Ex Parte Mathisen et alDownload PDFPatent Trial and Appeal BoardOct 8, 201311019534 (P.T.A.B. Oct. 8, 2013) Copy Citation 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. 11/019,534 12/23/2004 Torbjorn Mathisen 097085-0102 7867 22428 7590 10/08/2013 FOLEY AND LARDNER LLP SUITE 500 3000 K STREET NW WASHINGTON, DC 20007 EXAMINER YABUT, DIANE D ART UNIT PAPER NUMBER 3734 MAIL DATE DELIVERY MODE 10/08/2013 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 PATENT TRIAL AND APPEAL BOARD ____________ Ex parte TORBJORN MATHISEN and HENRIK MAGNUSSON ___________ Appeal 2011-008878 Application 11/019,534 Technology Center 3700 ____________ Before TONI R. SCHEINER, ULRIKE W. JENKS, and GEORGIANNA W. BRADEN, Administrative Patent Judges. BRADEN, Administrative Patent Judge DECISION ON APPEAL Appeal 2011-008878 Application 11/019,534 2 This is an appeal 1 under 35 U.S.C. § 134(a) from the Final Rejection of claims 1, 2, and 4-23. 2 An oral argument was held on May 30, 2013. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. STATEMENT OF THE CASE Appellants’ Invention Appellants’ invention relates to a resorbable polymeric mesh implant with at least two types of material. One material degrades after the other material. Spec. [0001]. Additionally, each material may have a different modulus of elasticity. Spec. [0024]-[0025]. Therefore, the modulus of elasticity of the implant changes over time as one material degrades faster than the other. Spec. [0016]. Exemplary Claim Independent claim 1 is representative of the invention, and is reproduced below with disputed limitations in italics: 1. A resorbable polymeric mesh implant whose implant configuration varies over time after implantation for use in reconstruction of soft tissue defects, wherein the resorbable polymeric mesh implant comprises: at least a first material and a second material, wherein the second material is substantially degraded at a later point in time than the first material, 1 Appellants represent that the Real Party-in-Interest is Novus Scientific PTE LTD. App. Br. 1. 2 Claim 3 was cancelled. Appeal 2011-008878 Application 11/019,534 3 wherein a modulus of elasticity of the first material includes both the modulus of elasticity of the material itself and also the elasticity due to a present structural configuration of the first material in said implant configuration, wherein a modulus of elasticity of the second material includes both the modulus of elasticity of the material itself and also the elasticity due to a present structural configuration of the second material in said implant configuration, and wherein: - the modulus of elasticity of the mesh implant is initially substantially constant and equal to the modulus of elasticity of the first material following a time of implantation and until said first material is substantially degraded, and wherein: - the modulus of elasticity of the mesh implant is substantially equal to the modulus of elasticity of the second material after the first material is substantially degraded, wherein the modulus of elasticity of the second material is lower than the modulus of elasticity of the first material; wherein a last substantially degraded material has a modulus of elasticity in its configuration that is compatible with the elasticity of a surrounding tissue such that the flexibility of said tissue is not restricted by the implant. Examiner’s Rejections 1. Claims 1, 2, 4-9, 11, 12, and 14-23 stand rejected under 35 U.S.C. 1 03(a) as being unpatentable over Hinsch et al., hereinafter “Hinsch” (U.S. Patent No. 6,162,962; Dec. 19, 2000) in view of Schilder et al. hereinafter “Schilder” (U.S. Patent No. 5,686,090; Nov. 11, 1997). Ans. 4. 2. Claim 10 stands rejected under 35 U.S.C. 1 03(a) as being unpatentable over Hinsch and Schilder, and further in view of Carr, Jr. et al. (U.S. Patent No. 5,733,337; Mar. 31, 1998). Ans. 7. Appeal 2011-008878 Application 11/019,534 4 3. Claim 13 stands rejected under 35 U.S.C. 1 03(a) as being unpatentable over Hinsch and Schilder, and further in view of Bowlin et al. (U.S. Pub. No. 2002/0042128 A1; Apr. 11, 2002). Ans. 8. ANALYSIS We have reviewed the Examiner’s rejections in light of Appellants’ arguments that the Examiner has erred. We are unpersuaded by Appellants’ argument. Appellants first contend (App. Br. 5; Reply Br. 2) that the combination of Hinsch and Schilder does not disclose all of the features of claim 1, because Hinsch did not consider the modulus of elasticity of a stiffening material and instead discusses the bending resistance and tear strength of a stiffening material. Appellants specifically contend that Hinsch only indicates that an additional material can be used to enhance the stiffness and rigidity of the implant, and that this enhancement is not due to the elastic modulus of the additional material. App. Br. 7. In support of Appellants’ contention, Appellants submitted a declaration from Professor Martin King 3 of the College of Textiles at North Carolina State University. Id. Professor King testifies that one of skill in the art with knowledge of modulus of elasticity and bending modulus would understand that these two properties are different. Id. The Examiner agrees that Hinsch does not explicitly disclose modulus of elasticity values for both a first material and second material in a mesh implant, but finds that Hinsch does recognizes the general relative elastic behavior of a first and second material. Ans. 9. The Examiner specifically finds Hinsch discloses that a second material (“flexible basic structure”) has 3 Declaration of Martin King under 35 U.S.C. § 1.132, signed May 25, 2010. Appeal 2011-008878 Application 11/019,534 5 an elastic or stretchable behavior that provides desirable interaction with the abdominal wall into which it is inserted “without problems to the usual movements of the tissue.” Id., citing Hinsch at col. 2, lines 40-54. According to the Examiner, Hinsch contrasts this to the first material (“stiffening material”) is useful for initial handling and insertion of the implant, but which has an “undesired rigidity” that provides problematic interaction with the abdominal wall, and therefore, it is degraded prior to the second material in order to prevent problematic interactions with the abdominal wall. Id., citing Hinsch at col. 2, lines 55-63. The Examiner concludes that although the modulus of elasticity is not expressly disclosed in Hinsch, it would have been obvious to one of ordinary skill in the art at the time of invention to provide a lower modulus of elasticity of the second material relative to the first material in Hinsch, considering the implant’s acknowledged desirable interaction with “usual movements of the tissue,” which may reasonably include tensile loads. Ans. 10. The Examiner specifically finds that it would also be within the general skill of a worker in the art to select mechanical properties that suit the intended use -- in this case, Hinsch recognizes the benefit of having a more rigid implant during delivery for easy handling and insertion, and a more elastic implant to match the tissue into which it is inserted after delivery in order to ensure proper healing. Ans. 9-10, citing Hinsch at col. 2, lines 56-63. We agree with the Examiner. Appellants next contend that Hinsch does not describe a last substantially degraded material that has a modulus of elasticity in its configuration that is compatible with the elasticity of a surrounding tissue such that the flexibility of said tissue is not restricted by the implant. App. Appeal 2011-008878 Application 11/019,534 6 Br. 14. According to Appellants, Hinsch teaches that the long term implant material, the knitted fabric of Hinsch, is “matched” such that the long term implant material stretches more than the surrounding tissue below a critical stress and less than the surrounding tissue above the critical stress so that long term implant material absorbs forces and prevents injury to tissue, as shown in Figure 8 of Hinsch. App. Br. 15. Appellants note that Figure 8 of Hinsch illustrates the results of a plunger test for only the basic structure, or long term material, of Hinsch without the stiffening material. Id. at 10, citing Hinsch at col. 7, lines 35-38. In contrast to Appellants’ position, the Examiner finds that Hinsch discloses the basic structure of the implant material stretches more than the surrounding tissue below a critical stress and less than the surrounding tissue above the critical stress, and, therefore, is governed by the tissue and is not force-independent like the claimed invention implant. Ans. 10, citing Hinsch at col. 2, lines 40-54. However, as indicated by the Examiner, the disputed limitation in claim 1 does not specify at what point a flexibility of tissue is “not restricted,” and also depending on the tissue, the disclosed implant of Hinsch may not restrict its flexibility. Therefore, the Examiner concludes that because Hinsch discloses that the basic structure does not inhibit the flexibility of the surrounding tissue at least below a critical stress, it meets the claim limitation. Ans. 10. We agree with the Examiner’s conclusion. The Examiner has established a prima facie case of obviousness. Appellants has failed to rebut the prima facie case by providing sufficient evidence that shows the combination of Hinsch and Schilder does not Appeal 2011-008878 Application 11/019,534 7 disclose one or more elements of the claimed invention. Accordingly, we affirm the rejection of claim 1. Appellants has not presented any substantially different arguments for claims 2 and 4-23, which require the same disputed claim limitations as representative claim 1, thus, these claims fall together. 37 C.F.R. § 41.37(c)(1)(vii). Accordingly, we affirm the rejection of claims 1, 2, and 4-23 under 35 U.S.C. § 103. DECISION The Examiner’s decision to reject claims 1, 2, and 4-23 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED ELD Copy with citationCopy as parenthetical citation