12533473 (P.T.A.B. Sep. 6, 2016)

Ex Parte Ratcliffe et al

Patent Trial and Appeal BoardSep 6, 2016

12533473 (P.T.A.B. Sep. 6, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/533,473 07/31/2009 Anthony Ratcliffe 31554 7590 09/08/2016 CARTER, DELUCA, FARRELL & SCHMIDT, LLP 445 BROAD HOLLOW ROAD SUITE420 MELVILLE, NY 11747 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. 1414-15 7635 EXAMINER SHIPMON, TIFFANYP ART UNIT PAPER NUMBER 3738 NOTIFICATION DATE DELIVERY MODE 09/08/2016 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@cdfslaw.com tgiordano@cdfslaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ANTHONY RATCLIFFE, ANDREAS KERN, MOHAMMAD SOTOUDEH, and FATEMEH RATCLIFFE Appeal2015-000253 Application 12/533,473 1 Technology Center 3700 Before MICHAEL C. ASTORINO, KENNETH G. SCHOPPER, and AMEE A. SHAH, Administrative Patent Judges. ASTORINO, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. Â§ 134 from the Examiner's decision rejecting claims 1-33 and 50-54. We have jurisdiction over the appeal under 35 U.S.C. Â§ 6(b). We REVERSE. 1 According to the Appellants, "[t]he real party in interest for this application is the Assignee of record, Synthasome, Inc." Appeal Br. 2. Appeal2015-000253 Application 12/533,473 Claimed Subject Matter The Appellants' invention is directed to the technical field of "[ s ]ynthetic structures for the repair of soft tissue," including "fibrillar structures that may be utilized to approximate the physical characteristics of soft tissue and thus may be useful as implants to promote the repair of soft tissue." Spec. 1, 11. 2---6. Claims 1, 50, and 54 are the independent claims on appeal. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. An implant comprising: a multi-layer planar fibrillar structure wherein the layers of said fibrillar structure are intermittently secured to each other by a series of discrete points of attachment to provide a discontinuous length of attachment on at least one edge portion. Rejections The Appellants request our review of the following Examiner's rejections. Claims 1-33 are rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Ratcliffe et al. (WO 2006/089267 A2, pub. Aug. 24, 2006, hereinafter "Ratcliffe") and Gabbay (US 6,679,914 Bl, iss. Jan. 20, 2004). Claims 1, 6, and 50-54 are rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Bindseil et al. (US 7,252,685 B2, iss. Aug. 7, 2007, hereinafter "B indseil "). 2 Appeal2015-000253 Application 12/533,473 ANALYSIS Obviousness based on Ratcliffe and Gabbay The Examiner finds that Ratcliffe discloses substantially all of the subject matter of claim 1, but "lacks a detailed description of the structure being secured to each other on at least one edge portion." Final Act. 2. To remedy this deficiency the Examiner turns to Gabbay. Id. at 2-3. The Examiner finds that Gabbay teaches "a plurality of sheets of biocompatible tissue ... secured to each other on at least one edge portion ... for the purpose of securing the implant to maintain a desired shape for the prosthesis." Id. at 3 (emphasis added) (citing Gabbay, col. 5, 11. 15-32, Fig. 2a). The Examiner concludes that "it would have been obvious to a person of ordinary skill in the art ... to secure the structure on at least one edge portion as taught in Gabbay in order to secure the implant to maintain the desired prosthesis shape." Final Act. 3 (emphasis added). Notably, the Examiner does not explicitly identify the structure(s) associated with Gabbay' s description in column 5 and Figure 2A that corresponds with the secured points of attachment on the "edge portion" as required by independent claim 1. However, the Examiner's reliance on Gabbay appears to be directed solely on suture 34 because "maintain[ing] a desired shape for the prosthesis" (id.) is described as the purpose of sutures 34. See Gabbay, col. 5, 11. 29-32. We also acknowledge that Gabbay's prosthesis 22 may include sutures 32 that connect the peripheral edges of the prosthesis. Id. at col. 5, 11. 26-29. However, the purpose of sutures 32 is not described as maintaining a desired shape of the prosthesis. As such, we understand the Examiner's reliance on Gabbay's teachings to be directed to sutures 34 only. See also Appeal Br. 6. 3 Appeal2015-000253 Application 12/533,473 The Appellants argue that the Examiner's conclusion lacks rational underpinning and as such, "would [not] have resulted in securement of at least one edge portion of the fibrillar structure of Ratcliffe." Id. The Appellants support this argument by asserting that sutures 34 are located inward of the peripheral edge formed by sheets 24 and 26. Id. In response, the Examiner construes the term "edge portion," as recited in the claim, to "be any location near the end of the fibrillar structure." Ans. 7. However, the Examiner's construction term "edge portion" appears to be broader than the definition of "end portion" provided by the Specification, which "includes the outside edge of the fibrillary structure to an area recessed therefrom by approximately 10% of the size of the fibrillary structure." See Spec. 9, 11. 15-17. Hence, for the Examiner's finding to be supported by a preponderance of the evidence, Gabbay must teach that sutures 34 are located at the outside edge of the biocompatible tissue sheets at an area recessed therefrom by approximately 10% of the size of prosthesis 22. After careful consideration of Gabbay' s disclosure, particularly Figure 2A, we cannot determine that the Examiner's finding is supported by a preponderance of the evidence. Therefore, we determine that the Appellants' argument is persuasive. Thus, the Examiner's rejection of independent claim 1 and dependent claims 2-33 as unpatentable over Ratcliffe and Gabbay is not sustained. Obviousness based on Bindseil The Examiner finds that Bindseil discloses substantially all of the subject matter of claim 1, including "layers ... [that] are intermittently secured to each other by a series of discrete points of attachment to provide a 4 Appeal2015-000253 Application 12/533,473 discontinuous length of attachment on at least one edge portion," as recited in claim 1. Final Act. 7; see id. at 9 (citing Bindseil, Fig. 4 with annotations). The Examiner finds that "[t]he discontinuous region of attachment is found as the 'perforation points'. For example, in Fig. 4, at every 'hole' [ (openings) 18] it is 'discontinuous' for that space in the structure." Ans. 7-8. The Appellants argue that the Examiner's finding is inadequately supported. See Appeal Br. 9-10. The Appellants support this argument by asserting that Bindseil' s Figure 4 "shows the edges of a single outer planar member 16 secured by a securement mechanism 26." Id. at 9; see also Bindseil, col. 5, 11. 40-47. The Appellants also assert that one of ordinary skill in the art would understand that openings 18 are not discrete points of attachment, but are "a series of discrete points of unattachment." Reply Br. 4; see also Appeal Br. 10. We agree with the Appellants' argument and assertions. Moreover, we note that although Bindseil discloses a securing mechanism 26, e.g., an ultrasonic weld, Bindseil does not disclose that the securing mechanism is separated by openings 18. See Bindseil, col. 5, 11. 40-47. Further, based on the Examiner's rejection and the response to the Appellants' argument in the Answer, we fail to understand how the Examiner applies Bindseil' s disclosure to teach "intermittently secured" layers, as required by independent claims 1, 50, and 54. See Reply Br. 4--5. Therefore, we determine that the Appellants' argument is persuasive. Thus, the Examiner's rejection of independent claims 1, 50, and 54, and dependent claims 6 and 51-53 as unpatentable over Bindseil is not sustained. 5 Appeal2015-000253 Application 12/533,473 DECISION We REVERSE the Examiner's decision rejecting claims 1-33 and 50-54. REVERSED 6