Ex Parte Burdinski et al

Patent Trial and Appeal Board

Dec 29, 2016

13379056 (P.T.A.B. Dec. 29, 2016)

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.
13/379,056 12/19/2011 Dirk Burdinski 2009P00847WOUS 1013
24737 7590 01/03/2017
PTTTT TPS TNTFT T FfTTTAT PROPFRTY fr STANDARDS
EXAMINER
465 Columbus Avenue PERREIRA, MELISSA JEAN
Suite 340
Valhalla, NY 10595 ART UNIT PAPER NUMBER
1618
NOTIFICATION DATE DELIVERY MODE
01/03/2017 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):
marianne. fox @ philips, com
debbie.henn @philips .com
patti. demichele @ Philips, com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DIRK BURDINSKI, JEROEN A. PIKKEMAAT,
BERTRAND SCHMITT, HOLGER GRUELL, and
SANDER LANGEREIS1
Appeal 2016-000598
Application 13/379,056
Technology Center 1600
Before JOHN G. NEW, SHERIDAN K. SNEDDEN, and
RICHARD J. SMITH, Administrative Patent Judges.
NEW, Administrative Patent Judge.
DECISION ON APPEAL
appellants state the real party-in-interest is Koninkliike Philips Electronics
N.V. App. Br. 3.
Appeal 2016-000598
Application 13/379,056
SUMMARY
Appellants file this appeal under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 1, 3—7, and 9-15.2 Specifically,
claims 1, 3—7, and 9-15 stand rejected as unpatentable under U.S.C. § 103(a)
as being obvious over the combination of Kirpotin et al. (US 5,411,730, May
2, 1995) (“Kirpotin”), Briel et al. (US 2007/0014730 Al, January 18, 2007)
(“Briel”), P. Reimer et al., Femcarbotran (Resovist): A New Clinically
Approved RES-Specific Contrast Agent for Contrast-Enhanced MRI of the
Liver: Properties, Clinical Development, and Applications, 13 Eur.
Radiol., 13, 1266—76 (2003) (“Reimer”), G. Bottom, Size Effect on the
Time Dependence of Magnetization of Iron Oxide Particles, 33 IEEE
Trans. Mag. 3049-3051 (1997) (“Bottom”), Markov et al.
(W02008/0099346 Al, August 21, 2008) (“Markov”), and Viglianti et al.
(US 7,672,704 B2, March 2, 2010) (“Viglianti”).
Claims 1, 3—7, and 9-15 also stand rejected as unpatentable under
U.S.C. § 103(a) as being obvious over the combination of Briel, Reimer,
Kirpotin, Bottoni, Markov, Viglianti, Fisher et al. (US 7,947,307 B2, May
24, 2011) (“Fisher”), and S. Hashimoto et al., The Measurement of Small
Magnetic Signals from Magnetic Nanoparticles Attached to the Cell Surface
and Surrounding Living Cells Using a General-Purpose SQUID
Magnetometer, 54 Phys. Med. Biol. 2571—83 (2009),
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
2 Claims 2 and 8 are canceled. Corrected App. Br. 5—6, December 5, 2014.
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Appeal 2016-000598
Application 13/379,056
NATURE OF THE CLAIMED INVENTION
Appellants’ invention is directed to a composition comprising a shell
structure forming a cavity, wherein said shell structure comprises a drug and
wherein said composition is associated with at least one contrast agent.
Abstr.
REPRESENTATIVE CLAIM
Claim 1 is representative of the claims on appeal and recites:
1. A composition comprising a shell structure forming a cavity,
wherein said shell structure comprises a drug and wherein said
composition is associated with at least one contrast agent;
wherein said shell structure is capable of releasing its contents
into the exterior upon the application of an external stimulus and
wherein said contrast agent comprises magnetic particles
composed of Fe, Co, Ni, Zn or Mn or alloys thereof or oxides of
any of these, preferably composed of Fe2C>3 or FesCU, which are
capable of being detected by Magnetic Particle Imaging (MPI),
wherein at least more than 5% (w/w) of the magnetic particles
comprised in said contrast agent have a magnetic moment of at
least 10'18 m2 A and wherein at least more than 5% (w/w) of said
magnetic particles have a remagnetization time of less than 10
milliseconds per particle and wherein at least more than 5%
(w/w) of said magnetic particles have a size of about 5 nm to 50
nm.
App. Br. 5 (corrected December 5, 2014).
ISSUES AND ANALYSES
We agree with, and adopt, the Examiner’s findings and conclusion
that the appealed claims are obvious over the combined cited prior art
references. We address the arguments raised on appeal by Appellants
below.
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Appeal 2016-000598
Application 13/379,056
A. First Rejection of the claims under 35 U.S.C. $ 103(a)
Issue
Appellants argue the Examiner erred in finding the combined cited
prior art references teach or suggest all of the limitations of the claims. App.
Br. 9.
Analysis
Appellants argue the Examiner erred in finding Markov and Bottoni
teach or suggest the limitation of claim 1 reciting “more than 5% (w/w) of
said magnetic particles have a remagnetization time of less than 10
milliseconds per particle.” App. Br. 9 (emphasis omitted). Appellants argue
that, even assuming that it would be proper to combine Bottoni and Markov
(with or without the remaining references), neither Bottoni and/or Markov
teach or suggest this disputed limitation. Id. Furthermore, Appellants argue,
none of the prior art references cited by the Examiner teach or suggest the
limitation of claim 1 reciting wherein “at least more than 5% (w/w) of said
magnetic particles have a size of about 5nm to 50nm.” Id.
Appellants adduce no evidence in support of their assertion, nor do
they address the Examiner’s specific findings and conclusion. Rather,
Appellants merely gainsay the Examiner’s findings, stating that the
references do not teach the disputed limitations. That alone is insufficient to
overcome the Examiner’s prima facie conclusion of obviousness. “[W]e
hold that the Board reasonably interpreted [37 C.F.R. §] 41.37 to require
more substantive arguments in an appeal brief than a mere recitation of the
claim elements and a naked assertion that the corresponding elements were
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Appeal 2016-000598
Application 13/379,056
not found in the prior art.” In reLovin, 652 F.3d 1349, 1357 (Fed. Cir.
2011); see also In re Schulze, 346 F.2d 600, 602 (C.C.P.A. 1965)
(“Argument in the brief does not take the place of evidence in the record”).
Furthermore, for the reasons we set forth infra, we agree with, and
adopt, the Examiner’s findings that Kirpotin teaches the limitation reciting
“at least more than 5% (w/w) of said magnetic particles have a size of about
5nm to 50nm” and that Bottoni and Markov teach the limitation reciting
“more than 5% (w/w) of said magnetic particles have a remagnetization time
of less than 10 milliseconds per particle.” Absent a substantial argument in
Appellants’ Brief to the contrary, we affirm the Examiner’s rejection of the
claims.
B. Second Rejection of the claims under 35 U.S.C. $ 103(a)
Issue
Appellants argue the Examiner erred in finding the combined cited
prior art references teach or suggest all of the limitations of the claims. App.
Br. 9.
Analysis
Appellants again argue Markov and Bottoni are silent with regards to
any specific percentage of magnetic particles which have a remagnetization
time of less than 10 milliseconds per particle or a range of particle sizes in
which at least more than 5% (w/w) of the magnetic particles have a size of
about 5 nm to 50 nm, as required by claim 1. App. Br. 12.
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Appeal 2016-000598
Application 13/379,056
Appellants argue that Markov teaches that magnetic particle imaging
(“MPI”) requires high-performance tracer materials and Bottoni teaches size
effect on the time dependence of magnetization of particles, but that neither
reference teaches nor suggests the “general conditions” of the claims. App.
Br. 12. According to Appellants, Markov and Bottoni are silent with respect
to the desirability of any percentage range of magnetic particles which have
certain magnetic moment or remagnetization time, or any specified size
ranges of magnetic particles, much less any such magnetic particles
associated with a shell structure including a drug. Id. Appellants argue
Markov teaches a method for separating magnetic particles, which includes a
size selection step wherein particles are selected according to their size, but
is not concerned with a desired size range of such magnetic particles. Id.
The Examiner responds that Kirpotin teaches dextran-coated magnetic
iron oxide particles with an effective hydrodynamic diameter in the range of
5-50 nm, preferably 15-30 nm. Ans. 3 (citing Kirpotin col. 4,11. 44-49).
The Examiner finds Markov teaches that MPI requires high-performance
tracer materials (Resovist) that are highly magnetic monodispersed particles
with fast remagnetization behavior. Ans. 5 (citing Markov Abstr., 11). The
Examiner also finds Appellants’ Specification discloses that, in a
particularly preferred embodiment:
This approach may be carried out with only one type of contrast
agent, which is capable of being detected by MPI and by MRI,
e.g.[,] a contrast agent comprising magnetic particles of different
sizes or different magnetic moments or remagnetization times
such as Resovist, or by combining typical MPI contrast agents
and typical MRI contrast agents as defined herein above.
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Appeal 2016-000598
Application 13/379,056
Final Act. 5—6 (quoting Spec. 31, emphasis added). Furthermore,
Appellants’ Examples 1 and 3 explicitly employ Resovist particles. See
Spec. 42-46. Consequently, the Examiner finds contemporary that Resovist
particles, which were known in the art, correspond to the properties recited
in claim 1. See Spec. 31
We agree with the Examiner. Appellants may not attack a reference
as failing to teach a limitation when, in fact, the Examiner has relied upon
another reference as teaching that limitation. Appellants assert that neither
Markov nor Bottoni teach the particle size limitation recited in claim 1, but
the Examiner relies upon Kirpotin as teaching that limitation and Appellants
merely assert that Kirpotin does not teach the limitation, without adducing
any evidence or addressing the Examiner’s findings.
Similarly, we agree with the Examiner that Markov explicitly teaches
Resovist particles, which are used in Appellants’ exemplary embodiments as
satisfying the required remagnetization properties of the particles. See
Markov 11. Furthermore, Hashimoto also discusses the properties of
Resovist particles extensively. See, e.g., Hashimoto Abstr. 2574—'75. We
find that a person of ordinary skill would understand, from the teachings of
Markov and Hashimoto, that Resovist particles possess the size and
remagnetization characteristics described in the disputed limitations. We
consequently affirm the Examiner’s rejection of the claims.
DECISION
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Appeal 2016-000598
Application 13/379,056
The Examiner’s rejection of claims 1, 3—7, and 9-15 as unpatentable
under 35 U.S.C. §103(a) is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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