Ex Parte Porter

Board of Patent Appeals and Interferences

Sep 11, 2007

10121634 (B.P.A.I. Sep. 11, 2007)

The opinion in support of the decision being entered today
is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte STEPHEN C. PORTER
__________

Appeal 2006-3083
Application 10/121,634
Technology Center 1600
__________

Decided: September 11, 2007
__________

Before ERIC GRIMES, NANCY J. LINCK, and RICHARD M.
LEBOVITZ, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to an
occlusive composition. The Examiner has rejected the claims as anticipated
by or obvious in view of the prior art. We have jurisdiction under 35 U.S.C.
§ 6(b). We reverse.
BACKGROUND
An occlusive composition “can be used to create a solid mass in a
bodily cavity within a living organism,” in order to “block fallopian tubes
Appeal 2006-3083
Application 10/121,634

for sterilization, to control bleeding from a wound or during surgery, or to
cut off blood flow to a tumor” (Specification 1).
“The reactive monomers most commonly used for in situ
polymerization are alkyl-2-cyanoacrylates having one polymerizable
cyanoacrylate group per monomer, such as n-butyl-2-cyanoacrylate” (id. at
2). “However, the simple alkyl-2-cyanoacrylates have a number of
drawbacks. For example, they generate an undesirable amount of heat as
they rapidly polymerize. Also, the rapidly forming, adhesive polymers can
trap the injection catheters, making it difficult to safely remove the
instruments.” (Id.)
The Specification discloses that these drawbacks are overcome by
making occlusive compositions comprising a “monomer having multiple
cyanoacrylate reactive sites per molecule – a poly(2-cyanoacrylate)
monomer” (id. at 4: 15-16). “[I]t is believed that the advantages of the
poly(2-cyanoacrylate) monomer derive at least in part from its ability to
form cross-linked polymeric masses. As a result, even a relatively slow
polymerization rate can provide a rapid increase in viscosity, which is
necessary to form an occlusion in a high fluid flow environment.” (Id. at
12: 13-17.)
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Application 10/121,634

DISCUSSION
1. CLAIMS
Claims 1-17 are pending and on appeal. Claim 1 is representative and
reads as follows:
1. An occlusive composition comprising: a) a poly(2-
cyanoacrylate) monomer of the following formula (I):

wherein n≥2, and R is an organic moiety, and b) a visualization agent.

Thus, claim 1 is directed to a composition comprising a visualization
agent and a poly(2-cyanoacrylate) monomer. The poly(2-cyanoacrylate)
monomer is defined by a chemical formula, which requires that an organic
moiety (R) have two or more 2-cyanoacrylate groups attached to it.
2. PRIOR ART
The Examiner relies on the following references:
Krall US 6,538,026 B1 Mar. 25, 2003
Yin-Chao Tseng et al., “Modified ethoxyethyl cyanoacrylate for
therapeutic embolization of arteriovenous malformation,” 24 Journal of
Biomedical Materials Research 65-77 (1990).

3. ANTICIPATION
Claims 1-4 and 10-17 stand rejected under 35 U.S.C. § 102(e) as
anticipated by Krall. Claims 1-5 and 13-16 stand rejected under 35 U.S.C.
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Appeal 2006-3083
Application 10/121,634

§ 102(b) as anticipated by Tseng. Because the Examiner relies on similar
reasoning for both rejections, we can consider them together.
The Examiner cites Krall’s disclosure of a composition comprising an
alkyl cyanoacrylate monomer, an “aggregate structure formed from alkyl
cyanoacrylate monomer,” and a visualization agent (Answer 3). The
Examiner cites Tseng’s disclosure of a composition comprising alkyl
cyanoacrylates and a visualization agent (id. at 5). The Examiner concludes
that these disclosures anticipate the instant claims because the references
disclose “a polymer and the presence of the monomer of the 2-cyanoacrylate
in the polymer composition is not excluded by the open language of
‘comprising’ in claim 1” (id. at 9).
Appellant argues that, “[g]iven that claim 1 of the present application
discloses the use of poly(2-cyanoacrylate) monomers and the Krall reference
discloses only mono(2-cyanoacrylate) monomers and polymers formed
therefrom, Krall cannot anticipate claim 1 of the present application” (Br. 6).
Appellant makes the same argument with respect to Tseng (Br. 9).
We will reverse the rejections for anticipation. As we understand it,
the Examiner’s position is that the formula in claim 1 reads on polymerized
mono(2-cyanoacrylate). We disagree with this interpretation of the claims.
The claims on appeal require monomers in which the R moiety has at
least two cyanoacrylate groups bonded to it. The monomers in the prior art
composition only have one cyanoacrylate group per monomer; i.e., one
cyanoacrylate group per R moiety. See, e.g., Krall, col. 13, ll. 55-60.
It is the cyanoacrylate group, not the R moiety, that is involved in the
polymerization reaction. See the Specification, at 2: 4-6 (“The reactive
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Appeal 2006-3083
Application 10/121,634

monomers most commonly used [in the prior art] for in situ polymerization
are alkyl-2-cyanoacrylates having one polymerizable cyanoacrylate group
per monomer. . . . Upon contact with anions, these monomers react quickly
to form linear polymers.”). Thus, even the prior art polymer resulting from
polymerization of a mono(2-cyanoacrylate) monomer does not have R
moieties that are bonded to two cyanoacrylate groups.
The Examiner has not adequately established that either Krall or
Tseng discloses a composition comprising a poly(2-cyanoacrylate)
monomer. We therefore reverse the rejections for anticipation.
4. OBVIOUSNESS
Claims 6-9 stand rejected under 35 U.S.C. § 103 as obvious in view of
Krall. Claims 6-9 all depend (directly or indirectly) on claim 1 and add
limitations relating to the size of the R moiety or the proportions of
poly(2-cyanoacrylate) and mono(2-cyanoacrylate) in the composition. The
Examiner concludes that these additional limitations would have been
obvious to a person of ordinary skill in the art (Answer 6).
The Examiner relies on the rationale discussed above to meet the
limitation that the claimed composition contains poly(2-cyanoacrylate)
monomer. For the reasons discussed above, we disagree that Krall teaches
poly(2-cyanoacrylate) monomer, and the Examiner has provided no basis on
which to conclude that it would have been obvious to include a
poly(2-cyanoacrylate) monomer in Krall’s composition. Therefore, the
Examiner made out a prima facie case of obviousness. The rejection under
35 U.S.C. § 103 is reversed.
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Application 10/121,634

SUMMARY
The Examiner has not established that the claimed composition was
disclosed in or made obvious by the cited references. The rejections under
35 U.S.C. §§ 102(b), 102(e), and 103 are reversed.

REVERSED

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