Ex Parte Garrell et al

Patent Trials and Appeals Board

Mar 26, 2019

13154248 - (D) (P.T.A.B. Mar. 26, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/154,248 06/06/2011
22462 7590 03/28/2019
GA TES & COOPER LLP (General)
HOW ARD HUGHES CENTER
6060 CENTER DRIVE
SUITE 830
LOS ANGELES, CA 90045
FIRST NAMED INVENTOR
Robin L. Garrell
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.
30435.210-US-U2 1642
EXAMINER
RUFO, LOUIS J
ART UNIT PAPER NUMBER
1795
NOTIFICATION DATE DELIVERY MODE
03/28/2019 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):
docketing-us@gates-cooper.com
gates-cooper@blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBIN L. GARRELL,
ALEXANDER K. TUCKER-SCHWARTZ,
HEATHER SHEPHERD, and
DEBALINA CHATTERJEE
Appeal2018-003392
Application 13/154,248
Technology Center 1700
Before ADRIENE LEPIANE HANLON, MICHAEL P. COLAIANNI, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2018-003392
Application 13/154,248
Appellants 1 appeal under 35 U.S.C. § 134(a) the final rejection of
claims 1 and 6-18. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).
We AFFIRM.
Appellants' invention is directed to a method of forming a double
emulsion droplet composition for making a discoid polymer particle using
microfluidics. (Claims 1 and 10; Spec. 1: 16-17).
Claim 1 is illustrative of the issues on appeal:
1. A method for forming a double emulsion droplet
composition for making a discoid polymer particle, the method
comprising combining a first liquid droplet and a second liquid
droplet using a droplet-based microfluidic device capable of
manipulating droplets, wherein the discoid polymer particle is
formed by:
(a) placing the first liquid droplet on a first specified
location on a surface of the droplet-based microfluidic device;
(b) placing the second liquid droplet on a second
specified location on a surface of the droplet-based microfluidic
device; and
( c) moving at least one of the first or second droplets on
the surface of the device so that the first and second droplets are
brought into proximity such that the first liquid droplet
spontaneously inserts into the second liquid droplet or
spontaneously engulfs the second liquid droplet, thereby
forming a double emulsion droplet, wherein
(i) the first liquid droplet and the second liquid
droplet comprise a plurality of compounds that react to
form a discoid polymer particle when combined in the
double emulsion droplet;
(ii) the first liquid droplet, the second liquid
droplet and the double emulsion droplet use air as an
ambient medium to move through the device; and
1 The Appeal Brief on page 2 indicates that "The Regents of the University
of California" is the assignee of record.
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Appeal2018-003392
Application 13/154,248
( d) exposing the double emulsion droplet to reaction
conditions that form the discoid polymer particle.
Appellants appeal the following rejections2:
1. Claims 1 and 6-18 are rejected under 35 U.S.C. § 103 as unpatentable
over Adachi et al. (US 2006/0254933 Al, published Nov. 16, 2006) in
view ofVelev (US 2004/0211659 Al, published Oct. 28, 2004).
2. Claims 1 and 6-18 are rejected under 35 U.S.C. § 103 as unpatentable
over V elev in view of Adachi.
Appellants' arguments focus on subject matter common to independent
claims 1 and 10 (App. Br. 4--7; Reply Br. 4--6). We select claim 1 as
representative of the claims on which to render our decision. We address
Rejections (1) and (2) together because the rejections are identical in their
use of the substantive teachings of the references with the only difference
being the order of the references. See In re Bush, 296 F.2d 491,496 (CCPA
1961) ("In a case of this type where a rejection is predicated on two
references each containing pertinent disclosure which has been pointed out
to the applicant, we deem it to be of no significance, but merely a matter of
exposition, that the rejection is stated to be on A in view of B instead of on
Bin view of A, or to term one reference primary and the other secondary";
see also In re Cowles, 156 F.2d 551, 552 (CCPA 1946).
2 Rejection (2) was added by the Examiner as a "New Ground of Rejection"
in the Examiner's Answer (Ans. 7).
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Appeal2018-003392
Application 13/154,248
FINDINGS OF FACT & ANALYSIS
The Examiner finds that Adachi teaches a droplet-based microfluidic
device having the limitations in claim 1, including moving a first liquid
droplet and a second liquid droplet using the microfluidic device so that the
first liquid droplet spontaneously inserts into the second liquid droplet or the
second liquid droplet spontaneously engulfs the first liquid droplet thereby
forming a double emulsion droplet (Ans. 2). The Examiner finds that
Adachi does not teach an emulsion that can react to form a discoid polymer
particle (Ans. 2). The Examiner finds that Velev teaches a digital
microfluidic device that creates double emulsions comprising polymer
particles and polymerizes the droplets (Ans. 3). The Examiner concludes
that it would have been obvious to create the emulsion droplets of Velev
using the method and device of Adachi because "the application of a
recognized method of droplet emulsion creation to create an emulsion ...
was previously described as being compatible to be formed on a microfluidic
device" (Ans. 3).
Appellants argue that there is no prima facie case of obviousness
because the Examiner has not identified a reason that would have prompted
a person of ordinary skill in the art to combine the various elements in
Adachi and Velev in a manner that results in forming discoid polymer
particles (App. Br. 4). Appellants contend that the Examiner improperly
finds, without sufficient technical reasoning, that the combined teachings of
Adachi and Velev would inherently produce discoid polymer particles (App.
Br. 4--5). Appellants contend that the neither Adachi nor Velev teaches
polymerizing when the droplet is in a discoid shape (App. Br. 6). Appellants
contend that the discoid shaped particles are not necessarily present because
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Appeal2018-003392
Application 13/154,248
the cited art does not teach when to polymerize (App. Br. 6). Appellants
contend that contrary to the Examiner's finding that the polymer emulsion
must be a result of limitations not claimed, page 6, lines 21-30 of the
Specification discloses conditions to form the discoid polymer particles
(App. Br. 6).
Appellants' arguments fail to address all the Examiner's findings
supporting the determination that the combined teachings of Adachi and
Velev would have produced a discoid shape polymer. Specifically, the
Examiner finds that the prior art device of Adachi uses a parallel plate
droplet actuator as shown in Adachi' s Figure 3 (Final Act. 9). The Examiner
finds that Adachi uses air as the ambient medium for the double emulsion
droplets (Final Act. 9). The Examiner finds the shape of the polymer
particle is a function of the geometry of the device being used as disclosed
by Appellants' own Specification (Ans. 16). The Examiner finds that
Adachi and Velev disclose where the reactions occur in or on the
microfluidic device chip (Ans. 17). In other words, the combined teachings
of Adachi and Velev would have suggested polymerizing the polymerizable
fluid while the fluid is supported within the microfluidic device. The
Examiner reasonably finds, and Appellants do not dispute adequately, that
when the polymerizing reaction occurs prior to the fluid exiting the
microfluidic device, the polymer particle would have a discoid shape (Ans.
17; App. Br. 6).
Appellants do not dispute that the reaction liquid 31 in Adachi' s
Figure 27 has a disco id shape. Appellants' description of discoid shape
refers to Figure 3B, which shows the water droplet in a discoid shape (Spec.
6: 11-12; Fig. 3B). Indeed, we find the discoid shape shown in Appellants'
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Application 13/154,248
Figure 3B is indistinguishable from the reaction liquid 31 's shape shown in
Adachi's Figure 27. Rather, Appellants only argue that the prior art does not
teach a discoid polymer particle (Reply Br. 4). As noted above, this
argument is not persuasive. The preponderance of the evidence favors the
Examiner's conclusion that the combined teachings would have suggested
using a microfluidic device of Adachi to form Velev' s microfluidic formed
polymer particle having a discoid shape as taught by Adachi.
On this record, we affirm the Examiner's alternate § 103 rejections
over Adachi and Velev and over Velev and Adachi.
DECISION
The Examiner's decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.I36(a)(l)(iv). See 37
C.F.R. § 41.50(±).
AFFIRMED
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