Ex Parte Sambasivam et alDownload PDFPatent Trial and Appeal BoardAug 27, 201813382227 (P.T.A.B. Aug. 27, 2018) Copy Citation 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 Copy with citationCopy as parenthetical citation