Ex Parte O

Patent Trial and Appeal Board

Feb 17, 2016

13545084 (P.T.A.B. Feb. 17, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/545,084 07/10/2012
121974 7590 02/19/2016
KACVINSKY DAISAK BLUNI PLLC
America's Cup Building
50 Doaks Lane
Marblehead, MA 01945
FIRST NAMED INVENTOR
John E. O'Gara
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.
06-01585US3
( 4010/269C 1)
CONFIRMATION NO.
2778
EXAMINER
GULLEDGE, BRIAN M
ART UNIT PAPER NUMBER
1612
NOTIFICATION DATE DELIVERY MODE
02/19/2016 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):
kddocketing@cpaglobal.com
ppari@kdbfirm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN E. O'GARA1
Appeal2013-008603
Application 13/545,084
Technology Center 1600
Before ERIC B. GRIMES, RICHARD M. LEBOVITZ, and
JACQUELINE T. HARLOW, Administrative Patent Judges.
GRIMES, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to injectable
particles, which have been rejected as obvious. We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.
1 Appellant identifies the Real Party in Interest as Boston Scientific Scimed,
Inc. (Appeal Br. 2.)
Appeal2013-008603
Application 13/545,084
DISCUSSION
Claims 1-8, 10, and 12-23 are on appeal. Claim 1 is the only
independent claim and is directed to injectable, polymeric particles
comprising a copolymer with certain defined subunits, "wherein 95 vol% of
the particles have a longest linear cross-sectional dimension between 40 µm
and 5000 µm." (Appeal Br. 8 (Claims Appendix).)
The Examiner has rejected all of the claims under 35 U.S.C. § 103(a)
as obvious based on Unger2 and Hildgen, 3 by themselves or combined with
either Schwarz4 or Radhakrishnan. 5 (Office Action mailed Dec. 21, 2012,
pages 2---6.) The Examiner finds that Unger discloses particles that
"typically range in size from 10 nm to 10,000 mm (paragraph [62], lines 1-
5)," a size range that overlaps the one required by the instant claims. (Id. at
3.)
However, as Appellant has pointed out, "the range cited by the
Examiner in Unger has a high end of 10 meters or approximately 33 feet,
which is obviously preposterous for use in conjunction with pharmaceutical
formulations (the subject matter of Unger)." (Appeal Br. 4.) And, as
Appellant has also pointed out, the specification of the application that was
published as Unger "states, much more reasonably, that 'the particles
produced by the methods of the invention will typically range in size from
about 10 nm to 10,000 nm'." (Id.)
2 Unger et al., US 2004/0247624 Al, published Dec. 9, 2004.
3 Hildgen et al., US 2006/0165987 Al, published July 27, 2006.
4 Schwarz et al., US 2004/0197264 Al, published Oct. 7, 2004.
5 Radhakrishnan, US 4,906,476, issued Mar. 6, 1990.
2
Appeal2013-008603
Application 13/545,084
We agree with Appellant (Reply Br. 3) that the recitation in the
published Unger application of "10 nm to 10,000 mm" is an obvious
typographical error, and that a person of ordinary skill in the art would have
understood the range to be 10 nm to 10,000 nm. 6 This range is equivalent to
0.01 µm to 10 µm, and therefore does not overlap the size range required by
the claims on appeal. Because the Examiner's finding of an overlapping size
range in Unger is not supported by the evidence, and the Examiner has
pointed to no disclosure in the other cited references that remedies this
deficiency, we reverse all of the rejections on appeal.
REVERSED
6 Paragraph 57 of the Unger application, upon which the cited published
application is based, consistently recites that the range is "from about 10 nm
to 10, 000 nm."
3