Ex Parte Villanueva et al

Board of Patent Appeals and Interferences

Nov 22, 2010

11303011 (B.P.A.I. Nov. 22, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/303,011 12/15/2005 Julie Villanueva KCX-1054 (21489) 6674
22827 7590 11/22/2010
DORITY & MANNING, P.A.
POST OFFICE BOX 1449
GREENVILLE, SC 29602-1449
EXAMINER
SOROUSH, ALI
ART UNIT PAPER NUMBER
1617
MAIL DATE DELIVERY MODE
11/22/2010 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte JULIE VILLANUEVA and CURTIS N. SAYRE
__________

Appeal 2010-004642
Application 11/303,011
Technology Center 1600
__________

Before DONALD E. ADAMS, DEMETRA J. MILLS, and
MELANIE L. McCOLLUM, Administrative Patent Judges.

McCOLLUM, Administrative Patent Judge.

DECISION ON APPEAL1
This is an appeal under 35 U.S.C. § 134 involving claims to a wound
or surgical dressing. The Examiner has rejected the claims on appeal as
obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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STATEMENT OF THE CASE
Claims 1, 4, 6, 8-11, and 21-30 are on appeal. Claims 12-20 and 31-
34 are also pending but have been withdrawn from consideration by the
Examiner. (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). We will focus on claim 1, which
reads as follows:
1. A wound or surgical dressing comprising:
a substrate configured to contact or surround a wound or surgical site;
and
a bacteriostatic composition applied to the substrate, the bacteriostatic
composition being located on the substrate so as to contact a patient at or
near a wound or surgical site, the bacteriostatic composition being bonded to
the substrate so that the composition does not substantially transfer to the
patient, the bacteriostatic composition comprising a chemical compound
having a net positive charge for binding with negatively charged matter,
wherein the chemical compound comprises an aluminum oligomer or an
aluminum salt.
Claims 1, 4, 6, 8-11, and 21-30 stand rejected under 35 U.S.C.
§ 103(a) as obvious over Batich et al. (WO 03/039602 A2, May 15, 2003)
and Dunshee et al. (US 5,976,117, Nov. 2, 1999) (Supp. Ans. 2).
The Examiner relies on Batich for teaching an “absorbent material
with covalently bonded, nonleachable, polymeric antimicrobial surfaces, and
methods for preparation” (id. at 3). The Examiner finds that Batich “teaches
a sterile bandage made by covalently binding [2-(methacryloxy)-
ethyl]trimethylammonium chloride (TMMC) to a gauze substrate using
ammonium cerium (IV) which is antimicrobial and is receptive to avid
binding of negatively charged dye molecules” (id.).
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The Examiner relies on Dunshee for teaching a “wound dressing
comprising a backing, pressure sensitive adhesive layer, and an absorbent
web or other material to provide a void space for wound exudates” (id.).
The Examiner finds that the “absorbent material and adhesive material has
an amount of antimicrobial” and that the “antimicrobial includes aluminum
chlorohydrate” (id.).
The Examiner concludes:
It would have been obvious . . . to combine the teachings [of]
Batich . . . and Dunshee . . . in order to provide the wound
dressing of Batich with an adhesive so that the wound dressing
could be held in place for a period of time. With regard to the
use of aluminum chlorohydrate as the antimicrobial, it would
have been obvious to use aluminum chlorohydrate as a[n]
alternative to TMMC. TMMC and aluminum chlorohydrate are
both antimicrobial cationic polymers and therefore it would
have been obvious to one of ordinary skill in the art to try using
aluminum chlorohydrate as the antimicrobial agent.
(Id. at 4.)
ISSUE
Does the evidence support the Examiner’s conclusion that the wound
or surgical dressing of claim 1 would have been obvious?
FINDINGS OF FACT
1. The Specification discloses:
The bacteriostatic composition is bonded to the substrate so that
the composition does not substantially transfer to the patient.
The bond formed between the bacteriostatic composition and
the substrate can vary depending upon various factors and the
materials used. The bond, for example, may be a chemical
bond such as a covalent bond or an ionic bond or may be a
mechanical bond. Any bonding that is capable of substantially
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Application 11/303,011

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preventing the composition from transferring to the patient may
be used.
(Spec. 2.)
2. Dunshee discloses a flexible sheet material for covering
wounds, which comprises an antimicrobial agent (Dunshee, Abstract).
3. In particular, Dunshee discloses:
Wound dressing 10 comprising backing 16, pressure-sensitive
adhesive layer 14 coated on a portion of backing 16, and an
absorbent web . . . 12 to provide a void space for wound
exudate. . . . Adhesive layer 14 comprises an antimicrobial
agent which is available at the surface of adhesive layer 14 to
inhibit or essentially prevent migration of microorganisms from
the external environment to web 12.
(Id. at col. 2, ll. 21-30.)
4. Dunshee also discloses that “[e]xamples of suitable
antimicrobial agents include . . . aluminum chlorohydrate” (id. at col. 3,
ll. 39-42).
ANALYSIS
We begin by interpreting claim 1. Claim 1 recites that the
bacteriostatic composition, which comprises an aluminum oligomer or an
aluminum salt, is bonded to the substrate so that the composition does not
substantially transfer to the patient. The Specification discloses that the
“bond, for example, may be a chemical bond such as a covalent bond or an
ionic bond or may be a mechanical bond” and that “[a]ny bonding that is
capable of substantially preventing the composition from transferring to the
patient may be used” (Finding of Fact (FF) 1). Thus, we interpret claim 1 to
encompass any type of bond between the bacteriostatic composition and the
substrate that is capable of substantially preventing the bacteriostatic
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composition from transferring to the patient, including a chemical or
mechanical bond.
Appellants argue that Batich “teaches specific polymers configured to
covalently bond to the substrate[, but that n]o teaching or suggestion exists
that the antimicrobials of Dunshee . . . would, or even could, covalently
bond to the substrate, as required by Batich” (App. Br. 7). Appellants also
argue that “the Examiner’s only incentive or motivation for so modifying
Batich . . . using the teachings of Dunshee . . . in the manner suggested in the
Final Office Action results from using Applicants’ disclosure as a blueprint
to reconstruct the claimed invention out of isolated teachings in the prior art”
(id. at 9).
We are not persuaded. What these arguments fail to appreciate is that
claim 1 does not require a covalent bond or even a chemical bond between
the bacteriostatic composition and the substrate. Dunshee discloses adhering
aluminum chlorohydrate to a substrate with an adhesive (FF 3-4).
Appellants have not adequately explained why Dunshee fails to suggest the
bond of claim 1.
Appellants argue that Dunshee “teaches away from the use of
aluminum chlorohydrate to bond to the substrate itself, without the use of an
adhesive” (App. Br. 8). However, even if we agreed that Dunshee taught
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away from this, which we do not,2 claim 1 does not exclude the use of
adhesive.
CONCLUSION
The evidence supports the Examiner’s conclusion that the wound or
surgical dressing of claim 1 would have been obvious. We therefore affirm
the obviousness rejection of claim 1 and of claims 4, 6, 8-11, and 21-30,
which fall with claim 1. However, because our reasoning differs from that
of the Examiner, we designate our affirmance of the rejection as a new
ground of rejection under 37 C.F.R. § 41.50(b) in order to give Appellants a
fair opportunity to respond.
TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960
(August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)).
37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating

2 Although Dunshee discloses adhering aluminum chlorohydrate to a
substrate with an adhesive, we do not find any teaching in Dunshee
suggesting that aluminum chlorohydrate could not itself be bonded to the
substrate without the use of adhesive.
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to the claims so rejected, or both, and have the matter
reconsidered by the Examiner, in which event the proceeding
will be remanded to the Examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .
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, 37 C.F.R. § 41.50(b)

cdc

DORITY & MANNING, P.A.
POST OFFICE BOX 1449
GREENVILLE, SC 29602-1449