Ex Parte Hedrick et alDownload PDFPatent Trial and Appeal BoardMay 31, 201612770529 (P.T.A.B. May. 31, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 121770,529 04/29/2010 James Lupton Hedrick 91031 7590 06/02/2016 CANAANLA W, P,C PO Box 1860 Los Gatos, CA 95031-1860 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. ARC920040059US2 9907 EXAMINER LENIHAN, JEFFREYS ART UNIT PAPER NUMBER 1765 NOTIFICATION DATE DELIVERY MODE 06/02/2016 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): karen@canaanlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JAMES LUPTON HEDRICK, VICTOR YEE-WAY LEE, TEDDIE PEREGRINO MAGBITANG, and ROBERT DENNIS MILLER Appeal2014-009080 Application 12/770,529 Technology Center 1700 Before TERRY J. OWENS, BEYERL YA. FRANKLIN, and JULIA HEANEY, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's rejection of claims 1-3, 6-9, 11, 21, and 23-25. We have jurisdiction under 35 U.S.C. § 6(b). The Invention The Appellants claim a unimolecular amphiphilic nanoparticle comprising a star polymer. Claim 1 is illustrative: 1. A unimolecular amphiphilic nanoparticle, comprising: Appeal2014-009080 Application 12/770,529 a star polymer with a multi-armed core including at least 3 arms, wherein the multi-armed core comprises linear, dendritic, or hyperbranched aliphatic polyester segments; and surface decoration attached to said polyester segments, wherein the surface decoration is compatible with a matrix material, and wherein the surface decoration comprises polyethylene glycol or polypropylene glycol oligomers having a degree of polymerization less than 50. The Reference Elizabeth R. Gillies and Jean M.J. Frechet, Designing Macromolecules for Therapeutic Applications: Polyester Dendrimer-Poly(ethylene oxide) "Bow-Tie" Hybrids with Tunable Molecular Weight and Architecture, 124 J. AM. CHEM. Soc. 14137--46 (2002) (hereinafter Gillies). The Rejection Claims 1-3, 6-9, 11, 21, and 23-25 stand rejected under 35 U.S.C. § 103 over Gillies. OPINION \Ve reverse the rejection. \Ve need address only the independent claims, i.e., claims 1 and 7. Those claims require a star polymer. Gillies discloses "new polyester dendrimer, poly( ethylene oxide) hybrid systems for drug delivery and related therapeutic applications" (Abstract) having a "'bow-tie' shaped dendritic scaffold" (id.) "consist[ing] of two covalently attached polyester dendrons, where one dendron provides multiple functional handles for the attachment of therapeutically active moieties, while the other is used for attachment of solubilizing poly( ethylene oxide) chains" (id.). Gillies previously reported a star-shaped poly( ethylene oxide) design (p. 14138, second full paragraph) and now reports "a new 'bow-tie"' design which "consists of two covalently attached and orthogonally protected polyester dendrons" (id. at third full paragraph). "A 2 Appeal2014-009080 Application 12/770,529 key feature of this system is its multifunctional character, with the ability to control the loading of two different species, one on each side of the 'bow-tie'" (id. at third full paragraph). "A comparison of the previously reported dendrimer and PEO star-dendrimer conjugate with the new bow-tie system is shown in Figure 2 [shown below]" (paragraph bridging pages 14138 and 14139). Gillies' Fig. 2 The Examiner argues that the shape of the Appeiiants' poiymer is based on the method by which it is made and that, therefore, "star polymer" is a product-by-process limitation. The Appellants' claim term "star polymer" is a structural characteristic of the polymer, not a recitation of the process by which the polymer is made. The Examiner interprets Gillies' scheme S's bow-tie structure 27 (shown below) (p. 14142) as being a star polymer having an arm extending from each of a core's four outer oxygen atoms (Ans. 3--4). 3 Appeal2014-009080 Application 12/770,S29 »~~~~> ... ~ ~~~~".) .:t., .~)_ 't"l~ l'f'o :-~:.:-: (::: i~~;··~,:i ~J Gillies' Scheme S's bow-tie structure 27 The Examiner asserts that the Appellants have not provided factual evidence showing that the Examiner's interpretation of Gillies' scheme S's structure 27 is incorrect (Ans. 4--S). The Examiner has the initial burden of establishing a prima facie case of obviousness. See In re Piasecki, 74S F.2d 1468, 1472 (Fed. Cir. 1984); In re Rinehart, S31F.2d1048, lOSl (CCPA 1976). The Examiner has not established that even though Gillies discloses that scheme S's structure 27 is a bow-tie structure and that a bow-tie structure differs from a star polymer structure (pp. 14138-39; Fig. 2), one of ordinary skill in the art would have considered Gillies' bow-tie structure to be a star polymer structure or to be suggestive of a star polymer structure. Thus, the Examiner has not carried the initial burden of establishing a prima facie case of obviousness of the Appellants' claimed invention. Accordingly, we reverse the rejection. DECISION/ORDER The rejection of claims 1-3, 6-9, 11, 21, and 23-2S under 3S U.S.C. § 103 over Gillies is reversed. 4 Appeal2014-009080 Application 12/770,529 It is ordered that the Examiner's decision is reversed. REVERSED 5 Copy with citationCopy as parenthetical citation