Ex Parte Lawandy

Patent Trial and Appeal Board

Apr 28, 2017

13630895 (P.T.A.B. Apr. 28, 2017)

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
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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.
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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.)
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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
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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
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