Ex Parte LI et al

Patent Trial and Appeal Board

Jun 27, 2017

12632686 (P.T.A.B. Jun. 27, 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.
12/632,686 12/07/2009 Jun Li 49768.21655 4239
7590 06/29/2017
BAKER & HOSTETLER LLP
WASHINGTON SQUARE, SUITE 1100
1050 CONNECTICUT AVE. N.W.
WASHINGTON, DC 20036-5304
EXAMINER
DICKINSON, PAUL W
ART UNIT PAPER NUMBER
1618
NOTIFICATION DATE DELIVERY MODE
06/29/2017 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):
eofficemonitor@bakerlaw.com
edervis @bakerlaw.com
patents @ bakerlaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JUN LI, TREVOR SQUIER, ZHENG ZHANG, CHAD HUVAL,
WILLIAM SHANNAN O'SHAUGHNESSY, MICHAEL HENCKE,
MICHAEL BOUCHARD, and CHRISTOPHER R. LOOSE1
Appeal 2016-001847
Application 12/632,686
Technology Center 1600
Before ULRIKE W. JENKS, RYAN H. FLAX, and
RACHEL H. TOWNSEND, Administrative Patent Judges.
JENKS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims directed
to a method of making a composition including a non-fouling polymeric
material. The Examiner rejects the claims as anticipated and obvious. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 According to Appellants, the Real Party in Interest is SEMPRUS
BIOSCIENCES CORP, which is owned by TELEFLEX INCORPORATED.
Appeal Br. 1.
Appeal 2016-001847
Application 12/632,686
STATEMENT OF THE CASE
The Specification explains that it is important to provide coatings for
substrates, such as polymers and metal oxide substrates, that include
“protein resistant chemistries to resist non-specific protein adsorption” on
the substrates Spec. 2:27.
Claims 2, 3, 6—13, 15—18, 26—29, 31—48, 50, 52, 53, and 55—58 are on
appeal2, and can be found in the Claims Appendix of the Appeal Brief.
Claim 47 is representative of the claims on appeal, and reads as follows:
47. A method of making a composition comprising a substrate,
a non-fouling polymeric material, and optionally an
undercoating layer immobilized on the substrate, the non­
fouling polymeric material being covalently bound to the
substrate or the undercoating layer, the method comprising
imbibing one or more initiators into the substrate or the
undercoating layer and grafting the non-fouling polymeric
material from the imbibed substrate or undercoating layer.
The following grounds of rejection are before us for review:
I. Claims 2, 3, 6, 8, 9, 13, 16—18, 26, 27, 32-48, 50, and 55—58 under
35 U.S.C. §§ 102(a) and (e) as being anticipated by Jiang.3 Ans. 2—3.
II. Claims 2, 3,6-11, 26, 27, 31^18, 50, and 55-57 under 35 U.S.C.
§ 102(a) and (e) as being anticipated by Ferreira.4 Ans. 3^4.
III. Claims 2, 3, 6, 8, 9, 13, 16-18, 26-29, 32^18, 50, 52-53, and 55-58
under 35 U.S.C. § 103(a) as unpatentable over Jiang in view of
Giesecke.5
2 The Examiner finds that claims 30 and 54 are allowable if presented in
independent form. See Final Act. 5; Appeal Br. 2.
3 Jiang et al., WO 2008/083390 A2, published July 10, 2008 (“Jiang”).
4 Ferreira et al., WO 2007/095393 A2, published Aug. 23, 2007 (“Ferreira”).
5 Giesecke et al., US 6,489,382 Bl, issued Dec. 3, 2002 (“Giesecke”).
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Application 12/632,686
I. Anticipation by Jiang
The issue is: Does the preponderance of the evidence of record
support the Examiner’s finding that Jiang teaches absorbing initiators into
the substrate or undercoating layer as claimed?
Findings of Fact
FF1. Jiang teaches making dual functional non-fouling surfaces or
materials. Jiang Abstract. Jiang teaches that “[a] variety of substrate
surfaces can be rendered dual-functional using the materials and
methods described herein.” Jiang 9:32—33. Substrate surfaces
include, among other things, silicon/silica surfaces and “natural
polymeric surfaces[, which] include collagen, fibrins, and other
carbohydrate surfaces suitable for the use of tissue engineering.”
Jiang 10:2-4.
FF2. Jiang teaches that “nonfouling surfaces are prepared from surfaces by
coating or covalently coupling a dual-functional material to a surface
of a substrate.” Jiang 6:23—24. “The nonfouling function of the
surface is imparted to the surface by the materials[, such as polymers,]
coupled to the surface. Jiang 7:6—9. According to Jiang,
the polymers can be attached to the surface directly or
through a plurality of linkers. In one embodiment, the
substrate of the invention further comprises a monolayer
(e.g., self-assembled) covalently coupled to the surface,
wherein the monolayer comprises a plurality of alkylene
moieties, and wherein the polymers are covalently
coupled to the plurality of alkylene moieties.”
Jiang 8:27—31; see Ans. 6.
FF3. The Specification defines “imbibing” as encompassing “physically
adsorbing the initiator onto the surface and/or the initiator partially
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penetrating the hydrophobic surface. Imbibing can be aided by use of
a solvent.” Spec. 42:15—17; Ans. 6.
FF4. The Specification provides that “the initiator is introduced into and/or
onto the substrate’s surface by physio-adsorption, wherein the initiator
is dissolved in a solvent or combination of solvents.” Spec. 37:16—18.
“The degree of absorption into the substrate is a function of the
amount and the duration of the swelling of the substrate.” Spec.
38:20-22; see Reply Br. 2—3.
Principle of Law
To anticipate, every element and limitation of the claimed invention
must be found in a single prior art reference, arranged as in the claim.
KarstenMfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir.
2001).
Analysis
Appellants contend that “the Office merely ignored the ‘into the
substrate’ requirement, effectively reading this requirement out of the
claim.” Appeal Br. 8; see Reply Br. 2—3. Appellants acknowledge that
Jiang discloses fibrin as a potential substrate, and the use of self-assembly
monolayers (SAM) to covalently link a polymer to the substrate to make a
nonfouling surface. Reply Br. 3^4. “Critically, Jiang et al. do not exemplify
linking a polymer to a fibrin substrate via a self-assembly monolayer, nor do
they even expressly disclose linking a polymer to a fibrin substrate via a
self-assembly monolayer.” Reply Br. 4.
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The Examiner’s position is that the Specification does not distinguish
between “imbibing into” and “imbibing onto” a surface because the
Specification defines imbibing as including both adsorption onto the surface
as well as partially penetrating the surface. See Ans. 6—7; FF3. According
to the Examiner, because the Specification defines imbibing as
encompassing both of the foregoing, Jiang anticipates the claims by teaching
the polymers can be attached to the surface of the substrate. Id.
Claim interpretation is at the heart of patent examination because a
claim cannot be compared to the prior art before its scope is properly
ascertained. Cf. In re Abbott Diabetes Care Inc., 696 F.3d 1142, 1146 (Fed.
Cir. 2012)). “[DJuring examination proceedings, claims are given their
broadest reasonable interpretation consistent with the specification.” In re
Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000).
As noted by the Examiner, the Specification defines “imbibing” but
does not provide a separate definition of “imbibing into.” FF3. However,
the Specification provides some guidance as to what is meant by “imbibing
into” in that imbibing includes, besides adsorbing the initiator “onto the
surface,” partially penetrating a surface. FF3. Appellants direct us to parts
of the Specification that explain that the adsorption of the initiator is effected
by the solvent and the time. FF4. Neither of the passages cited by
Appellants direct us to how deep into the surface the initiator must penetrate.
The recognition that the solvent or length of time adsorption occurs effects
the adsorption does not further provide any indication how deep into the
substrate structure the initiator needs to penetrate. Nevertheless, the
broadest reasonable interpretation of “imbibed into” as read in light of the
Specification is that the initiator needs to penetrate the surface of the
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substrate at some level. There is no requirement, however, as to how far
down into the substrate the initiator must penetrate. In light of the foregoing
construction, only showing surface deposition of the initiator would not meet
the claim limitation.
The Examiner directs us to the teachings in Jiang that recite the types
of substrates that are contemplated, for example fibrin. FF1. The Examiner
combines this fibrin substrate with the teaching in Jiang that teaches coating
the substrate with a self-assembled monolayer. FF2. The Examiner
contends:
For the sake of argument, if “imbibing into” required partial
penetration of the initiator into the hydrophobic surface, which
the examiner does not concede, the method of Jiang would still
read on the claim. Jiang teaches coating a substrate with a
radical initiator-terminated self-assembly monolayer (SAM)
(page 8, lines 27-31) onto surfaces such as fibrin (page 19, line
4). The artisan would understand that due to the fibrous
structure of fibrin, there are gaps at the surface, and that a small
amount of the initiator would penetrate below the surface. This
reads on “partially penetrating the hydrophobic surface.”
Ans. 6. In other words, the Examiner bases the rejection on a fibrin
substrate, provided the fibrin substrate is assembled in a particular way and
thereby would achieve a structure that has pores. If this hypothetical
fibrous-pore-containing substrate is selected and then components for the
self-assembled monolayer are provided then the natural result would be that
some of the initiator would penetrate the surface and thereby meet the
limitation of “imbibed into” as claimed. We are not persuaded by the
Examiner’s rationale.
As stated in Arkley, an anticipatory reference under 35 U.S.C. § 102
[M]ust clearly and unequivocally disclose the claimed
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compound or direct those skilled in the art to the compound
without any need for picking, choosing, and combining various
disclosures not directly related to each other by the teachings of
the cited reference. Such picking and choosing may be entirely
proper in the making of a 103, obviousness rejection, where the
applicant must be afforded an opportunity to rebut with
objective evidence any inference of obviousness which may
arise from the similarity of the subject matter which he claims
to the prior art, but it has no place in the making of a 102,
anticipation rejection.
In reArkley, 455 F.2d 586, 587—88 (CCPA 1972). Here, the Examiner relies
on various individual teachings from Jiang to select a potential substrate and
a particular initiator. Jiang, however, does not provide a reason to select the
particular substrate / initiator combination. In addition, with respect to the
substrate the Examiner makes further speculations, also not taught in Jiang,
that the fibrin substrate can be assembled into a three dimensional structure
with pores. Thus, the Examiner in making the rejection is relying on
speculation based on the selection of the substrate, fibrin, and how it could
be assembled, in conjunction with another selection of the radical initiator-
terminated self-assembly monolayer (SAM). As stated in Arkley, picking
and choosing among teachings in a reference is entirely appropriate in
making an obviousness rejection, but it has no place in making an
anticipation rejection.
The evidence of record does not support the Examiner’s conclusion
that Jiang anticipates the claims. Accordingly we reverse the rejection of all
claims that rely on Jiang
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II. Anticipation by Ferreira
The issue is: Does the preponderance of the evidence of record
support the Examiner’s finding that Ferreira teaches absorbing initiators into
the substrate or undercoating layer as claimed?
Findings of Fact
We adopt the Examiner’s findings of fact and reasoning regarding the
scope and content of the prior art as set out in the Examiner’s Answer and
the Final Office Action (mailed Nov. 6, 2013). For emphasis only we
highlight the following:
FF5. Ferreira teaches “[compositions containing one or more types of
antimicrobial peptides immobilized on a substrate with a specific
orientation.” Ferreira 4:28—29. “High specific antimicrobial activity
is achieved by orienting the peptides to enable effective interaction
between critical portions of the AmP and the bacterial membrane.”
Ferreira 5:7—9. “The peptides can be tethered in a desired density and
orientation using chemistries designed to reduce protein adhesion.”
Ferreira 5:21—23.
FF6. Ferreira teaches that the peptides can be “applied to, adsorbed into, or
coupled to” different substrates such as fibers and silicone. Ferreira
14:17—19. Ferreira teaches fibrous and particulate substrate material.
See Ferreira 36:20 to 37:5. “Substrates may be in the form of, or form
part of, films, particles (nanoparticles, microparticles, or millimeter
diameter beads), fibers (wound dressings, bandages, gauze, tape, pads,
sponges, including woven and nonwoven sponges and those designed
specifically for dental or ophthalmic surgeries).” Ferreira 15:3—7.
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FF7. Ferreira teaches that “[tjethers, linkers and spacers are utilized both
for attachment of peptides to substrates and or attachment of peptides
to polymer films coated on substrates.” Ferreira 19:4—6.
FF8. Ferreira teaches that “a polymer is grafted onto a substrate and the
AmP is covalently coupled to the polymer.” Ferreira 29:25—26.
“Examples of free-radical polymerization include spontaneous UV
polymerization; type 1 or type 2 UV initiated polymerization; thermal
initiated polymerization using a thermal initiator, such as AIBN; or
redox-pair.” Ferreira 30:11—14.
FF9. The Examiner finds that “[f]or the initiator to contact the monomer on
the surface, at least some of the initiator must be in contact with the
surface, i.e., physically adsorbed.” Ans. 7.
Principle of Law
A reference can anticipate a claim even if it “‘d[oes] not expressly
spell out’ all the limitations arranged or combined as in the claim, if a person
of skill in the art, reading the reference, would ‘at once envisage’ the
claimed arrangement or combination.” Kennametal, Inc. v. Ingersoll Cutting
Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015) (internal citation omitted).
Analysis
Appellants contend that “the Office merely ignored the ‘into the
substrate’ requirement, effectively reading this requirement out of the
claim.” Appeal Br. 8. Ferreira “generally disclose grafting polymers onto a
substrate, but they do not disclose imbibing initiator into a substrate.”
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Appeal Br. 11. Ferreira does not “disclose or suggest a substrate comprising
an undercoating layer of polyurethane.” Appeal Br. 11.
As discussed above, the broadest reasonable interpretation of
“imbibed into” as read in light of the Specification is that the initiator needs
to penetrate the surface of the substrate, but there is no requirement as to
how far down into the substrate the initiator must penetrate.
The Examiner finds that “[t]he substrate of Ferreira is a sponge (a
porous structure).... The artisan would understand that due to the sponge
being porous, that at least some of the initiator would fall into the pores of
the surface. This reads on ‘partially penetrating the hydrophobic surface.’”
Ans. 7. With respect to this rejection, we agree with the Examiner that
Ferreira does not just teach only surface deposition of the initiator. Ferreira
expressly contemplates sponges and woven material as a substrate for
linking antimicrobial peptides. See FF5—FF9. We agree with the Examiner
that sponges and woven material would contain pores that reach below the
surface of the material and that applying the initiator onto the surface of
substrates containing pores would reasonably include penetrating the
initiator below the surface by filling into the pores, and thereby meet the
“imbibing into” limitation of the claim.
Accordingly, we affirm the anticipation rejection of claim 47 under
35 U.S.C. § 102(a) and (e) by Ferreira. As claims 2, 3, 6, 7, 9-11, 31—46,
and 55—57 have not been argued separately, they fall with claim 47.
Claim 48
Appellants contend that Ferreira does not “disclose the requirement of
claim 48 that one or more free radical initiators are imbibed into the
substrate or undercoating layer.” Appeal Br. 10.
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We are not persuaded. As discussed above, Ferreira teaches sponges
as substrates and one of ordinary skill in the art would recognize that
sponges contain pores into which the initiator can enter in order to adsorb
onto the surfaces lining the pore. Because the pore reaches underneath the
surface it is reasonably interpreted to penetrate the surface and, thereby, any
initiator that attaches to surfaces lining the pore would meet the “imbibed
into” limitation as required by the claim 48. The Examiner identified that
Ferreira uses free-radical initiators such as redox-pair initiators or peroxide.
See Ans. 4; see Ferreira 30:14—15 (“redox pair initiated polymerization”),
32:28 (“peroxide compounds”). Because claim 48 only requires the use of
one free radical initiator, we find no error with the Examiner’s reliance on
Ferreira for teaching this limitation. We affirm the rejection of claim 48
under 35 U.S.C. § 102(a) and (e) as anticipated by Ferreira. As claims 26—
30, 50, and 52—54 have not been argued separately, they fall with claim 48,
as acknowledged by the Appellants. Appeal Br. 10.
Claim 8
Appellants contend that Ferreira “generally disclose grafting polymers
onto a substrate, but they do not disclose imbibing initiator into a substrate”
and that the substrate is not gold or glass. Appeal Br. 11.
We are not persuaded. As explained by the Examiner, “Ferreira
teaches a number of substrates that are not gold or glass, such as a sponge.”
Ans. 8; FF6. Accordingly we affirm the rejection of claim 8.
Claims 9 and 10
Appellants contend that Ferreira does not “disclose or suggest a
substrate comprising an undercoating layer of polyurethane.” Appeal Br. 11.
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According to the Specification an ‘“[ujndercoating layer’ refers to any
coating, combination of coatings, or functionalized layer covering an entire
substrate surface or a portion thereof under an additional coating.”
Spec. 11:8—10. Based on the broad definition that an undercoating can
encompass a coating, we find no error with the Examiner’s reliance on
Ferreira’s teaching of polyurethane coatings as meeting this limitation. See
Ans. 8; Ferreira 13:21. Accordingly we affirm the rejection of claims 9 and
10.
III. Obviousness over Jiang and Giesecke
This obviousness rejection relies upon the underlying anticipation
rejection based on Jiang, where Jiang is relied upon to address the limitation
of “imbibing one or more initiators into the substrate or the undercoating
layer.” See Ans. 5. The Examiner does not rely on the teaching of Giesecke
to teach imbibing the initiator into the substrate. As we determined above,
Jiang does not teach imbibing the initiator into the substrate. Therefore, we
also reverse the obviousness rejection.
SUMMARY
We reverse the rejection of claims 2, 3, 6, 8, 9, 13, 16—18, 26, 27, 32—
48, 50, and 55—58 under 35 U.S.C. § 102(a) and (e) by Jiang.
We affirm the rejection of claims 2, 3, 6—11, 26, 27, 31—48, 50, and
55—57 under 35 U.S.C. § 102(a) and (e) as being anticipated by Ferreira.
We reverse the rejection of claims 2, 3, 6, 8, 9, 13, 16—18, 26—29, 32—
48, 50, 52—53, and 55—58 under 35 U.S.C. § 103(a) over Jiang in view of
Giesecke.
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TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART
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