Ex Parte Jonn et al

Patent Trial and Appeal Board

Sep 14, 2016

12207984 (P.T.A.B. Sep. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/207,984 09/10/2008
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.
CMC5042USCNT1 1737
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, GLENN HOSKIN,
and JULIAN QUINTERO
Appeal2014-009098
Application 12/207,984
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
56, 58-71, 73-75, and 77. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 This Appeal is related to Appeal Number 2014-008941.
Appeal2014-009098
Application 12/207,984
CLAIMED SUBJECT MATTER
The claims are directed to a wound closure device and method. Claim
56, reproduced below, is illustrative of the claimed subject matter:
56. A method of bonding tissue, comprising:
placing a single strip of flexible material over a section of
tissue, wherein said flexible material comprises a polymerization
initiator or rate modifier disposed in or on said flexible material,
and an adhesive substance disposed on at least a portion of a
bottom side of said flexible material;
applying a polymerizable adhesive composition over and
fully covering a top surface of the single strip of 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.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Edenbaum
Narang
Lutri
US 4,733,659 Mar. 29, 1988
US 6,455,064 B 1 Sept. 24, 2002
US 2004/0106888 Al June 3, 2004
REJECTIONS
Claims 56, 58-62, 64---69, 71, 73-75, and 77 are rejected under 35
U.S.C. § 103(a) as being unpatenable over Lutri and Narang.
Claim 63 and 70 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lutri, Narang, and Edenbaum.
2
Appeal2014-009098
Application 12/207,984
OPINION
Regarding the proposed combination of Lutri with Narang, 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 and the polymerizable
adhesive as taught by Narang. The motivation is to "provide a
desired medical or therapeutic activity as well as enhancing
polymerization of the adhesive" (Narang Abstract).
Final Act. 6 (emphasis omitted); see also Ans. 2-3, 4.
Appellants argue that "the Examiner has not provided the motivation
for one of skill in the art to apply a polymerization initiator or rate modifier
first to a 'flexible material ... wherein a polymerization initiator or rate
modifier is disposed in or on said flexible material.'" App. Br. 7.
We agree with Appellants. As a reason for combing 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. Although the Examiner notes the advantage provided by a
polymerization initiator or rate modifier, the Examiner does not articulate
any reason or motivation to dispose 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, 441 F.3d 977, 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 claims
56 and 71 or dependent claims 58---62, 64---69, 73-75, and 77 as unpatentable
over Lutri and Narang.
3
Appeal2014-009098
Application 12/207,984
Further, the Examiner does not rely on Edenbaum in any way that
would cure the deficiency in the Examiner's rejection based on Lutri and
Narang. As such, we do not sustain the rejection of claims 63 and 70 as
unpatentable over Lutri, Narang, and Edenbaum.
DECISION
The Examiner's rejections of claims 56, 58-71, 73-75, and 77 are
reversed.
REVERSED
4