12774894 - (D) (P.T.A.B. Apr. 8, 2020)

Adden, Nina et al.

Patent Trials and Appeals BoardApr 8, 2020

12774894 - (D) (P.T.A.B. Apr. 8, 2020)

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. 12/774,894 05/06/2010 Nina Adden 4840.91490 9003 24978 7590 04/08/2020 GREER, BURNS & CRAIN, LTD 300 S. WACKER DR. SUITE 2500 CHICAGO, IL 60606 EXAMINER SNYDER, MELISSA A ART UNIT PAPER NUMBER 3783 NOTIFICATION DATE DELIVERY MODE 04/08/2020 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): docket@gbclaw.net ptomail@gbclaw.net verify@gbclaw.net PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte NINA ADDEN and BETTINA SURBER Appeal 2018-007677 Application 12/774,894 Technology Center 3700 BEFORE JEREMY M. PLENZLER, FREDERICK C. LANEY, and ARTHUR M. PESLAK, Administrative Patent Judges. PLENZLER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–21. An oral hearing was held on March 12, 2020. A transcript of that hearing is included in the record. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM IN PART. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Biotronik VI Patent AG. Appeal Br. 2. Appeal 2018-007677 Application 12/774,894 2 CLAIMED SUBJECT MATTER The claims are directed to a balloon catheter. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A balloon catheter featuring – at least on portions of an outward-turned surface of a dilatable area thereof – hair-like extensions, with an average diameter D, an average length L, and an average center-to-center distance P of the hair-like extensions to each other being selected such that a defined amount of a given drug on the balloon surface covered with hair-like extensions secured through capillary forces to surfaces of the hair like extensions, and wherein P is at least twice as large as D. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Naimark US 2004/0044308 A1 Mar. 4, 2004 Schestopol US 2005/0201974 A1 Sept. 15, 2005 REJECTIONS2 Claims 1–11 and 21 are rejected under 35 U.S.C. § 112, second paragraph, as indefinite. Claims 1–7, 10–13, 15–17, and 19–21 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Naimark. Claims 8, 9, 14, and 18 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Naimark and Schestopol. 2 The Examiner refers to the treatment of claim 13 under 35 U.S.C. § 101 as both an objection (Non-Final Act. 3–4) and a rejection (Ans. 13). Regardless of whether that claim is objected to or rejected, as indicated in the Appeal Brief, “Applicant will cancel claim 13” and “[t]he rejection of claim 13 is conceded to be correct by Applicant.” Appeal Br. 6. Appeal 2018-007677 Application 12/774,894 3 OPINION Indefiniteness Appellant does not dispute the Examiner’s indefiniteness rejection. Appeal Br. 5–6. Rather, Appellant and the Examiner appear to have come to an agreement as to how to amend claim 1 to overcome the rejection. Appeal Br. 5; Ans. 13. Accordingly, we summarily affirm the Examiner’s decision to reject claims 1–11 and 21 under 35 U.S.C. § 112, second paragraph, as indefinite. Obviousness Claim 1 requires “a defined amount of a given drug on the balloon surface covered with hair-like extensions secured through capillary forces to surfaces of the hair like extensions.” Claim 14 similarly requires “a defined amount of a given . . . drug secured to at least a portion of surfaces of the extensions through capillary forces.” In rebutting the Examiner’s rejection, Appellant makes clear that these limitations require that “a defined amount of a given drug” is essentially the entirety of that drug on the balloon surface. See, e.g., Tr. 13:23–25. Appellant also makes clear that “secured through capillary forces” requires that the drug cannot travel along the extensions, and is fixed in place by those capillary forces. See, e.g., Appeal Br. 9–10 (“‘Secured to,’ consistent with the specification and ordinary meaning, indicates that the drug is held in place on the surface of the hair- like extensions.”); Tr. 16:23–18:6. The Examiner’s rejections require a broader reading of “secured to” than is permitted by the broadest reasonable interpretation of that phrase. The Examiner finds that in Naimark “the drug is traveling,” but finds that “it is secured to the microneedles while traveling by capillary action[] to Appeal 2018-007677 Application 12/774,894 4 surfaces of the hair like extensions.” Non-Final Act. 5; see also Ans. 13–16. The Examiner explains that “the very nature of capillary action requires adhesion between the liquid and the structure to which it is attached” and “there is no claim requirement for how long the drug must remain adhered.” Ans. 16. The Examiner’s proposed interpretation of “secured to” would essentially render that phrase meaningless, as there would be no meaningful difference between “secured via capillary forces” and “moving via capillary forces.” Further, reading the phrase “secured to” as only requiring some incidental amount of drug being adhered to a wall during movement of the drug via capillary action, as the Examiner suggests in the Answer as noted above, is not consistent with the plain language of the claim or the Specification. The Specification explains, for example, that “the balloon catheter . . . uses the capillary forces of such a surface structure to secure a drug on the balloon surface and, if the need arises, to release it again.” Spec. 3:14–16. That is, the drug does not travel when it is “secured.” It must be released in order to travel from the “secured” state. For at least the reasons set forth above, the Examiner has failed to establish sufficiently that Naimark teaches its drug “secured to” its microneedles, which the Examiner considers as corresponding to the recited extensions. Accordingly, we do not sustain the Examiner’s decision to reject claims 1–21 under 35 U.S.C. § 103(a). CONCLUSION The Examiner’s rejections under 35 U.S.C. § 103(a) are reversed. The Examiner’s rejection under 35 U.S.C. § 112, second paragraph is affirmed. Appeal 2018-007677 Application 12/774,894 5 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–11, 21 112, second paragraph Indefiniteness 1–11, 21 1–7, 10–13, 15–17, 19– 21 103(a) Naimark 1–7, 10–13, 15–17, 19– 21 8, 9, 14, 18 103(a) Naimark, Schestopol 8, 9, 14, 18 Overall Outcome 1–11, 21 12–20 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED IN PART