Ex Parte Thomas

Patent Trial and Appeal Board

Aug 30, 2018

13637162 (P.T.A.B. Aug. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/637, 162 12/10/2012
50855 7590
Covidien LP
60 Middletown A venue
Mailstop 54, Legal Dept.
North Haven, CT 06473
09/04/2018
FIRST NAMED INVENTOR
Jonathan Thomas
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.
H-SP-00088(1600-137PCTUS) 9741
EXAMINER
WALSHON, SCOTT R
ART UNIT PAPER NUMBER
1788
NOTIFICATION DATE DELIVERY MODE
09/04/2018 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):
rs. patents. two@medtronic.com
mail@cdfslaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JONATHAN THOMAS
Appeal2017-006820
Application 13/637,162
Technology Center 1700
Before ADRIENE LEPIANE HANLON, KAREN M. HASTINGS, and
AVEL YN M. ROSS, Administrative Patent Judges.
ROSS, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellant2 appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 4, 22, and 24--29. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 In our Decision we refer to the Specification filed September 25, 2012
("Spec."), the Final Office Action appealed from dated February 12, 2016
("Final Act."), the Appeal Brief filed November 15, 2016 ("Appeal Br."),
the Examiner's Answer dated January 26, 2017 ("Ans.") and the Reply Brief
filed March 27, 2017 ("Reply Br.").
2 Appellant identifies the real party in interest as Covidien LP. Appeal Br. 1.
Appeal2017-006820
Application 13/637,162
STATEMENT OF THE CASE
The subject matter on appeal "relates to yams that contain crosslinked
filaments, and more particularly to the use of click chemistry to form braided
multifilament yams, methods of preparing such yams, and surgical devices
made from such yams." Spec. 1. According to the Specification, each of
the crosslinked filaments include functional groups that have
"complementary click reactivity" meaning that "the first and second
functional groups are able to specifically interact together to covalently bond
the filaments together." Id. at 3. The Specification further explains that
"[ c ]lick chemistry refers to a collection of reactive members having a high
chemical potential energy capable of producing highly selective, high yield
reactions ... where [ t ]hese reactions represent highly specific reactant pairs
that have a chemoselective nature, meaning that they mainly react with each
other and not other functional groups." Id. at 6-7. 3 Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A heterogeneous yam comprising:
at least one first filament possessing a polymer core
functionalized to include a first reactive member known to have
click reactivity on a surface of the at least one first filament; and
at least one second filament possessing a polymer core
functionalized to include a second reactive member on a surface
of the at least one second filament, the second reactive member
being known to have complementary click reactivity to the first
reactive member of the first filament, wherein the polymer core
of the first and second filaments are different polymeric
materials, and the first and second reactive members form a
covalent bond via a reaction selected from the group consisting
3 We further observe that the disclosure of Matyjaszewski supports this
understanding of the meaning of "click chemistry." See Matyjaszewski ,r,r 9,
31, 32.
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Appeal2017-006820
Application 13/637,162
of a Huisgen cycloaddition reaction, a Diels-Alder reaction, a
thiol-alkene reaction, and a maleimide-thiol reaction.
Appeal Br. 14 (Claims App'x).
REJECTIONS
The Examiner maintains the following rejections4:
A. Claims 1, 4, 22, 25, 27, and 28 stand rejected under 35
U.S.C. § I03(a) as unpatentable over Frank5 in view of
Guire6 in view of Matyjaszewski. 7 Final Act. 3.
B. Claims 24 and 26 stand rejected under 35 U.S.C. § I03(a)
as unpatentable over Frank in view of Guire in view of
Matyjaszewski, and in view of Fiore. 8 Id. at 6.
C. Claim 29 stands rejected under 35 U.S.C. § I03(a) as
unpatentable over Frank in view of Guire in view of
Matyjaszewski, and in view of Hotter. 9 Id. at 7.
Appellant seeks our review of Rejections A---C. See generally Appeal
Br. Appellant presents arguments for claim 1 (Rejection A), claims 24 and
26 (Rejection B), and claim 29 (Rejection C). However, the arguments
4 Claim 27 was originally subject to Rejection A. Final Act. 3. The
rejection of claim 27 was withdrawn because claim 27 was cancelled by
Appellant. Ans. 3.
5 Frank et al., US 2007/0293927 Al, published December 20, 2007
("Frank").
6 Guire et al., US 2006/0018948 Al, published January 26, 2006 ("Guire").
7 Matyjaszewski et al., US 2007/0244265 Al, published October 18, 2007
("Matyj aszewski").
8 Michele Fiore et al. Single and dual glycoside clustering around
calix[ 4] arene scaffolds via click thiol-ene coupling and azide-alkyne
cycloaddition, 7 ORG. BIOMOL. CHEM., 3910-13 (2009) ("Fiore").
9 Hotter et al., US 2009/0264925 Al, published October 22, 2009 ("Hotter").
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Appeal2017-006820
Application 13/637,162
presented for Rejections Band Care not substantively different from the
arguments advanced for Rejection A. Id. Therefore, we focus our
discussion below on claim 1 and all remaining claims will stand or fall with
that claim.
OPINION
The Examiner rejects claim 1 as obvious over Frank in view of Guire
and Matyjaszewski. Final Act. 3. The Examiner finds that Frank teaches a
multifilament yam where the filaments are functionalized with an active
agent to have a reactive group. Id. The Examiner finds that the reactive
members have click reactivity because Frank teaches "the reactive group
may be a thiol-reactive group or a thiol group and may further contain a
photo-activatable group such as aryl azides." Id. The Examiner further
finds that Frank describes the agents as attached covalently to the filaments.
Id. The Examiner acknowledges that Frank does not describe a
heterogeneous yam where the polymer core of the first and second filaments
are different, however, the Examiner finds that Guire discloses "a stent body
formed from a plurality of polymeric strands" where different portions may
comprise different materials having different characteristics. Id. at 4. For
example, the Examiner notes that one portion may be biodegradable while
another portion may be non-biodegradable. Id. ( citing Guire ,r 38). The
Examiner reasons that the skilled artisan would have reason to modify the
filaments of Frank to be different in order to have a yam where a portion
may degrade while the other portion does not degrade. Id. The Examiner
explains that "the combined prior art is silent regarding ... [the] reaction
selected from the group consisting of a maleimide-thiol reaction," but finds
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Application 13/637,162
that Matyjaszewski describes "conducting click chemistry reactions on
polymers ... [including a] very efficient maleimide-thiol reaction [that] may
be used for post polymerization functionalization and chain extension
chemistry." Id. at 4--5. The Examiner concludes that the skilled artisan
would have reason to use the reaction taught by Matyjaszewski for
functionalizing the modified filaments of Frank because the reaction is
taught to be a "very efficient" method. Id. at 5.
Appellant argues that "[ (1)] none of the cited references disclose first
and second click reactive members on two different filaments and/or [(2)]
that the Office fails to provide a proper basis for replacing the photo-
activatable group of Frank with the alleged click reactive members of
Matyjaszewski." Appeal Br. 9.
Because we find Appellant's first argument persuasive, we do not
reach Appellant's additional arguments. In particular, we find persuasive
Appellant's position that Frank describes a filament having an agent
covalently attached to the filament for attaching to a biomaterial, i.e., a
molecule or macromolecule having therapeutic utility or a prophylactic
agent, where the agents are photo-activatable groups that are "merely excited
free radicals capable of reacting with any surface which includes a carbon
atom (non-selective and/or not described as a reactant pair)." Id. at 5.
Therefore, Frank fails to describe a filament-to-filament attachment. Id.
The proposed combination with Guire and Matyjaszewski fails to remedy
this defect. The Examiner relies on Guire to provide a teaching that the first
and second filaments are different polymeric materials and Matyjaszewski to
describe "conducting click chemistry reactions on polymers ... for post-
polymerization functionalization and chain extension." Final Act. 3-5.
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Application 13/637,162
Therefore, as Appellant argues, the combination of Frank and Guire would
result in "fibers of different materials functionalized with an agent for
attaching [to] biomaterials, and not fibers of different materials." Appeal Br.
6. No reference suggests bonding the reactive members of different
filaments together, much less covalently bonding through complementary
click reactivity the reactive members of different filaments together, as
described in the instant claims. Accordingly, we cannot sustain the
Examiner's rejection.
CONCLUSION
Appellant identified a reversible error in the Examiner's rejection of
claims 1, 4, 22, 25, 27, and 28, under 35 U.S.C. § 103(a), as unpatentable
over Frank in view of Guire in view of Matyjaszewski.
Appellant identified a reversible error in the Examiner's rejection of
claims 24 and 26, under 35 U.S.C. § 103(a), as unpatentable over Frank in
view of Guire in view ofMatyjaszewski, and in view of Fiore.
Appellant identified a reversible error in the Examiner's rejection of
claim 29, under 35 U.S.C. § 103(a), as unpatentable over Frank in view of
Guire in view ofMatyjaszewski, and in view of Hotter.
DECISION
For the above reasons, the Examiner's rejections of claims 1, 4, 22,
and24-29 are reversed.
REVERSED
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