Ex Parte LawandyDownload PDFPatent Trial and Appeal BoardApr 28, 201713630895 (P.T.A.B. Apr. 28, 2017) Copy Citation 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. 13/630,895 09/28/2012 Nabil M. Lawandy S095 P02497-US1 1041 3017 7590 04/28/2017 BARLOW, JOSEPHS & HOLMES, LTD. 101 DYER STREET 5THFLOOR PROVIDENCE, RI02903 EXAMINER SINGH, RANDEEP ART UNIT PAPER NUMBER 1615 MAIL DATE DELIVERY MODE 04/28/2017 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte NABIL M. LAWANDY1 Appeal 2016-006480 Application 13/630,895 Technology Center 1600 Before ERIC B. GRIMES, JEFFREY N. FREDMAN, and JOHN E. SCHNEIDER, Administrative Patent Judges. GRIMES, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims to a coating for an ingestible material, which have been rejected as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. STATEMENT OF THE CASE The Specification states that the “invention provides a coating for pills, tablets and other ingestible materials that is authenticable and serves to 1 Appellant identifies the Real Party in Interest as Spectra Systems Corporation. (Appeal Br. 1.) Appeal 2016-006480 Application 13/630,895 identify the underlying material and its dosage onto which the coating has been deposited as being genuine material.” (Spec. 1 8.) The coatings disclosed herein are machine readable and can encode unique information that can be read to indicate the source, dosage, and drug type. The coatings are formed from a lattice of particles stacked to cause selective diffraction of light. Thus, each coating has an optical signature that can be read and authenticated. {Id. 19.) “In one embodiment, the coatings comprise a plurality of spherical particles having diameters which approximate a lattice spacing sized relative to a wavelength of light such that a Bragg scattering condition is satisfied.” {Id. 120.) Claims 1—8 are on appeal. Claim 1 is the only independent claim and reads as follows (emphasis added): 1. A coating for an ingestible material comprising: a substrate; a first coating applied onto said substrate said coating having a first plurality of substantially spherical particles suspended therein, the particles having a first dimension that equals a fraction of a wavelength that will satisfy a Bragg scattering condition, wherein the particles self arrange during application to define a plurality of lattices that selectively diffract electromagnetic radiation and wherein each of the plurality of particles comprise a generally recognized as safe material. DISCUSSION The Examiner has rejected all of the claims on appeal under 35 U.S.C. § 103(a) as obvious based on Bunick,2 Midgley,3 Mercolino,4 and 2 Bunick, U.S. 2007/0190133 Al, Aug. 16, 2007 3 Midgley, U.S. 2009/0116753 Al, May 7, 2009 4 Mercolino, U.S. 2007/0160814 Al, July 12, 2007 2 Appeal 2016-006480 Application 13/630,895 Reynders.5 (Final Act.6 2.) The Examiner finds that Bunick teaches “edible dosage forms that incorporate optical elements capable of producing unique diffractive color patterns.” (Id.) The dosage forms “can comprise coatings with microrelief patterns that may be adjusted such that only a desired wavelength of light may be reflected therefrom, for example, by adjusting the depth and angle of the ridges and grooves of the microrelief.” (Id. at 2-3.) The Examiner finds that Bunick also discloses that “a multitude of particles having a certain microrelief and a certain size can be deposited on dosage forms via methods known in the art such as dip coating.” (Id. at 3.) The Examiner finds that Bunick exemplifies “a method for coating tablets with a gelatin solution containing microrelief flakes suspended therein. ... It is inevitable that the particles of various sizes and dimensions would self-arrange during the dip-coating step to define a plurality of lattices.” (Id.) The Examiner acknowledges that Bunick does not disclose particles with a dimension that equals a fraction of a wavelength that will satisfy a Bragg scattering condition but concludes that it would have been well within the ordinary level of skill in the art at the time of the invention, based on at least the teachings of Bunick et al., to alter the dimensions and arrangement of the particles in coatings of pharmaceuticals, as well as the thicknesses of the layers of particles, in order to achieve a desired Bragg scattering condition of the coatings to create a unique optical machine-readable signature. 5 Reynders, U.S. 2006/0159920 Al, July 20, 2006 6 Office Action mailed Oct. 1, 2015. 3 Appeal 2016-006480 Application 13/630,895 (Id.) The Examiner finds that Midgley discloses the particle size limitation of dependent claim 3 (id. at 4—5) and finds that Mercolino discloses the specific materials recited in dependent claim 8 (id. at 6—7). The Examiner finds that Reynders discloses medicament coatings that can contain spherical nanoparticles. (Id. at 7.) The Examiner concludes that it would have been well within the ordinary level of skill in the art at the time of the invention to incorporate a plurality of substantially spherical nanoparticles on the flakes in the dip coatings of Bunick et al., such that the spherical nanoparticles form a microrelief groove or grid structure that consists of regularly arranged spheres upon coating. Based on the teachings of Reynders et al., a skilled artisan would have had a reasonable expectation that the resulting three-dimensional grid-like arrangement of the spheres in the coating of a pharmaceutical could satisfy a desired Bragg scattering condition to create a unique optical machine-readable signature. (Id. at 7—8.) Appellant argues that Bunick “describes pressed tablets having a pattern or microrelief surface formed directly into the surface of the tablet during compression molding. A coating is then inflowed into the molded or embossed pattern.” (Appeal Br. 5—6.) Appellant also argues that “[tjhere is not one word of disclosure in Bunick that discloses a substantially spherical nanoparticle that when applied in a coating forms a self-erecting and uniform lattice that creates a specific diffusion grating.” (Id. at 6.) “The Applicant is as a loss to understand where this provides disclosure relating to a plurality of uniform nanoparticles that self-assemble to form a lattice within the coating.” (Id. at 7.) 4 Appeal 2016-006480 Application 13/630,895 Appellant argues that none of the other cited references make up for the failure of Bunick to disclose or suggest spherical particles with a dimension that will satisfy a Bragg scattering condition. (Id. at 9—10.) Appellant concludes that “the Examiner has used improper hindsight in reconstructing the invention.” (Id. at 8.) “[T]he Examiner imputes all of the missing disclosure from the present invention itself stating that ‘one skilled in the art’ would have clearly done the same. Doing so without a single teaching or suggestion in the prior art is impermissible.” (Id.) We agree with Appellant that the Examiner has not provided evidence that supports a prima facie case of obviousness. The claims require the coating to include “particles having a first dimension that equals a fraction of a wavelength that will satisfy a Bragg scattering condition, wherein the particles self-arrange during application.” (Claim 1.) The Examiner has not pointed to anything in any of the cited references as a basis for concluding that the prior art would have suggested this element of the claimed coating. Rather, the Examiner concludes that it would have been well within the ordinary level of skill in the art at the time of the invention, based on at least the above-stated teachings of Bunick regarding the use of particles having a micro-relief, to alter the micro-relief dimensions and arrangement of particles suspended in coatings of pharmaceuticals, as well as the thicknesses of the layers of particles, in order to achieve a desired Bragg scattering condition of the coatings to create a unique optical machine-readable signature. (Ans. 3.) The Examiner, however, has not pointed to evidence or provided persuasive technical reasoning to show that a person of ordinary skill in the 5 Appeal 2016-006480 Application 13/630,895 art would have considered it obvious to make the claimed coating. Even assuming that it would have been within the level of skill in the art to make a coating that includes the particles recited in claim 1, the Examiner has not shown that a skilled artisan would have had a reason to do so. “[Rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Here, the Examiner has not provided adequate evidence or reasoning to support a prima facie case of obviousness. We therefore reverse the rejection of claims 1—8 under 35 U.S.C. § 103(a). REVERSED 6 Copy with citationCopy as parenthetical citation