Ex Parte Sambasivam et al

Patent Trial and Appeal Board

Aug 27, 2018

13382227 (P.T.A.B. Aug. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/382,227 01/04/2012
26079 7590 08/29/2018
Convatec Technologies Inc.
CenterPointe II
1160 Route 22 East, Suite 304
Bridgewater, NJ 08807
FIRST NAMED INVENTOR
Mahesh Sambasivam
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.
CV0439-US-PCT 3590
EXAMINER
CARREIRO, CAITLIN ANN
ART UNIT PAPER NUMBER
3772
NOTIFICATION DATE DELIVERY MODE
08/29/2018 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):
lwestin@wsgr.com
mhowes@wsgr.com
patentdocket@wsgr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARESH SAMBASIV AM, JOSEPH C. SALAMONE,
ANN BEAL SALAMONE, and XIANG YU
Appeal 2016-006959 1
Application 13/382,2272
Technology Center 3700
Before MICHAEL C. ASTORINO, TARA L. HUTCHINGS, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
FINAMORE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellants appeal from the
Examiner's decision to reject claims 5-9. We have jurisdiction under§ 6(b ).
We REVERSE.
1 Our Decision references Appellants' Specification filed January 4, 2012
("Spec."), Appeal Brief filed November 6, 2015 ("Appeal Br."), and
Reply Brief filed July 5, 2016 ("Reply Br."), as well as the Examiner's
Answer mailed May 5, 2016 ("Ans.") and Final Office Action mailed
January 16, 2015 ("Final Act."). The record also includes a transcript of the
oral hearing held on August 16, 2018.
2 Appellants identify ConvaTec Technologies, Inc. as the real party in
interest. Appeal Br. 3.
Appeal2016-006959
Application 13/382,227
SUBJECT MATTER ON APPEAL
The invention relates to pressure sensitive silicone adhesives with
amphiphilic copolymers. Spec., Title. Each of claims 5-9 is independent.
Claim 5, reproduced below, is illustrative of the claimed subject matter:
5. A silicone pressure sensitive adhesive composition
suitable for adhering a medical device to skin comprising 0.1-
100% of an amphiphilic random copolymer that is a free radical
polymerization reaction product of at least one silicone monomer
or oligomer and at least one hydrophilic or amphiphilic monomer
or oligomer, such that the amphiphilic copolymer:
a) does not dissolve in aqueous medium,
b) has a molecular weight greater than 10,000 g/mol; and
c) does not leach out in the presence of moisture; and
wherein
the silicone monomer is methacryloylalkylsiloxysilane,
vinylalkylsiloxysilane, vinylalkoxysilane, or combinations
thereof;
the silicone oligomer is polydimethylsiloxane with
reactive groups selected from hydride, vinyl, methacrylate,
acrylate, epoxy, carbinol, mercapto, acetoxy, amino, isocyanato,
halide, hydroxyl, and combinations thereof; and
the hydrophilic or amphiphilic monomer or oligomer is
selected from acrylamides, N-alkylacrylamides,
N ,N-dialkylacrylamides, N-alkylaminoalkylacrylamides,
methacrylamides, acrylic acid and its esters and salts,
methacrylic acid and its esters and salts, amino methacrylates,
N-alkylamino acrylates, N-alkylamino methacrylates, maleic
anhydride and its derivatives, alkenyl anhdyride and its
derivatives, vinyl ethers, reactive polyethers, polyisocyanates,
polyesters, polyamides, polypeptides, polysaccharides,
polyurethanes, and combinations thereof.
2
Appeal2016-006959
Application 13/382,227
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Salamone et al. US 5,103,812 Apr. 14, 1992 ("Salamone")
Zhou et al. US 2008/0268242 Al Oct. 30, 2008 ("Zhou")
Yukari Oda et al., Block versus Random Amphiphilic Copolymers as
Antibacterial Agents, 12 Biomacromolecules 3581 (2011) ("Oda").
REJECTION
The Examiner rejects claims 5-9 under 35 U.S.C. § I03(a) as
unpatentable over Zhou, Salamone, and Oda.
ANALYSIS
Appellants argue that the Examiner has not provided a sufficient
reason for combining the teachings of Zhou and Oda. Appeal Br. 11;
Reply Br. 11-14. Appellants' argument is persuasive.
In rejecting claim 5, the Examiner acknowledges Zhou does not
disclose that the amphiphilic copolymer is an amphiphilic random
copolymer. Final Act. 4. For this, the Examiner relies on Oda (id. at 4--5),
and determines it would have been obvious to modify the disclosure of Zhou
to configure the amphiphilic copolymer as an amphiphilic random
copolymer, as taught by Oda, "to allow for control of antibacterial activity
and membrane disruption mechanism in the device and thereby assist in
preventing bacterial growth and infection during treatment of an affected
area" (id. at 5).
3
Appeal2016-006959
Application 13/382,227
As Appellants point out, Zhou and Oda disclose different copolymers
with different applications. Appeal Br. 11. Zhou discloses pressure
sensitive adhesive compositions, including a polydiorganosiloxane polyurea
copolymer, for articles such as medical devices. Zhou ,r 2. Oda compares
the block and random structures of amphiphilic vinyl ether copolymers to
determine the effect of the copolymer structure on the antibacterial
properties of the copolymer. Oda 3 5 81. Although Oda teaches the
amphiphilic copolymer structure is a key determinant in the mechanism of
selective activity against bacteria over human cells for vinyl ether
copolymers (id. at 3586), Oda does not consider the copolymer structure of
silicone-containing copolymers, such as Zhou's polydiorganosiloxane
polyurea copolymer.
That notwithstanding, although Oda teaches a corollary between the
copolymer structure and the selective activity against bacteria over human
cells, Oda teaches the block copolymer structure has a better selectivity than
the random copolymer structure. More specifically, Oda teaches "the
hemolytic activity of the copolymers studied here was strongly dependent on
their amphiphilic copolymer structures although the copolymers displayed
the same level of bactericidal activity regardless the structural differences."
Id.; compare id. at Fig. 2 with id. at Fig. 3. Oda further teaches "the block
copolymers are less hemolytic compared to the homopolymer and random
copolymers." Id. at 3586, Fig. 3. Thus, according to Oda, the random and
block copolymer structures have similar antibacterial properties, but the
block copolymer structure is less hemolytic, i.e., less membrane disruption
to red blood cells, than the random copolymer structure.
4
Appeal2016-006959
Application 13/382,227
Given that Oda does not consider the effect of the copolymer structure
on the antibacterial properties of silicone-containing copolymers, and that
Oda teaches the random copolymer structure provides similar antibacterial
properties as the block copolymer but is more toxic, the Examiner has not
provided a reason supported by rational underpinnings as to why a person of
ordinary skill in the art would have modified the teachings of Zhou to
configure the amphiphilic silicone-containing copolymer for use as a
pressure sensitive adhesive in medical devices as an amphiphilic random
copolymer. We, therefore, do not sustain the Examiner's rejection of
claim 5.
The Examiner's rejection of claims 6-9 suffers from the same
deficiency as the rejection of claim 5. Final Act. 6-7. Accordingly, we do
not sustain the Examiner's rejection of claims 6-9 for the same reasons as
claim 5.
DECISION
The Examiner's decision to reject claims 5-9 is reversed.
REVERSED
5