilize a coupling agent in the composition of Yeakey for the
benefit of catalyzing direct coupling of Yeakey’s first polymer that has
primary amine groups to a compound that has a carboxylic acid group. Final
Act. 7.
To address the physical properties of the biocompatible macromer
composition, the Examiner asserts the properties would have been achieved
by Yeakey in view of Murray, Roby, and Choi because the combination
“renders obvious all of the claimed ingredients, amounts, process steps, and
process conditions of the synthetic macromere composition.” Final Act. 7—
8.
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Appeal 2014-003937
Application 11/883,993
On this record, we agree with Appellants. The Examiner’s attempt to
reconstruct the claimed invention begins with Yeakey, which describes a
composition that differs from the claimed invention by not describing a first
polymer of formula (I), a second component having amine-reactive groups
of the formula (IV), and a coupling agent. To arrive at the claimed
invention, the Examiner first provides reasoning for making modifications to
Yeakey’s described first polymer to incorporate stiffening linkages “Q”.
However, the Examiner has not directed us to portions of Yeakey or Murray
that suggest the desirability of the proposed modification. Recognizing that
Yeakey does not describe the second component, the Examiner relies on
Yeakey’s disclosure that the compound is suitable for a forming polyurea as
the basis for adding a second component to the modified first polymer. The
Examiner has failed to direct us to evidence that indicates Yeakey’s
modified polymer would have been expected to be suitable for the formation
of a polyurea. The Examiner’s reasons for adding a coupling agent to
Yeakey’s modified polymer and added second component similarly lacks
objective evidence to support the proposed modification. The modifications
proposed by the Examiner appeared to be based solely upon Appellants
specification. Thus, absent impermissible hindsight, the Examiner has not
adequately explained why one of ordinary skill in the art would have
modified Yeakey to add (1) stiffening linkages “Q”; (2) a second component
having amine-reactive groups; and (3) coupling agent as required by
independent claim 1. See, e.g., Ex parte Levengood, 28 USPQ2d 1300,
1301—02 (Bd. Pat. App. & Int. 1993) (“At best, the examiner’s comments
regarding obviousness amount to an assertion that one of ordinary skill in
the relevant art would have been able to arrive at appellant’s invention
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Appeal 2014-003937
Application 11/883,993
because he had the necessary skills to carry out the requisite process steps.
This is an inappropriate standard for obviousness. . . . That which is within
the capabilities of one skilled in the art is not synonymous with obviousness,
(citation omitted).”).
Under these circumstances, we cannot conclude that the Examiner has
met the minimum threshold of establishing a prima facie case of obviousness
under 35 U.S.C. § 103(a). See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992); KSRInt’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (quoting
In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Accordingly, we reverse
the Examiner’s prior art rejection of claims 1—10 under 35 U.S.C. § 103(a)
for the reasons presented by Appellants and given above.
ORDER
The Examiner’s prior art rejection of claims 1—3, 5, 9-15, 17—20, and
26 under 35 U.S.C. § 103(a) is reversed.
REVERSED
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