Ex Parte Khanolkar et al

Patent Trial and Appeal Board

Sep 27, 2016

11868914 (P.T.A.B. Sep. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/868,914 10/08/2007
27777 7590 09/29/2016
JOSEPH F SHIRTZ
JOHNSON & JOHNSON
ONE JOHNSON & JOHNSON PLAZA
NEW BRUNSWICK, NJ 08933-7003
FIRST NAMED INVENTOR
Amit Khanolkar
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.
VTN5198USNP 2019
EXAMINER
NGUYEN, NGOC YEN M
ART UNIT PAPER NUMBER
1734
NOTIFICATION DATE DELIVERY MODE
09/29/2016 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):
jnjuspatent@corus.jnj.com
lhowd@its.jnj.com
pairjnj@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte AMIT KHANOLKAR, TURE KINDT-LARSEN,
JENS-ERIK SORENSEN, and GERALD L. YEWEY
Appeal2015---006015
Application 11/868,914
Technology Center 1700
Before BRADLEY R. GARRIS, JEFFREY T. SMITH, and
BEVERLY A. FRANKLIN, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134 of the Examiner's
decision rejecting claims 1, 3, 6-21, 23, and 24. We have jurisdiction over
the appeal under 35 U.S.C. § 6(b).
Appeal2015-006015
Application 11/868,914
STATEMENT OF THE CASE
Claim 1 is illustrative of Appellants' subject matter on appeal and is
set forth below:
1. A process comprising
a. forming a first solution comprising at least about 5000 ppm of at
least one salt precursor;
b. forming a second solution comprising a complex formed from at
least about 5000 ppm at least one silver metal agent and at least one
dispersing agent in a particle size stabilizing effective amount;
c. adding said second solution to said first solution at a rate sufficient
to maintain a clear solution throughout addition and to form a product
solution comprising stabilized silver salt particles having a mean particle
size of less than about 200 nm;
d. drying said product solution to form an antimicrobial silver salt
powder comprising 0.01 to about 10 weight% silver in the antimicrobial
silver salt powder.
The Examiner relies on the following prior art reference as evidence
of unpatentability:
Katagawa et al. 1 JP 2007-073431 A Mar. 3, 2007
(hereafter "Katagawa")
THE REJECTIONS
1. Claims 1, 3, 6-21, 23, and 24 are rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite.
1 We use the English translation by the McElroy Translation Company of
record, which indicates that the last name of the inventor is Katagawa, and
therefore we refer to this reference as "Katagawa".
2
Appeal2015-006015
Application 11/868,914
2. Claims 1, 3, 6-21, 23, and 24 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Katagawa.
ANALYSIS
We select claim 1 as representative of all the claims on appeal, based
upon Appellants' presented arguments. 37 C.F.R. § 41.37(c)(l)(iv).
Rejection 1
The Examiner views the word "clear" as being indefinite. The
Examiner views this word as a relative term and a subjective word, and that
insufficient guidance is given the Specification as to its understanding. Ans.
2-3 and 6-7.
Claim language employing terms of degree has long been found
definite where it provided enough certainty to one of skill in the art when
read in the context of the invention. Interval Licensing LLC v. AOL, Inc.,
766 F.3d 1364, 1378 (Fed. Cir. 2014).2
In the instant case, Appellants refer to several parts of the
Specification which they submit provide sufficient guidance regarding the
boundaries of the word "clear". Appellants explain that the Specification
discloses that the clarity of a solution is maintained throughout a mixing
step, and that the Specification includes 1) a functional definition of clear
2 The Court ultimately concluded that the specification and prosecution
history did "not provide a reasonably clear and exclusive definition, leaving
the facially subjective claim language without an objective boundary". Id. at
1373.
3
Appeal2015-006015
Application 11/868,914
("[s]light localized haze may be acceptable so long as the solution clears
with stirring. ")3, 2) alternate methods for measuring haze ("[ c ]larity of the
solution may be observed visually or monitored using UV-VIS
spectroscopy.")4, and 3) examples with visually observed haze levels which
could be repeated to calibrate the visual scale (clear, mild haze or milky)
used in the application for observing haze visually. 5 Appellants also state
that the Specification and Examples specify that the mixing is done at
ambient temperature, and that since haze is measured through mixing, it too
is observed at room temperature. Appellants submit that the Specification
thus includes a functional definition of haze, methods for assessing it
(including a visual scale), and Examples where haze was assessed. 6
In response, the Examiner argues that no values or ranges are
provided when using the UV-VIS spectroscopy. Ans. 6-7. However, as
3 Spec. p. 8, 11. 15-16.
4 Spec., p. 6, 11.16-17.
5 See Examples 2-15.
6 In Appeal No. 2012---004884 (decided July 19, 2013), on pages 3--4, it is
written that Appellants pointed out that the word "clear" as recited in their
claims, is described in the Specification as follows: "[t]he rate of addition of
the salt precursor and metal agent solutions is selected to maintain a clear
solution throughout mixing. Slight localized haze may be acceptable so long
as the solution clears with stirring." Appellants stated that in light of their
Specification, the word "clear" requires the solutions to be free of visible
haze. Id., at p. 4. Spec. p. 8, 11. 14-16.
4
Appeal2015-006015
Application 11/868,914
Appellants state on page 5 of the Appeal Brief, clarity is a known technical
parameter. This point made, along with the aforementioned disclosure in the
Specification, provides sufficient certainty regard the meaning of the word
"clear".
A claim satisfies the definiteness requirement of 35 U.S.C. § 112,
second paragraph, when one skilled in the art understands the claim
parameters as read in light of the specification. BJ Servs. Co. v. Halliburton
Energy Servs., Inc., 338 F.3d 1368, 1372 (Fed. Cir. 2003). The Examiner
has not adequately explained why one of ordinary skill in the art would not
have been reasonably apprised of the scope of the claim as a result of the
claim term "clear."
In view of the above, we reverse Rejection 1.
Reiection 2
We refer to the Examiner's findings made on pages 3-5 of the Answer
(which we do not repeat herein).
Appellants focus on Example 1 of Katagawa and set forth a table on
page 6 of the Appeal Brief showing differences between their claimed
subject matter and Example 1 of Katagawa, and submit that several elements
are different. Appeal Br. 6-7.
Appellants further state that their Examples 3, 4 and 6-7 show that, at
the concentrations recited in the present claims, the order and rate of
addition are particularly important to maintaining a clear solution and
producing the desired particle sizes. Appeal Br. 7. Appellants argue that this
5
Appeal2015-006015
Application 11/868,914
is not suggested by Katagawa. Appellants state that Katagawa sets forth a
general disclosure that a number of factors influence particle size (para.
[0019]). Id. Appellants argue that the Examiner has provided no
justification as to why one with ordinary skill in this art would have made
the series of selections as recited in Appellants' claims. Appellants submit
that Katagawa was clearly interested in generating small particles, and did
not discover the combination of conditions (including a relatively high
concentration of metal agent and salt precursor) under which the desired
particles could be made without filtering. Id. Appellants state that increased
concentrations are desirable, as they require less drying to recover the
antimicrobial metal salt powder.
We are unpersuaded by Appellants' aforementioned arguments. We
essentially agree with the Examiner's stated reply made on pages 7-10 of
the Answer. We add that with regard to the addition rate, Katagawa teaches
.1 •• 1 11•,• • 1 • .... ,. •11 / .1 1•, 1 •11 mac me aaamon is a resun enecnve vanao1e ~among mner ns1ea vanao1es,
as discussed by the Examiner in the record). Katagawa, para. [0019]. This
paragraph discloses:
[t]he microparticle size can be controlled, for example, by suitably
changing the kind of organic molecule used as a protective agent, the
reaction temperature, the reaction time, the silver or iodide ion
concentration in the reaction solution, the mixing speed, the order of
mixing and the amount of inorganic salt addition to the aqueous
solution.
We note that "[ d]iscovery of an optimum value of a result effective
variable ... is ordinarily within the skill of the art." In re Boesch, 617 F.2d
272, 276 (CCPA 1980). Absent evidence of criticality, as in the instant
6
Appeal2015-006015
Application 11/868,914
case 7, we therefore agree with the Examiner's determination, and affirm
Rejection 2.
Rejection 1 is reversed.
Rejection 2 is affirmed.
DECISION
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a).
ORDER
AFFIRl'viED
7 Appellants refer to their Examples 2-7 for showing that when the
conditions recited in the present claims are used, a clear solution can be
maintained throughout the mixing process. However, the issue is vvhether
the prope1iies differ to such an extent that the difference is really
unexpected. in re !Vferck& Co.~ 800F.2d1091 (Fed. Cir. 1986).
7