Ex Parte Lin et al

Patent Trial and Appeal Board

Aug 7, 2017

11834164 (P.T.A.B. Aug. 7, 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.
11/834,164 08/06/2007 Tung-Liang Lin ACSC 76915 (8855US01) 9261
68919 7590 08/09/2017
FULWIDER PATTON, LLP (ABBOTT)
John S. Nagy, Esq.
6100 CENTER DRIVE, SUITE 1200
LOS ANGELES, CA 90045
EXAMINER
KRUER, KEVIN R
ART UNIT PAPER NUMBER
3649
NOTIFICATION DATE DELIVERY MODE
08/09/2017 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TUNG-LIANG LIN, JEONG S. LEE, EMMANUEL BIAGTAN,
and DAVID BURKETT
Appeal 2015-008037
Application 11/834,164
Technology Center 3600
Before MICHAEL C. ASTORINO, CYNTHIA L. MURPHY, and
KENNETH G. SCHOPFER, Administrative Patent Judges.
MURPHY, Administrative Patent Judge.
DECISION ON APPEAL
The Appellants1 appeal under 35 U.S.C. § 134 from the Examiner’s
rejections of claims 1—5, 7—22, and 31—39. We have jurisdiction over this
appeal under 35 U.S.C. § 6(b).
We AFFIRM.
1 “The real party in interest in this appeal is Abbott Cardiovascular Systems,
Inc.” (Appeal Br. 2.)
Appeal 2015-008037
Application 11/834,164
STATEMENT OF THE CASE
The Appellants’ invention “relates to the field of lubricious
hydrophilic coatings for intracorporeal medical devices such as a catheter or
guidewire.” (Spec. 12.)
Illustrative Claim
1. A medical device having at least a section with a
lubricious coating that comprises the cured reaction product of
a solution mixture applied to the device, the solution mixture
comprising:
a) a multifunctional monomer or polymer network­
forming compound;
b) a hydrophilic compound;
c) one or more first cross-linkers for cross-linking the
multifunctional monomer or polymer; and
d) one or more second cross-linkers, different than the
first cross-linkers, for cross-linking the hydrophilic compound,
such that the cured reaction product on the medical device is a
network of the hydrophilic compound cross-linked to itself and
interlocked with a polymerized network of the monomer or
polymer, wherein the solution mixture includes an adhesion
promoter which adheres to a surface of the medical device,
wherein the first cross-linkers cross-link the adhesion promoter,
such that the adhesion promoter is cross-linked to itself and to
the multifunctional monomer or polymer in the lubricious
coating.
References
Miura US 4,099,973 July 11, 1978
Stoy US 5,217,026 June 8, 1993
Hossainy US 6,153,242 Nov. 28, 2000
Mejiritski US 6,211,262 B1 Apr. 3, 2001
Eramo US 2005/0170071 A1 Aug. 4, 2005
Sulc US 2005/0191335 A1 Sept. 1,2005
Krongauz US 7,109,253 B1 Sept. 19, 2006
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Application 11/834,164
Rejections
I. The Examiner rejects claims 1—5, 7, 10, 11, 14, 15, 31—37,
and 39 under 35 U.S.C. § 103(a) as unpatentable over Eramo in view of Sulc
and Krongauz or Mejiritski. (Final Action 2.)
II. The Examiner rejects claims 8 and 9 under 35 U.S.C. § 103(a)
as unpatentable over Eramo in view of Sulc and Krongauz or Mejiritski, and
further in view of Stoy. (Final Action 5.)
III. The Examiner rejects claims 12 and 13 under 35 U.S.C.
§ 103(a) as unpatentable over Eramo in view of Sulc and Krongauz or
Mejiritski, and further in view of Miura. (Final Action 5.)
IV. The Examiner rejects claims 16—22 and 38 under 35 U.S.C.
§ 103(a) as unpatentable over Eramo in view of Sulc and Krongauz or
Mejiritski, and further in view of Hossainy. (Final Action 6.)
V. The Examiner rejects claims 35—39 under 35 U.S.C. § 112,
second paragraph, as indefinite. (Final Action 7.)
ANALYSIS
Claims 1,7, 15, 20, and 32 are the independent claims on appeal with
the rest of the claims on appeal (i.e., claims 2—5, 8—14, 16—19, 21, 22, 31,
and 33—39) depending therefrom. (Appeal Br., Claims App.) Independent
claims 1,7, 15, and 32 recite “[a] medical device having at least a section
with a lubricious coating.” (Id.) Independent claim 20 recites “[a] medical
device having an interlocking network lubricious coating on at least a
section of the device.” (Id.)
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Application 11/834,164
Rejection I
Independent claims 1,7, 15, and 32 recite that the lubricous coating
“comprises the cured reaction product of a solution mixture applied to the
[medical] device.” (Appeal Br., Claims App.) Independent claims 1,7, 15,
and 32 also recite that the solution mixture comprises “a multifunctional
monomer or polymer network-forming compound,” and a cross-linker for
“cross-linking the multifunctional monomer or polymer.” (Id.) The
Examiner finds that Eramo teaches “a lubricious coating for a medical
device” which is “applied as a solution,” contains an “acrylate,” and can
“comprise photocurable cross-linkers.” (Final Action 2.) In other words,
Eramo is “relied upon to teach a crosslinkable acrylic lubricious coating.”
(Answer 14.)
Independent claims 1,7, 15, and 32 additionally recite that the
solution mixture comprises “a hydrophilic compound” and a second cross­
linker for “cross-linking the hydrophilic compound” such that “the cured
reaction product on the medical device is a network of the hydrophilic
compound crosslinked to itself and interlocked with a polymerized network
of the monomer or polymer.” (Appeal Br., Claims App.) The Examiner
finds that Sulc teaches a “first cross-linked polymer,” a “hydrophilic
compound,” and a second cross-linker to “crosslink the hydrophilic
material” such that “[t]he resulting structure is an interpenetrating network.”
(Final Action 3, 4.) The Examiner determines that it would have been
obvious to add Sulc’s cross-linked hydrophilic compound to Eramo’s
composition to improve, among other things, the “coefficient of friction.”
(Id. at 3.)
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Application 11/834,164
The Appellants argue that Sulc “is directed to ophthalmic lenses” and
“does not suggest, mention or even remotely teach the use of the
composition forming the claimed ophthalmic lenses as a coating to be placed
on a medical device.” (Appeal Br. 12.) We are not persuaded by this
argument because, as pointed out by the Examiner, “Eramo, not Sulc, was
relied upon to teach a medical device with a coating applied thereto.”
(Answer 12.) Also, we agree with the Examiner that Sulc teaches improving
the properties of a crosslinked acrylic lubricious material and we agree with
the Examiner that Sulc’s teachings in this regard are not limited to
ophthalmic lenses. (See id.)
The Appellants also argue that “[tjhere is no teaching in the Eramo
publication which indicates that the disclosed lubricious coating would or
should require any type of modification to increase lubricity.” (Appeal
Br. 13.) We are not persuaded by this argument because Eramo discusses
how it “is known in the art” to use lubricous polymeric coatings “for the
purpose of reducing friction between the surface of [a] medical device and
other surfaces to which it comes into contact.” (Eramo 12.) As such, one
of ordinary skill in the art would infer that a more reduced coefficient of
friction would be a beneficial characteristic of such a coating; and Sulc
teaches that this characteristic can be achieved by adding a cross-linked
hydrophilic compound to an already hydrophilic material. (See Sulc ]Hf 15,
41^4.)
Independent claims 1,7, 15, and 32 further recite an “adhesion
promoter” that “is cross-linked to itself and to the multifunctional monomer
or polymer in the lubricious coating.” (Appeal Br., Claims App.) The
Examiner finds that “Krongauz teaches it is known to add an adhesion
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Application 11/834,164
promoter compound to a curable acrylate composition.” (Final Action 3.)
The Examiner determines that “it would have been obvious to add an acid
functionalized (meth)acrylate to the curable acrylate composition taught in
Eramo in order to improve adhesion to the metal substrate.” {Id. at 4.) As
pointed out by the Appellants (see Reply Br. 6), Eramo discloses that
additives “known to those of ordinary skill in the art,” such as “adhesion
promoters” may be employed in its composition. (See Eramo 121.)
The Appellants argue that “one skilled in the art would not look to the
Krongauz patent since it is non-analogous art.” (Appeal Br. 14.) We are not
persuaded by this argument because the Appellants are concerned with “an
adhesion promoter which improves the adhesion of the coating onto a
polymeric or metal surface of the medical device” (Spec. Ill) and
Krongauz teaches an “adhesion promoter” that “helps [a] coating
composition adhere to [a] metal conductor” (Krongauz, col. 7,11. 33—34).
Thus, we agree with the Examiner that Krongauz is “reasonably pertinent”
to a problem being solved by the Appellants, namely adhesion of a curable
acrylate coating to a metal substrate. (Answer 13—14.)
The Appellants also argue that Krongauz “fails to teach the use of a
cross-linked adhesion promoter which cross-links to itself and to a
polymerized monomer or polymer in the lubricious coating.” (Appeal
Br. 14.) We are not persuaded by this argument because it is not aligned
with the Examiner’s rejection in which Eramo is relied upon to teach the
lubricous coating (including the network-forming compound and the first
cross-linker) and Krongauz is relied upon to teach the adhesion promotor.
With this combination of the prior art teachings, the network-forming
compound would be an ethoxylated trimethylol propane triacrylate (see
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Eramo 134), the first cross-linker would constitute a photoinitiator (see id.
140), and the adhesion promotor would be an acid functionalized acrylate
(see Krongauz, col. 6,11. 49-60). The Appellants do not assert that photo­
curing this combination of constituents would not result in the adhesion
promotor being cross-linked to itself and the network-forming compound.2
With particular reference to independent claim 7, it calls for the
adhesion promotor to be a “functionalized acrylate” (see Appeal Br., Claims
App.) and the Appellants assert that Krongauz fails to disclose a
“functionalized acrylate” (id. at 16). We are not persuaded by this argument
because the Examiner finds that Krongauz discloses that “methacrylate” can
participate in the curing reaction and that “acid” can adhere to the metal.
(See Answer 9.) The Appellants do not dispute that this equates to “an
adhesion promoter comprising an acid functionalized acrylate” as described
in the Specification. (Spec. 131.)
With particular reference to independent claim 15, it calls for “a
secondary hydrophilic compound which is different than the cross-linked
hydrophilic compound and which is substantially noncross-linked in the
lubricious coating.” (Appeal Br., Claims App.) As pointed out by the
Appellants (see Reply Br. 5), a noncross-linked hydrophilic compound exists
in the pre-modified version of Eramo’s lubricious coating. (See Eramo
114.) We note that in the Examiner’s combination of the prior art, Sulc’s
2 The Specification conveys that when the network-forming compound is an
ethoxylated trimethylol propane triacrylate (see Spec. 126), the first cross­
linkers constitute photoinitiators (see id. 127), and the adhesion promoter is
an acid functionalized acrylate (see id. 131), the adhesion promoter will be
cross-linked to itself and to the multifunctional monomer or polymer in the
photo-cured lubricious coating.
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Application 11/834,164
second material (i.e., the cross-linked hydrophilic compound) is added to
Eramo’s coating. (See Final Action 3.) Thus, the resulting lubricious
coating would include both the existing noncross-linked hydrophilic
compound and the added cross-linked hydrophilic compound.3
Accordingly, the Appellants do not establish that the Examiner errs in
rejecting independent claims 1,7, 15, and 32 under 35 U.S.C. § 103(a) as
unpatentable over Eramo in view of Sulc and Krongauz or Mejiritski; and,
thus, we sustain this rejection. The Appellants do not separately argue
dependent claims 2—5, 10, 11, 14, 31, 33—37, and 39 (see Appeal Br. 17) and
so they fall with the independent claims.
Rejections II and III
Claims 8, 9, 12, and 13 depend directly or indirectly from independent
claim 1. (See Appeal Br., Claims App.) The Appellants argue only that the
additional references introduced in the rejections of these dependent claims
(i.e., Stoy, Miura) “do[] not address the shortcomings” of the prior art
combination used to reject independent claim 1. (Appeal Br. 17, 18.) As the
Appellants do not establish that the Examiner errs in the rejection of
independent claim 1, they likewise do not establish that the Examiner errs in
the rejection of dependent claims 8, 9, 12, and 13.
Thus, we sustain the Examiner’s rejection of dependent claims 8 and 9
under 35 U.S.C. § 103(a) as unpatentable over Eramo in view of Sulc and
Krongauz or Mejiritski, and further in view of Stoy; and we sustain the
3 We disagree, therefore, with the Appellants’ implication that the
Examiner’s combination of the prior art involves “replac[ing] the
hydrophilic polymer disclosed in Eramo with the hydrophilic polymer
disclosed in Sulc.” (Reply Br. 6.)
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Application 11/834,164
Examiner’s rejection of dependent claims 12 and 13 under 35 U.S.C.
§ 103(a) as unpatentable over Eramo in view of Sulc and Krongauz or
Mejiritski, and further in view of Miura.
Rejection IV
The Appellants do not argue claims 16—19 separately from
independent claim 1 (see Appeal Br. 18) and so they fall therewith. Thus,
we sustain the Examiner’s rejection of dependent claims 16—19 under
35 U.S.C. § 103(a) as unpatentable over Eramo in view of Sulc and
Krongauz or Mejiritski, and further in view of Hossainy.
Independent claim 20 recites that “[the] hydrophilic compound
network of a polyvinylpyrrolidone cross-linked to itself by a photo cross-
linker.” (Appeal Br., Claims App.) The Appellants argue that neither
Eramo nor Sulc teach such a hydrophilic compound network. (See id. at 18.)
We are not persuaded by this argument because the Examiner finds that
“Sulc teaches the polyvinylpyrrolidone is crosslinked to itself by a
crosslinker” and “Eramo teaches the material may be crosslinked with a
photoinitiator.” (Answer 17.) The Appellants do not challenge these
findings and/or dispute the Examiner’s position that Eramo and Sulc
together teach the claimed hydrophilic compound network. (See Reply
Br 4-8.)
Accordingly, the Appellants do not establish that the Examiner errs in
rejecting independent claim 20 under 35 U.S.C. § 103(a) as unpatentable
over Eramo in view of Sulc and Krongauz or Mejiritski, and further in view
of Hossainy; and, thus, we sustain this rejection. The Appellants do not
separately argue dependent claims 21, 22, and 38 (see Appeal Br. 17) and so
they fall with the independent claim 20.
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Rejection V
The Examiner’s rejection of claims 35—39 under 35 U.S.C. § 112,
second paragraph, concerns limitations reciting that certain cross-linkers
“preferentially” cross-link with one compound relative to another. (See
Appeal Br., Claims App.)4 The Examiner maintains that “[i]t is unclear how
one of ordinary skill in the art would go about determining whether a
crosslinker met the ‘preferential’ limitations.” (Final Action 7.)
The Appellants argue that the word “preferentially,” in the claimed
context of a chemical reaction, “would be readily understood” by one of
ordinary skill in the art. (Appeal Br. 19.) According to the Appellants, “[t]he
word ‘preferentially’ denotes a description of the selectivity of action, either
chemically or physiochemically, exhibited by a substance when in contact
with two other substances.” (Id.) The Appellants contend that this
interpretation would render the claim “clear” to one of ordinary skill in the
art. (Id.)
We are persuaded by this argument because the Appellants provide
evidence supporting their proposed interpretation, namely a dictionary
definition aligned with this interpretation. (See Appeal Br. 19.) Also, the
Examiner does not point to, and we do not see, statements in the
Specification inconsistent with this definition and/or the Appellants’
proposed interpretation. Additionally, the Specification offers guidance as
to conditions “which initiate the cross-linking reactions.” (Spec. 1 8; see
4 For example, claim 35 recites that the first cross-linker “preferentially
cross-links the multifunctional monomer or polymer relative to the
hydrophilic compound” and that the second cross-linker “preferentially
cross-links the hydrophilic compound relative to the multifunctional
monomer or polymer.” (Appeal Br., Claims App.)
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also id. 27—29.) The Examiner does not sufficiently establish that one of
ordinary skill in the art, armed with this definition and guidance, would find
it “impossible to determine if a crosslinker meets the claimed limitation.”
(Answer 18.)
Thus, we do not sustain the Examiner’s rejection of claims 35—39 under
35U.S.C. § 112, second paragraph, as indefinite.
DECISION
We AFFIRM the Examiner’s rejections of claims 1—5, 7—22, and 31—39
under 35 U.S.C. § 103(a).
We REVERSE the Examiner’s rejection of claims 35—39 under
35 U.S.C. § 112.
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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