Ex Parte Garrell et alDownload PDFPatent Trials and Appeals BoardMar 26, 201913154248 - (D) (P.T.A.B. Mar. 26, 2019) Copy Citation 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. 2 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). 3 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 4 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' 5 Appeal2018-003392 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 6 Copy with citationCopy as parenthetical citation