Ex Parte Ohri et al

Patent Trial and Appeal Board

Jun 7, 2018

14197634 (P.T.A.B. Jun. 7, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/197,634 03/05/2014
50855 7590
Covidien LP
60 Middletown A venue
Mailstop 54, Legal Dept.
North Haven, CT 06473
06/11/2018
FIRST NAMED INVENTOR
RachitOhri
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.
H-US-03773 (1603-104) 8703
EXAMINER
PENCE, JETHRO M
ART UNIT PAPER NUMBER
1717
NOTIFICATION DATE DELIVERY MODE
06/11/2018 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):
rs. patents. two@medtronic.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, and STEPHEN WU
Appeal2017-006067
Application 14/197 ,634
Technology Center 1700
Before JAMES C. HOUSEL, CHRISTOPHER L. OGDEN, and
JANEE. INGLESE, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL 1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner's decision finally rejecting claims 1, 3-9, and 11under35 U.S.C.
1 Our decision refers to the Specification (Spec.) filed March 5, 2014, the
Examiner's Final Office Action (Final Act.) dated March 22, 2016,
Appellant's Appeal Brief (Appeal Br.) filed August 15, 2016, the
Examiner's Answer (Ans.) dated January 11, 2017, and Appellant's Reply
Brief (Reply Br.) filed March 6, 2017.
2 Appellant is the Applicant, Covidien LP, whose parent is Medtronic, plc.,
and according to the Appeal Brief, is the real party in interest. Appeal Br. 1.
Appeal2017-006067
Application 14/197 ,634
§ 103(a) as unpatentable over Ohri3 in view of Pui. 4 We have jurisdiction
over the appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
STATEMENT OF THE CASE
The invention relates to an applicator for forming a film of modified
cellulose, wherein the applicator includes an atomizer for atomizing the
modified cellulose solution into a plurality of particles. Spec. i-f 7. The
Inventors further disclose that the atomizer is an electrospray assembly
including a plurality of electrodes coupled to a power source. Id. i-f 8.
Claim 1, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative of the subject matter on appeal.
1. An applicator for forming a film comprising:
a first extension tube coupled to a source of a
modified cellulose solution;
a shaft coupled to the first extension tube at a
proximal end thereof, the shaft defining a first lumen in fluid
communication with the first extension tube for transmission
of the modified cellulose solution through the shaft; and
an atomizer including an electrospray assembly
comprising a plurality of electrodes coupled to a power
source disposed at a distal end of the shaft and configured to
atomize the modified cellulose solution into a plurality of
particles.
ANALYSIS
After review of the opposing positions articulated by Appellant and
the Examiner, the applied prior art, and Appellant's claims and Specification
3 Ohri et al., US 2011/0092899, published April 21, 2011.
4 Pui et al., US 6,093,557, issued July 25, 2000.
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disclosures, we determine that the Appellant's arguments are insufficient to
identify reversible error in the Examiner's obviousness rejection. In re Jung,
637 F.3d 1356, 1365 (Fed. Cir. 2011). Accordingly, we affirm the stated
obviousness rejection for substantially the fact findings and the reasons set
forth by the Examiner in the Examiner's Answer. We offer the following
for emphasis only.
The Examiner finds Ohri discloses an apparatus for forming hydrogel
films comprising first extension channel 23 coupled to a source of a
modified cellulose solution, elongated shaft 30 coupled to channel 23 at a
proximal end thereof and defining first precursor lumen 3 3 in fluid
communication with channel 23 for transmission of the modified cellulose
solution through shaft 30, and atomizer 59 disposed at a distal end of shaft
30 and configured to atomize the modified cellulose solution into a plurality
of spray particles. Ans. 4--5. However, the Examiner acknowledges Ohri
fails to disclose that atomizer 59 includes an electrospray assembly
including a plurality of electrodes coupled to a power source. Id. at 5. For
this feature, the Examiner finds Pui discloses an apparatus for applying films
to cells comprising an atomizer including an electrospray assembly
comprising a plurality of electrodes coupled to a power source. Id. The
Examiner concludes that it would have been obvious to modify Ohri's
apparatus to include an electrospray assembly with a plurality of electrodes
coupled to a power source in the atomizer because Pui teaches the particle
spray provided by electrospraying provides a controllable biological material
transfer process suitable for continuous processing, wherein particle
agglomeration is avoided due to the charged particles repelling one another.
Id.
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Appellant raises two arguments against the Examiner's proposed
combination of Ohri and Pui: 1) that Pui is non-analogous prior art; and 2)
that Pui's electrospray assembly including its required electrodes would
interfere with Ohri' s desire to impart a charged surface functionality to its
atomizer to prevent premature gelling of the materials being dispensed.
Appeal Br. 3-7; Reply Br. 1-3. In particular, Appellant contends that while
Pui discloses electrospray devices for spraying suspensions including
biological materials and carrier particles, Pui fails to teach or suggest the use
of its devices with cellulose solutions or the formation of films. Appeal Br.
3; Reply Br. 2. In addition, Appellant asserts that because Pui is directed to
the introduction of biological material into cells, rather than formation of
films, Pui is not in the same field of endeavor as the film forming device of
the claims. Id. at 4--5. Appellant also asserts that a person of ordinary skill
in the art would not look to construct a film forming applicator with an
electrospray device where the materials to form the film repel each other,
contrary to the Examiner's finding. Id. at 5---6.
A reference is analogous art if it is either in the field of the inventors'
endeavor, or is reasonably pertinent to the particular problem with which the
inventors were concerned. In re Kahn, 441F.3d977, 987 (Fed. Cir. 2006).
The same field of endeavor test "for analogous art requires the PTO to
determine the appropriate field of endeavor by reference to explanations of
the invention's subject matter in the patent application, including the
embodiments, function, and structure of the claimed invention." In re Bigio,
381F.3d1320, 1325 (Fed. Cir. 2004) (reference describing a toothbrush
found to be in the same field of endeavor as a claim to a hairbrush based on
findings regarding function and structural similarity). "A reference is
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reasonably pertinent if, even though it may be in a different field from that
of the inventor's endeavor, it is one which, because of the matter with which
it deals, logically would have commended itself to an inventor's attention in
considering his problem." In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992).
We thus begin our consideration of all explanations of the inventors'
subject matter while keeping in mind that prior art is analogous when it "is
from the same field of endeavor, regardless of the problem addressed .... "
Bigio, 381 F.3d at 1320. Here, we note that the Specification is not limited
to forming films or coatings, but also teaches embodiments for the
therapeutic delivery of bioactive agents to body tissue both as a film and as
particles. See Spec. i-fi-174, 103, 115, 142, 167, 194, 211. In addition, the
Specification incorporates by reference in their entirety two Jaworek
publications5 which describe electrospraying by an applicator including an
electrostatic atomizer for creating an atomized spray of particles that forms a
film upon striking a surface. Id. i-f 118. The 2007 Jaworek publication
describes the use of electrospray was known for a variety of applications
including forming films, as well as to produce arrays of biologically active
substances including DNA. Jaworek2 279--280. The Specification describes
that the applicator atomizes the solution of modified cellulose by shearing
the stream of solution through the application of electrostatic charge thereto,
causing elongation of the stream and its disintegration into highly charged
droplets forming an aerosol plume of particles of modified cellulose
5 A. Jaworek et al., Trajectories of Charged Aerosol Particles Near a
Spherical Collector, 51-52 J. ELECTROSTATICS 603-609 (2001) and A.
Jaworek, Electrospray Droplet Sources for Thin Film Deposition, 42 J.
MATER. SCI. 266-297 (2007) ("Jaworek2").
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solution, which are then deposited on a target substrate such as tissue, to
form a coating or film. Spee. i-fi-f 116-118, 12 7.
Pui similarly describes an applicator including an atomizer having an
electro spray assembly for producing an atomized spray of particles. Pui
3: 15-31. These particles may include biological material, including DNA.
Id. at 4:48-50; 10:16-25. Pui's atomizer is structurally and functionally
similar to that claimed. See, for example, Pui Figs. lB, 6:40-7:30. Indeed,
Pui only differs from the applicator of claim 1 by failing to teach that the
applicator is connected to a source of modified cellulose solution.
Also, Appellant has not demonstrated, either via any evidentiary
showing or persuasive technical reasoning, that Pui's atomized particle spray
is not capable of forming a film. "[A ]pparatus claims cover what a device
is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc.,
909 F.2d 1464, 1468 (Fed. Cir. 1990). Therefore, the patentability of an
apparatus claim depends on the claimed structure, not on the use or purpose
of that structure, Catalina Mktg. Int'!, Inc. v. Coolsavings.com, Inc., 289
F.3d 801, 809 (Fed. Cir. 2002), or the function or result of that structure. In
re Danly, 263 F.2d 844, 848 (CCPA 1959); In re Gardiner, 171F.2d313,
315-16 (CCPA 1949). Although "[a] patent applicant is free to recite
features of an apparatus either structurally or functionally[,] .... choosing to
define an element functionally, i.e., by what it does, carries with it a risk."
In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). As the Examiner
finds, Pui's discussion of the particles repelling each other due to their
electrostatic charge does not prevent forming a film, but merely prevents
unwanted agglomeration of the particles. Also, the physical principles
underlying Pui' s electrostatic atomization process are the same as in
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Appellant's process, as both entail the creation of highly charged particles.
Compare Pui 7:55-8:11 with Spec. i-fi-f 116-118.
Thus, we are not persuaded that because Pui intends the biological
material in the atomized particles to enter biological target cells in the path
of the spray, Pui is not directed to the same field of endeavor as Appellant's
claimed invention. Given the substantial similarities between the
embodiments, function, and structure of the claimed invention and Pui' s
disclosure, we find Pui is directed to the same field of endeavor as
Appellant's claimed invention.
Appellant's second argument is that Pui's electrospray assembly
including its required electrodes would interfere with Ohri's desire to impart
a charged surface functionality to its atomizer to prevent premature gelling
of the materials being dispensed. Appeal Br. 7; Reply Br. 3. In particular,
Appellant asserts that Ohri' s device has a surface functionality to modulate
the pH of the microenvironment near the device surface, which prevents
premature gelling of the materials dispensed therefrom. Appeal Br. 3; Reply
Br. 1. Appellant also asserts that, in some cases, this surface functionality
may be provided by imparting a charge to the device surface, such as by
admixing or coating the device with a material capable of imparting a
charge. Appeal Br. 3. Appellant alleges that Pui' s electrodes would
interfere with the charge on Ohri's device surface, either by counter-acting
or enhancing the existing charge. Id. at 7; Reply Br. 3.
This argument also is unpersuasive of reversible error in the
Examiner's conclusion of obviousness based on the combination of Ohri and
Pui. Initially, we note that Appellant neither argues nor demonstrates that
the modification of Ohri' s device to include an electrostatic atomizer, via the
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use of a plurality of electrodes, as taught in Pui is beyond the ordinary skill
in the art. To the contrary, because Pui's device specifically provides a
charge to the particles and Ohri desires a charge be imparted to the surface
of the atomizer to prevent premature gelation of the material being
dispensed, the ordinary artisan would have understood that using an
electrostatic atomizer would predictably improve on Ohri's desire to impart
such a charge and prevent premature gelation of the material being
dispensed. If a person of ordinary skill can implement a predictable
variation,§ 103 likely bars its patentability. For the same reason, if a
technique has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar devices in the
same way, using the technique is obvious unless its actual application is
beyond his or her skill. KSR Int 'l Co. v. Teleflex, Inc., 550 U.S. 398, 417
(2007).
DECISION
Upon consideration of the record, and for the reasons given above and
in the Examiner's Answer, the decision of the Examiner rejecting claims 1,
3-9, and 11under35 U.S.C. § 103(a) as unpatentable over Ohri in view of
Pui is affirmed.
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No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
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