Ex Parte Oray et al

Patent Trial and Appeal Board

Oct 31, 2016

13366998 (P.T.A.B. Oct. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/366,998 02/06/2012
96270 7590 11/02/2016
Baxter Healthcare Corporation (BFF LLP)
Bozicevic, Field & Francis
1900 University Avenue, Suite 200
SUITE 200
East Palo Alto, CA 94303
FIRST NAMED INVENTOR
B. Nicholas Oray
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.
BXSY-035CON2 4285
EXAMINER
HOUSTON, ELIZABETH
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
11/02/2016 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):
docket@bozpat.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte B. NICHOLAS ORA Y and DANIELL. MOORADIAN
Appeal2014-002996
Application 13/366,998
Technology Center 3700
Before CYNTHIA L. MURPHY, BRUCE T. WIEDER, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
MURPHY, Administrative Patent Judge.
DECISION ON APPEAL
The Appellants 1 appeal under 35 U.S.C. § 134 from the Examiner's
rejection of claims 1-3 and 5-31. We have jurisdiction over this appeal
under 35 U.S.C. § 6(b ).
We AFFIRM.
1 The Appellants identify the real party in interest as "Baxter International
Inc." (Appeal Br. 3.)
Appeal2014-002996
Application 13/366,998
STATEMENT OF THE CASE
The Appellants' invention "relates to surgical fastener, and to buttress
materials adapted to be used in combination with such surgical fasteners."
(Spec. 1, lines 7-8.)
Illustrative Claim
1. A surgical fastener buttress material having a first surface and
a second surface, wherein the surgical fastener buttress material
is in dry form and only one of the first surface and the second
surface is an adhesive surface, wherein the surgical fastener
buttress material is packaged and provided in a manner that
permits the adhesive surface to be aligned with and releasably
cover a working surface of a surgical fastener, and wherein the
adhesive surface is formulated to have a predetermined adhesive
strength when retained upon the working surface of the surgical
fastener, the adhesive strength being reduced when the adhesive
surface is positioned and hydrated in vivo.
Lemelson
Francis
Hamilton
Kochevar
Naimark
Mooradian
References
us 4,900,303
us 5,752,965
US 6,325,810 Bl
US 2002/0022606 Al
US 2003/000073979 Al
US 2003/0183671 Al
Rejections
Feb. 13, 1990
May 19, 1998
Dec. 4, 2001
Feb.21,2002
Apr. 17, 2003
Oct. 2, 2003
The Examiner rejects claims 1-3, 5, 6, 8-10, 12, and 14--31 under
35 U.S.C. § 103(a) as unpatentable over Francis, Mooradian, and Naimark.
(Final Action 3.)
The Examiner rejects claim 7 under 35 U.S.C. § 103(a) as
unpatentable over Francis, Mooradian, Naimark, and Lemelson. (Id. at 6.)
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Appeal2014-002996
Application 13/366,998
The Examiner rejects claim 11under35 U.S.C. § 103(a) as
unpatentable over Francis, Mooradian, Naimark, and Hamilton. (Id.)
The Examiner rejects claim 13 under 35 U.S.C. § 103(a) as
unpatentable over Francis, Mooradian, Naimark, and Kochevar. (Id. at 7 .)
ANALYSIS
Independent Claim 1
Independent claim 1 recites "[a] surgical fastener buttress material"
that has "an adhesive surface" and that "is in dry form." (Appeal Br.,
Claims App.) The Examiner determines that such a surgical fastener
buttress material would have been obvious over the combined teachings of
Francis, Mooradian, and Naimark. (See Final Action 3--4.)
The Appellants argue that the Examiner's rejection is deficient
because Francis "teaches away" from the claimed buttress material. (See
Appeal Br. 5-7.) This argument relies upon the following paragraph in
Francis:
In the preferred embodiment of the present invention, the
adhesive 16 is a tacky liquid substance which may include, but
is not necessarily limited to, hydroxypropylmethyl cellulose,
propylene glycol, and water. Due to the liquid nature, the
adhesive 16 is to be applied to the first and second articles of
p1edget material 12, 14 while the first and second articles of
pledget material 12, 14 are retained within the receiving area 40
irmnediately prior to the particular medical procedure. When
used in conjunction with treated bovine pericardiurn, the use of
such a tacky liquid substance serves several important
functions. First, the \vater \Vithin the adhesive 16 is drawn into
the treated bovine pericardium, thereby increasing the pliability
and flexibility of the first and second articles of pledget material
12, 14. This allows the first and second articles ofpledget
rnaterial 12, 14 to more readily conform to the shape and
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Appeal2014-002996
Application 13/366,998
contours of the apposed \vorking surfaces when the surgical
fastener applying device is clamped down onto the first and
second articles of pledget material 12, 14. Another benefit to
using a liquid-based adhesive is that, by softening the first and
second articles of pledget material 12, 14, the adhesive 16
reduces the likelihood that the first and second articles of
p1edget material 12, 14 will experience cracking when surgical
fasteners are forced to penetrate therethrough.
Francis (col. 11, lines 21--44.) According to the Appellants, this paragraph
indicates that "dried buttresses will crack," and, "[b ]ecause cracking is a
serious problem in the bioimplant arts, it follows that Francis's statement
would lead one of ordinary skill in the art away from the claimed invention."
(Appeal Br. 5, 7.)
We are not persuaded by the Appellants' arguments because they do
not challenge the Examiner's finding that "the relied upon text actually
implies that the buttress material is in a 'dry fonn' prior to the liquid-based
discloses that "the water within the adhesive 16 is drawn into the [pledget
material].'' (Francis, col. 11, lines 31----32.) Such "drawing in'' of water
\vould seemingly be best accomplished by the pledget material being
provided in a dry, rather than hydrated, form. As such, we agree \vith the
Examiner's implication that Francis does not teach away from providing the
pledget material in a dry fonn. (See Final Action 2.)
Additionally, the Appellants' arguments do not take into consideration
the entirety ofFrancis's teachings and particularly its disclosure of alternate
adhesive arrangements:
notwithstanding the fact that the preferred embodiment
described above calls for a liquid-based adhesive to be applied
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Application 13/366,998
immediately prior to using the retainer assembly, it is to be
readily understood that a wide variety of different adhesives
may be employed including but not limited to contact
adhesives, such as polyacrylamides and natural gum rubbers
applied during the manufacturing process, and hydrogels and
other similar compounds which may be applied at the time of
use.
(Francis, col. 16, lines 49----57.) The Appe11ants do not adequately address
why, if Francis is truly criticizing, discrediting, or otherwise discouraging
the investigation into buttress material without its preferred liquid-based
adhesive, other adhesives (e.g. 5 polyacrylamides and natural gum rubbers
applied during the manufacturing process) are specifically listed as suitable
candidates.
The Appellants do not otherwise argue that the Examiner en-s in the
rejection of independent claim l under 35 U.S.C. § 103(a) as unpatentable
over Francis, Mooradian, and Naimark, and thus we sustain this rejection.
Claims 2, 3, 5, 6, 8-10, 12, and 14-31
The Appellants do not argue these claims separately from independent
claim 1 (see Appeal Br. 3-7) and so they fall therewith. Thus, we sustain
the Examiner's rejection of claims 2, 3, 5, 6, 8-10, 12, and 14-31 under
35 U.S.C. § 103(a) as unpatentable over Francis, Mooradian, and Naimark.
C'laims 7, 11, and 13
The Appe11ants argue only that the additional prior art references
relied upon to reject these claims do not remedy the above-discussed alleged
deficiency in the Examiner's rejection of independent claim 1. (See Appeal
Br. 7----8.) As the Appellants do not establish that the Examiner's rejection of
independent claim 1 is deficient, we are not persuaded by these arguments.
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Application 13/366,998
Thus, we sustain the Examiner's rejection of claim 7 under 35 U.S.C.
§ 103(a) as unpatentable over Francis, Mooradian, Naimark, and Lemelson;
we sustain the Examiner's rejection of claim 11under35 U.S.C. § 103(a) as
unpatentable over Francis, Mooradian, Naimark, and Hamilton; and we
sustain the Examiner's rejection of claim 13 under 35 U.S.C. § 103(a) as
unpatentable over Francis, Mooradian, Naimark, and Kochevar.
DECISION
We AFFIRM the Examiner's rejections of claims 1-3 and 5-31.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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