Ex Parte Keeley et al

Patent Trial and Appeal BoardAug 10, 2017

12911562 (P.T.A.B. Aug. 10, 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. 1956788.00028 1420 EXAMINER YABUT, DIANE D ART UNIT PAPER NUMBER 3731 NOTIFICATION DATE DELIVERY MODE 12/911,562 10/25/2010 45200 7590 08/14/2017 K&L Gates LLP-Orange County 1 Park Plaza Twelfth Floor IRVINE, CA 92614 E. Michael Keeley 08/14/2017 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): uspatentmail@klgates.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte E. MICHAEL KEELEY, GREGORY M. CRUISE, MICHAEL J. CONSTANT, SHEILA WARNER, and MARICELA WALKER Appeal 2016-000653 Application 12/911,562 Technology Center 3700 Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and JEFFREY A. STEPHENS, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is a decision on appeal, under 35 U.S.C. § 134(a), from a final rejection of claims 1—12 and 14—22. Br. 4. Claim 13 has been canceled. Br. 26 (Claims Appendix). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2016-000653 Application 12/911,562 THE CLAIMED SUBJECT MATTER The disclosed subject matter “relates to devices for the occlusion of body cavities, such as the embolization of vascular aneurysms and the like, and methods for making and using such devices.” Spec. 12. Claims 1, 12, and 21 are independent. Claim 1 is illustrative of the claims on appeal, and is reproduced below. 1. A device for implantation in an animal comprising: a helical carrier member; and a hydrogel having ionizable functional groups wherein said hydrogel comprises a macromer of about 48% polyethylene glycol) di-acrylamide and a pH sensitive component of about 52% sodium acrylate. REFERENCES RELIED ON BY THE EXAMINER Cruise US 2007/0299464 A1 Dec. 27, 2007 Greene, Jr. US 2009/0232869 A1 Sept. 17, 2009 THE REJECTIONS ON APPEAL Claims 1—5, 7—12, 14, 15, and 17—22 are rejected under 35 U.S.C. § 103(a) as unpatentable over Cruise. Claims 6 and 16 are rejected under 35 U.S.C. § 103(a) as unpatentable over Cruise and Greene, Jr. ANALYSIS The rejection of claims 1—5, 7—12, 14, 15, and 17—22 as unpatentable over Cruise Appellants provide a heading entitled “Separate argument of Claim 1.” Br. 12. However, Appellants further arguments for remaining claims 2— 5, 7—12, 14, 15, and 17—22 consist of either a replication of the limitations at 2 Appeal 2016-000653 Application 12/911,562 issue or a statement that the claim is allowable based on the arguments presented with respect to claim 1 (or both). Br. 18—22. Accordingly, we select claim 1 for review, with claims 2—5, 7—12, 14, 15, and 17—22 standing or falling with claim 1. See 37 C.F.R. § 41.57(c)(l)(iv). Claim 1 recites a percentage of “about 48%” for a polyethylene glycol) di-acrylamide macromere and a percentage of “about 52%” for the pH sensitive component of sodium acrylate. The Examiner relies on the teachings of Cruise, but acknowledges that the range of percentages disclosed therein “does not necessarily read on” these recited percentages. Final Act. 6—7. However, the Examiner references Cruise’s teaching that “the disclosed quantities may ‘vary depending upon the desired properties sought to be obtained by the present invention.’” Final Act. 7 (citing Cruise 198). The Examiner also identifies where Cruise discusses the use of these compounds to achieve a desired property. Ans. 3^4. For example, employing “a macromere of poly(ethylene glycol) di-acrylamide” results in an “increase in flexibility [that] facilitates deployment and prevents injury in the body.” Ans. 3 (referencing Cruise 140). Another is that “incorporating sodium acrylate results in a pH sensitive component (see Cruise at 144) allowing for a controlled rate of expansion of the hydrogel (see Cruise at 139)” and that this controlled rate of expansion “advantageously allows for longer repositioning time to a desired configuration (see Cruise at || 50, 73).” Ans. 3^4. The Examiner thus concludes that it would have been obvious “to modify the concentrations in Cruise to be ‘about 48% polyethylene glycol) di-acrylamide’ and ‘about 52% sodium acrylate’ in order to achieve desired results.” Ans. 2. Further, the Examiner states that 3 Appeal 2016-000653 Application 12/911,562 Appellants have not disclosed that the recited percentages “results in a particularly distinct device.” Final Act. 7. Appellants do not dispute Cruise’s teachings that polyethylene glycol) di-acrylamide and/or sodium acrylate affect certain characteristics of the resultant product as discussed above. However, Appellants contend that the claimed device “achieve[s] results that are surprising based on what would be expected from prior art teachings.” Br. 17. More specifically, Appellants contend that the recited composition “does not require pretreatment prior to use” and that this composition “also allows for increased expansion.” Br. 17; Spec. 1 67. The Examiner disagrees, stating, “the claimed concentrations achieve results that are expected rather than surprising.” Ans. 4. As indicated above, Appellants’ asserted unexpected or surprising result is a lack of pretreatment and an increase in expansion. Addressing the lack of pretreatment, Appellants’ Specification states that the recited composition “has a reduced stiffness” and “does not require pretreatment prior to use” (such pretreatment sometimes required a warm soaking “to achieve a desired flexibility”). Spec. 1 67. Hence, the indicated surprising result is an achievement of flexibility, yet Cruise also addresses hydrogels that “can be softer and/or more flexible in their unexpanded state.” Cruise 1 40. Addressing the surprising result of increased expansion, Cruise additionally addresses such matters stating, “[tjhose skilled in the art will appreciate that the ratio of expansion could be controlled by changing the relative amounts of sodium acrylate, PEG di-acrylamide, and water.” Cruise 1 68; Ans. 4 (also referencing Cruise 1 80). Hence, in view of Cruise’s teachings above, Appellants have not informed us of error in the Examiner’s 4 Appeal 2016-000653 Application 12/911,562 finding that “the claimed concentrations achieve results that are expected rather than surprising.” Ans. 4. In summation, we are not persuaded the Examiner erred in concluding, “[depending on the desired results, it would occur to one of ordinary skill in the art to adjust these concentrations to tailor the hydrogel's mechanical properties and environmental sensitivities.” Ans. 3. The Examiner also states, “therefore there would be motivation to increase the concentrations of polyethylene glycol) di-acrylamide and sodium acrylate in Cruise.” Ans. 3. Accordingly, we sustain the Examiner’s rejection of claims 1—5, 7—12, 14, 15, and 17—22. The rejection of claims 6 and 16 as unpatentable over Cruise and Greene, Jr. Appellants present the same argument for both claim 6 and claim 16. See Br. 23—24. We select claim 6 for review. The Examiner relies on the teachings of Greene, Jr. for teaching the additional limitation of “wherein said sodium chloride has a particle size of about 10 microns.” Final Act. 12. Appellants do not dispute these findings and conclusions; instead, Appellants contend, “Greene does not disclose the claimed concentrations” and that “Greene cannot remedy the deficiencies of Cruise.” Br. 23. In view of our analysis above, we are not apprised of any deficiency in Cruise. Therefore, we likewise sustain the Examiner’s rejection of claims 6 and 16 as being obvious over Cruise and Greene, Jr. DECISION The Examiner’s rejections of claims 1—12 and 14—22 are affirmed. 5 Appeal 2016-000653 Application 12/911,562 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 6