Ex Parte Jones et al

Patent Trial and Appeal Board

Mar 21, 2013

10738477 (P.T.A.B. Mar. 21, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DONALD K. JONES, JUAN A. LORENZO,
MARK L. POMERANZ, and DARREN SHERMAN
____________

Appeal 2011-000380
Application 10/738,477
Technology Center 3700
____________

Before DONALD E. ADAMS, ERICA A. FRANKLIN, and
ULRIKE W. JENKS, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims 17 and 18 (App.
Br. 2; Ans. 2).
1
We have jurisdiction under 35 U.S.C. § 6(b).
STATEMENT OF THE CASE
The claims are directed to a method of treatment. Claims 17 and 18
are representative and are reproduced in the Claims Appendix of Appellants’
Brief.

1
Pending claims 1-16 stand withdrawn from consideration (App. Br. 2; Ans.
2).
Appeal 2011-000380
Application 10/738,477

2
Claims 17 and 18 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Wallace
2
and Pinchuk.
3

We affirm.
ISSUE
Does the preponderance of evidence on this record support a
conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 1. Appellants disclose a device comprising an outer layer comprised of
ethylene vinyl alcohol and the use of dimethyl sulfoxide (DMSO) to dissolve
the outer barrier of the device to expose the bioactive agent (Spec. 8: 14-16).
FF 2. Appellants disclose that “[t]he bioactive agent may take the form of
any material or surface which when placed into the body causes or inhibits a
reaction with a bodily substance. For example … a thrombus inducing
material” (id. at 9: 18-20).
FF 3. Wallace suggests “a vaso-occlusive assembly, comprising (a) an
implantable device comprising a polymeric material and (b) a liquid agent
capable of at least partially solvating the polymeric material of the
implantable device[, wherein] … the assembly can further include a radio-
opaque material in the implantable device” (Wallace 2: ¶ [0015]; Ans. 3-4).
FF 4. Wallace suggests that the device can be a “polymer coated metal”
(id. at 3-4: ¶ [0032]; Ans. 5).
FF 5. Wallace suggests that the polymeric material can be polyvinyl
alcohols (id. at 2: ¶ [0016]; Ans. 6; see also id. (“Ethylene vinyl alcohol is
simply a species of the genus polyvinyl alcohol”)).

2
Wallace et al., US 2002/0143348 A1, published October 3, 2002.
3
Pinchuk et al., US 2002/0107330 A1, published August 8, 2002.

Appeal 2011-000380
Application 10/738,477

3
FF 6. Wallace suggests that the liquid agent can be DMSO (id. at ¶ [0017];
Ans. 5).
FF 7. Wallace suggests that the liquid agent is infused after deployment of
the implantable device (id. at ¶ [0018]; Ans. 4).
FF 8. Wallace’s “devices … may also include one or more bioactive
materials … for example a thrombotic agent” (id. at 4: ¶ [0039]).
FF 9. Examiner finds that Wallace fails to suggest “a bioactive agent
disposed between the [metal] support member and the [polymer] barrier”
(Ans. 4).
FF 10. Pinchuk’s “invention relates to compositions for therapeutic agent
delivery comprising a therapeutic-agent-loaded block copolymer … [and] to
biocompatible block copolymer materials for use in connection with
intravascular or intervascular medical devices” (Pinchuk 1: ¶ [0001]).
FF 11. Pinchuk suggests that
[I]t may be desirable to temporarily enclose the therapeutic-
agent-loaded copolymer to prevent release before the medical
device reaches its ultimate placement site. As a specific
example, a stent or catheter comprising therapeutic-agent-
loaded copolymer can be covered with a sheath during insertion
into the body to prevent premature therapeutic agent release.
(Id. at ¶ [0183]; Ans. 4.)
ANALYSIS
Based on the combination of Wallace and Pinchuk, Examiner
concludes that, at the time Appellants’ invention was made, it would have
been prima facie obvious “to place the therapeutic layer[, e.g., a thrombotic
agent,] between the metal … [layer] and barrier layer[, e.g., polymer,] of
Wallace” (Ans. 6). We agree.

Appeal 2011-000380
Application 10/738,477

4
We are not persuaded by Appellants’ contention that “Wallace does
not … suggest a bioactive agent disposed on an embolic support member,”
because this element is suggested by Pinchuk (App. Br. 8; Cf. FF 9-11).
We are not persuaded by Appellants’ contention that the combination
of Wallace and Pinchuk fails to “suggest a barrier to prevent a reaction
between the bioactive agent and a bodily fluid,” as Examiner provided a
sound basis for finding such a suggestion, which is supported by a
preponderance of the evidence (id.; Cf. FF 3-11; Ans. 5-6).
We are not persuaded by Appellants’ contention that Pinchuk fails to
suggest “a bioactive agent and a barrier that is to be dissolved,” because this
element is suggested by Wallace (id.; FF 3-8; Ans. 5-6).
CONCLUSION OF LAW
The preponderance of evidence on this record supports a conclusion
of obviousness. The rejection of claim 17 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Wallace and Pinchuk is affirmed.
Claim 18 is not separately argued and falls with claim 17.
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).

AFFIRMED

cdc