Ex Parte Lambert et alDownload PDFPatent Trial and Appeal BoardFeb 2, 201713858330 (P.T.A.B. Feb. 2, 2017) Copy Citation 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. 13/858,330 04/08/2013 Cary Jake Lambert Jr. 081164.0106 8017 31625 7590 02/06/2017 BAKER BOTTS L.L.P. PATENT DEPARTMENT 98 SAN JACINTO BLVD., SUITE 1500 AUSTIN, TX 78701-4039 EXAMINER CHICKOS, SARAH J ART UNIT PAPER NUMBER 1619 NOTIFICATION DATE DELIVERY MODE 02/06/2017 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): tracy .perez @ bakerbotts. com juli.luong@BakerBotts.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CARY JAKE LAMBERT JR., and THOMAS SLAUGHTER Appeal 2016-000783 Application 13/858,3301 Technology Center 1600 Before DEMETRA J. MILLS, JOHN G. NEW, and DAVID COTTA, Administrative Patent Judges. COTTA, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims to a method of attaching a substrate to a tissue. The Examiner rejected the claims on appeal as obvious under 35 U.S.C. § 103(a). We affirm. 1 According to Appellants, the real party in interest is Innovations in Wound Care, LLC. App. Br. 3. Appeal 2016-000783 Application 13/858,330 STATEMENT OF THE CASE Claims 1—11 are on appeal. Claim 1 is illustrative and reads as follows: 1. A method of attaching a substrate to a tissue comprising: applying a substrate to a tissue; and applying an aqueous solution comprising about 1 % to about 50% weight/volume poloxamer having the general formula H0(C2H40)a(C3H60)b(C2H40)aH, wherein a ranges from 12-101 and b ranges from 20-56, to the tissue in an amount sufficient for the poloxamer to hold the substrate to the tissue. App. Br. 16. The claims stand rejected as follows: Claims 1—3 under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Katz as evidenced by the Specification. Claims 4—10 under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over the combination of Katz,2 and Jonn3 as evidenced by the Specification. Claim 11 under pre-AIA 35 U.S.C. § 103(a) as unpatentable over the combination of Katz, Jonn, and De Waele4 as evidenced by the Specification. ANALYSIS Appellants’ arguments on appeal are directed to claims 1 and 4. Appellants do not provide separate argument for claims 2, 3, 5—10, and 11. 2 Katz et al., WO 2008/154368 A2, published Dec. 18, 2008 (“Katz”). 3 Jonn et al., US Patent Publication No. 2008/0255610 Al, published Oct. 16, 2008 (“Jonn”). 4 De Waele, US Patent Publication No. 2005/0079147 Al, published April 14, 2005 (“De Waele”). 2 Appeal 2016-000783 Application 13/858,330 See, App. Br. 7. Because Appellants’ arguments with respect to claims 1 and 4 are substantially the same, we will address them together. The Examiner found that Katz disclosed a method for treating wound sites, injured skin, diseased skin, or other soft tissue using a substrate and a topical poloxamer formulation. Final Act. 4. The Examiner further found that Katz disclosed the use of poloxamer 407 in concentrations ranging from 1 to about 65%. Id. at 5. With respect to the claim limitation requiring that the poloxamer be applied “in an amount sufficient for the poloxamer to hold the substrate to the tissue,” the Examiner concluded: Both the Katz composition and the claimed composition have an aqueous solution of poloxamer having the formula of claim 1 that is impregnated into a collagen substrate. Both the Katz composition and the claimed composition have an amount of poloxamer that falls within 1 and 50% (5%). These are the same substances that have the same structure. Therefore, the composition of Katz would necessarily possess the ability to be adherent. Id. Appellants argue that the Examiner’s rejection should be reversed because Katz does not disclose applying poloxamer in an amount sufficient for the poloxamer to hold the substrate to the tissue or wound. App. Br. 7— 11. Appellants contend that Katz “does not expressly disclose applying a poloxamer to hold a substrate to a tissue or wound,” {Id. at 8), and that “in the few embodiments in which adherence is expressly sought, it is provided by other means.” Id. at 10. Appellants argue that Katz does not inherently disclose this requirement because, “[ejven if the poloxamer composition is inherently adherent, it was not known to be sufficiently adherent to hold a substrate to a tissue or wound.” Id. at 13—14. We are not persuaded. 3 Appeal 2016-000783 Application 13/858,330 Appellants’ arguments presuppose that the claims require the poloxamer to actually hold the substrate in place. The claims on appeal, however, only require “applying” the poloxamer to a tissue (claim 1) or wound (claim 4). Claim 1 thus requires “applying an aqueous solution comprising about 1% to about 50% weight/volume poloxamer ... to the tissue in an amount sufficient for the poloxamer to hold the substrate to the tissue.” App. Br. 16 (emphasis added). And claim 4 requires, “applying an original aqueous solution comprising about 1% to about 50% weight/volume poloxamer ... to the wound in an amount sufficient for the poloxamer to hold the substrate to the wound.” Id. at 17 (emphasis added). Accordingly, these limitations are met simply by applying poloxamer. So long as poloxamer applied is “in an amount sufficient for the poloxamer to hold the substrate to the tissue [or wound],” it does not matter whether the poloxamer actually holds the substrate in place. Katz discloses the application of a composition comprising poloxamer 407 (Katz p. 5,11. 16—17), which is the same as a poloxamer identified in the Specification as “preferred.” Specification 9. Katz also discloses that the amount of poloxamer comprises from 1% to 65% of the composition (Katz p. 5,11. 10—17), an amount which overlaps with the 1% to 50% range disclosed in the Specification. See Specification 10. Finally, Katz discloses the use of Dermagraft® (Katz p. 52,1. 24 — p. 53,1. 2), which the Specification teaches is a “skin-like material suitable for use as a substrate.” Specification 19. While Katz does not discuss the adhesive capabilities of poloxamer, Katz’s disclosure of a suitable substrate, the preferred poloxamer, and overlapping amounts of poloxamer, provides a reasonable basis to conclude that the poloxamer disclosed in Katz is inherently capable 4 Appeal 2016-000783 Application 13/858,330 of holding the substrate to the tissue. In re Papesch, 315 F.2d 381, 391 (CCPA 1963) (a chemical compound and its properties are inseparable); In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) (“when the PTO shows sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.”). Appellants have not directed to us persuasive evidence to establish that the poloxamer applied in Katz would not be present in amounts sufficient to hold the substrate in place. Accordingly, we find that Katz inherently meets the limitation “applying an aqueous solution comprising about 1% to about 50% weight/volume poloxamer ... to the wound in an amount sufficient for the poloxamer to hold the substrate to the wound.” We are not persuaded by Appellants’ argument that the substrate in Katz is adhered by other means because, as discussed, the claims do not require poloxamer to hold the substrate in place and because the claims use the transitional phrase “comprising” which indicates that the claim allows for additional steps — including the use of other means to hold the substrate in place. See, Invitrogen Corp. v. Biocrest Manufacturing, L.P., 327 F.3d 1364, 1368 (Fed. Cir. 2003). Accordingly we affirm the Examiner’s rejection of claims 1 and 4. Because they were not argued separately, claims 2—3 and 5—11 fall with claims 1 and 4. SUMMARY For these reasons and those set forth in the Examiner's Answer, and the Final Office Action, the Examiner's final decision to reject claims 1—11 is affirmed. 5 Appeal 2016-000783 Application 13/858,330 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). AFFIRMED 6 Copy with citationCopy as parenthetical citation