Ex Parte Churchill et al

Patent Trial and Appeal Board

Sep 28, 2017

13801561 (P.T.A.B. Sep. 28, 2017)

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.
13/801,561 03/13/2013 William Lucas Churchill 17.020011 US 4912
82078 7590 10/02/2017
HologicATsta IP Law Group
c/o Vista IP Law Group LLP
21760 Stevens Creek Blvd.
Suite 100
Cupertino, CA 95014
EXAMINER
NIA, ALIREZA
ART UNIT PAPER NUMBER
3772
NOTIFICATION DATE DELIVERY MODE
10/02/2017 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):
nnr @ viplawgroup .com
hologicpatentgroup @ hologic .com
sp @ viplawgroup. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAM LUCAS CHURCHILL and
VICTOR MANUEL SOLANO UMANA
Appeal 2016-006373
Application 13/801,561
Technology Center 3700
Before CHARLES N. GREENHUT, JEFFREY A. STEPHENS, and
BRENT M. DOUGAL, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Applicant Hologic, Inc. (“Appellant”)1 seek our review under 35
U.S.C. § 134(a) from the Examiner’s Final Office Action (mailed Mar. 25,
2015) (“Final Act.”), as supplemented by an Advisory Action (mailed Sept.
22, 2015) (“Adv. Act.”), rejecting claims 6—8 and 14—17, which are all the
1 The Appeal Brief also identifies Hologic, Inc. as the real party in interest.
App. Br. 2. Unless otherwise noted, all citations to the Appeal Brief are to
the Supplemental Appeal Brief filed September 22, 2015.
Appeal 2016-006373
Application 13/801,561
claims pending in the application.2 We have jurisdiction under 35 U.S.C.
§ 6(b).
We reverse.
Claimed Subject Matter
The claimed subject matter relates to an intrauterine contraceptive
device (IUD) using copper as an active element. Spec. para. I.3 Claims 6
and 14 are independent. Claim 6, reproduced below, illustrates the claimed
subject matter.
6. A contraceptive intrauterine device, comprising:
a support structure configured for transcervical
implantation in a uterus, an active element coupled to the support
structure, the active element including a core comprising copper
that is at least partially coated with an outer layer comprising
gold or gold alloy, wherein the active element is configured to
release copper ions after implantation in a uterus at a release rate
dependent on both a surface area of the copper core and a
thickness of the outer layer.
Rejections
I. Claims 6—8, 14, 16, and 17 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Wildemeersch (US 6,742,520 Bl, issued June
1, 2004) and Denker et al. (US 2007/0075905 Al, published Apr. 5, 2007)
(“Denker”). Final Act. 2—5, 7—9; Adv. Act. 1.
2 The Advisory Action entered Appellant’s Amendment filed August 31,
2015, in which claim 6 was rewritten into independent form and claims 1—5,
9-13, 18, and 19 were canceled.
3 All citations to the Specification are to the version filed June 20, 2013, and
incorporating the amendment filed Feb. 18, 2015.
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Appeal 2016-006373
Application 13/801,561
II. Claim 15 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Wildemeersch, Denker, and Liao (US 6,711,925 B2,
issued Mar. 30, 2004). Final Act. 9—11.
DISCUSSION
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments, App. Br. 3—9; Reply Br. 1—5. We concur with Appellant’s
argument, App. Br. 6—8, that the Examiner has not provided sufficient
reasons why one of ordinary skill in the art would have coated
Wildemeersch’s copper element with the gold covering taught in Denker.
Wildemeersch teaches an IUD with copper and a steroid as the active
ingredients. Wildemeersch Abstract. Denker teaches a radio frequency
antenna for use with an implantable medical device, such as a pacemaker.
Denker Abstract, para. 4. Denker’s antenna has a core that may be
composed of a conductive or non-conductive metal alloy, including copper
alloys. Id. at para. 30. Denker teaches that “[i]f the core [is] electrically
non-conductive or has a relatively low conductivity, the outer surface of the
core 52 is coated with a layer of material such as gold, silver, copper or
aluminum, which has a relatively high electrical conductivity.” Id. at para.
31. Denker indicates that gold is preferred in situations where biological
compatibility of this layer is important, as it will not chemically interact with
the patient’s tissue and body fluids, which might result in either degradation
of the material or alteration of the tissue or fluids. Id. The Examiner finds
Denker’s teachings would have motivated one of skill in the art to cover
Wildemeersch’s copper element with gold, “with the teaching, suggestion
or motivation of increasing the electrical conductivity i.e. activity of the
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Appeal 2016-006373
Application 13/801,561
element and to further provide a material coating that is biocompatible and
prevents degradation of the material or alteration of the user’s tissue or
fluids.” Ans. 4.
We agree with Appellant that the Examiner has not sufficiently
explained why Denker’s teachings as to the purpose of its gold layer support
the finding that one of ordinary skill in the art would have wanted to coat
Wildemeersch’s copper element with gold. See App. Br. 6—8. Electrical
conductivity or activity of gold has no discemable connection to
Wildemeersch’s intrauterine contraceptive device. And while Denker
teaches that gold is a known biocompatible material, perhaps suggesting it
may be used anywhere biocompatibility is desired, the Examiner’s rejection
does not sufficiently explain why one of ordinary skill in the art would
specifically want to cover Wildemeersch’s active element with it.
In view of the foregoing, we do not sustain the rejection of claim 6.
Claim 14 is similarly directed to a contraceptive IUD comprising an “active
element comprising a copper core that is at least partially plated or coated
with an outer layer comprising gold or gold alloy.” Accordingly, we do not
sustain the Examiner’s rejection of claim 14 for the same reasons as claim 6.
We also do not sustain the rejections of claims 7, 8, and 15—17, which
depend from claims 6 or 14 and suffer from the same deficiency.
DECISION
We reverse the Examiner’s rejection of claims 6—8 and 14—17.
REVERSED
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