Ex Parte Van Antwerp

Patent Trial and Appeal BoardNov 28, 2012

10616784 (P.T.A.B. Nov. 28, 2012)

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. 10/616,784 07/10/2003 William P. Van Antwerp G&C 130.62-US-01 2007 12813 7590 11/29/2012 Gates & Cooper LLP - Minimed 6701 Center Drive West Los Angeles, CA 90045 EXAMINER OSINSKI, BRADLEY JAMES ART UNIT PAPER NUMBER 3767 MAIL DATE DELIVERY MODE 11/29/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte WILLIAM P. VAN ANTWERP ____________________ Appeal 2010-011058 Application 10/616,784 Technology Center 3700 ____________________ Before: GAY ANN SPAHN, BRETT C. MARTIN, and RICHARD E. RICE, Administrative Patent Judges. MARTIN, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-011058 Application 10/616,784 2 STATEMENT OF CASE William P. Van Antwerp (Appellant) appeals under 35 U.S.C. § 134 from the Examiner’s rejection of claims 1, 3-9, and 36-41. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. THE INVENTION Appellant’s invention is directed generally “to compositions for coating medical devices . . . [that] inhibit the growth of microorganisms and/or the formation of biofilms on the surfaces of such devices.” Spec., para. [0002]. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A medical device having a surface coated with a composition comprising a lectin, wherein: (a) the medical device includes a metallic material: (b) the lectin binds a compound produced by a microorganism capable of forming a biofilm on the surface of the medical device so as to enhance attachment of the microorganism to the composition comprising the lectin; and (c) the lectin is disposed within a biodegradable polymer composition that can slough away from the surface of the medical device when the lectin is bound to the compound produced by a microorganism, so as to inhibit formation of a biofilm on the surface of the medical device. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Schrier US 6,197,598 B1 Mar. 6, 2001 Cioanta US 2002/0082556 A1 Jun. 27, 2002 Appeal 2010-011058 Application 10/616,784 3 Ji-Dong Gu et al., Protection of catheter surfaces from adhesion of Pseudomonas aeruginosa by a combination of silver ions and lectins, 17 World Journal of Microbiology & Biotechnology, 173-79 (2001) (hereinafter “Gu”). Peter D. Steinberg et al., Chemical defenses of seaweeds against microbial colonization, 8 Biodegradation, 211-20 (1997) (hereinafter “Steinberg”). REJECTIONS Claims 1, 3-6, 8, 9, and 37-41 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Gu in view of Steinberg. Ans. 3. Claim 7 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Gu, Steinberg, and Schrier. Ans. 5. Claim 36 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Gu, Steinberg, and Cioanta. Ans. 6. ANALYSIS Rejection of Independent Claims 1 and 38 as Unpatentable over Gu and Steinberg Appellant argues claims 1 and 38 together. App. Br. 3-6. We therefore select claim 1 as representative and decide the appeal with respect to claims 1 and 38 on the basis of claim 1 alone. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). The Examiner finds that Gu teaches all of the limitations in claim 1, but “does not disclose an expectation of success if the lectins had enhanced absorption of microorganisms.” Ans. 4. In finding that Gu teaches these limitations, the Examiner states that “Gu discloses a catheter coated with a heavy metal (page 177) that is coated with lectins capable of binding Appeal 2010-011058 Application 10/616,784 4 microorganisms that form a biofilm on the surface of a medical device.” Ans. 3 (emphasis added). The Examiner then goes on to explain how Steinberg fulfills the stated deficiency in Gu. Id. at 4. As Appellant points out, however, Gu does not actually teach the emphasized phrase above, but “explicitly teaches that their lectins block microbial binding to the catheter.” App. Br. 4. Appellant acknowledges that Gu recognizes that lectins “are highly specific in blocking or enhancing adhesion of bacteria on surface[s]” (citing Gu, p. 177), but further asserts that Gu “fails to teach or suggest any use whatsoever for lectins having adhesive properties, much less their use as recited in Appellant’s claims.” Reply Br. 4. We find this argument persuasive because the sole purpose of Gu’s coating having lectins therein is to block adhesion. Within the context of the reference, Gu’s discussion of the adhesion-enhancing properties of some lectins appears at most to be a caution against using such adhesion- enhancing lectins in the catheter coating because they will not perform the desired adhesion-blocking aspects disclosed therein. Gu does not teach or suggest using adhesion-enhancing lectins in a catheter coating and Gu is silent as to what would occur if such lectins were used because that is simply not the purpose of Gu’s disclosure. As such, the Examiner lacks a sound basis for finding that Gu teaches a catheter “that is coated with lectins capable of binding microorganisms that form a biofilm on the surface of a medical device.” Ans. 3 (emphasis removed). Steinberg does not make up for this deficiency because Steinberg only teaches that it is known within the animal kingdom that some organisms have coatings that are capable of adhering to epibiota and then sloughing the coating off to prevent formation of a biofilm on the organism. See Steinberg, p. 213. There is no discussion in Steinberg of lectins performing Appeal 2010-011058 Application 10/616,784 5 this adhesion, nor is there any application of such sloughing to the field of catheter coatings. We, therefore, find the proposed combination of Gu and Steinberg lacks the teaching “to enhance attachment of the microorganism to the composition comprising the lectin” in the context of a coating on a medical device as recited in claim 1. Accordingly, we cannot sustain the Examiner’s rejection. Rejection of Dependent Claims 3-6, 8, 9, and 37-41 as Unpatentable over Gu and Steinberg Although Appellant discusses claims 3-6, 8, 9, and 37-41 in a separate section, Appellant relies upon the argument with respect to claim 1. For the same reasons as discussed above with respect to claim 1, we do not sustain the rejections of claims 3-6, 8, 9, and 37-41. Rejection of Dependent Claim 7 as Unpatentable over Gu, Steinberg, and Schrier As with the dependent claims above, regarding claim 7, Appellant relies upon the argument with respect to claim 1 and notes that Schrier fails “to remedy the above-noted deficiencies of the Gu and Steinberg disclosures.” App. Br. 6. We agree and therefore, do not sustain the rejection of claim 7 for the same reasons as stated with respect to claim 1. Rejection of Dependent Claim 36 as Unpatentable over Gu, Steinberg, and Cioanta As with the dependent claims above, regarding claim 36, Appellant relies upon the argument with respect to claim 1 and notes that Cioanta also fails “to remedy the above-noted deficiencies of the Gu and Steinberg disclosures.” App. Br. 6. We agree and therefore, do not sustain the rejection of claim 36 for the same reasons as stated with respect to claim 1. Appeal 2010-011058 Application 10/616,784 6 DECISION For the above reasons, we REVERSE the Examiner’s decision to reject claims 1, 3-9, and 36-41. REVERSED hh