Ex Parte Stankus et al

Patent Trial and Appeal Board

Mar 26, 2013

11888940 (P.T.A.B. Mar. 26, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ADVANCED CARDIOVASCULAR SYSTEMS, INC.
Inventors: John Stankus, Mikael Trollsas
and Michael Ngo
____________________

Appeal 2012-002482
Application 11/888,940
Technology Center 1700
____________________

Before FRED E. McKELVEY, JACQUELINE WRIGHT BONILLA and
GRACE KARAFFA OBERMANN, Administrative Patent Judges.

McKELVEY, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-002482
Application 11/888,940

2

Statement of the case
Advanced Cardiovascular Systems Inc.
1
(“applicant”), the real party in 1
interest (Brief, page 1
2
), seeks review under 35 U.S.C. § 134(a) of a final rejection 2
dated 22 March 2011. 3
The application was filed in the USPTO on 3 August 2007. 4
The application has been published as U.S. Patent Application Publication 5
2009/0035350 A1. 6
In support of prior art rejections, the Examiner relies on the following 7
evidence. 8
East et al.
“East”
U.S. Patent Application Publication
2005/0048121 A1
3 Mar. 2005
Moore et al.
“Moore”
U.S. Patent Application Publication
2006/0051394 A1
9 Mar. 2006
Lendlein et al.
“Lendlein”
SHAPED-MEMORY POLYMERS, 41 Angew.
Chem. Int. Ed., pages 2034-2057
2002
Science Lab.com
“Polyethylene
Glycol”
Material Safety Data Sheet, Polyethylene
glycol 100 MSDS, pages 1-5
1 Nov. 2010
3

(see page 5)

1 Effective 13 February 2007, Advanced changed its name to Abbott
Cardiovascular Systems, Inc. Brief, page 1.

2 The Brief and Reply Brief before us do not appear to have numbered pages.
We have reproduced both and added numbered pages. Copies of the Brief and
Reply Brief with numbered pages accompany this opinion.

3 The Examiner indicates that Polyethylene Glycol was accessed on the internet in
2011. See Examiner‟s Communication dated 28 Oct. 2011.

Appeal 2012-002482
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Applicant does not contest the prior art status of the evidence relied upon by 1
the Examiner, including Polyethylene Glycol. 2
We have jurisdiction under 35 U.S.C. § 134(a). 3
Claims on appeal 4
Claims 1-41 are on appeal. Brief, pages 1 and 5; Answer, page 3. 5
Claim 1, which we reproduce from the Claim Appendix of the Brief 6
(page 14), reads [matter in brackets and indentation added (see 37 CFR § 1.75(i)); 7
principal limitations in issue in italics]: 8
A composition comprising a biodegradable copolymer 9
comprising at least two segments A and B wherein: 10
[1] the A segment 11
[1.1] has a Tg or Tm in the range from about 50 ºC to 12
about 300 ºC and 13
[1.2] is made from 14
[1.21] at least one diisocyanate and 15
[1.22] at least one diol, 16
[1.23] at least one diamine, and 17
[1.24] at least one dithiol chain extender; 18
[2] the B segment 19
[2.1] has a Tg or Tm in the range from about 30 ºC to 20
about 100 ºC and 21
[2.2] is derived from a polymer containing at least one 22
hydroxyl, amino or thiol end group; 23

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[3] the Tg or Tm of the A segment is at least about 20 ºC 1
greater 2
than the Tg or Tm of the B segment; and 3
[4] the A and B segments each independently have a 4
polymer number-average molecular weight (Mn) from 5
about 0.4 kDa to about 500 kDa; 6
wherein: 7
[5] the composition displays at least one shape-memory 8
effect, and 9
[6] a permanent shape of the composition is obtained 10
when the temperature of the composition is equal 11
to or greater than the Tg or Tm of the B segment; 12
and 13
wherein: 14
[7] the diol is selected from the group consisting of 15
ethylene glycol, 1,3-propanediol, 1,2-propanediol, 16
1,5-pentanediol, 1,7- heptanediol, 1,8-octanediol, 17
1,9-nonanediol, 1,10-decanediol, 18
1,11-undecanediol, 1,12-dodecanediol, 19
1,2-cyclohexanedimethanol, and 20
1,4-cyclohexanedimethanol. 21
Rejections 22
In the Answer, the Examiner maintains two rejections. 23

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Rejection 1: Claims 1-29, 32 and 35-37 stand rejected under § 103 as being 1
unpatentable over Moore, Lendlein and Polyethylene Glycol. Answer, page 4. 2
Rejection 2: Claims 30-31, 33-34 and 38-41 stand rejected under § 103 as 3
being unpatentable over Moore, Lendlein, Polyethylene Glycol and East. Answer, 4
page 6. 5
In presenting the appeal, essentially applicant makes one argument in 6
support of patentability of all claims. The argument is that Moore does not 7
describe or suggest the use of the claimed combination of (1) a diol, (2) a diamine 8
and (3) a dithiol. Brief, pages 9-10. Accordingly, we will decide both rejections 9
on the basis of Claim 1 and the sole argument presented on appeal. 37 CFR 10
§ 41.37(c)(1)(vii). 11
Analysis 12
Moore describes a biocompatible biodegradable polymer prepared using 13
inter alia a chain extender. Moore, ¶ 0026. According to Moore (¶ 0074): 14
Preferably the chain extender is difunctional [i.e., has two groups 15
reactive with an isocyanate group,] and examples of such chain 16
extenders are diols, dithiols, diamines, amino alcohols and 17
dicarboxylic acids. 18
The Examiner found that the subject matter of Claim 1 differs from Moore 19
in that Moore does not describe the use of a combination of diols, dithiols and 20
diamines. Answer, page 5. 21
Based on the description of Moore quoted above, the Examiner held that it 22
would have been obvious to one of ordinary skill in the art that a mixture of diols, 23
dithiols and diamines could be used as a chain extender. A use of a mixture of 24

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diols, dithiols and diamines would have been expected to have substantially similar 1
chain extender effects as a use of a diol alone, a dithiol alone or a diamine alone. 2
Answer, page 5. 3
The Examiner‟s analysis is consistent with binding precedent. In re 4
Kerkhoven, 626 F.2d 846, 850 (CCPA 1980) (it is generally prima facie obvious to 5
combine two compositions each of which is taught by the prior art to be useful for 6
the same purpose in order to form a third composition which is also used for that 7
purpose). See also In re Pinten, 459 F.2d 1053, 1055 (CCPA 1972); In re Susi, 8
440 F.2d 442 (CCPA 1971) (same); In re Dial, 326 F.2d 430, 432 (CCPA 1964) 9
(same); and In re Crockett, 279 F.2d 274, 276 (CCPA 1960) (same). Kerkhoven 10
was cited and relied upon by the Examiner. Answer, page 7. 11
As Moore reveals, diols, dithiols and diamines are known chain extenders. 12
The record reveals that one skilled in the art would have known that each would 13
react with a diisocyanate to form a polyurethane (in the case of a diol), a 14
polythiourethane (in the case of dithiol) and a polyurea (in the case of a diamine). 15
Each would have functioned as a chain extender in its individual capacity and there 16
would have been no reason for one skilled in the art to believe that a mixture of the 17
chain extenders would not likewise have functioned as a suitable combination 18
“chain extender.” 19
The Examiner observed that there is no evidence to establish that a mixture 20
would provide a substantially different result of use of the individual components. 21
We note that Moore describes the use of amino alcohols—a chain extender 22
having both a hydroxyl group and an amine group. Moore ¶ 0074 specifically 23
mentions ethanolamine [HO─CH2CH2─NH2]. While ethanol amine is a single 24

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chain extender as opposed to a mixture of a diol and a diamine, its suggested use 1
by Moore is consistent with a polymer having both urethane groups (based on the 2
chain extender hydroxyl group) and urea groups (based on the chain extender 3
amine group). 4
Applicant notes that in the Final Rejection the Examiner found that diols, 5
dithiols and diamines “are known equivalents.” Brief, page 9; Reply Brief, page 2; 6
Final Rejection, page 6:1-6. Actually, what the Examiner found is that one skilled 7
in the art would have expected that use of a combination of chain extenders to have 8
the same effect as use of individual chain extenders. In the Answer, the Examiner 9
refers to a “substantially similar effect . . .” Answer, page 5. The Examiner‟s use 10
of the term “equivalents” in the Answer (page 7) should be viewed in context with 11
the Examiner‟s findings and the precise language used in the Answer: “The . . . 12
[finding] that the diol, dithiol, and diamine chain extenders would be expected to 13
provide a similar effect . . . [is] based on the reference teaching the chain extenders 14
as being equivalents, and teaching that the chain extenders are used to provide a 15
stated effect.” Italics added. 16
Applicant continues by questioning the Examiner‟s “level of technical 17
training and his authority in making such a broad statement.” Brief, page 9. An 18
examiner‟s level of training is not relevant to any obviousness inquiry under § 103. 19
Western Electric Co. v. Piezo Technology, Inc. v. Quigg, 860 F.2d 428 (Fed. Cir. 20
1988) (allegations which might discredit examiner are irrelevant because 21
examiner's authority to act based on his appointment as examiner). Examiners are 22
not experts; rather examiners perform quasi-judicial function based on record 23
before PTO. Compagnie de Saint-Gobain v. Brenner, 386 F.2d 985, 987 (D.C. Cir. 24

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1967). Thus, examiners, like this Board, make findings of fact and conclusions of 1
law. Any attack on a finding or conclusion simply cannot be based on a level of 2
training of the authority of an examiner to act on case. As the Examiner had to 3
note in this case, “[t]he statement is not based on the „[E]xaminer‟s level of 4
technical training and his authority[.]‟” Answer, page 7. We find it unfortunate 5
that the Examiner had to spend any time addressing any training and authority 6
issue. 7
Applicant also argues that the Examiner “dismisses the differences in the 8
physical properties of the claimed composition and those disclosed by the 9
references essentially alleging the same composition should have the same 10
properties.” Brief, page 10. Unfortunately, we have to speculate as to what 11
applicant means precisely by “physical properties.” An appeal brief should lay out 12
a party‟s position is a clear manner. 37 CFR § 41.37(c)(1)(vii) (brief to include 13
“contentions . . . with respect to each ground of rejection presented for 14
review . . .”). “Prescience is not a required characteristic of the [B]oard.” Keebler 15
Co. v. Murray Bakery Products, 866 F.2d 1386 (Fed. Cir. 1989). However, what 16
we can readily appreciate from the record is that applicant claims a 17
“biodegradable” copolymer and that Moore describes biodegradable polymers. 18
Thus, on the record, Moore describes the same property as that claimed by 19
applicant. 20
Applicant also claims “shape-memory effect”. See [5] of Claim 1, supra. 21
But, applicant is using the same essential ingredients as Moore. How does the 22
record support a finding that the use of a mixture of chain extenders achieves the 23
alleged “shape-memory effect” whereas use of a single chain extender would not? 24

Appeal 2012-002482
Application 11/888,940

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Inventor must show that the results the inventor says the inventor gets with the 1
invention are actually obtained with the invention. In re Klosak, 455 F.2d 1077, 2
1080 (CCPA 1972). Applicant‟s description of its invention is entirely 3
prophetic—there is no objective evidence to show that applicant actually made a 4
polymer having any “shape-memory effect.” While prophetic specifications are 5
entirely permissible, in this case, applicant‟s prophetic description is not credible 6
or convincing evidence upon which the Examiner (or this Board) could base a 7
finding that applicant achieves a property not achieved by Moore. See the second 8
full paragraph on page 5 of the Answer where the Examiner sets out a detailed 9
analysis—an analysis with which we are in full agreement. 10
Other arguments 11
We have considered applicant‟s remaining arguments and find none that 12
warrant reversal of the Examiner‟s rejections. Cf. In re Antor Media Corp., 13
689 F.3d 1282, 1294 (Fed. Cir. 2012). 14
Decision 15
Upon consideration of the appeal, and for the reasons given herein, it is 16
ORDERED that the decision of the Examiner rejecting the claims on 17
appeal over the prior art is affirmed. 18
FURTHER ORDERED that no time period for taking any 19
subsequent action in connection with this appeal may be extended under 37 CFR 20
§ 1.136(a)(1)(iv). 21
AFFIRMED 22
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