Ex Parte Lavigne et al

Patent Trial and Appeal BoardJul 25, 2016

12791534 (P.T.A.B. Jul. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 121791,534 06/01/2010 50855 7590 07/27/2016 Covidien LP 555 Long Wharf Drive Mail Stop SN-I, Legal Department New Haven, CT 06511 FIRST NAMED INVENTOR Kevin Lavigne 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-01828 (203-6757) 2885 EXAMINER SZPIRA, TIJLIE ANN ART UNIT PAPER NUMBER 3731 NOTIFICATION DATE DELIVERY MODE 07/27/2016 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): mail@cdfslaw.com SurgicalUS@covidien.com medtronic_mitg-si_docketing@cardinal-ip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KEVIN LA VIGNE, STEVEN BENNETT, and NATHANIEL MAST Appeal2014-006353 Application 12/791,5341 Technology Center 3700 Before ERIC B. GRIMES, JEFFREY N. FREDMAN, and RYAN H. FLAX, Administrative Patent Judges. FLAX, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. Â§ 134(a) involving claims directed to methods for providing a surgical patch during surgery. Claims 1, 3, 4, 6, and 12 are on appeal as rejected under 35 U.S.C. Â§ 103(a). We have jurisdiction under 35 U.S.C. Â§ 6(b). We reverse. 1 The Real Party in Interest is Covidien LP. Br. 2. Appeal2014-006353 Application 12/791,5 34 STATEMENT OF THE CASE The appealed claims can be found in the Claims Appendix of the Appeal Brief. Claim 1 is representative and reads as follows: 1. A method for in situ application of a surgical patch during minimally invasive surgery, the method comprising the steps of: providing a surgical patch comprising: a substrate having a first hydrogel precursor applied to a first portion of the substrate; and a second hydrogel precursor applied to a second portion of the substrate; inserting the surgical patch into a polymeric bag; transferring the polymeric bag containing the surgical patch into a body cavity; removing the surgical patch from the polymeric bag while the polymeric bag is within the body cavity; and applying the surgical patch to a tissue within the body cavity by orienting the second portion of the substrate having the second hydro gel precursor closer to the tissue and the first portion of the substrate having the first hydrogel precursor further from the tissue. Br. 14 (Claims App'x). Appellants appeal the rejection of claims 1, 3, 4, 6, and 12 under 35 U.S.C. Â§ 103(a) over Splvey2 and Wolowacz3.4 2 U.S. Patent Application Pub. No. US 2010/0042045 Al (published Feb. 18, 2010) (hereinafter "Splvey"). 3 U.S. Patent No. US 6,946,003 Bl to Wolowacz et al. (issued Sept. 20, 2005) (hereinafter "Wolowacz"). 4 Appellants indicate claims 2 and 5 are cancelled and claims 7-11 are withdrawn from prosecution. Br. 14--16 (Claims App'x). 2 Appeal2014-006353 Application 12/791,5 34 DISCUSSION Appellants contend the cited prior art combination fails to teach the recited "first hydro gel precursor applied to a first portion of the substrate; and a second hydro gel precursor applied to a second portion of the substrate." Br. 7 (emphasis original). We agree. The Examiner cites Wolowacz at col. 5, lines 18-20, for such a disclosure. Final Action 3--4. This portion of the reference states, "[i]f the carrier medium is a gel, such as a hydrogel, it may be incorporated within and/or on and/or around the biocompatible, implantable material." This passage makes no mention of and cannot be understood to disclose a first hydrogel precursor and a second hydrogel precursor, as recited by the claims, which are not merely a hydrogel, but require the precursor components thereof, applied to a substrate, at respective first and second (i.e., different) portions thereof. The Examiner determined the recited "first hydrogel precursor" and "second hydrogel precursor" can be the same material and, therefore, the disclosure of W olowacz is commensurate with the scope of the claims because it discloses a hydrogel material potentially applied over different regions (e.g., inside or outside or around) of a substrate. We disagree because such an interpretation is not reasonable in view of the disclosure of the Specification, which describes precursors as reacting with one another to form a biocompatible cross-linked material, i.e., the hydrogel-this would not be possible if the two materials were the same. Spec. i-f 24. The broadest reasonable interpretation of "hydro gel precursor" therefore does not encompass a hydrogel itself. 3 Appeal2014-006353 Application 12/791,5 34 Where a claim lists elements separately, "the clear implication of the claim language" is that those elements are "distinct component[s]" of the patented invention. Gaus v. Conair Corp., 363 F.3d 1284, 1288 (Fed. Cir. 2004); Engel Indus., Inc. v. Lockformer Co., 96 F.3d 1398, 1404---05 (Fed. Cir. 1996) (concluding that where a claim provides for two separate elements, a "second portion" and a "return portion," these two elements "logically cannot be one and the same"). Becton, Dickinson and Co. v. Tyco Healthcare Group, LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010). During examination of a patent application, pending claims are given their broadest reasonable construction consistent with the Specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004 ). The portion of W olowacz cited by the Examiner for a disclosure of hydro gel precursors reacting makes no mention of hydro gel precursors, but describes an implantable material made of PLA (poly(lactic acid)) as being bioresorbable and load-bearing. See Final Action 4 (citing Wolowacz col. 11, 11. 3-11 ). Thus, the Examiner has not set forth a prima facie case for obviousness. For the above reasons, we find the preponderance of the evidence does not support the position that claim 1 would have been obvious over Splvey and Wolowacz, therefore, the rejection is reversed. SUMMARY The rejection of claims 1, 3, 4, 6, and 12 under 35 U.S.C. Â§ 103(a) over Splvey and Wolowacz is reversed. REVERSED 4