Ex Parte Schoen et al

Patent Trial and Appeal Board

Dec 15, 2014

12545139 (P.T.A.B. Dec. 15, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte CHRISTIAN L. SCHOEN and SHELLEY COLDIRON 1
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Appeal 2012-005467
Application 12/545,139
Technology Center 1600
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Before DONALD E. ADAMS, ERIC B. GRIMES, and
CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134 involving claims to packaged
gold nanoparticles, which have been rejected as obvious. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 According to Appellants, the Real Party in Interest is Nanopartz, Inc.
(Appeal Br. 1).
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STATEMENT OF THE CASE
Claims 1–14 are on appeal. Claim 1 is illustrative and reads as
follows:
1. A packaged gold nanoparticle which can be stored long
periods of time without adverse operability affects, comprising:
gold nanoparticles conjugated to PEG and an active
binding molecule material selected from the group consisting of
antibodies, proteins, lectins, and DNA;
a water vehicle for said gold conjugated nanoparticles;
said water vehicle having a particle concentration of from
107 to 1015 of said gold conjugated nanoparticles;
a non-air permeable sealed container surrounding the gold
nanoparticle/water vehicle mixture; and
a sealed film package around the non-air permeable sealed
container.

DISCUSSION
The Examiner has rejected claims 1–14 under 35 U.S.C. § 103(a) as
obvious based on Kataoka,2 Huff,3 Cytodiagnostics,4 Otogenetics,5 and
Sequetech6 (Ans. 5). The Examiner finds that Kataoka discloses gold
nanoparticles conjugated to PEG and a binding agent that can be an
oligonucleotide (id. at 6), and Huff teaches gold nanorods modified by PEG,
as required by some dependent claims (id.).

2 US 2005/0106570 Al; pub. May 19, 2005.
3 Terry B. Huff, et al., Controlling the Cellular Uptake of Gold Nanorods, 23
LANGMUIR 1596–1599 (2007).
4 Cytodiagnostics, Gold Nanoparticle Storage & Handling – Tech Note:
#101.
5 Otogenetics Corporation, Sample Preparation & Shipping
Instruction,V03.02.11.
6 Sequetech DNA Sequencing Service – Requirements for DNA sequencing,
www.sequetech.com/requirements.php?shipments=l (March 27, 2011).
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The Examiner finds that Cytodiagnostics discloses “storage of gold
nanoparticles in microcentrifuge tubes in ultra-pure water” (id. at 7) and both
Otogenetics and Sequetech show that it was well known to store or ship
biological samples, including DNA, in tubes wrapped with parafilm (id.).
The Examiner concludes that the cited references would have made obvious
the packaged gold nanoparticles defined by claim 1 (id. at 7–8). We adopt
the Examiner’s findings regarding the scope and content of the prior art, and
her conclusion that the cited references would have made obvious the
invention of claim 1.
Appellants do not dispute the Examiner’s findings that gold
nanoparticles in water, packaged in a microcentrifuge tube and parafilm,
would have been obvious based on the prior art. Appellants argue, however,
that the critical limitation is that the claimed nanoparticles “hav[e] a particle
concentration of from 107 to 1015 of said gold conjugated nanoparticles”
(claim 1). Appellants argue that they submitted
a Rule 132 Declaration of Dr. Christian L. Schoen on the
importance of the particle concentration of the gold conjugated
nanoparticles. . . . [I]t is this high concentration that is so
important that gives the capabilities and properties described for
the particles, which properties are not present in the prior art as
enumerated in Table 1 Comparative Data on page 3 of the
Specification with the details specified in Table 2 of the
Specification.
(Appeal Br. 8.) Appellants argue that the evidence shows that the recited
concentration range provides unexpected results (id. at 10).
As the Examiner has noted, however, the “claims do not recite any
particular volume for the water vehicle for the packaged gold nanoparticles”
(Ans. 5). That is, “[t]he scope of the instant claims includes ‘107 to 1015’
gold conjugated nanoparticles in an undefined volume of water. The overall
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concentration of particles in the claimed packaged gold nanoparticles of the
invention would be either high or low depending on the volume of water of
vehicle.” (Id.)
We agree with the Examiner’s interpretation of the claim language.
Claim 1 requires a composition that contains 107 to 1015 conjugated gold
nanoparticles but does not require the specified number of nanoparticles in
any specific volume of water vehicle. Appellants have not pointed to any
evidence showing that a volume of water vehicle containing 107 to 1015
conjugated gold nanoparticles would not have been obvious based on the
cited references. “[W]here the general conditions of a claim are disclosed in
the prior art, it is not inventive to discover the optimum or workable ranges
by routine experimentation.” In re Aller, 220 F.2d 454, 456 (CCPA 1955).
Appellants argue that the Examiner’s argument that the particle
concentration is meaningless was not raised until the Answer and amounts to
a new ground of rejection (Reply Br. 1). Whether an Answer contains an
undesignated new ground of rejection, however, can be reviewed only by
way of petition. See MPEP 1207.03(IV) (“If appellant believes that an
examiner’s answer contains a new ground of rejection not identified as such,
appellant may file a petition under 37 C.F.R. 1.181(a) . . . requesting that a
ground of rejection set forth in the answer be designated as a new ground of
rejection.”). Appellants did not file a petition seeking to have the rejection in
the Answer designated a new ground of rejection.
Appellants also argue that, if the Examiner had raised the issue earlier,
they “would have added a per ml unit of volume. This is clear from the
Specification and the Examples, and Table 3, at page 4 of the Specification
where concentration units of Nps (nanoparticles)/ml are shown” (Reply Br.
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1). Appellants request that we review the claims as if they recited 107 to 1015
nanoparticles per ml and offer to amend the claims accordingly (id.).
We decline to read into the claim the proffered “per ml” limitation.
Appellants point to “the Specification and the Examples” as supporting their
position that this volume was intended. The Specification, however, includes
no examples and consistently refers to the concentration of the disclosed
nanoparticles without volume units. See Spec. 2:12 and 3:19–21. The
Specification’s Table 3 might include a “NPS/ml” column heading but (1) the
table is almost illegible, (2) the table provides no explanation of what the
heading or entries of the alleged “NPS/ml” column refer to, and (3) Table 3
shows “preferred” specifications for making and packaging nanorods (Spec.
4:12–13), not a range of parameters defining Appellants’ invention.
In short, claim 1 does not limit the volume of water vehicle that
includes the specified number of nanoparticles, and Appellants have not
pointed to an adequate basis for reading the proffered “per ml” limitation into
the claims. We decline to interpret claim 1 as if it included this limitation,
and we agree with the Examiner that the claim as written would have been
obvious based on the cited references. Claims 2–14 fall with claim 1 because
they were not argued separately. 37 C.F.R. § 41.37(c)(1)(vii).

SUMMARY
We affirm the rejection of claims 1–14 under 35 U.S.C. § 103(a) based
on Kataoka, Huff, Cytodiagnostics, Otogenetics, and Sequetech.
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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

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