Ex Parte BelchevaDownload PDFPatent Trial and Appeal BoardMay 26, 201613409395 (P.T.A.B. May. 26, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/409,395 03/01/2012 50855 7590 05/31/2016 Covidien LP 555 Long Wharf Drive Mail Stop SN-I, Legal Department New Haven, CT 06511 FIRST NAMED INVENTOR Nadya Belcheva 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-02432 (203-8019) 8640 EXAMINER MILLER, JR, JOSEPH ALBERT ART UNIT PAPER NUMBER 1715 NOTIFICATION DATE DELIVERY MODE 05/31/2016 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 NADY A BELCHEV A Appeal2014-008385 Application 13/409,395 Technology Center 1700 Before ADRIENE LEPIANE HANLON, CHUNG K. PAK, and JAMES C. HOUSEL, Administrative Patent Judges. HANLON, Administrative Patent Judge. DECISION ON APPEAL A. STATEMENT OF THE CASE The Appellant filed an appeal under 35 U.S.C. § 134 from a final rejection of claims 1-8 and 10-20. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART and enter a new ground of rejection under 37 C.F.R. § 41.50(b ). Representative claims 1 and 8 are reproduced below from the Claims Appendix of the Appeal Brief dated March 10, 2014 ("Br."). 1. A process comprising: contacting at least one aliphatic cyclic ester with at least one catalyst in a supercritical fluid to from [sic, form] at least one polyester; Appeal2014-008385 Application 13/409,395 exposing at least a portion of a substrate material to the supercritical fluid possessing the at least one polyester; and grafting the at least one polyester onto or within the substrate material in the presence of the supercritical fluid. Br. 10. 8. A process comprising: oxidizing a substrate material in the presence of a supercritical fluid to form an oxidized substrate material; contacting at least one aliphatic cyclic ester with at least one catalyst in the supercritical fluid to from [sic, form] at least one polyester; exposing at least a portion of the oxidized substrate material to the supercritical fluid possessing the at least one polyester; and grafting the at least one polyester onto or within the oxidized substrate material in the presence of the supercritical fluid. Br. 11. The Appellant defines "supercritical fluid" as "any composition that is above a temperature and pressure at which the phase boundary (e.g., between liquid, gas, or solid) do not exist, i.e., critical state" and indicates that "'supercritical fluid' may be used interchangeably with 'densified fluid."' Spec. i-f 7. The Appellant discloses that examples of supercritical fluid include nitrogen dioxide, carbon dioxide, and combinations thereof. Spec. i-f 11. The claims on appeal stand rejected as follows: (1) claims 1-8 and 10-20 under 35 U.S.C. § 103(a) as unpatentable over Narayan et al. 1 in view of Loeker et al.; 2 1 US 5,616,671, issued April 1, 1997 ("Narayan"). 2 Frank C. Loeker et al., Enzyme-Catalyzed Ring-Opening Polymerization of c;- Caprolactone in Supercritical Carbon Dioxide, 37 Macromolecules 2450-53 (2004) ("Loeker"). 2 Appeal2014-008385 Application 13/409,395 (2) claims 7, 8, and 10-20 under 35 U.S.C. § 103(a) as unpatentable over Narayan in view ofLoeker, and further in view of Sun et al.; 3 and (3) claims 15-20 under 35 U.S.C. § 103(a) as unpatentable over Narayan in view of Loeker, and further in view of Vignon et al. 4 B. DISCUSSION 1. Rejection (1) a. Claims 1-7 The Examiner finds Narayan discloses a process comprising (1) "contacting at least one aliphatic cyclic [ester monomer] (epsilon caprolactone) with a catalyst (i.e. stannous octoate [Lewis acid catalyst])" and (2) "exposing a portion of the starch substrate to the monomer to graft the polyester onto the substrate." Ans. 3. 5 More specifically, Narayan discloses: [B]iodegradable compositions are produced based on aliphatic polyester-grafted polysaccharides[6J obtained by mixing starch and ester monomer and an organometallic initiator, followed by in situ, ring-opening polymerization of the bulk monomer, preferably without solvents, in the presence of the polysaccharide, leading to grafting of the polyester chains onto polysaccharide. Narayan, col. 4, 11. 32-38. The Examiner finds Narayan does not disclose applying a supercritical fluid as recited in the claims on appeal. Ans. 3. Nonetheless, the Examiner turns to Loeker to cure this deficiency in Narayan. Ans. 3. Loeker discloses that ring- opening polymerization of lactones is commonly performed in organic solvents or 3 US 2009/0324536 Al, published December 31, 2009 ("Sun"). 4 US 2008/0194805 Al, published August 14, 2008 ("Vignon"). 5 Examiner's Answer dated May 22, 2014. 6 Narayan discloses that "[t]he term 'polysaccharide' means a compound having repeating saccharide units including starch, polydextrose, lignocellulose, cellulose, and derivatives of these ... and the like." Narayan, col. 4, 11. 4--11. 3 Appeal2014-008385 Application 13/409,395 in bulk using a Lewis acid catalyst. However, according to Loeker, there has been much interest in replacing Lewis acid catalysts by enzymes 7 and the enzymatic route is identified as viable in supercritical carbon dioxide. Loeker 2450, Abstract. To that end, the Examiner finds "Loeker teaches that ring opening polymerization of epsilon caprolactone occurs effectively using supercritical carbon dioxide and a catalyst." Ans. 3. The Examiner concludes that it would have been obvious to one of ordinary skill in the art "to apply the supercritical carbon dioxide ... as per Loeker as Loeker teaches that epsilon caprolactone is operably polymerized by a catalyst in the further presence of supercritical carbon dioxide." Ans. 4. The Appellant argues that neither Narayan nor Loeker teaches or suggests grafting at least one polyester onto or within a substrate in the presence of a supercritical fluid as recited in claim 1. Br. 4. The Appellant's argument fails to consider the prior art as a whole. See In re Keller, 642 F.2d 413, 425 (CCPA 1981) (test for obviousness is what the combined teachings of the references would have suggested to one of ordinary skill in the art). In one embodiment ofNarayan's invention, a substrate is passed through a bath containing E-caprolactone, and the residence time is adjusted to complete polymerization and yield the grafted polymer coating. Narayan, col. 16, 11. 1--4. Thus, in Narayan's method, as modified by Loeker, the bath containing E- caprolactone would also contain a supercritical fluid. See Ans. 6 (finding Loeker teaches using a supercritical fluid and a catalyst for the ring opening polymerization of E-caprolactone ). 7 Loeker discloses that "[ e ]nzymes are highly active, selective, and environmentally friendly catalysts for polymer synthesis both in conventional organic solvents and in bulk." Loeker 2450, col. 2, 11. 13-15. 4 Appeal2014-008385 Application 13/409,395 The Appellant also argues that Narayan teaches away from using supercritical fluids. Br. 5 (citing Narayan, col. 3, 11. 10-15). Narayan discloses that ring-opening polymerization of cyclic ester monomers is carried out "preferably without solvent." Narayan, col. 3, 11. 14-15. However, the disclosure of a preference for no solvent does not teach away from the proposed combination, especially where Narayan does not specifically exclude supercritical fluids. See Ans. 7; see also In re Lamberti, 545 F.2d 747, 750 (CCPA 197 6) ("all disclosures of the prior art, including unpreferred embodiments, must be considered"); In re Susi, 440 F.2d 442, 446 n.3 (CCPA 1971) (the disclosure of a preferred embodiment is not a teaching away from a broader disclosure). Finally, the Appellant argues that Narayan uses polymerization reaction conditions that "are drastically different from those disclosed in Loeker" and Loeker "illustrates that the disclosed reactions of Narayan would not be able to be performed using supercritical fluids." Br. 6. In response, the Examiner finds "[ o ]ne would operably apply the process of Loeker, i.e. including the process conditions (temperature, pressure, supercritical fluid, etc.) to polymerize epsilon caprolactone because Loeker teaches that the disclosed conditions are alternatively useful for the polymerization." Ans. 8. The Appellant does not direct us to any error in the Examiner's finding. For the reasons set forth above, the § 103(a) rejection of claim 1 based on the combination of Narayan and Loeker is sustained. The Appellant does not present any arguments in support of the separate patentability of dependent claims 2-7. See Br. 7. Therefore, the§ 103(a) rejection of claims 2-7 is also sustained. b. Claims 8 and 10-20 The Appellant argues: 5 Appeal2014-008385 Application 13/409,395 [N]either Loeker nor Narayan teach or suggest "oxidizing a substrate material in the presence of a supercritical fluid to form an oxidized substrate material," as recited in independent claim 8, nor "exposing cellulose to an oxidation medium comprising a supercritical fluid to form oxidized cellulose," as recited in independent claim 15. Br. 7 (emphasis added). The Examiner does not find that Narayan or Loeker discloses oxidizing a substrate in the presence of a supercritical fluid as recited in claims 8 and 15. Likewise, the Examiner does not conclude that forming an oxidized substrate using a supercritical fluid would have been obvious to one of ordinary skill in the art based on Narayan, either alone or in combination with Loeker. For these reasons, the§ 103(a) rejection of claims 8 and 10-20 based on the combination of Narayan and Loeker is not sustained. 2. Rejection (2) a. Claims 8 and 10-20 The Examiner relies on Sun to show oxidization of a cellulose substrate using Ce4+ ions. See Ans. 5 (citing Sun i-f 50); Sun i1 50 (disclosing that Ce4+ oxidizes cellulose). The Appellant argues that oxidation of cellulose in Sun "is based on an ionic redox reaction, rather than using a supercritical fluid." Br. 8. On this record, the Examiner has failed to show, in the first instance, that Sun discloses oxidizing a substrate material in the presence of a supercritical fluid as recited in claims 8 and 15. Moreover, the Examiner has failed to show that oxidizing Narayan's substrate in the presence of a supercritical fluid would have been obvious to one of ordinary skill in the art based on Loeker and/or Sun. For these reasons, the§ 103(a) rejection of claims 8 and 10-20 is not sustained. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (examiner "bears the initial burden ... of presenting a prima facie case of unpatentability"). 6 Appeal2014-008385 Application 13/409,395 b. Claim 7 Claim 7, on the other hand, recites that "the substrate material comprises oxidized cellulose." Br. 11. Claim 7 does not recite that the substrate material is oxidized in the presence of a supercritical fluid. The Examiner finds "Narayan generally teaches the use of cellulosic substrates ... and that the substrates have hydroxyl groups attached ... - therefore, it is generally understood that the substrate is oxidized in the process." Ans. 4--5 (citing Narayan col. 15, 11. 44--58 and col. 6, 11. 50-60). The Examiner also finds Sun oxidizes a cellulose substrate using Ce4+ ions. Ans. 5 (citing Sun i-f 50). The Appellant does not direct us to any error in the Examiner's findings. Therefore, the§ 103(a) rejection of claim 7 based on the combination of Narayan, Loeker, and Sun is sustained. 3. Rejection (3) The Appellant argues that Vignon does not disclose grafting polymers to an oxidized substrate in the presence of a supercritical fluid and thus fails to cure the deficiencies in Narayan and Loeker. Br. 8-9. The Appellants' argument fails to consider the prior art as a whole. Keller, 642 F.2d at 425. The Examiner relies on Vignon to show that, at the time of the Appellant's invention, it was known to oxidize cellulose in the presence of supercritical C02. 8 Ans. 5 (citing Vignon i1 7 5). The Examiner relies on the combined teachings of Narayan and Loeker, not Vignon, to show that grafting polymers on a substrate in the presence of a supercritical fluid would have been obvious to one of ordinary skill in the art. Thus, based on the combined teachings of Narayan, Loeker, and Vignon, the Examiner concludes that grafting polymers to 8 The Appellant recognizes as much. See Br. 8 ("Vignon discloses exposing cellulose to a densified or supercritical fluid, including carbon dioxide and nitrogen dioxide, to oxidize the same"). 7 Appeal2014-008385 Application 13/409,395 an oxidized substrate in the presence of a supercritical fluid would have been obvious to one of ordinary skill in the art. Ans. 5---6. The Appellant does not direct us to any evidence to the contrary. Therefore, the§ 103(a) rejection of claims 15- 20 based on the combination of Narayan, Loeker, and Vignon is sustained. 4. New ground of rejection a. Claim 8 There is no dispute on this record that Vignon discloses oxidizing cellulose in supercritical C02 as recited in claim 8. Ans. 5; Br. 8. In addition, the Appellant has failed to show error in the Examiner's conclusion that grafting polymers to a substrate in the presence of a supercritical fluid would have been obvious to one of ordinary skill in the art based on the combined teachings of Narayan and Loeker. Therefore, we enter a new ground of rejection of claim 8 under 35 U.S.C. § 103(a) as unpatentable over Narayan in view ofLoeker and Vignon for the reasons set forth above sustaining the§ 103(a) rejection of claims 15-20 based on the combination of Narayan, Loeker, and Vignon, b. Claims 10-14 The Examiner's findings of fact and conclusions of law as claims 10-14, which depend either directly or indirectly from claim 8, remain uncontested on appeal. See Br. 7. Therefore, as to those claims, we adopt the Examiner's findings of fact and conclusions of law on page 4 of the Examiner's Answer and enter a new ground of rejection of claims 10-14 under 35 U.S.C. § 103(a) as unpatentable over Narayan in view ofLoeker and Vignon. C. DECISION The Examiner's decision to reject claims 1-7 under 35 U.S.C. § 103(a) as unpatentable over Narayan in view ofLoeker is affirmed. 8 Appeal2014-008385 Application 13/409,395 The Examiner's decision to reject claims 8 and 10-20 under 35 U.S.C. § 103(a) as unpatentable over Narayan in view of Loeker is reversed. The Examiner's decision to reject claim 7 under 35 U.S.C. § 103(a) as unpatentable over Narayan in view ofLoeker, and further in view of Sun is affirmed. The Examiner's decision to reject claims 8 and 10-20 under 35 U.S.C. § 103(a) as unpatentable over Narayan in view of Loeker, and further in view of Sun is reversed. The Examiner's decision to reject claims 15-20 under 35 U.S.C. § 103(a) as unpatentable over Narayan in view ofLoeker and Vignon is affirmed. Claims 8 and 10-14 are newly rejected under 35 U.S.C. § 103(a) as unpatentable over Narayan in view ofLoeker and Vignon. This Decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b) which provides that "[a] new ground of rejection ... shall not be considered final for judicial review." 37 C.F.R. § 41.SO(b) also provides that the Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner .... (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record .... 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 ). AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b) 9 Copy with citationCopy as parenthetical citation