Ex Parte Kim et al

Patent Trial and Appeal Board

Aug 30, 2016

11628503 (P.T.A.B. Aug. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111628,503 12/15/2006
68103 7590 09/01/2016
Jefferson IP Law, LLP
1130 Connecticut Ave., NW, Suite 420
Washington, DC 20036
FIRST NAMED INVENTOR
Dae Joong Kim
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.
0107-0037 5336
EXAMINER
HANRAHAN, BENEDICT L
ART UNIT PAPER NUMBER
3761
NOTIFICATION DATE DELIVERY MODE
09/01/2016 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):
usdocketing@jeffersonip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAE JOONG KIM, CHUL SOO GIM,
JAI YOUNG KO, HONG SANG PARK, TAE GUN KWON,
BYUNG HA LEE, WOO KYOUNG LEE, and SANG HO JEONG
Appeal2014-008151
Application 11/628,503
Technology Center 3700
Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
TIMOTHY G. MAJORS, Administrative Patent Judges.
PERCURIAM
DECISION ON APPEAL 1
This Appeal under 35 U.S.C. § 134(a) involves claims 1--4, 7, 8, 10,
11, 17, and 18 (Br. 2). Examiner entered rejections under 35 U.S.C. § 102(b)
and 35 U.S.C. §103(a). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify "[t]he real party in interest [as] Access Plus Co., Ltd."
(Br. 2.)
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Application 11/628,503
STATEMENT OF THE CASE
Appellants' "invention relates, in general, to a tube for use in
connecting an artery to a vein upon hemodialysis and, more particularly, to a
hemodialysis arteriovenous graft which provides stable communication
between the artery and the vein of the patient under hemodialysis and can
greatly reduce stenosis at arteriovenous connections" (Spec. 1 :8-12).
Independent claim 1 is representative and reproduced in the Claims
Appendix of Appellants' Brief.
Claims 1 and 10 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Ragheb. 2
Claims 2--4, 11, 17, and 18 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Ragheb and Iyer. 3
Claim 7 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Ragheb and Wright. 4
Claim 8 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Ragheb.
Anticipation:
ISSUE
Does the preponderance of evidence relied upon by Examiner support
Examiner's finding that Ragheb teaches Appellants' claimed invention?
2 Ragheb et al., US 5,824,049, issued Oct. 20, 1998.
3 Iyer et al., US 6,726,923 B2, issued Apr. 27, 2004.
4 Wright et al., US 2001/0027340 Al, published Oct. 4, 2001.
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Application 11/628,503
FACTUAL FINDINGS (FF)
FF 1. Ragheb 's Figure 2 is reproduced below:
Fig.2
Figure 2 shows
[a] device 10 [that] can, for example, comprise a second
layer 22 of a bioactive material posited over the structure 12. The
bioactive material of the second layer 22 can be, but need not
necessarily be, different from the bioactive material of the first
bioactive material layer 18, only that they not be [de ]posited on
the same surface of the device 10 without the intermediate porous
layer 24.
(Ragheb 13:8-13; see also Final Act. 2.)
FF 2. Ragheb suggests that "the structure 12 can be configured as at least
one of, or any portion of, a catheter, a wire guide, a cannula, a stent, a
vascular or other graft, ... " (Ragheb 6:53-55; see also Final Act. 2-3).
FF 3. Ragheb suggests that "[a] vast range of drugs, medicaments and
materials may be employed as the bioactive material in the layer 18"
(Ragheb 8:3--4; see also Final Act. 2).
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Application 11/628,503
FF 4. Ragheb suggests that "[t]he bioactive material layers 18 and/or 22 are
applied to the device 10 independent of the application of the porous
polymer layers 20 and/or 24" (Ragheb 13:57-59; see also Final Act. 3).
ANALYSIS
Claim 1:
Appellants' independent claim 1 requires, inter alia, "a tubular
structure comprising an inner wall, an outer wall ... ,"and "wherein the
inner medicament layer is coated to the inner wall; wherein the outer
medicament layer is coated to the outer wall" (see Appellants' claim 1).
We adopt Examiner's findings concerning the scope and content of
the prior art (Final Act. 2-5; Ans. 2--4; FF 1--4), and agree that claims 1 and
10 are anticipated by Ragheb. We address Appellants' arguments below.
We recognize, but are not persuaded by Appellants' contention that
Ragheb' s layer 24 is not disclosed to be a tubular structure as
claimed. Rather, and in contradistinction, Rabheb's layer 24 is
clearly disclosed as an "intermediate porous layer."
. . . Notably, the claimed invention is drawn to a hemodialysis
tube, which tube has an inner wall and an outer wall and wherein
the tubular structure is configured to "conduct a flow of blood".
(Br. 4). As Examiner explains,
The hemodialysis tube has been identified as the overall device
structure 12. The polymer layer 24 forms the same structure as
the hemodialysis tube 12 of Ragheb. The hemodialysis tube, as
identified by the Examiner as structure 12, can function as a
hemodialysis tube that connects blood vessels and facilitates
flow of blood therein. Ragheb identifies that the structure may
be a vascular graft (Col[.] 6, lines 53-55), which are used for
hemodialysis access and to connect blood vessels. . . . All tubes
have an inner and outer wall. . . . A tubular structure does not
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Application 11/628,503
have to be impermeable .... The claims do not recite any matter
regarding impermeability.
(Ans. 2-3; FF 1-2.) "[L]imitations are not to be read into the claims from
the specification." In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
See also In re Self, 671F.2d1344, 1348(CCPA1982) ("[A]ppellant's
arguments fail from the outset because ... they are not based on limitations
appearing in the claims."). Therefore, we are not persuaded by Appellants'
intimation to the contrary.
We recognize, but are not persuaded by, Appellants' contention that
" [ w ]hat is very clear from Ragheb 's disclosure is that layer 24 cannot
function as a tube because it very clearly allows material to flow through it.
Nowhere does Ragheb disclose that element 24 is able to 'conduct a flow of
blood therebetween"' (Br. 4). As Examiner explains, "[t]he tube is made
porous in order to allow the blood to activate the inner and outer
medicament. The flow of the blood is in and out the ends. The tube is
permeable for the activation of the medicament. . . . Furthermore, the claim
recites 'tubular.' It does not recite [']tube[']" (Ans. 3; FF 2 ("a vascular or
other graft"). We find Appellants' arguments, lacking supporting evidence,
insufficient to rebut the express teaching of Ragheb. "Attorney's argument
in a brief cannot take the place of evidence." In re Pearson, 494 F.2d 1399,
1405 (CCPA 1974).
Appellants contend that
Even assuming, arguendo, that the base material 14 of
Ragheb corresponds to the claimed tubular structure, Appellants
assert that the base material 14 does not teach a medicament
coated on the inner wall. Moreover, any medicament coating of
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Application 11/628,503
the base material 14 is deposited only on the outer wall and not
on both the inner wall and the outer wall of both the inner layer
and the outer medicament layer of the base material 14 of
Ragheb. . . . In other words, Appellants assert that it is not
possible to attach the layer of bioactive material 18 to the inner
surface of the additional porous layer 24 which has no form
before the vapor deposition.
(Br. 4--5.) We are not persuaded. We agree with Examiner that "Appellant
is arguing the method of production. Appellant is not arguing the
differences of the end product. No structural difference for the end product
has been argued by the Appellant" (Ans. 3--4; FF 1-3; cf Br. 4). See In re
Thorpe 777 F.2d 695, 697 (Fed. Cir. 1985), citing In re Marosi, 710 F.2d
799, 803 (Fed. Cir. 1983), (If the product in a product-by-process claim is
the same as or obvious from a product of the prior art, the claim is
unpatentable even though the prior product was made by a different
process).
Claim 10:
We recognize, but are not persuaded by, Appellants' contention that
"Ragheb does not disclose that the medicament is extruded together with the
tubular structure, as claimed" (Br. 5 ). As Examiner explains, "[ c ]laim 10
recites the medicament is extruded together with a structural material [or]
applied onto a surface of the tubular structure" (Ans. 4; FF 4).
Obviousness:
Regarding the rejections of claims 2--4, 7, 8, 11, 17, and 18,
Appellants contend that "the rejections of dependent claims 2-4, 7, 8, 11, 17,
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and 18 should be withdrawn for at least the reasons given above with respect
to claim 1" (Br. 6). Having found no deficiency in Ragheb as it relates to
the rejection of Appellants' claim 1, we are not persuaded by Appellants'
contention to the contrary.
CONCLUSION OF LAW
The rejection of claims 1and10 under 35 U.S.C. § 102(b) as being
anticipated by Ragheb is affirmed.
The rejection of claims 2--4, 11, 17, and 18 under 35 U.S.C. § 103(a)
as unpatentable over the combination of Ragheb and Iyer is affirmed.
The rejection of claim 7 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Ragheb and Wright is affirmed.
The rejection of claim 8 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Ragheb is affirmed.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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