Ex Parte Sargeant et al

Patent Trial and Appeal Board

Jul 31, 2018

14144884 (P.T.A.B. Jul. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/144,884 12/31/2013
50855 7590
Covidien LP
60 Middletown A venue
Mailstop 54, Legal Dept.
North Haven, CT 06473
08/02/2018
FIRST NAMED INVENTOR
Timothy Sargeant
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-02342CON(203-7147CON 4973
EXAMINER
TYSON, MELANIE RUANO
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
08/02/2018 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 TIMOTHY SARGEANT, GREGORY FISCHVOGT,
MICHAEL BETTUCHI, GERALD HODGKINSON,
JOSHUA STOPEK, ARPANDESAI, ATU AGAWU
and SAUMY A BANERJEE 1
Appeal2017-008150
Application 14/144,884
Technology Center 3700
Before DONALD E. ADAMS, MICHAEL J. FITZPATRICK, and
JOHN G. NEW, Administrative Patent Judges.
NEW, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellants state that the real party-in-interest is Covidien LP. App. Br. 1.
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Application 14/144,884
SUMMARY
Appellants file this appeal under 35 U.S.C. § I34(a) from the
Examiner's Final Rejection of claims 21-28, 30-35, 37, and 38.
Specifically, claims 21, 24, 26-28, 32-34, 3 7, and 3 8 stand rejected as
unpatentable under 35 U.S.C. § I03(a) as being obvious over the
combination of Seid (US 5,254,133, October 19, 1993) ("Seid"), Fisher et al.
(US 2003/0109899 Al, June 12, 2003) ("Fisher"), and Akin et al. (US
2003/0100920 Al, May 29, 2003) ("Akin").
Claims 22 and 35 stand rejected as unpatentable under 35 U.S.C.
§ I03(a) as being obvious over the combination of Seid, Fisher, Akin, and
Hansen et al. (US 2010/0217309 Al, August 26, 2010) ("Hansen").
Claims 23 and 25 stand rejected as unpatentable under 35 U.S.C.
§ I03(a) as being obvious over the combination of Seid, Fisher, Akin, and
Sawhney et al. (US 2007 /0231366 Al, October 4, 2007) ("Sawhney").
Claim 30 stands rejected as unpatentable under 35 U.S.C. § I03(a) as
being obvious over the combination of Seid, Fisher, Akin, and Widomski et
al. (US 2005/0288706 Al, December 29, 2005) ("Widomski").
Claim 31 stands rejected as unpatentable under 35 U.S.C. § I03(a) as
being obvious over the combination of Seid, Fisher, Akin, and Rousseau
(US 6,755,867 B2, June 29, 2004) ("Rousseau").
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
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NATURE OF THE CLAIMED INVENTION
Appellants' invention is directed to biocompatible wound closure
devices, including an elongate body and a plug member, useful for wound
repair. Abstract.
REPRESENTATIVE CLAIM
Claim 21 is representative of the claims on appeal and recites:
21. A wound closure device comprising:
an elongate body having a proximal end and a distal end, and
being free of apertures or channels running therethrough,
the elongate body formed from a hydrogel; and
a plug member having a tissue facing surface fixedly coupled to
the distal end of the elongate body, the plug member
fabricated from a porous material and including at least
one reactive group that bonds to tissue.
App. Br. 12.
ISSUES AND ANALYSES
We are persuaded by, and expressly adopt, the Examiner's findings
and conclusions establishing that Appellant's claims are primafacie
anticipated by, or obvious over, the combined cited prior art. We address
the arguments raised by Appellant below.
A. Rejection of claims 21, 24, 26-28, 32-34, 37, and 38
Issue
Appellants argue these claims together. App. Br. 3. Appellants
contend that the Examiner erred in failing to establish that a person of
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ordinary skill in the art would have had an objective reason to combine the
references. App. Br. 10.
Analysis
The Examiner finds Seid teaches a wound closure device exhibiting
all of the limitations of claim 21 except those reciting: "the elongate body
formed from a hydrogel" and "the plug member ... including at least one
reactive group that bonds to tissue." See Final Act. 2--4. The Examiner
finds Fisher teaches a wound closure device with an elongate body that is
formed from a bioabsorbable hydrogel. Id. at 3 (citing, e.g., Fisher ,r 19).
The Examiner further finds that Akin teaches a wound closure device in
which the outer surface of the entire device may include at least one reactive
group that bonds to tissue ( an adhesive agent coating) in order to promote
securing of the device within the tissue. Id. at 4 (citing, e.g., Akin ,r 201).
The Examiner finds a person of ordinary skill would have been
motivated to combine the analogous teachings of Seid and Fisher because
Fisher teaches that the hydrogel is activated by the aqueous environment of
the body so that the elongate body can fit in a delivery device for delivery
into the opening to be sealed and then expand to seal the opening upon
delivery and contact with moisture that is naturally present in the body until
it seals the opening. Final Act. 3. The Examiner finds that it would also
have been obvious to combine the teachings of Seid and Fisher with Akin,
because doing so would promote securing of the tissue-facing surface of the
device to the tissue. Id. at 4.
Appellants argue that Seid teaches that "[t]he surgical implantation
device is effectively immobilized in place when in [a] deployed condition,
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thereby preventing its movement out of [a] fascia opening while tissue
grows around it." App. Br. 5 (quoting Seid, col. 2, 11. 57---61). Appellants
also quote Seid as teaching: "The planar member is held in place by the
locating plug and by pressure from the intestine and other tissues in the
peritoneal cavity. Thus, the surgical implantation device is immobilized in
position ... " and that "[t]he patches are effectively immobilized relative to
the opening in the fascia ... " Id. (quoting Seid col. 3, 11. 13-19).
Appellants assert that Fisher teaches a "plug [that] expands ... until the
plug seals [an] opening" and that the "expansion holds the plug in place."
Id. Therefore, Appellants argue, because Seid discloses patches
immobilized in place by a locating plug and by pressure within a body
cavity, and Fisher discloses a plug that expands to seal and hold the plug
within an opening, a person of ordinary skill in the art would not have
sought to combine Seid, Fisher, and Akin for the purposes of promoting a
secure attachment between the wound closure device and the tissue because
each reference appears to have solved the problems related to securing the
device. Id. at 5---6.
Appellants allege further that, by using claims 21 and 34 as a roadmap
for formulating the rejection, the Examiner has impermissibly used hindsight
reasoning in constructing a prima facie case that the claims are obvious over
the cited prior art references. App. Br. 6 ( citing Ex parte Rinkevich, Appeal
No. 2007-1317, 2007 WL 1552288, at *4 (BPAI 2007)).
Appellants next argue that Fisher teaches that: "[a]n important object
of this invention is to provide a means for sealing openings in a mammalian
body quickly and in the absence of conventional sutures, staples, and
adhesives." App. Br. 6 ( quoting Fisher i131 ). Appellants assert that the
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device taught by Akin, on the other hand, is coated or layered with an
adhesive agent "to promote securing of the device within [a] vessel wall."
Id. ( quoting Akin, ,r 201 ). Appellants repeat their assertion that the
Examiner has not articulated reasoning with sufficient rational underpinning
to explain why a person of ordinary skill in the art would have sought to
modify Seid's device in view of Fisher's hydrogel and Akin's adhesive
agent "where the references, as a whole, teach away from their
combination." Id.
We do not find Appellants' arguments persuasive. Fisher is cited by
the Examiner as teaching that the hydro gel elongate body of the device
facilitates insertion of the device into a wound opening. See Final Act. 3.
We agree with the Examiner that constructing the device of Seid using
hydro gel, to facilitate insertion and deployment of the wound closure device
(as taught by Fisher) would have been an obvious and desirable combination
to a person of ordinary skill in the art.
Furthermore, the fact that both references cite the need to secure their
respective devices to the tissue is immaterial in this instance, beyond the fact
that both references recognize that securing the device to the tissue is
important. See In re Kotzab, 217 F.3d 1365, 1370 (Fed. Cir. 2000) (All
elements of each prior art reference need not read on the claimed invention,
rather, the proper test for obviousness is what the combined teachings would
have suggested to a person of ordinary skill in the art). Appellants are
correct insofar as that Seid teaches that the device is: "held in place by the
locating plug and by pressure from the intestine and other tissues in the
peritoneal cavity" and that Akin teaches the use of an adhesive to help
secure its device to the surrounding tissue. See Seid col. 3, 11. 13-19; Akin
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201. However, the fact that both of these references (and Fisher) teach the
importance of securing the device to the surrounding tissues does not mean,
as the Examiner finds, that a person of ordinary skill would not be motivated
to combine the references to obtain even more securement of the device to
the surrounding tissues.
Appellants allege, without adducing any evidence of record, that the
Examiner impermissibly employed hindsight reasoning in arriving at a
prima facie conclusion of obviousness. We accord such conclusory
statements, unsupported by evidence or substantive argument, little
probative weight. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997)
(Attorney arguments and conclusory statements that are unsupported by
factual evidence are entitled to little probative value).
Just as importantly:
Any judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning, but so long as it
takes into account only knowledge which was within the level of
ordinary skill at the time the claimed invention was made and
does not include knowledge gleaned only from applicant's
disclosure, such a reconstruction is proper.
In re McLaughlin, 443 F.2d 1392, 1395 (C.C.P.A. 1971). Appellants have
adduced no evidence or substantive argument demonstrating that the
Examiner employed knowledge that could have been obtained only from
Appellants' Specification, and not from the cited combined prior art.
Appellants also assert that: "the references, as a whole, teach away
from their combination." App. Br. 6. We disagree. A reference teaches
away when: "a person of ordinary skill, upon reading the reference, would
be discouraged from following the path set out in the reference, or would be
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led in a direction divergent from the path that was taken by the applicant."
In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Appellants have pointed to
no teachings or suggestions in any of the references that would discourage or
divert a person of ordinary skill in the art from combining the references to
even more securely affix the device to the surrounding tissues. We
consequently affirm the Examiner's rejection of the claims.
B. Rejections of claims 22 and 35, 23 and 25, 30, and 31
Appellants argue, for each of the respective rejections, that the cited
prior art fails to cure the alleged deficiencies of Seid, Fisher, and Akin as
applied to independent claim 21. See App. Br. 8-11. Because we affirm, for
the reasons explained supra, the Examiner's rejection of claim 21 over Seid
Fisher, and Akin, we similarly affirm the Examiner's rejection of these
claims.
DECISION
The Examiner's rejection of claims 21-28, 30-35, 37, and 38 under
35 U.S.C. § 103(a) 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)(l )(iv).
AFFIRMED
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