Ex Parte Chin et al

Patent Trial and Appeal Board

Nov 29, 2017

13859037 (P.T.A.B. Nov. 29, 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.
13/859,037 04/09/2013 Willy Chin ARC920120085US1 1007
93453 7590
Michael R. Roberts
4912 Buckline Crossing
Atlanta, GA 30338
EXAMINER
FALKOWITZ, ANNA R
ART UNIT PAPER NUMBER
1617
NOTIFICATION DATE DELIVERY MODE
12/01/2017 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):
MRobert s @ MRRPatents. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLY CHIN, DANIEL J. COADY,
RICHARD A. DIPIETRO, AMANDA C. ENGLER,
JAMES L. HEDRICK, ASHLYNN L. Z. LEE,
VICTOR W. L. NG, ZHAN-YUIN ONG, and
YI YAN YANG1
Appeal 2016-006757
Application 13/859,037
Technology Center 1600
Before ERIC B. GRIMES, ULRIKE W. JENKS, and
TIMOTHY G. MAJORS, Administrative Patent Judges.
JENKS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims directed
to an antimicrobial cationic polymer. The Examiner rejects the claims on
the ground of non-statutory obviousness-type double patenting. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 According to Appellants, the Real Party in Interest is International
Business Machines Corporation and the Agency for Science, Technology,
and Research. Br. 3.
Appeal 2016-006757
Application 13/859,037
STATEMENT OF THE CASE
Claims 1—4, 6, and 20-22 are on appeal, and can be found in the
Claims Appendix of the Appeal Brief.2 Claim 1 is representative of the
claims on appeal, and reads as follows:
1. An antimicrobial cationic polymer having a structure in
accordance with formula (1):
Z'-P'-Z" (1),
wherein
Z' is a monovalent C1-C15 first end group, wherein Z' is
linked to a backbone carbonyl group of P',
Z" is a monovalent second end group selected from the
group consisting of hydrogen and C1-C15 moieties,
P' is a polymer chain consisting essentially of cationic
carbonate repeat units, wherein i) P' has a degree of
polymerization (DP) of about 5 to about 45, ii) each of the
cationic carbonate repeat units comprises a backbone portion of
the polymer chain and a C6-C25 cationic side chain linked to the
backbone portion, and iii) the cationic side chain comprises a
positive-charged heteroatom Q' of a quaternary ammonium
group and/or quaternary phosphonium group,
about 25% to 100% of the cationic carbonate repeat units,
designated first cationic carbonate repeat units, have a structure
selected from the group consisting of
2 Claims 5, 7-19, and 23-31 are withdrawn. Claims 6 and 20-22 are
objected to. See Br. 5 & 9.
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Appeal 2016-006757
Application 13/859,037
and combinations thereof, wherein X' is a negative-charged ion,
and
0% to about 75% of the cationic carbonate repeat units,
designated second cationic carbonate repeat units, have a
cationic side chain comprising 6 to 12 carbons.
Appeal Brief, Claims Appendix, 20-21.
Appellants request review of the Examiner rejection of claims 1^13 on
the ground of non-statutory obviousness-type double patenting over
Application No. 13/859,048.4
The issue is: Does the preponderance of evidence of record support
the Examiner’s conclusion that the claims, although not identical, are not
patentably distinct from each other?
3 We herein refer to the Appeal Brief filed Jun. 19, 2015 (“Br.”); and the
Examiner’s Answer mailed Sept. 9, 2015 (“Ans.”). No reply brief was filed.
4 This Application has now issued as US 9,357,772 B2, on June 7, 2016 to
Coady et al. (“Coady”).
3
Appeal 2016-006757
Application 13/859,037
Findings of Fact
Claim 1 of Coady reads as follows:
1. An antimicrobial cationic polymer of formula (12):
Zc-Vb-C-Vb-Zc (12),
wherein
C' is a C2-C15 divalent linking group joining polymer
chains ¥b, wherein C' comprises i) a first heteroatom linked to a
first polymer chain PA, wherein the first heteroatom is selected
from the group consisting of nitrogen, oxygen, and sulfur, and ii)
a second heteroatom linked to a second polymer chain Vb,
wherein the second heteroatom is selected from the group
consisting of nitrogen, oxygen, and sulfur,
each Zc is an independent monovalent end group selected
from the group consisting of hydrogen and C1-C15 moieties,
each polymer chain ¥b consists essentially of cationic
carbonate repeat units, wherein i) the cationic polymer comprises
a total of 5 to about 45 cationic carbonate repeat units, ii) each of
the cationic carbonate repeat units comprises a) a backbone
portion of the polymer chain comprising an aliphatic carbonate
group, and b) a cationic side chain linked to the backbone
portion, and iii) the cationic side chain comprises a positive-
charged heteroatom Q' of a quaternary ammonium group and/or
quaternary phosphonium group, about 25% to 100% of all the
cationic carbonate repeat units of the cationic polymer,
designated first cationic carbonate repeat units, having a
structure selected from the group consisting of
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Appeal 2016-006757
Application 13/859,037
/ o j
c—i.. I i i
\ O O--,'■•••• ’
\ 3 /
o
\
ri.
and combinations thereof, wherein X' is a negative charged ion,
and
0% to about 75% of the cationic carbonate repeat units of the
cationic polymer, designated second cationic carbonate repeat units,
have a cationic side chain comprising 6 to 9 carbons.
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Appeal 2016-006757
Application 13/859,037
Analysis
The Examiner finds that the C' portion of formula (12) as recited in
Coady’s claim 1 (see FF1), has the following structure:
Ans. 8. The Examiner finds that “Cl [sic] of claim 1 of Caody [sic] can be a
glycolic acid group, which is a portion of the same structure linking the P'
groups together in the instant claim 1.” Ans. 9. In other words, because a
glycolic acid group can be identified in both structures the claims are not
patently distinct.
The polymer chain comprising repeating P' units as shown in the
formula Z'-P'-Z" (1) as presently claimed contains a glycolic acid group
shared between each linked P' units while the structure of formula Zc-P*-C-
P*-Zc (12) as claimed in Coady has an added glycolic acid unit inserted
between the PA units of the structures. Compare claim 1 with FF1.
Appellants contend that “[c]ationic polymers of formulas (1) and (12)
represent different genera, not a genus and species of the genus. That is,
neither formula is generic to the other.” Br. 12. Furthermore, “[t]he
rejection appears to at least disregard the C' feature of the ’048 [(Coady’s)]
composition, which affects polymer antimicrobial performance.” Br. 14.
We find that Appellants have the better position. We agree with
Appellants that formula Z'-P'-Z" (1) and formula Zc-?b-C-?b-Zc {\2) are
different structures. The Examiner’s rejection is predicated on identifying a
structure within the Z'-P'-Z" (1) formula that represents C. See Ans. 8, 9
(“glycolic acid group, which is a portion of the same structure linking the P'
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Appeal 2016-006757
Application 13/859,037
groups together”). In doing so, however, the Examiner identifies a structure
that is present as part of conjugated chain of P' units and this is different
from the structure C as recited in formula Zc-?b-C-?b-Zc (12). Specifically,
formula (12) (see FF1) requires the addition of a C between repeating Vb
units.
Construing Coady’s claim (FF1) as not requiring the distinct C unit
would vitiate an express limitation of the claim. We recognize that “during
examination proceedings, claims are given their broadest reasonable
interpretation consistent with the specification.” In re Hyatt, 211 F.3d 1367,
1372 (Fed. Cir. 2000). However, reading claims so broadly here as to read
out an express limitation is not reasonable. Claims are construed with an
eye toward giving effect to all terms in the claim. Eicon Inc. v. Straumann
Co., 441 F.3d 945, 950 (Fed. Cir. 2006). See Stumbo v. Eastman Outdoors,
Inc., 508 F.3d 1358, 1362 (Fed. Cir. 2007) (denouncing claim constructions
which render phrases in claims superfluous).
Here, the difference between the present claims and the claim of
Coady is the insertion of a glycolic acid group into a polymer chain made of
repeating P units. Formula (12) of Coady requires the addition of a unit that
contains at least two carbons. The Examiner has not directed us to any
teaching or provided a persuasive rationale for adding a C unit into the
presently claimed formula Z'-P'-Z" (1). Neither has the Examiner explained
why it would have been obvious to omit the C unit from Coady’s formula
(12) in order to establish that these formulas are not patentably distinct.
The preponderance of evidence of record does not support the
Examiner’s conclusion that the present claims and the claim of Coady are
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Application 13/859,037
not patentably distinct. Accordingly, we reverse the rejection of claims 1-4
on the grounds of non-statutory obviousness-type double patenting.
SUMMARY
We reverse the rejection of claims 1^1 on the ground of non-statutory
obviousness-type double patenting over Application No. 13/859,048, now
issued as US 9,357,772 B2.
REVERSED
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