Ex Parte Jonn et al

Patent Trial and Appeal Board

Sep 14, 2016

12163021 (P.T.A.B. Sep. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/163,021 06/27/2008
27777 7590 09/16/2016
JOSEPH F SHIRTZ
JOHNSON & JOHNSON
ONE JOHNSON & JOHNSON PLAZA
NEW BRUNSWICK, NJ 08933-7003
FIRST NAMED INVENTOR
Jerry Jonn
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.
CMC 5044 USDIVl 7931
EXAMINER
HOUSTON, ELIZABETH
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
09/16/2016 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):
jnjuspatent@corus.jnj.com
lhowd@its.jnj.com
pairjnj@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JERRY JONN, JULIAN QUINTERO,
GLENN HOSKIN, and SUSAN L. ROWETON
Appeal2014-008941
Application 12/163,021
Technology Center 3700
Before: CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
ANNETTE R. REIMERS, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
30, 31, 33, 36, 37, and 39--44. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
1 This Appeal is related to Appeal Number 2014-009098.
Appeal2014-008941
Application 12/163,021
CLAIMED SUBJECT MATTER
The claims are directed to a wound closure device and method. Claim
30, reproduced below, is illustrative of the claimed subject matter:
30. A method of bonding tissue, comprising:
placing a flexible material over a tissue substrate, wherein
a polymerization initiator or rate modifier is immobilized in or
on said flexible material;
applying a polymerizable adhesive composition over and
fully covering the flexible material; and
allowing the polymerizable adhesive composition to
permeate into and under the flexible material and polymerize to
form a composite structure bonded to said tissue substrate.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Badej o et al.
Narang
Brothers
Lutri et al.
US 2002/0018689 A 1
US 6,455,064 B 1
US 6,479,725 Bl
US 2004/0106888 Al
REJECTIONS
Feb. 14,2002
Sept. 24, 2002
Nov. 12, 2002
June 3, 2004
Claims 30, 31, 33, 36 and 37 are rejected under 35 U.S.C. § 102(b) as
being anticipated by Badejo.
Claims 30, 31, 33, 36, 37, and 40-44 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Lutri and Narang.
Claim 39 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Badejo and Brothers, or alternatively, Lutri, Narang, and Brothers.
2
Appeal2014-008941
Application 12/163,021
OPINION
Anticipation
Appellants argue the anticipation rejection of claims 30, 31, 33, 36,
and 37 as a group (App. Br. 5---6), for which claim 30 is representative. See
37 C.F.R. § 41.37(c)(iv) (2015).
Appellants argue that Badejo fails to disclose the claimed "composite
structure." App. Br. 5---6. According to Appellants, "the flexible material of
the present invention forms a composite structure with the polymerized
adhesive composition and is 'bonded to the tissue substrate'; clearly the
applicator 500 of Badejo does not form a composite structure that remains
bonded to tissue." Id. at 6. Appellants further allege:
a careful review of the Specification reveals that the "composite
structure" is defined to include the flexible material. (See, e.g.,
Page 7, Para. [0026] of the Specification: " ... the combination
of materials forming the composite structure (i.e., the flexible
material and the polymerizable adhesive composition) .... ").
Id.; see also Reply Br. 2 (citing Spec. il 53 ("wherein the 'composite
structure' is described as resulting from the addition of a polymeric adhesive
composition to the flexible material")).
The Examiner responds:
Nothing in the claims requires the flexible material to be a
component of the "composite structure." A composite is merely
a material formed of more than one element. Badejo discloses
the adhesive comprises a "composition" and "may include one
or more polymerizable monomers" and "at least one plasticizing
Agent" (Para. 64, 66), such that when the adhesive solution
polymerizes on the wound, it forms a composite structure
(formed of multiple different elements) bonded to the tissue
(Para. 7).
Final Act. 3; see also Ans. 3
3
Appeal2014-008941
Application 12/163,021
Appellants point to Para. 26 and 53 of the Specification as support for
their contention that the "composite structure" of claim 30 is defined to
include the flexible material. However, those passages disclose
representative, but not !imitative, embodiments of a composite structure. If
Appellants intended to define the term "composite" to require a specific
material component, as opposed to just more than one component, it is
Appellants' burden to clearly define the term to have that particular
meaning. See MPEP § 2111.01. Appellants chose to describe a feature in the
claims in a manner more broadly than was used to describe the preferred
embodiment in the Specification. We must decline to import limitations of
the preferred embodiment into the claims. See e.g., SuperGuide Corp. v.
DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004).
Badejo discloses a composite structure that is formed by expressing a
polymerizable adhesive composition through a porous and flexible
applicator tip on or in which a polymerization initiator or rate modifier is
immobilized and allowing the resulting composition to polymerize on tissue
to be bonded. See Badejo i-fi-131, 38, 80, and 82. We, therefore, agree with
the Examiner that the resulting polymerized composition is reasonably
regarded as a composite structure. Appellants' arguments do not apprise us
of error in the Examiner's position.
For the foregoing reasons, we sustain the Examiner's rejection of
claims 30, 31, 33, 36, and 37 as anticipated by Badejo.
4
Appeal2014-008941
Application 12/163,021
Obviousness
Claims 30, 31, 33, 36, 37, and 40--44
The Examiner finds that Lutri discloses all of the elements of claim 30
except for a polymerization rate modifier. See Final Act. 5---6. The
Examiner further finds that "N arang teaches a similar method of closing a
wound with a polymerizing adhesive (Col. 5, 11. 8-16), wherein the adhesive
is applied to a vehicle comprising a polymerization rate modifier (Col. 8, 11.
10-14) .... " Id. at 6. The Examiner concludes: "It would have been
obvious to one of ordinary skill in the art at the time of the invention to
modify the flexible material of Lutri with a polymerization rate modifier as
taught by Narang. The motivation is to "enhance polymerization of the
adhesive" (Narang Abstract)." Id.; see also Ans. 4--5.
As a reason for combining the teachings of Lutri and Narang, the
Examiner merely identifies in Narang a wound closure method that employs
a polymerization rate modifier with a polymerizable adhesive whereby the
polymerization rate modifier enhances polymerization of the adhesive.
While the Examiner notes the advantage provided by a polymerization
initiator or rate modifier, the Examiner does not articulate any reason or
motivation to immobilize a polymerization rate modifier in or on the flexible
material of Lutri. Lacking the requisite "articulated reasoning with some
rational underpinnings" (see In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006),
cited with approval in KSR Int 'l. v. Teleflex, 550 U.S. 398, 418 (2007)), we
cannot sustain the Examiner's rejection of independent claim 3 0 or
dependent claims 31, 33, 36, 37, and 40-44 as unpatentable over Lutri and
Narang.
5
Appeal2014-008941
Application 12/163,021
Claim 39
Claim 39 depends from claim 30 and recites the step of "applying a
polymerizable adhesive composition to said tissue substrate prior to placing
said flexible material over said tissue substrate." App. Br. 11, Claims
App'x.
The Examiner relies on Brothers as teaching "a similar method of
closing a wound, by applying layers of polyermizable adhesive such that a
polymerizable adhesive composition would be applied prior to placing said
flexible material over said tissue substrate (Col. 2, 11. 31-51)." Final Act. 7.
Appellants acknowledge that Brothers teaches a wound dressing
method involving "applying multiple, successive layers of 2-octyl
cyanoacrylate adhesive on the wound or incision ([Brothers], Abstract)."
App. Br. 9. However, Appellants also correctly point out that "[t]here is no
disclosure or suggestion in Brothers about applying any type of flexible
material as claimed by Appellant." Id. That is, Brothers is silent regarding
placement of any flexible material atop the multiple layers of 2-octyl
cyanoacrylate adhesive.
Accordingly, we do not sustain the Examiner's rejection of claim 39
as unpatentable over Badejo and Brothers. In addition, Brothers fails to cure
the deficiencies of Lutri and Narang under 35 U.S.C. § 103(a) in relation to
independent claim 30. As such, we cannot sustain the rejection of claim 39
as unpatentable over Lutri, Narang, and Brothers.
DECISION
The Examiner's rejection of claims 30, 31, 33, 36, and 37 in reliance
on Badejo is affirmed.
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Appeal2014-008941
Application 12/163,021
The Examiner's rejection of claims 30, 31, 33, 36, 37, and 40-44 in
reliance on Lutri and Narang is reversed.
The Examiner's rejection of claim 39 in reliance on Badejo and
Brothers or Lutri, Narang, and Brothers is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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