Ex Parte Huey et al

Board of Patent Appeals and Interferences

Jan 18, 2012

11592477 (B.P.A.I. Jan. 18, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte RAYMOND J. HUEY and JEFFREY L. HORN
__________

Appeal 2011-001121
Application 11/592,477
Technology Center 1600
__________

Before ERIC GRIMES, FRANCISCO C. PRATS, and STEPHEN WALSH,
Administrative Patent Judges.

PRATS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims to an apparatus for
promoting blood clotting. The Examiner entered rejections for obviousness.
We have jurisdiction under 35 U.S.C. § 6(b). We reverse.
STATEMENT OF THE CASE
Claims 1, 2 and 21-38 stand rejected and appealed (App. Br. 2).
Claim 1, the only independent, is representative and reads as follows:

1. An apparatus for promoting the clotting of blood,
comprising: a pouch closed on all sides, defined by a mesh on all
sides, and a first blood clotting material in powder form incorporated
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Application 11/592,477

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into a material defining said mesh and captured therein so that at least
a portion of said powder is exposed on an outer surface defined by
said material; and
a second blood clotting material in loose particulate form
retained in said pouch;
wherein the material defining the mesh comprises openings
which are sufficiently large to allow at least a portion of the
particulate blood clotting material to extend through the openings to
allow contact with blood outside of the pouch.

The following grounds of rejection are before us for review:
(1) Claims 1, 2, 21-28, 30-34, and 38 under 35 U.S.C. § 103(a) as
obvious over Hursey,
1
Watt „783,
2
and McCabe
3
(Ans. 3-8);
(2) Claims 29 and 35, under 35 U.S.C. § 103(a) as obvious over
Hursey, Watt „783, McCabe, and Wu
4
or Watt „842
5
(Non-Final Rejection
9-11 (entered June 18, 2009)); and
(3) Claims 36 and 37, under 35 U.S.C. § 103(a) as obvious over
Hursey, Watt „783, McCabe, Jensen,
6
and Bruder
7
(Non-Final Rejection 11-
13 (entered June 18, 2009)).
8

1
U.S. Patent Appl. Pub. No. 2003/0133990 A1 (published July 17, 2003).
2
EP 0 888 783 A1 (published January 7, 1999).
3
U.S. Patent No. 5,716,337 (issued February 10, 1998).
4
U.S. Patent No. 5,696,101 (issued December 9, 1997).
5
GB 2 314 842 A (published January 14, 1998).
6
EP 1 159 972 (published December 5, 2001).
7
U.S. Patent Appl. Pub. No. 2003/0208150 A1 (published November 6,
2003).
8
While Appellants do not list rejections 2 and 3 as being appealed, the
Examiner‟s Answer explicitly states that “[e]very ground of rejection set
forth in the Office action from which the appeal is taken (as modified by any
advisory actions) is being maintained by the examiner except for the grounds
of rejection (if any) listed under the subheading „WITHDRAWN
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Application 11/592,477

3
DISCUSSION
The Examiner cited Watt as disclosing a device for promoting wound
healing that consisted essentially of an envelope or “„tea bag‟” made of a
woven fabric that enclosed particles of a substance that promoted wound
healing, such as zeolite (Ans. 4-5). The Examiner conceded:
Watt does not teach the limitation wherein the apparatus
(a) comprises of a first blood clotting agent and a second blood
clotting agent in the said pouch wherein the first blood clotting
agent is in the form of a powder (b) limitation that at least the
said portion of said particulate molecular sieve material extend
through the openings of the pouch to come into contact with the
blood in the wound, (c) wherein the apparatus further comprises
of a support/substrate for affixing the pouch to a bleeding area.

(Id. at 5.)
To address those deficiencies, the Examiner cited Hursey as teaching
“a wound cover for retaining a hemostatic agent therein, the hemostatic
agent comprising a first component (molecular sieve material) having
hemostatic properties commingled with a second component (a clay
material) having hemostatic property, at least a portion of the device being
defined by a mesh (gauze), which has openings therein” (id. at 5-6).
As further evidence of obviousness, the Examiner cited McCabe as
disclosing a wound dressing composed of a perforated pouch containing
wound exudate-absorbing alginate particles (id. at 6-7). The Examiner
found that, given the dimensions of the device described in McCabe,
McCabe‟s device inherently met the claim limitations requiring the enclosed
particles to protrude at least partly through the mesh pouch (id. at 7).

REJECTIONS.‟” (Ans. 2-3.) Notably, Appellants have listed the claims
rejected in grounds 2 and 3 among those being appealed (App. Br. 2).
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Based on the references‟ combined teachings, the Examiner found that
an ordinary artisan would have been prompted to apply McCabe‟s pouch
teachings to the inventions of Watt and Hursey “so as to utilize the blood
coagulating properties of the zeolite to its fullest extent[;] it would have been
obvious to an ordinarily skilled artisan to utilize[] zeolite as both the first
and second component in the apparatus of Hursey and Watt” (Ans. 7-8).
We agree with Appellants that the Examiner has not shown that the
cited references would have rendered the claimed apparatus prima facie
obvious to an ordinary artisan.
“In proceedings before the Patent and Trademark Office, the
Examiner bears the burden of establishing a prima facie case of obviousness
based upon the prior art.” In re Fritch, 972 F.2d 1260, 1265 (Fed. Cir.
1992).
In KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415 (2007), while the
Supreme Court emphasized “an expansive and flexible approach” to the
obviousness question, it also reaffirmed the importance of determining
“whether there was an apparent reason to combine the known elements in
the fashion claimed by the patent at issue.” Id. at 418 (emphasis added).
Thus, “[o]bviousness requires more than a mere showing that the prior
art includes separate references covering each separate limitation in a claim
under examination.” Unigene Laboratories, Inc. v. Apotex, Inc., 655 F.3d
1352, 1360 (Fed. Cir. 2011).
Instead, “[i]n determining whether obviousness is established by
combining the teachings of the prior art, the test is what the combined
teachings of the references would have suggested to those of ordinary skill
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Application 11/592,477

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in the art.” In re GPAC Inc., 57 F.3d 1573, 1581 (Fed. Cir. 1995) (internal
quotations omitted).
Here, claim 1 recites an apparatus, in the form of a mesh pouch, for
promoting blood clotting. Claim 1 requires blood clotting material to not
only be in a loose particulate form retained inside the pouch, but also “in
powder form incorporated into a material defining said mesh and captured
therein so that at least a portion of said powder is exposed on an outer
surface defined by said material” (App. Br. 11 (claim 1)).
As the Specification explains, in certain embodiments encompassed
by the claims, a blood clot-inducing “zeolite powder may be captured [in the
mesh forming material] so as to protrude above the surface of the matrix
material” (Spec. [0045]; see also Spec. [0046]; Figures 6-8). Thus, the
blood coagulating material must be present not only inside the cavity formed
by the claimed mesh pouch, but also incorporated into the material that
forms the mesh itself.
We acknowledge Hursey‟s disclosure of a wound dressing in the form
of “an envelope or sock formed of a blood permeable fabric within which [a]
blood coagulation accelerator is retained” (Hursey [0004]). We also
acknowledge Hursey‟s disclosure that a “blood coagulation accelerator may
be . . . used as a film, coating, or filler in the preparation of a wound cover or
dressing” (id. (emphasis added)).
We are not persuaded, however, that the Examiner has adequately
explained how or why the cited references would have prompted an ordinary
artisan to combine the pouch embodiments described in the references with
the embodiments in which a powdered blood coagulation accelerator is used
as a filler. Rather, on this record, the cited references at best suggest that
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blood permeable pouches containing blood clotting accelerators, and clot-
accelerator-impregnated fabrics, are alternative embodiments.
Thus, in Example 5, Hursey describes a zeolite-coated porous fabric
useful as a wound dressing (Hursey [0078]-[0080]). In Example 6, Hursey
separately describes preparing a wound dressing in the form of a permeable
packet or sachet that contains loose blood coagulating material (id. at
[0089]-[0094]).
We agree with the Examiner that Watt „783 and McCabe describe
enclosed blood permeable pouches that contain particulate wound-treating
material (see Watt „783 at p. 2, ll. 53-58; McCabe, abstract). The Examiner
has not, however, pointed to any teaching in any of the cited references, or
anything in the knowledge generally available to an ordinary artisan, that
would have suggested using a mesh material impregnated with a powdered
clotting substance to form a pouch that itself contained loose particulate
blood clotting material, as claim 1 requires.
The Examiner argues that the claimed combination of pouch-enclosed
and mesh-impregnating blood clotting materials is suggested by the prior art
since Hursey “teaches co-mingling of the first component and a second
component, both of which are blood coagulation accelerators which include
zeolite, other clay material and inorganic oxide materials such as calcium
oxide and teaches that powdered calcium oxide has good blood clotting
properties which can be used in his invention” (Ans. 17). Thus, the
Examiner reasons, since Hursey teaches impregnating fibrous material with
blood clotting substances, and since Watt and McCabe both teach flexible
porous bags that enclose blood-absorbing particulate materials
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choosing different blood coagulation accelerator or blood
absorbing materials either in powder form which is fine
particulate or in the form of larger particulates such as beads
and developing a device for their delivery which involves
incorporation of the powder form into the mesh which makes
up a pouch and enclosing the bigger particulate form within the
pouch for wound healing and hemostatic purposes would have
been obvious to an ordinarily skilled artisan[ ] form [sic] the
teachings of the prior art at the time of the invention.

(Id.)
We are not persuaded. We acknowledge Hursey‟s disclosure that its
blood clotting accelerators can have different physical forms, including clays
and molecular sieves, and that those different forms can be combined (see
Hursey [0005]). In our view, however, that fact does not adequately explain
why an ordinary artisan would have combined the prior art pouch
embodiments with embodiments where a powdered clotting substance was
incorporated into a porous material.
We are also unconvinced that, without more, Hursey‟s disclosure of
using blood clotting accelerators as fillers in wound dressing materials, as an
alternative to pouch-enclosed clotting agents, suggests the claimed
combination of pouch-enclosed and mesh-impregnating blood clotting
materials with sufficient specificity. See Unigene v. Apotex, 655 F.3d at
1360; accord, Transocean Offshore Deepwater Drilling, Inc. v. Maersk
Contractors USA, Inc., 617 F.3d 1296, 1303 (Fed. Cir. 2010) (“[I]t is not
enough to simply show that the references disclose the claim limitations; in
addition, „it can be important to identify a reason that would have prompted
a person of ordinary skill in the art to combine the elements as the new
invention does.‟”) (quoting KSR, 550 U.S. at 401 (emphasis added)).
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Accordingly, we agree with Appellants that the Examiner did not
make out a prima facie case of obviousness as to claim 1. We therefore
reverse the Examiner‟s rejection of that claim, and its dependents, over
Hursey, Watt „783, and McCabe.
The Examiner also rejected claims 29 and 35 as obvious over Hursey,
Watt „783, McCabe, and Wu or Watt „842 (Non-Final Rejection 9-11
(entered June 18, 2009)). The Examiner also rejected claims 36 and 37 as
obvious over Hursey, Watt „783, McCabe, Jensen, and Bruder (Non-Final
Rejection 11-13 (entered June 18, 2009)).
Each of claims 29 and 35-37 depend directly or ultimately from claim
1, and the Examiner applied the Wu, Watt „842, Jensen, and Bruder
references as evidence that additional limitations recited in those dependent
claims would have been further obvious in view of Hursey, Watt „783, and
McCabe, discussed above (see Non-Final Rejection 9-13 (entered June 18,
2009)). However, as the Examiner points to no teaching in any of Wu, Watt
„842, Jensen, and Bruder that remedies the deficiencies as to claim 1
discussed above regarding Hursey, Watt „783, and McCabe, we reverse
these rejections as well.

SUMMARY
We reverse the Examiner‟s obviousness rejection of claims 1, 2, 21-
28, 30-34, and 38 over Hursey, Watt „783, and McCabe.
We also reverse the Examiner‟s obviousness rejection of claims 29
and 35 over Hursey, Watt „783, McCabe, and Wu or Watt „842.
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Application 11/592,477

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We also reverse the Examiner‟s obviousness rejection of claims 36
and 37 over Hursey, Watt „783, McCabe, Jensen, and Bruder.
REVERSED

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