Ex Parte Ohri et al

Patent Trial and Appeal Board

Sep 15, 2017

13325346 (P.T.A.B. Sep. 15, 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.
13/325,346 12/14/2011 Rachit Ohri H-US-03229 (1603-86) 6049
50855 7590
Covidien LP
60 Middletown Avenue
Mailstop 54, Legal Dept.
North Haven, CT 06473
09/19/2017 EXAMINER
BOWMAN, ANDREW J
ART UNIT PAPER NUMBER
1717
NOTIFICATION DATE DELIVERY MODE
09/19/2017 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):
SurgicalUS@covidien.com
medtronic_mitg-si_docketing@cardinal-ip.com
mail @ cdfslaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RACHIT OHRI, PHILLIP BLASKOVICH,
LAN PHAM, DAVID GIUSTI, and
VALENTINO TRAMONTANO
Appeal 2016-006562
Application 13/325,346
Technology Center 1700
Before BRADLEY R. GARRIS, MONTE T. SQUIRE, and
JENNIFER R. GUPTA, Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s
final decision rejecting claims 1—4, 6—17, and 19-24.3 We have jurisdiction
under 35 U.S.C. § 6(b). We affirm.
1 In this decision, we refer to the Specification filed December 14, 2011, the
Final Office Action mailed May 19, 2015 (“Final Act.”), the Appeal Brief
filed October 14, 2015 (“Appeal Br.”), the Examiner’s Answer mailed
April 22, 2016 (“Ans.”), and the Reply Brief filed June 17, 2016 (“Reply
Br.”).
2 Appellants identify the real party in interest as Covidien LP. Appeal Br. 1.
3 Claims 5,18, and 25 stand withdrawn from consideration by the Examiner
pursuant to 35 U.S.C. § 1.142(b) as being drawn to non-elected subject
matter. Non-Final Office Action mailed July 8, 2013.
Appeal 2016-006562
Application 13/325,346
The subject matter on appeal relates to methods for coating medical
implants, for example, surgical meshes, by heating particles used to form the
coating as they are being applied to the implant. Spec. 11. Independent
claims 1 and 14, reproduced below from the Claims Appendix of the Appeal
Brief, are illustrative of the claims on appeal.
1. A method comprising:
applying polymeric particles to a surface of a medical
device comprising a substrate; and
heating a surface of the particles as they travel to the
substrate,
wherein the particles form a coating on at least a portion
of the surface of the substrate upon contact therewith.
14. A method comprising:
applying polymeric particles to a surface of a medical
device comprising a substrate, the polymeric particles
comprising at least one monomer selected from the group
consisting of glycolide, lactide, p-dioxanone, e-caprolactone,
trimethylene carbonate, orthoesters, phosphoesters, and
combinations thereof; and
heating a surface of the particles to a temperature above
the glass transition temperature of the polymeric particles as they
travel to the substrate,
wherein the particles form a coating on at least a portion
of the surface of the substrate upon contact therewith.
Appeal Br. 13, 15 (Claims Appendix).
REJECTIONS
The Examiner maintains the following rejections on appeal:
Rejection 1: Claims 1—4, 6—12, 14—17, and 19—23 stand rejected
under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Liggins et al.
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Application 13/325,346
(US 2008/0124400 Al, published May 29, 2008) in view of Kennedy et al.
(US 5,246,782, issued September 21, 1993) (“Kennedy”), Hunter
(WO 2008/070996, published June 19, 2008) (Hunter”), Coats
(US 5,233,153, issued August 3, 1993) (“El”), and Wikipedia, Poly(lactic-
co-glycolic acid) (PLGA), http://en.wikipedia.org/wiki/PLGA (“E2”) (Final
Act. 3—5); and
Rejection 2: Claims 13 and 24 stand rejected under pre-AIA
35 U.S.C. § 103(a) as unpatentable over Liggins, Kennedy, El, and E2, and
further in view of Keller (US 5,452,854, issued September 26, 1995)
(“Keller”) (Final Act. 5-6).
DISCUSSION
Rejection 1
We review the appealed rejection for error based upon the issues
identified by Appellants and in light of the arguments and evidence
produced thereon. Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential) {cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) (“it has long been the Board’s practice to require an applicant to
identify the alleged error in the examiner’s rejections”)). After considering
each of Appellants’ contentions, we are not persuaded that Appellants
identify reversible error. Thus, we sustain the Examiner’s rejection of
claims 1—4, 6—12, 14—17, and 19-23 under pre-AIA 35 U.S.C. § 103(a) over
Liggins in view of Kennedy, Hunter, El, and E2 for the reasons expressed in
the Final Office Action, the Answer, and below.
The Examiner finds that Liggins teaches that it is known to deposit
microparticles including a polymer, such as poly(lactic-co-glycolic acid)
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Application 13/325,346
(PLGA), and a drug onto the surface of a medical device by spraying,
dipping, and painting, where the particles have a size overlapping that of the
current claims. Final Act. 3; Liggins 6—7, 47, 169, 278.
The Examiner finds that Kennedy teaches that in addition to the
coating methods disclosed in Liggins, polymeric particles may be deposited
on a medical instrument by RF plasma deposition. Final Act. 3; Ans. 2;
Kennedy 15:9-46, 18:59-62. Kennedy does not mention PLGA
specifically. Thus, the Examiner relies on Hunter to provide evidence that
PLGA is capable of being applied to a medical device using RF plasma
deposition. Final Act. 3; Hunter 30,11. 3—8. In addition, the Examiner finds
that El discusses that plasma spraying is a known method of spraying
polymer compositions onto a substrate or other surface and operates by
providing desired particles into a plasma stream where the particles are
softened or melted and then deposited on a substrate. Ell :6-48. The
Examiner determines that one of ordinary skill in the art would have been
motivated, based on Kennedy as evidenced by Hunter and El, to use RF
plasma deposition to apply Liggins’ microparticles on a medical device.
Final Act. 3.
Appellants argue that Kennedy teaches forming its laminates with
polymers containing perfluorocyclobutane rings by RF plasma deposition,
but does not disclose or suggest that RF plasma deposition would be useful
for depositing other polymers, such as PLGA, on a medical device. Appeal
Br. 4-5.
Appellants’ argument is not persuasive of reversible error. The
method of claim 1 includes two steps: (1) applying polymeric particles to a
surface of a medical device comprising a substrate, and (2) heating a surface
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Application 13/325,346
of the particles as they travel to the substrate. Claim 1 does not require any
specific polymeric particles. As the Examiner finds, and Appellants do not
dispute, Kennedy teaches that layers of polymer having
perfluorocyclobutane groups can be applied by a variety of methods
including spray coating and radio frequency (RF) plasma deposition.
Kennedy 15:9-18. Appellants do not dispute that RF plasma deposition
reads on the “applying” and “heating” steps recited in claim 1. Appeal
Br. 3—11; Reply Br. 1—6. Kennedy expressly teaches using its polymers as
passivation coatings on medical instruments. Kennedy 18:59-62. Thus, a
preponderance of the evidence supports the Examiner’s conclusion that
claim 1 ’s subject matter would have been obvious to a person having
ordinary skill in the art. Cf. In re Boyer, 363 F.2d 455, 458 n.2 (CCPA
1966) (citing In re Bush, 296 F.2d 491 (CCPA 1961) (The Board may rely
on less than all of the references applied by the Examiner in an obviousness
rationale without designating it as a new ground.).
Similarly, a preponderance of the evidence supports the Examiner’s
conclusion that claim 14’s subject matter would have been obvious to a
person having ordinary skill in the art. As discussed above, Kennedy
teaches using its polymers as passivation coatings on medical instruments.
Kennedy 18:59—62. Appellants’ argument that Kennedy only teaches
applying polymers containing perfluorocyclobutane rings to a device by RF
plasma deposition is an overly narrow view of Kennedy’s teachings.
Kennedy teaches that other polymer materials, such as polyesters, can be
coated on materials “by sputtering, vapor deposition and other means within
the skill in the art for such depositions,” and “[u]se of such techniques and
other suitable coating techniques is within the skill in the art.”
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Kennedy 15:46—55, 2:23—38. Thus, one of ordinary skill in the art would
reasonably understand Kennedy to suggest that a polyester such as PLGA
could be applied using RF plasma deposition to a medical instrument.
Appellants’ argument that Kennedy is non-analogous art, and thus, is
not applicable as prior art (Appeal Br. 5—8) is not persuasive. A reference is
analogous prior art if: (1) it is from the same field of endeavor, or (2) if it is
reasonably pertinent to the particular problem with which the inventor was
involved. In re Clay, 966 F.2d 656, 658—59 (Fed. Cir. 1992). As the
Examiner correctly finds, Kennedy explicitly teaches that its polymers are
used as coatings on medical instruments. Ans. 2; Kennedy 18:59-62. Thus,
we are not persuaded that the Examiner erred in finding that Kennedy is
analogous art, and thus, is available for an obviousness rejection.
Appellants argument that the teaching or suggestion for the
combination of the cited references is provided by Appellants’ Specification,
not the references is not well-taken. Appeal Br. 10. The Examiner has made
explicit findings regarding Liggins and Kennedy. Particularly, the Examiner
finds that Liggins teaches depositing polymer particles, for example
polyesters such as PLGA, by spraying, dipping, and painting, and Kennedy
teaches that spray coating and RF plasma deposition are alternative methods
for applying polymers containing perfluorocyclobutane rings as well as other
polymers, such as polyesters, as passivation coatings on medical
instruments. Liggins Tflf 6—7, 169; Kennedy 2:6-43, 15:9-55, 18:59—62; see
also Hunter 29,11. 13—27 (teaching that PLGA/MePEG film acts as a
passivation layer that delays the release of and/or activity of pharmaceutical
compounds coated on a medical device) and El 1: 6-48 (teaching plasma
spraying is a method of applying polymer compositions onto a substrate or
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other surface). On this record, Appellants have not adequately explained
why one skilled in the art, using no more than ordinary creativity, would not
have predictably used RF plasma deposition, a known method of depositing
polymer particles on a medical instrument, as taught by Kennedy, instead of
Liggins’ spraying method to apply microparticles comprising a polymer,
such as polyester PLGA, to a medical device. See KSR Int 7 Co. v. Teleflex
Inc., 550 U.S. 398, 415—16 (2007) (“The combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.”).
For the reasons above, we are not persuaded that the Examiner erred
in rejecting independent claims 1 and 14 under 35 U.S.C. § 103(a) over
Liggins in view of Kennedy, as evidenced by Hunter, El and E2. Therefore,
we sustain the Examiner’s rejection of claims 1—4, 6—17, and 19—24.
Rejection 2
Appellants do not present separate arguments in support of the
patentability of dependent claims 13 and 24 except to assert that Keller fails
to cure the alleged deficiencies in the rejection of 1—4, 6—17, and 19-24
under pre-AIA 35 U.S.C. § 103(a) over Liggins, Kennedy, Hunter, El, and
E2. Appeal Br. 11. This argument is not persuasive of error in the
Examiner’s rejection of claims 13 and 24 because, for the reasons discussed
above, we are not persuaded of any deficiencies in the Examiner’s rejection
of claims 1—4, 6—17, and 19—24. Thus, we sustain the Examiner’s rejection
of claims 13 and 24.
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Application 13/325,346
DECISION
For the above reasons, the rejection of claims 1—4, 6—17, and 19-24
under pre-AIA 35 U.S.C. § 103(a) over Liggins, Kennedy, Hunter, El, and
E2 is affirmed. In addition, the rejection of claims 13 and 24 under pre-AIA
35 U.S.C. § 103(a) over Liggins, Kennedy, El, E2, and Keller 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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