Ex Parte Eddy

Patent Trial and Appeal Board

Nov 7, 2018

13780500 (P.T.A.B. Nov. 7, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/780,500 02/28/2013 Patrick E. Eddy
277 7590 11/09/2018
PRICE HENEVELD LLP
695 KENMOOR SE
PO BOX 2567
GRAND RAPIDS, MI 49501
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.
P AR022 P3 l 1A 1054
EXAMINER
HAWTHORNE, OPHELIA AL THEA
ART UNIT PAPER NUMBER
3786
NOTIFICATION DATE DELIVERY MODE
11/09/2018 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):
ptomail@priceheneveld.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PA TRICK E. EDDY
Appeal 2018-002034
Application 13/780,500
Technology Center 3700
Before MICHAEL L. HOELTER, BRETT C. MARTIN, and
JILL D. HILL, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from the
Examiner'sFinalRejectionofclaims 1-8, 10, 11, 13-15, 17, 18, and 21.
Final Act. 1 (Office Action Summary), 2. We have jurisdiction under
35 U.S.C. § 6(b). For the reasons explained below, we do not find error in
the Examiner's rejections. Accordingly, we AFFIRM.
THE CLAIMED SUBJECT MATTER
The disclosed subject matter "generally relate[ s] to an adhesive
formulation for a film dressing, and to an adhesive-coated film dressing."
Appeal2018-002034
Application 13/780,500
Spec. ,r 2. Claims 1, 6, and 15 are independent. Claim 1 is illustrative of the
claims on appeal and is reproduced below.
1. A film dressing for adhering over a wound site, the film
dressing comprising:
a film having a first side and a second side;
an adhesive formulation coated on at least one of said sides
of said film; and
a release liner applied over said adhesive formulation and
held in place by the adhesive formulation,
wherein said adhesive formulation comprises a mixture of
a medical-grade adhesive and an antimicrobial substance that is
mixed before coating on the at least one of said sides of said film,
wherein said adhesive formulation includes about 0.01 %
to about 60% of said antimicrobial substance,
wherein said antimicrobial substance is a silane quaternary
ammonium salt compnsmg 3- (trimethoxysilyl)
propyldimethyloctadecyl ammonium chloride, and
wherein said medical-grade adhesive comprises an acrylic
adhesive.
REFERENCES RELIED ON BY THE EXAMINER
Grossmann et al.
Ansell
Carte et al.
Schonemyr et al.
Leonard et al.
El-N aggar et al.
us 4,372,303
us 5,183,664
US 6,495,229 B 1
US 2007/0042198 Al
US 2009/0312684 Al
US 8,440,217 Bl
2
Feb. 8, 1983
Feb.2, 1993
Dec. 17, 2002
Feb.22,2007
Dec. 17, 2009
May 14, 2013
Appeal2018-002034
Application 13/780,500
THE REJECTIONS ON APPEAL 1
Claims 1-3, 6-8, 10, 13-15, 17, and 21 are rejected under 35 U.S.C. §
103(a) as being unpatentable over Ansell and Schonemyr, as evidenced by
Grossmann and El-Naggar.
Claim 4 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Ansell and Schonemyr ( as evidenced above) and Carte.
Claims 5, 11, and 18 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ansell and Schonemyr ( as evidenced above), and
Leonard.
ANALYSIS
The rejection of claim 1-3, 6-8, 10, 13-15, 17, and 21 as unpatentable over
Ansell and Schonemyr, as evidenced by Grossmann and El-Naggar
Appellant argues independent claims 1, 6, and 15 together, and further
"acknowledges that the three independent claims rise or fall together." App.
Br. 7. Accordingly, we select independent claim 1 for review, with the
remaining claims (i.e., claims 2, 3, 6-8, 10, 13-15, 17, and 21) standing or
falling with claim 1. See 37 C.F.R. § 4I.37(c)(l)(iv).
Claim 1 is directed to a film dressing having an acrylic adhesive
formulation mixed with a particular antimicrobial substance. The Examiner
1 As understood, the Examiner fully withdrew the written description
rejection and both double patenting rejections. See Ans. 13. However, the
actual claims rejected and those indicated as being subsequently withdrawn
from rejection are not identical. Compare, for example, the listing on Final
Act. 3 with that on Ans. 13. However, the Examiner does not address any of
these rejections in the Examiner's Answer, or otherwise provide any
indication that the rejection of these missing claims is maintained. Thus, we
consider this discrepancy to be an oversight and agree with Appellant that, in
each case, the rejection of all the claims has been withdrawn. See Reply Br.
2.
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Application 13/780,500
relies on Ansell for teaching both the dressing and the acrylic adhesive
("Ansell's wound dressing ... serves as a carrier (emphasis added"). Final
Act. 5, 6. The Examiner also relies on it being obvious "to substitute"
Ansell's antibacterial agent for that disclosed in Schonemyr "to yield
predictable result." Final Act. 6, 7. The Examiner's reliance on Grossmann
and El-Naggar are provided "as evidence[]" of the teachings of Ansell.
Final Act. 5.
Regarding the "acrylic adhesive" limitation, Appellant contends,
"Ansell states repeatedly that the adhesive gel is a 'polyurethane gel
adhesive,' never once referring to it as an 'acrylic adhesive."' App. Br. 12;
see also id. at 13-15, Reply Br. 2, 5. Appellant's Specification does not
provide any special definition of the claim term "acrylic adhesive" (see
Spec. ,r,r 3, 15), and as such, the Examiner provides an explanation of this
term. 2 Ans. 16. The Examiner references "http://www.tech-
faq.com/acrvlic-adhesives.html" which describes "acrylic adhesive" as "a
resin-based adhesive that is comprised of acrylic or methylacrylic
polymers." Ans. 16. The Examiner thereafter points out that the adhesive
teachings of Ansell coincide with this definition. Ans. 16 (referencing
Ansell 8:15-22); see also Final Act. 5. Ansell states:
Polyurethane gel adhesives useful for the dressings of the
present invention may be prepared by reacting isocyanate
prepolymer, which is itself the reaction product of
polyfunctional isocyanate and polyoxyalkylene diol monoalkyl
ether, with acrylate comprising hydroxyl-containing ester of
2 We are instructed that if the Specification does not define or suggest a
particular meaning for a term, it is appropriate to consult a general dictionary
definition of the word for guidance. See Comaper Corp. v. Antee, Inc., 596
F.3d 1343, 1348 (Fed. Cir. 2010).
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Application 13/780,500
acrylic or methacrylic acid and other hydroxyl containing
compounds.
Ansell 8:15-21 (emphasis added). Hence, while it may be true, as Appellant
states, that Ansell "never once referr[ed] to it as an 'acrylic adhesive"' (see
supra), that lack of identification does not negate Ansell's teaching of what
one skilled in the art would understand to be an "acrylic adhesive."
Appellant also "objects to the Examiner's submission of random website
'evidence."' Reply Br. 4. However, as previously noted, it is appropriate to
consult external sources for guidance, and Appellant does not explain how
the Examiner can be faulted for doing so ( or how the Examiner's citation is
"random"). We also note that Appellant does not proffer a competing or
more compelling definition of this claim term.
Besides Ansell not referring to the adhesive as an "acrylic adhesive,"
Appellant also contends that Ansell's adhesive is, in actuality, not an acrylic
adhesive but instead a polyurethane adhesive, "because the vast majority of
the isocyanate prepolymer is reacted with polyols (thus creating the
polyurethane)." App. Br. 13. According to Appellant, "[t]he acrylates are
used in a limited amount" and "react with only 15-25% of the isocyanate
prepolymer." App. Br. 13; see also Ansell 8:22-23, Reply Br. 3, 4. Thus,
"[a]lthough acrylates are added ... the polymer at its core is a polyurethane
polymer." App. Br. 13 (referencing Ansell 9:61---62); see also Reply Br. 4.
From the above, it appears that Appellant does not dispute Ansell's
use of acrylates in the adhesive, but instead argues that only a small
percentage is employed. However, the claim language does not impose any
minimum threshold on the amount of acrylates to be employed ( only that the
"adhesive comprises an acrylic adhesive"). In other words, it appears
Appellant is arguing a matter of degree, not kind. Further, the Examiner's
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Application 13/780,500
reference to El-Naggar (see Final Act. 5) is useful in this matter because this
reference expressly describes the use of acrylic adhesives while also stating,
the "adhesives can be based on a variety of systems such silicone,
polyurethane, chloroprene, butyl, polybutadiene, isoprene or neoprene." El-
Naggar 11: 16-17, 11 :53-55. In view of these teachings, Appellant's attempt
to make a distinction because Ansell's acrylates "react with only 15-25% of
the isocyanate prepolymer" (see supra) is not persuasive of Examiner error.
Appellant also contends, "the process Ansell describes to make the
polyurethane gel adhesive does not use the process that El-Naggar
describes." App. Br. 13; see also id. at 14, Reply Br. 3, 6-8. However, the
Examiner has not relied on El-Naggar for its particular process; instead, the
Examiner relies on El-Naggar as evidence in support of the findings
regarding Ansell's adhesive formulation. See Final Act. 5.
Appellant further contends, "[ a ]crylic acid is not the same thing [as]
ester of acrylic acid, and methylacrylic acid is not the same thing as ester of
methylacrylic acid." App. Br. 14 (citing Ansell 8:15-21); see also Reply Br.
4 ("the Examiner never demonstrates that Ansell's process makes acrylic or
methylacrylic polymers"), 6. To be clear, Ansell teaches an adhesive
prepared by reacting a prepolymer "with acrylate comprising hydroxyl-
containing ester of acrylic or methacrylic acid and other hydroxyl containing
compounds." Ansell 8: 15-21. Without attempting to become too technical,
an "acrylate" is understood to be "acrylic resin."3 The Examiner's definition
provided above describes "acrylic adhesive" as "a resin-based adhesive that
is comprised of acrylic or methylacrylic polymers." Ans. 16. Thus, it is not
clear, based on Ansell's direct teaching of employing an "acrylate" (i.e., an
3 See https://www.merriam-webster.com/dictionary/acrylate
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Application 13/780,500
acrylic resin) in the formulation of the adhesive, how that expressed usage
fails to conform to the above understanding of an "acrylic adhesive."
Hence, Appellant's contentions are not persuasive of Examiner error.
Appellant also contends, "Schonemyr does not disclose that the
adhesive and the quaternary ammonium salt are mixed together, as claim 1
requires." App. Br. 14. Appellant's contention is not persuasive because,
although the Examiner relied on Schonemyr for disclosing a certain
antimicrobial agent, the Examiner did not rely on Schonemyr for teaching
the agent and the adhesive as being "mixed together." See Final Act. 7.
Instead, the Examiner states that this "mixed" limitation "is being treated as
a product by process limitation." Final Act. 7. The Examiner states that
"product by process claims are not limited to the manipulation of the recited
steps, only the structure implied by the steps." Final Act. 7. Thus, once the
recited product appears to be substantially the same as the prior art product,
"a 35 USC[§§] 102/103 rejection may be made and the burden is shifted to
applicant to show an unobvious difference." Final Act. 7 (referencing In re
Thorpe, 777 F.2d 695, 698 (Fed. Cir. 1985).
Appellant argues that upon "reading Schonemyr, an ordinarily skilled
artisan may think to coat Ansell's film dressing" but, "there is nothing in
Schonemyr that would prompt the artisan to substitute the antibacterial
agent in the gel of Ansell's film." App. Br. 16; see also Reply Br. 8, 10.
Although Appellant's argument identifies another way one skilled in the art
might be prompted to combine Ansell's adhesive with Schonemyr's
antimicrobial substance (i.e., "to coat"), Appellant still fails to resolve ( or
even address) the Examiner's finding that the manner by which the
compounds are combined is deemed to be a product by process limitation.
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Hence, Appellant's contention is not persuasive of either an "unobvious
difference" (see supra) or of Examiner error.
Appellant also contends that a skilled person, reading Schonemyr,
would have no reason "to substitute the antibacterial agent contained in the
adhesive gel of Ansell's film dressing with" Schonemyr's agent. App. Br.
16; see also Reply Br. 8. However, as indicated above, the Examiner's
stated reason is that the substitution would "yield predictable result," i.e.,
"prevent microbiological contamination" of the site. Final Act. 7. Appellant
does not address this expressed reason or otherwise explain how
Schonemyr's agent (substituted for Ansell's agent) would fail to prevent
microbiological contamination. Accordingly, Appellant's contention is not
persuasive of Examiner error.
Appellant also addresses the hydrophobic/hydrophilic properties of
the various adhesive/antimicrobial substances discussed in Ansell and
Schonemyr. App. Br. 16-17; Reply Br. 8-10. Appellant contends that
Ansell "requires the conclusion that hydrophilicity and water absorbing
properties" of the adhesive "were very important" whereas Schonemyr
teaches that its antimicrobial agent has "hydrophobicity and poor
water/blood absorption capacity." App. Br. 17 (referencing Schonemyr
,r 13). Thus, the two "are the very opposite" of each other and would not be
combined together. App. Br. 17.
The Examiner explains that Paragraph 13 of Schonemyr clearly states
that it is "the surface of a material coated with" Schonemyr's agent that
gives "the material a rather poor absorption capacity." Ans. 21 ( also
referencing Schonemyr ,r 57). The Examiner explains that it is not
Schonemyr's agent that imparts that property but, instead, the material upon
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Application 13/780,500
which it is coated. See Ans. 21. According to the Examiner, Appellant has
interpreted Paragraph 13 of Schonemyr "to mean applying a surface with
[Schonemyr's agent] renders the surface hydrophobic which is an error."4
Ans. 21. Appellant disagrees contending, "the Examiner is playing
semantics" and that "the Examiner never actually addresses the substance of
Applicant's point - namely, that a PHOSITA would have been dissuaded
from substituting the antibacterial in the adhesive gel of Ansell's film
dressing with" Schonemyr's antibacterial agent. Reply Br. 9.
As noted above, the Examiner referenced Paragraph 57 of Schonemyr
in rendering the rejection. See Ans. 21. This paragraph provides examples
of such suitable substrates as a "liquid absorbing material in food packages,"
"sanitary napkins," "diapers, and incontinence guards." Ans. 21.
Additionally, Paragraph 55 of Schonemyr states that wood, leather, paper,
non-woven fabrics of inorganic or organic fibers, cotton, wool, and other
such liquid absorbing items are each a suitable "surface of the substrate." In
view of the various substrates suggested for use with Schonemyr's agent in
Paragraphs 55 and 57, Appellant's contention that a skilled person "would
have been dissuaded" from substituting Schonemyr's antibacterial for that of
Ansell because of the asserted hydrophobic/hydrophilic reasons, is not
persuasive.
4 Although not mentioned by the Examiner, we note that Paragraph 13 of
Schonemyr (relied on by Appellant as disclosing that Schonemyr's agent is
hydrophobic) addresses past problems associated with antimicrobial agents
(see also App. Br. 11) and does not address Schonemyr's preferred agent
that was relied on by the Examiner. See Final Act. 6 (referencing
Schonemyr ,r 25); see also Schonemyr ,r 46.
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Application 13/780,500
Appellant also alleges, "the Examiner's proposed substitution changes
the principle of operation of the antibacterial component of Ansell." App.
Br. 17; see also id. at 18, Reply Br. 11-12. However, Appellant does not
make clear how the substitution and use of Schonemyr's antimicrobial
substance would fail to likewise prevent unwanted growth. In other words,
as per the Examiner, after Schonemyr's agent "is applied, it would not
change or alter the efficacy of the antimicrobial substance in killing bacteria
or microbes." Ans. 21. Appellant does not explain how Schonemyr's
compound would fail in this endeavor, nor does Appellant effectively
explain how "Schonemyr teaches away from making the Examiner's
substitution." Reply Br. 12.
Accordingly, and based on the record presented, we are not persuaded
the Examiner erred in rejecting claims 1-3, 6-8, 10, 13-15, 17, and 21 as
unpatentable over Ansell and Schonemyr, as evidenced by Grossmann and
El-Naggar.
The rejection of (a) claims 4 as being unpatentable over Ansell and
Schonemyr (as evidenced above) and Carte; and, (b) claims 5, 11, and 18 as
being unpatentable over Ansell and Schonemyr (as evidenced above), and
Leonard
Appellant does not present separate arguments regarding dependent
claims 4, 5, 11, and 18. Thus, lacking any reason why the additionally cited
art fails to teach/disclose the additionally cited limitations, we likewise
sustain the Examiner's rejections of these claims.
DECISION
TheExaminer'srejectionsofclaims 1-8, 10, 11, 13-15, 17, 18, and
21 are affirmed.
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Application 13/780,500
No time period for taking any subsequent action in connection with
this appeal (see 37 C.F.R. § 1.136(a)(l)) may be extended (see 37 C.F.R.
§ 1.136(a)(l )(iv)).
AFFIRMED
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