Ex parte Perrier et al.

Board of Patent Appeals and Interferences

Sep 29, 2000

08232014 (B.P.A.I. Sep. 29, 2000)

1
The opinion in support of the decision being entered today
was not written for publication in a law journal and
is not binding precedent of the Board.
Paper No. 29
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte ERIC JEAN-LUC PERRIER and ALAIN R. HUC
__________
Appeal No. 1997-2436
Application 08/232,014
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HEARD: JULY 11, 2000
___________
Before WILLIAM F. SMITH, Administrative Patent Judge, McKELVEY, Senior
Administrative Patent Judge, and ROBINSON, Administrative Patent Judge.
ROBINSON, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134 from the examiner's final
rejection of claims 3-50, which are all of the claims pending in the application. Claims 23,
24, and 36 are illustrative of the claims on appeal and read as follows:
23. A process for the production of nanocapsules or nanoparticles, said
nanocapsules or nanoparticles having a size of less than 800 nM, with crosslinked protein-
based walls, which comprises preparing a nanoemulsion of at least one acylatable group-
containing protein, said emulsion comprising a water phase, an oil phase, defining an
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Application No. 08/232,014
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interface between said water phase and said oil phase either of a water-in-oil emulsion or
an oil-in-water emulsion, and forming said nanocapsules or nanoparticles from said
nanoemulsion, wherein an interfacial crosslinking reaction is carried out, between said
protein and a crosslinking agent having reactive groups capable of reacting at said
interface with said acylatable groups of said protein, so as to yield said nanocapsules with
crosslinked protein-based walls.
24. A process for the production of nanocapsules, with cross-linked protein-
based walls, which comprises preparing a nanoemulsion of said proteins comprising an
oil phase and a water phase, defining an interface between said water phase and said oil
phase either of a waste-in-oil emulsion or of an oil-in-water emulsion and forming said
nanocapsules from said nanoemulsion, wherein an interfacial cross-linking reaction is
carried out between said proteins and a cross-linking agent selected from the group
consisting of an acid dichloride, an acid anhydride and a dibasic or polybasic carboxylic
acid, as to yield said nanocapsules, with cross-linked protein-based walls.
36. A nanocapsule or nanoparticle having a size of less than 800 nM comprising
a crosslinked outer wall having been obtained from a nanoemulsion by an interfacial
crosslinking reaction between at least one protein having acylatable groups and a
crosslinking agent having reactive groups capable of reacting with said acylatable groups
of said protein to form interfacial crosslinking.
The reference relied upon by the examiner is:
Huc et al. (Huc) 5,395,620 March 7, 1995
(Filed June 8, 1993)
Grounds of Rejection
Claims 3-7, 11, 14-17, 21-29, 31, 34, 36-44, 46, and 47 stand rejected under
35 U.S.C. § 102 (e). As evidence of anticipation, the examiner relies upon Huc.
Claims 3-50 stand rejected under 35 U.S.C. § 103. As evidence of obviousness the
examiner relies upon Huc.
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Application No. 08/232,014
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Claims 21, 22, and 36-43 stand rejected under the judicially created doctrine of
obvious-type double patenting over claims 1-4 and 6-9 of Huc.
We vacate all of the rejections in view of the new ground of rejection under 37 CFR §
1.196(b) set forth infra.
Background
The applicants describe the invention at page 4 of the specification as being
directed to a process for the production of capsules or particles of very small dimensions,
called nanocapsules or nanoparticles, having crosslinked protein-based walls, which
comprises preparing a very fine emulsion of the protein, either of the water-in-oil or oil-in-
water type, and forming said nanocapsules by carrying out an interfacial crosslinking
reaction with a crosslinking agent having reactive groups capable of reacting with the
reactive groups of the protein. The nanocapsules or nanoparticles thus formed are stated
to be useful in cosmetic, pharmaceutical and food compositions and provide a slow or
delayed release of the active principle encapsulated therein.
Discussion
Opinion
In considering the issues raised by this appeal we have carefully considered the
positions of the examiner as set forth in the Examiner's Answer and the applicants'
position as set forth in the principal Appeal Brief and the subsequently filed Reply Brief. In
addition, it became apparent during the presentation at the oral argument of
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July 11, 2000 that counsel was reading the claims in a manner which was new to this
record. In reviewing the record in light of the arguments made by counsel, we have
determined that a material issue of claim interpretation is present, which must be resolved
before the merits of the parties' positions can be properly considered. Accordingly, we
take the following action.
New Ground of Rejection
Under the provisions of 37 CFR § 1.196(b) we enter the following new ground of
rejection.
Claims 3-50 are rejected under 35 U.S.C. § 112, second paragraph, as failing to
particularly point out and distinctly claim the invention.
Representative claim 24 is directed to a process of producing nanocapsules having
cross-linked protein-based walls. Interpretation of the claim requires a determination as
to the meaning of the phrase "nanocapsules." Applicants' representative, at the oral
argument, urged that the phrase "nanocapsules" as used in claim 24 and the range of
particle or capsule sizes present in other claims should be read as indicating a "mean"
value and not as setting specific size limitations for the particles or capsules. It is not
readily apparent that the specification supports this interpretation. In describing the
nanocapsules of the invention there is no explicit reference in the specification to a "mean"
value for the size of particles or capsules of the type encompassed by the claim 24. At
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page 4 of the specification applicants describe the invention as directed to "the production
of particles or capsules of submicron dimensions, i.e. with a size of less than 1µm and
especially of between about 100 and 800 nanometers." Similarly, we note Example 6 at
page 11 of the specification which states "This gives nanocapsules with dimensions of
between 200 and 800 nanometers." The only reference to a "mean" value comes at page
13 of the specification which describes "type A microcapsules containing PABA* (mean
size 50 µm,)" and this relates not to the claimed invention but to a comparison with prior art
particles which are microcapsules.
Thus, if we give credence to the representations by applicants' representative at
oral argument, it would appear that the term "nanoparticles", as used in claim 24 has two
plausible interpretations: 1) all of the capsules or particles are of a size less than 1 micron;
or 2) at least some of the particles are less than 1 micron, but some are larger than 1
micron, with the mean value of the size of the particles being less than 1 micron.
Reference to the specification does not clarify this ambiguity since it fails to offer an
explicit definition of what applicants intended by the use of this term. Applicants'
representative, at the oral argument, urged that one skilled in this art would know that the
use of the terminology in the claim and the specification was intended to reflect "mean"
dimensions and not absolute values. However, applicants' representative has not called
our attention to any convincing documentation or evidence in this record which would
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support that proposition.
It is well established that "definiteness of the language employed must be analyzed,
not in a vacuum, but always in light of the prior art and of the particular application
disclosure as it would be interpreted by one possessing the ordinary level of skill in the
pertinent art." In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA 1971). We
note that the purpose of the second paragraph of Section 112 is basically to insure, with a
reasonable degree of particularity, an adequate notification of the metes and bounds of
what is being claimed. See In re Hammack, 427 F.2d 1378, 1382, 166 USPO 204, 208
(CCPA 1970). When claim 24 is viewed in light of this authority, it does not reasonably
appear that one skilled in the art would be capable of determining the metes and bounds
of claim 24 even when read in light of the specification. The remaining claims do not clarify
this ambiguity. Therefore, we reject representative claim 24, and claims 3-23 and 25-50
under 35 U.S.C. § 112, second paragraph, as failing to particularly point out and distinctly
claim the subject matter which the applicants regard as their invention.
The rejections under 35 U.S.C. § 102/103 and obvious double patenting
For reasons stated infra in our new ground of rejection under 37 CFR § 1.196(b),
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we are of the opinion that claims 3-50, fail to satisfy the requirements of 35 U.S.C. § 112,
second paragraph. Since the metes and bounds of the claim are unclear, we do not reach
the rejections of the claims under 35 U.S.C. § 102, 35 U.S.C. § 103, or under the judicial
doctrine of obvious double patenting. In making a patentability determination, “[a]nalysis
begins with a key legal question -- what is the invention claimed?” since “[c]laim
interpretation . . . will normally control the remainder of the decisional process,” Panduit
Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1567-68,
1 USPQ2d 1593, 1597 (Fed. Cir.), cert. denied, 481 U.S. 1052 (1987). Where as here, a
reasonable interpretation of the claim can not be made, if follows that it is impossible to
compare the claimed invention with the prior art. See Graham v. John Deere Co., 383 U.S.
1,17, 148 USPQ 459, 467 (1966)("Under § 103, the scope and content of the prior art are
to be determined; differences between the prior art and the claims at issue are to be
ascertained; and the level of ordinary skill in the pertinent art resolved. Against this
background, the obviousness or nonobviousness of the subject matter is determined."). In
order to compare the claimed subject matter with the relevant prior art we would first have
to speculate or make assumptions as to what is intended by the claim. However, since a
rejection under 35 U.S.C. § 102 or 35 U.S.C. § 103, and similarly the rejection as to
obvious double patenting, can not be based on speculations and assumptions, (See In re
Steele, 305 F.2d 859, 862-63, 134 USPQ 292, 295-96 (CCPA 1962) and In re Wilson,
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424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970)), we vacate the prior art
rejections as well as the rejection under the judicially created doctrine of obvious-type
double patenting. Should further prosecution occur, we would urge the applicants and
examiner to work together to determine what the appropriate interpretation of the claim
should be. The applicants may wish to avail themselves of this opportunity to document or
provide other evidence which would reasonably establish that one skilled in this art at the
time of filing of the application would have recognized that a composition comprising
nanoparticles, or particles of a stated size, would be recognized as reflecting mean values
rather than specific size limits. When the proper interpretation of the claims has been
made, it will then be appropriate to compare the claimed subject matter with the relevant
prior art.
SUMMARY
To summarize, we enter a new ground of rejection under the provisions of
37 CFR § 1.196(b) of claims 3-50 and vacate the rejection of claims 3-7, 11, 14-17,
21-29, 31, 34, 36-44, 46, and 47 under 35 U.S.C. § 102(e), the rejection of claims 3-50
under 35 U.S.C. § 103, and the rejection of claims 21, 22, and 36-43 under the judicially
created doctrine of obvious-type double patenting.
TIME PERIOD FOR RESPONSE
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This decision contains a new ground of rejection pursuant to 37 CFR § 1.196(b)
(amended effective Dec. 1, 1997, by final rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct.
10, 1997), 1203 Off. Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)).
37 CFR § 1.196(b) provides, "[a] new ground of rejection shall not be considered final for
purposes of judicial review."
37 CFR § 1.196(b) also provides that the applicants, WITHIN TWO MONTHS
FROM THE DATE OF THE DECISION, must exercise one of the following two options with
respect to the new ground of rejection to avoid termination of proceedings (37 CFR
§ 1.197(c) as to the rejected claims:
(1) Submit an appropriate amendment of the claims so rejected or a
showing of facts relating to the claims so rejected, or both, and have the
matter reconsidered by the examiner, in which event the application will be
remanded to the examiner . . . .
(2) Request that the application be reheard under § 1.197(b) by the Board
of Patent Appeals and Interferences upon the same record . . . .
No time period for taking any subsequent action in connection with this appeal may
be extended under 37 CFR § 1.136(a).
VACATED and 37 CFR § 196(b)
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Application No. 08/232,014
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William F. Smith )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
Fred E. McKelvey )
Senior Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
Douglas W. Robinson )
Administrative Patent Judge )
Appeal No. 1997-2436
Application No. 08/232,014
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