Ex Parte Cuevas et al

Board of Patent Appeals and Interferences

Sep 22, 2010

11081390 (B.P.A.I. Sep. 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.
11/081,390 03/16/2005 Brian J. Cuevas H-US-00201 6331
50855 7590 09/22/2010
Tyco Healthcare Group LP
d/b/a Covidien
555 Long Wharf Drive
Mail Stop 8-N1, Legal Department
New Haven, CT 06511
EXAMINER
SCOTT, ANGELA C
ART UNIT PAPER NUMBER
1796
MAIL DATE DELIVERY MODE
09/22/2010 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 BRIAN J. CUEVAS, FRANK R. SCHIRETZ JR.,
MATTHEW D. COHEN, and JOSEPH HOTTER
____________

Appeal 2009-009376
Application 11/081,390
Technology Center 1700
____________

Before BEVERLY A. FRANKLIN, LINDA M. GAUDETTE, and
KAREN M. HASTINGS, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL1

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.

Appeal 2009-009376
Application 11/081,390

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision2 finally rejecting claims 1-25, the only claims pending in the
Application.3 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The invention is directed to a suture (independent claims 1, 15 and 25)
and a method of use therefor (claim 20) and to a method of fabricating a
suture (independent claims 16 and 21). Claims 15 and 16 are representative
of the claimed suture and method of fabrication, respectively, and are
reproduced below from the Claims Appendix to the Appeal Brief:
15. A suture comprising polypropylene and a fray reducing amount
of distearylthiodipropionate.

16. A method of fabricating a suture comprising:

a) providing a melt containing a polyolefin and a fray
reducing amount of a thiodipropionate of the formula

R-OOCCH2CH2SCH2CH2COO-R

where R is a C13 or greater alkyl group; and

b) extruding the melt to form a filament.
The Examiner maintains (Ans.4 ), and Appellants request review of
(see App. Br. 4-5), the following grounds of rejection:
1. claims 1-7 and 14 under 35 U.S.C. § 103 as unpatentable over
Roby 8765 in view of Kelley6 (Ans. 2-3);

2 Final Office Action (“Final”), mailed Apr. 30, 2008.
3 Appeal Brief (“App. Br.”), filed Sep. 29, 2008.
4 Examiner’s Answer (“Ans.”), mailed Dec. 24, 2008.
5 US 2002/0177876 A1, pub. Nov. 28, 2002.
6 US 3,537,967, pat. Nov. 03, 1970.
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Appeal 2009-009376
Application 11/081,390

2. claim 15 under 35 U.S.C. § 103 as unpatentable over Roby 876
in view of Kelley (Ans. 4-5);
3. claims 16-19 under 35 U.S.C. § 103 as unpatentable over Roby
876 in view of Kelley (Ans. 5);
4. claims 21-24 under 35 U.S.C. § 103 as unpatentable over Roby
876 in view of Kelley (Ans. 6-7)
5. claims 8-10 under 35 U.S.C. § 103 as unpatentable over Roby
876 in view of Kelley as applied to claim 1, and further in view of
Sehanobish7 (Ans. 3-4);
6. claims 11-13 under 35 U.S.C. § 103 as unpatentable over Roby
876 in view of Kelley as applied to claim 1, and further in view of Roby
8988;
7. claim 20 under 35 U.S.C. § 103 as unpatentable over Roby 876
in view of Kelley as applied to claim 1, and further in view of Chin9 (Ans.
6); and
8. claim 25 under 35 U.S.C. § 103 as unpatentable over Roby 876
in view of Kelley, Sehanobish, and Roby 898.
With respect to each of grounds of rejection 1 and 3-6 (i.e., those
grounds applying to two or more claims), Appellants have elected to argue
the claims as a group. (See App. Br. 8 (last para.), 11 (first full para.), 12
(second full para.), 13-15.) Therefore, we decide the appeal as to all claims
subject to grounds of rejection 1 and 3-6 on the basis of claims 1, 16, 24, 8,
and 11, respectively.

7 US 6,300,419 B1, issued Oct. 09, 2001.
8 US 6,494,898 B1, issued Dec. 17, 2002.
9 US 5,391,182, issued Feb. 21, 1995.
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Appeal 2009-009376
Application 11/081,390

We have considered Appellants’ arguments, but are not convinced of
error in any of grounds of rejection 1-8 (as enumerated above). Therefore,
we adopt the Examiner’s findings of fact and reasoning as our own in
affirming all eight grounds of rejection. For the sake of completeness, we
expand upon the Examiner’s discussion of the following two issues, which
are common to several grounds of rejection (indicated in parenthesis
following each issue statement):
1. Did the Examiner fail to establish proper motivation to combine
Roby 876 and Kelley (grounds of rejection 1-8)?
2. Did the Examiner rely on improper hindsight reasoning in
determining that one of ordinary skill in the art would have considered the
teachings of Sehanobish in developing a suture (ground of rejection 5 and
8)?
With respect to Appellants’ additional arguments directed to grounds
of rejection 6-8, we note that Appellants have not specifically challenged the
Examiner’s factual findings with respect to Roby 898 and Chin. Nor have
Appellants challenged the Examiner’s proposed motivation for combining
these references with Roby 876 and Kelley.
Issue 1: Did the Examiner establish proper motivation to combine
Roby 876 and Kelley (grounds of rejection 1-8)?
Roby 876 discloses “[a]n exemplary process for manufacturing a
suture.” (Spec. 9:4-6 (incorporating Roby 876 by reference in its entirety).)
According to the Roby 876 method, a fatty acid diester is added to a
polyolefin, e.g., polyethylene, polypropylene, and copolymers or blends
thereof to form a polymer melt, which is then extruded and cooled to form a
filament. (¶¶ [0011, 0015, 0016].) “The poly[olefin] may contain some
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Appeal 2009-009376
Application 11/081,390

colorant to facilitate visualizing the suture filament during a surgical
procedure.” (¶ [0016].)
The Examiner concedes that Roby 876 does not teach the use of a
thiodipropionate in a suture. (Ans. 3.) The Examiner thus turns to Kelley.
(Id.)
According to Kelley, polypropylene, when used in the manufacture of
articles for medical use, must first be sterilized, e.g., by high energy
radiation. (Col. 1, ll. 29-35.) Kelley discloses a drawback of the
sterilization process is that it causes discoloration of the polypropylene.
(Col. 1, ll. 35-38.) Kelley overcomes the problem of discoloration by adding
a stabilizer containing up to 1.0% of a diester of thiodipropionic acid. (Col.
1, ll. 51-58.)
The Examiner found that “[o]ne of ordinary skill in the art would find
it advantageous to sterilize sutures, a medical article.” (Ans. 8.) Appellants
have not challenged this finding. (See generally, App. Br. 7-12 and 16-17;
Rep. Br.10 2-5 and 7.)
The Examiner determined
[a]t the time of the invention, a person of ordinary skill in the
art would have found it obvious to use the thiodipropionate,
as taught by Kelley et al., in the composition, as taught by
Roby et al., and would have been motivated to do so because
Kelley et al. suggests that thiodipropionate is an extremely
effective stabilization agent for the propylene composition.

(Ans. 3; see also, Ans. 5-7.)
Appellants contend the ordinary artisan would not have been
motivated to modify Roby 876 to include a thiodipropionate because “there

10 Reply Brief, filed Feb. 18, 2009.
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Appeal 2009-009376
Application 11/081,390

is no mention in Kelley of any flexible medical article, including a suture,
nor is there any mention or appreciation that the thiodipropionates may be
utilized in a fray-reducing amount to reduce fraying of a suture.” (App. Br.
8; see also, App. Br. 9-12 and 16 (repeating this argument).)
To render an invention obvious, the prior art does not have to address
the same problem addressed by a patent applicant. KSR Int'l Co. v. Teleflex
Inc., 550 U.S. 398, 420 (2007). “As long as some motivation or suggestion
to combine the references is provided by the prior art taken as a whole, the
law does not require that the references be combined for the reasons
contemplated by the inventor.” In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir.
1992).
The evidence of record (see e.g. above citations to Kelley supra p. 5)
supports the Examiner’s finding that Kelley teaches the use of
thiodipropionate as a stabilization agent for propylene compositions used in
medical device applications. Because the Roby 876 suture would require
sterilization, the Examiner had a reasonable basis for concluding that the
ordinary artisan would have been motivated to add thiodipropionate to the
Roby 876 suture composition to improve its stability during sterilization.
Appellants’ arguments do not address and, therefore, do not identify
error in the Examiner’s fact finding and reasoning. (Ans. 8-9 (discussing
Appellants’ argument); see also, Ans. 9-12 (same discussion).)
Accordingly, we are not persuaded the Examiner failed to establish proper
motivation for combining Roby 876 and Kelley.

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Appeal 2009-009376
Application 11/081,390

Issue 2: Did the Examiner rely on improper hindsight reasoning in
determining that one of ordinary skill in the art would have considered the
teachings of Sehanobish in developing a suture?

The Examiner concedes the combination of Roby 876 and Kelley fails
to teach the use of .01% to 2% by weight of a polyethylene wax. (Ans. 3-4;
see also, Ans. 7.) The Examiner thus turns to Sehanobish which discloses
“propylene polymer compositions comprising a high crystalline propylene
polymer, a substantially linear ethylene polymer, linear ethylene polymer or
combinations thereof, an optional filler and an optional additional polymer.”
(Abstract.) Sehanobish discloses that the compositions may be extruded and
formed into fibers. (Col. 12, ll. 31-39.) The compositions are described as
having “improved processability with a good balance of stiffness and
toughness.” (Abstract.)
According to Sehanobish, the optional additional polymer added to
the composition may be low density polyethylene, linear low density
polyethylene, high density polyethylene, or an ethylene/propylene
copolymer. (Col. 10, ll. 43-52.) The Examiner finds, and Appellants do not
dispute, that these optional additional polymers are synthetic waxes as
recited in appealed claims 8 and 25.11 (Ans. 4, 7; App. Br. 13, 17; Rep. Br.

11 An Examiner's statement is accepted as true when an appellant fails to
question its accuracy or to present contradicting evidence. See, e.g., In re
Fox, 471 F.2d 1405, 1407 (CCPA 1973) (affirming the Board’s decision:
“In this court appellant has not denied the existence of the facts on which the
examiner rested his obviousness rejection nor the added facts of which the
board took judicial notice.”); In re Kunzmann, 326 F.2d 424, 425 n.3 (CCPA
1964) (“[T]he examiner appears to have considered thoroughly this
assertion, and to have found otherwise. Since appellant has not shown this
finding to be clearly erroneous, we accept it as fact.”).

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Appeal 2009-009376
Application 11/081,390

5-7.) Appellants also do not challenge the Examiner’s finding that wax acts
as a lubricant for a suture. (Id.)
The Examiner determined that
[a]t the time of the invention, a person of ordinary skill in the
art would have found it obvious to add one of the ethylene
polymers above, as taught by Sehanobish et al., into a
propylene composition, as taught by Roby et al., and would
have been motivated to do so because the wax acts as a
lubricant for the suture

(Ans. 4; see also, Ans. 7) and would improve flexibility of the composition
which one of ordinary skill in the art would view as a desirable feature in a
suture (Ans. 12; see also, Ans. 15.)
Appellants argue Sehanobish only teaches that the compositions may
be used in various molded articles which are unrelated to sutures. (App. Br.
13; see also, App. Br. 17.) Thus, one of ordinary skill in the art would not
look to Sehanobish to arrive at Appellants’ claimed sutures. (Id.)
When there is a design need or market pressure to solve a
problem and there are a finite number of identified,
predictable solutions, a person of ordinary skill has good
reason to pursue the known options within his or her
technical grasp. If this leads to the anticipated success, it is
likely the product not of innovation but of ordinary skill and
common sense. In that instance the fact that a combination
was obvious to try might show that it was obvious under
§ 103.

KSR, 550 U.S. at 421.
In our view, the evidence of record supports the Examiner’s
determination that one of ordinary skill in the art would have considered and
applied the teachings of Sehanobish in developing a suture. Although
Sehanobish does not explicitly disclose the use of their composition in a
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Appeal 2009-009376
Application 11/081,390

suture, Sehanobish clearly does not limit use of the composition to the
manufacture of molded articles exclusive of sutures (see Sehanobish, col. 12,
ll. 31-39 supra p. 7 (composition may be extruded and formed into fibers)).
Appellants have not presented arguments or evidence to refute the
Examiner’s findings that one of ordinary skill in the art would have
understood that the waxes disclosed in Sehanobish would impart to the
proposed Roby 876/Kelley composition properties desirable in a suture.
Accordingly, we are not persuaded the Examiner relied on improper
hindsight reasoning in determining that one of ordinary skill in the art would
have considered the teachings of Sehanobish in developing a suture
For the foregoing reasons, we affirm the Examiner’s decision to reject
claims 1-25.

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).

AFFIRMED

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TYCO HEALTHCARE GROUP LP
D/B/A COVIDIEN
555 LONG WHARF DRIVE
MAIL STOP 8-N1, LEGAL DEPARTMENT
NEW HAVEN, CT 06511
9