Ex Parte Roby

Patent Trial and Appeal Board

Oct 9, 2012

11904741 (P.T.A.B. Oct. 9, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte MARK ROBY
__________

Appeal 2011-010463
Application 11/904,741
Technology Center 1600
__________

Before ERIC GRIMES, LORA M. GREEN, and MELANIE L.
McCOLLUM, Administrative Patent Judges.

McCOLLUM, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a suture.
The Examiner has rejected the claims as obvious. We have jurisdiction
under 35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
Claims 1, 2, 4, and 7-12 are pending and on appeal (App. Br. 2). The
claims have not been argued separately and therefore stand or fall together.
37 C.F.R. § 41.37(c)(1)(vii). Claim 1 is representative and reads as follows:
Appeal 2011-010463
Application 11/904,741

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1. A suture comprising:
at least one filament comprising a synthetic, absorbable polymer
composition; and
a coating formed on at least a portion of a surface of the at least one
filament by a plasma polymerization process wherein a polymer coating is
formed on the filament surface from a hydrocyclosiloxane monomer of the
general formula

where R is an aliphatic group and n is an integer from about 2 to about 10.
Claims 1, 2, 4, and 7-12 stand rejected under 35 U.S.C. § 103(a) as
obvious over Dolence et al. (US 5,650,234, July 22, 1997) in view of Simon
(US 5,618,298, April 8, 1997) (Ans. 4).
The Examiner relies on Dolence for teaching “a method for the
covalent bonding of a bioactive compound to a polymer fiber (filament), to
produce a thrombo-resistant coating on said fiber, wherein said polymeric
surface comprises a membrane formed from plasma polymerization of a
hydrocyclosiloxane monomer of the general formula” of claim 1 (id.). The
Examiner finds that in “a preferred embodiment a tetramethylcyclotetra-
hydrosiloxane is plasma deposited on a polypropylene fiber” (id. at 6). The
Examiner also finds the bioactive molecule may be heparin (id.).
The Examiner relies on Simon for teaching “a vascular prosthesis
such as a stent fabricated from suture material comprising copolymer of
polyglycolic acid and trimethylene carbonate, . . . the stent [being] coated to
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Application 11/904,741

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hepranize [sic] the stent” (id.). The Examiner concludes that it would have
been obvious “to combine the teachings of Dolence et al. with Simon . . .
because Simon teaches that the stent should be coated with heparin and
Dolence et al. teach a method whereby heparin can be coated onto
biomedical substrates” (id. at 6-7). The Examiner also concludes that it
would have been obvious “to substitute the absorbable polymer taught by
Simon for the polypropylene taught by Dolence et al. since the utilization of
an absorbable material would negate the need . . . for further invasive
procedures to remove the biomedical implant” (id. at 7).
ISSUE
Does the evidence support the Examiner’s conclusion that it would
have been obvious to coat Simon’s suture material with a coating formed
from the plasma polymerization of hydrocyclosiloxane monomer, as
described in Dolence?
ANALYSIS
We adopt the Examiner’s fact-finding and reasoning in support of the
obviousness rejection set out in the Examiner’s Answer (Ans. 4-7). We also
incorporate the Examiner’s Response to Argument as set forth in the
Examiner’s Answer (id. at 7-9). However, we include the following
additional comment.
Appellant argues that “there is nothing to suggest the filiform material
of Simon could include a plasma coating as recited in claim 1” (App. Br. 8).
However, the Examiner identifies reasons why one of ordinary skill in the
art would have combined the teachings of Dolence with Simon (Ans. 6-7).
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We conclude that Appellant has not adequately explained why these reasons
are in error.
In particular, Appellant points out that the claims do not recite a
heparin coating (App. Br. 8). However, claim 1 recites “comprising”
language and is therefore open to the inclusion of additional components.
Therefore, we do not agree with Appellant that it was improper for the
Examiner to rely on the common teachings of a heparin coating to provide a
reason to combine Dolence with Simon (see Reply Br. 2-3).
CONCLUSION
The evidence supports the Examiner’s conclusion that it would have
been obvious to coat Simon’s suture material with a coating formed from the
plasma polymerization of hydrocyclosiloxane monomer, as described in
Dolence. We therefore affirm the obviousness rejection.
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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