Ex Parte Eggert et al

Patent Trial and Appeal Board

Jun 1, 2018

14369744 (P.T.A.B. Jun. 1, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/369,744 06/30/2014
123223 7590 06/05/2018
Drinker Biddle & Reath LLP (WM)
222 Delaware A venue, Ste. 1410
Wilmington, DE 19801-1621
FIRST NAMED INVENTOR
Christoph Eggert
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.
074066-0008-US (512696) 1901
EXAMINER
SERGENT, RABON A
ART UNIT PAPER NUMBER
1765
NOTIFICATION DATE DELIVERY MODE
06/05/2018 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):
IPDocketWM@dbr.com
penelope.mongelluzzo@dbr.com
DBRIPDocket@dbr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER EGGERT and HEIKE HECKROTH
Appeal2017-007338
Application 14/369,744
Technology Center 1700
Before JULIA HEANEY, MONTE T. SQUIRE, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's
final decision to reject claims 22-27 and 29-35, which constitute all of the
claims pending in this application. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 In explaining our Decision, we refer to the Specification filed June 30,
2014 ("Spec."); Final Office Action docketed January 25, 2016 ("Final
Act."); Advisory Action docketed May 23, 2016 ("Adv. Act."); Appeal Brief
filed August 10, 2016, as corrected October 5, 2016 ("Appeal Br."); and
Examiner's Answer docketed January 18, 2017 ("Ans").
2 Appellant is the Applicant, Adhesys Medical GmbH, which, according to
the Appeal Brief, is also the real party in interest. Appeal Br. 2.
Appeal2017-007338
Application 14/369,744
The Claimed Invention
Appellant's disclosure relates to a beta-amino acid ester, particularly a
beta-amino acid ester modified aspartate, a process for the production
thereof, and the use of the compound as a hardener for the production of
polyurethane ureas or polyureas, particularly for adhesives. Spec. I.
Claim 22 is illustrative of the claimed subject matter on appeal and is
reproduced below from the Claims Appendix to the Appeal Brief (Appeal
Br. 11-12):
22. A method for closing, bonding, adhering or
covering a cell tissue, or for closing leakages in a cell
tissue comprising preparing a polyurea system
compnsmg
an isocyanate functional prepolymer as a
component A), wherein the isocyanate functional
prepolymer is obtained by reaction of an aliphatic
polyisocyanate Al) with polyol A2),
as a component B) a compound of a formula (I)
m (I)
in which
Ri, R2, R3 are respectively independent equal or
different organic radicals that have no
Zerewitinoff active hydrogen,
R4 are independently hydrogen, equal or
different organic radicals, having no
Zerewitinoff active hydrogen, or
together form an unsaturated or
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Appeal2017-007338
Application 14/369,744
x
n
Ill
aromatic ring, optionally containing
heteroatoms, wherein R4 have no
Zerewitinoff active hydrogen,
is a linear or branched organic radical,
optionally substituted by a heteroatom
in the chain, which does not have
Zerewitinoff active hydrogen,
0 < n :S 2 and
0 :Sm< 2,
wherein n + m = 2,
optionally organic fillers as a component C),
reaction products of isocyanate functional prepolymers
according to component A) having compounds according
to component B) and/or organic filler according to
component C) optionally as component D), and
optionally water and/or a tertiary amine as a component
E),
applying the polyurea system to a cell tissue, and
stopping the escape of blood or tissue fluids or
sealing leakages in the cell tissue.
The References
The Examiner relies on the following prior art reference as evidence
in rejecting the claims on appeal:
Barancyk et al., US 2008/0141903 Al June 19, 2008
(hereinafter "Barancyk")
Heckroth et al., US 2012/0178847 Al July 12, 2012
(hereinafter "Heckroth '84 7")
Heckroth EP 2275466 Al Jan. 19, 2011
(hereinafter "Heckroth")
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Application 14/369,744
The Re} ection
On appeal, the Examiner maintains the following rejection: claims
22-27 and 29-35 rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Heckroth3 in view Barancyk. Ans. 2; Final Act. 3.
OPINION
Having considered the respective positions advanced by the Examiner
and Appellant in light of this appeal record, we affirm the Examiner's
rejection based on the fact finding and reasoning set forth in the Answer,
Advisory Action, and Final Office Action, which we adopt as our own. We
highlight and address specific findings and arguments below for emphasis.
Appellant argues claims 22-27 and 29-35 as a group. Appeal Br. 6.
We select claim 22 as representative and claims 23-27 and 29-35 stand or
fall with claim 22. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner determines that the combination of Heckroth and
Barancyk suggests a method for bonding cell tissue or closing leaks in cell
tissue satisfying all of the limitations of claim 22 and thus, concludes that
the combination would have rendered the claim obvious. Ans. 2-3 (citing
Heckroth '847, Abstract, i-fi-14--7, 16-78, claim 30; Barancyk, Abstract, i-fi-14--
23, 31).
Appellant argues that the Examiner's rejection should be reversed
because the "Examiner has not provided an adequate rationale for why the
skilled artisan would be motivated to combine Heckroth and Barancyk."
3 The Examiner refers and cites to Heckroth '84 7 as the English language
equivalent of the Heckroth reference. Ans. 2.
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Application 14/369,744
Appeal Br. 6-7. In particular, Appellant contends that a person of skill in
the art would not have looked to Barancyk because: (1) there is no
motivation to substitute Barancyk's polyamine reaction products with the
particular "hardeners" of Heckroth (Appeal Br. 7); (2) the claimed invention
is "directed to a system allowing for the adjustment of curing speed to the
requirements in medical applications ... which doesn't necessarily mean
increasing the curing speed over, e.g., Heckroth" (id. at 7); (3) Barancyk
discloses "an entirely different approach" that relies on "sterically hindered
amines," as opposed to the claimed invention, which employs "simple
amines" (id. at 8); and (4) "there is nothing in Barancyk that indicates the
suitability of the[] compounds in medical application[ s ]" (id. at 9).
Id.
Appellant also argues that:
there is absolutely nothing in the disclosure of Barancyk from
which the skilled artisan could conclude that the compositions
described in Heckroth could further be improved with respect to
adjustability of hardening speed and guaranteeing sufficient
biological degradability following application in the animal or
human body.
We do not find Appellant's arguments persuasive of reversible error
in the Examiner's rejection. Based on the record before us, we find that a
preponderance of the evidence and sound technical reasoning support the
Examiner's determination that the combination of Heckroth and Barancyk
suggests all of the limitations of claim 22 and conclusion that the
combination would have rendered claim 22 obvious. Heckroth '84 7,
Abstract, i-fi-14--7, 16-78, claim 30; Barancyk, Abstract, i-fi-f l, 3-23, 31.
Contrary to what Appellant argues, we find that the Examiner does
provide sufficient reasoning explaining why one of ordinary skill would
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Appeal2017-007338
Application 14/369,744
have combined the teachings of the cited references to arrive at the claimed
method. As the Examiner explains (Ans. 2-3), because Heckroth teaches
polyurea tissue adhesives comprising an isocyanate functional prepolymer
(Heckroth '84 7, Abstract, i-fi-1 4--5) and Barancyk teaches secondary amine
functional ester compounds that correspond to the claimed "amine functional
ester compound of formula (I)" and that such compounds were known in the
art to be useful as curatives for reaction with prepolymers to yield polyureas,
including polyurea coatings (Barancyk, Abstract, i-fi-f l, 3-23, 31), it would
have been obvious to one of ordinary skill in the art to have used Barancyk's
secondary amine curatives to cure Heckroth's prepolymers. As the
Examiner notes (Ans. 4--5), the mere substitution of one equivalent for
another known in the art is likely to be obvious when it does no more than
yield predictable results. KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398, 416
(2007) ("The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.").
As the Examiner further explains (Ans. 4), Barancyk also teaches that
the disclosed secondary amine curatives have improved reactivity relative to
certain other secondary amines and provide adequate potlife (Barancyk i13),
which are additional reasons why one of ordinary skill in the art would have
utilized Barancyk's curatives for Heckroth's polyurea compositions. KSR,
550 U.S. at 420 (explaining that "any need or problem known in the field ...
can provide a reason for combining the elements in the manner claimed").
Appellant fails to direct us to sufficient evidence or provide an
adequate technical explanation of why the Examiner's articulated reasoning
for combining the teachings of the prior art to arrive at the claimed invention
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Application 14/369,744
lacks a rational underpinning or is otherwise based on some other reversible
error.
We do not find Appellant's contentions regarding the claimed
invention being "directed to a system allowing for the adjustment of curing
speed" (Appeal Br. 7); that Barancyk discloses "an entirely different
approach" than the claimed method (id. at 8); and improved "adjustability of
hardening speed" (id. at 9) persuasive of reversible error because they are
conclusory and Appellant does not provide an adequate technical
explanation to support them. Attorney argument is not evidence. In re De
Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).
Appellant's assertions at page 9 of the Appeal Brief regarding
Barancyk's compounds not being suitable for medical applications and not
"guaranteeing sufficient biological degradability" are equally unpersuasive
of reversible error because they too are conclusory. De Blauwe, 736 F.2d at
705.
Moreover, as the Examiner finds (Ans. 5-6) and Appellant does not
rebut, the skilled artisan would have had a reasonable expectation that
Barancyk's curatives could be used in Heckroth's medical applications
based on Heckroth's disclosure regarding its polyurea tissue components
being suitable and intended for medical applications (see Heckroth i-fi-f l-2,
7) and the structural similarity between Heckroth's amine curatives and
Barancyk's amine curatives.
Accordingly, we affirm the Examiner's rejection of claims 22-27 and
29-35 under 35 U.S.C. § 103(a) as obvious over the combination of
Heckroth and Barancyk.
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Application 14/369,744
DECISION/ORDER
The Examiner's rejection of claims 22-27 and 29-35 is affirmed.
It is ordered that the Examiner's decision 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).
AFFIRMED
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