Ex Parte Walker et alDownload PDFPatent Trials and Appeals BoardMay 20, 201914581203 - (D) (P.T.A.B. May. 20, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/581,203 21567 7590 Wells St. John P.S. 601 W. Main Avenue Suite 600 Spokane, WA 99201 12/23/2014 05/21/2019 FIRST NAMED INVENTOR Jeremy P. Walker 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. CONFIRMATION NO. FL21-005 8028 EXAMINER CONSTANTINE, CHARLES Z ART UNIT PAPER NUMBER 1657 MAIL DATE DELIVERY MODE 05/21/2019 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 JEREMY P. WALKER, DAVID C WILSON, ANNA M. LEECH and JESSICA J. SINCLAIR Appeal2019-000197 Application 14/581,203 Technology Center 1600 Before ULRIKE W. JENKS, TIMOTHY G. MAJORS, and MICHAEL A. VALEK, Administrative Patent Judges. VALEK, Administrative Patent Judge. DECISION ON APPEAL Appellants submit this appeal 1 under 35 U.S.C. § 134 involving claims to a biomolecule conjugate and sensor, which have been rejected as anticipated, obvious, and for obviousness-type double patenting ("ODP"). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Appellants identify the real party in interest as FLIR Detection, Inc. Appeal Br. 3. Herein we refer to the Final Office Action mailed August 21, 2017 ("Final Act."), Amendment filed November 21, 2017 ("Amendment"), Advisory Action mailed March 1, 2018 ("Adv. Act."), Appeal Brief filed April 19, 2018 ("App. Br."), Examiner's Answer mailed August 10, 2018 ("Ans."), and Reply Brief filed October 8, 2018 ("Reply"). Appeal2019-000197 Application 14/581,203 STATEMENT OF THE CASE Claims 1-12 are on appeal. Claims 1 and 8 are independent claims and representative of the claims on appeal. They read as follows: 1. A biomolecule conjugate comprising: one functionalized biomolecule, said biomolecule is functionalized with one or more sites; at least one polymer chain having a first end and a second end· ' said first end of said chain is attached to said site on said functionalized biomolecule; said second end of said chain is free moving; said chain comprises at least two polymers, wherein at least one polymer is stimuli responsive, said chain collapsing in response to said stimuli and envelopes said functionalized biomolecule to form a reversible nanoparticle structure; and wherein said chain is not cross-linked. 8. A sensor comprising: one functionalized biomolecule, said biomolecule is functionalized with one or more sites; at least one polymer chain having a first end and a second end· ' said first end of said chain is attached to said site on said functionalized biomolecule; said second end of said chain is free moving; said chain comprises at least two polymers, wherein at least one polymer is stimuli responsive, said chain collapsing in response to said stimuli and envelopes said functionalized biomolecule to form a reversible nanoparticle structure; and wherein said chain is not cross-linked. Amendment 2, 4. 2 2 The Claims Appendix Appellants provide does not reflect certain amendments entered after the final rejections of claims 1 and 8. See Adv. Act. 2. 2 Appeal2019-000197 Application 14/581,203 Appellants seek review of the following rejections: I. Claims 1-12 under 35 U.S.C. § 102 as unpatentable over Walker3 II. Claims 8-12 under 35 U.S.C. § 103 as unpatentable over Walker4 III. Claims 1-12 for ODP over claims 1-13 of US 8,460,907 (the "'907 patent"); and IV. Claims 1-12 for ODP over claims 1-8 of US 9,121,017 (the "'017 patent"). Appellants do not argue the dependent claims separately from their respective independent claims for any of these rejections. Thus, we focus our analysis on independent claims 1 and 8 and the dependent claims stand or fall with claims 1 and 8. 37 C.F.R. § 4I.37(c)(l)(iv). ANALYSIS I. Anticipation The issue for this rejection is: Does the preponderance of evidence of record support Examiner's finding that Walker anticipates claims 1-12? Examiner found that Walker teaches a composition meeting all of the limitations of claims 1-12. Final Act. 3-5. All of Appellants' arguments on appeal relate to the independent claims' requirement that the recited polymer chain is "not cross-linked." See App. Br. 7-10. Appellants urge that Walker 3 Jeremy P. Walker et al., US 2011/0117623 Al, published May 19, 2011 ("Walker"). 4 Appellants do not directly refer to Examiner's obviousness rejection in their appeal brief, but in summation state that "[ c ]laims 1 and 8 are both novel and non-obvious." App. Br. 10. We interpret that summary statement to indicate that Appellants have also appealed Examiner's rejection of claims 8-12 under 35 U.S.C. § 103. 3 Appeal2019-000197 Application 14/581,203 does not anticipate because it only teaches compositions that contain a cross- linker. Id. Appellants therefore dispute Examiner's finding that Walker "teaches that a cross-linker may or may not be added to the process" and therefore discloses "embodiments lacking [a] cross-linker that will cross link the polymer chain." Final Act. 4 (citing Walker ,r 107, claim 29). We begin our analysis with findings of fact regarding Walker. FPL Walker discloses "a thermoresponsive nanoparticle useful for the stabilization of enzymes" at temperatures exceeding 30 °C. Walker Abst. Walker discloses that the "thermoresponsive nanoparticle has (a) a functionalized enzyme conjugate ... and (b) a thermally responsive polymer, wherein the functionalized enzyme conjugate is encapsulated within the thermally responsive polymer." Id. According to Walker, the enzyme is functionalized by adding a polymerizable chemical group to various thermoresponsive monomers or "combinations thereof' are attached to form stimuli (i.e., temperature) responsive polymer chains on the enzyme. Walker ,r,r 14, 58. FF2. Walker discloses that a cross-linking agent "may or may not be added" to form cross-links between the thermoresponsive polymer chains. Walker ,r 107. In Example 9, Walker describes a general process for making thermoresponsive nanoparticles in which "[a] protein is functionalized with ... polymerizable chemical groups," ( e.g., a vinyl group) to yield a "functionalized protein conjugate (seed)." Id. The "thermally responsive monomer" is then added. Id. According to Walker Example 9, "[a] crosslinker, as defined and described hereinabove, may or may not be added to the reactor during monomer addition." Id.; see also id. ,r,r 15, 59, claim 29 4 Appeal2019-000197 Application 14/581,203 ( describing "[a]nother embodiment" that "further includes a cross-linking agent"). Based on the record before us, we determine that the preponderance of the evidence supports Examiner's rejection of claims 1-12 as anticipated by Walker. We agree with, and adopt, Examiner's findings and reasoning in support of that rejection. We are not persuaded by Appellants' arguments, which we address below. We are unpersuaded by Appellants' argument that Walker "never provides a composition that does not contain a cross-linker." App. Br. 7. Walker Example 9 specifically states that a cross-linker "may or may not be added." FF2. Other passages in Walker are consistent with this teaching, describing a nanoparticle that "further includes a cross-linking agent" as "another embodiment" of the invention described in Walker. Walker ,r,r 15, 59. Walker dependent claim 29 is drawn to such an embodiment. Claim 29 recites the "nanoparticle of claim 22 further including a cross-linking agent and an initiator agent," which suggests that the polymer chains of the embodiments in claim 22 may or may not be cross-linked. Collectively, this evidence supports Examiner's finding that Walker teaches embodiments in which no cross-linker is added and thus there are no cross-links between the polymer chains on the functionalized protein. Appellants argue that the "may or may not be added" statement in Walker Example 9 only applies to the use of a cross-linker "during monomer addition." App. Br. 9. Thus, urge Appellants, the skilled artisan would interpret Example 9 to mean that a cross-linker need not be added during monomer addition, but must be added "at some other stage of the preparation process." Id. at 9-10. We disagree. Walker Example 9 only 5 Appeal2019-000197 Application 14/581,203 teaches one stage of the preparation process at which a cross-linker "may or may not be added," that is, "during monomer addition." FF2. There is no description in Walker Example 9 's of a cross-linker being added in some "other stage," and Appellants provide no persuasive rebuttal evidence to support such a reading of Walker. 5 The most natural reading of Walker Example 9 is the one Examiner adopted-that use of a cross-linker is optional and, if it is not added during monomer addition, the polymer chains that result from that process are not cross-linked. We also disagree with Appellants' argument that Examiner's rejection "ignores all paragraphs in [Walker] that describe the use of a cross-linker." App. Br. 8. To the contrary, Examiner considered Walker as a whole and determined that "[t]he rest of the specification of Walker does not consistently refer to, nor describe that crosslinking is required." Final Act. 2. We agree with Examiner's finding. While it is certainly true that Walker describes the use of cross-linking agents, none of the passages Appellants identify teach that a cross-linker is mandatory. See App. Br. (citing Walker ,r,r 15, 61, 68, 79, 88, 95, and 103). To the contrary, Walker characterizes the inclusion of a cross-linking agent as "[a]nother embodiment" of a broader invention that does not necessitate such. See Walker ,r,r 15, 59, and claim 29. That one of skill reading Walker may infer that cross-linked embodiments are preferred over embodiments that do not include a cross- linker does not change the fact that Walker discloses both and is therefore 5 Appellants do not identify any "other stage" of the process that they contend Walker teaches that a cross-linker may be added if, as taught in Example 9, it is not added during monomer addition. See App. Br. 9-10. For each of its other examples, Walker consistently teaches the cross-linker is added during monomer addition. See Walker ,r,r 79, 88, 95, and 103. 6 Appeal2019-000197 Application 14/581,203 anticipatory. See In re AT&T Intellectual Prop. IL L.P., 856 F.3d 991, 996- 97 (Fed. Cir. 2017) (explaining that statement in prior art reference suggesting that one embodiment may be preferred over another "does not limit the scope of the reference" for purposes of showing anticipation). For all these reasons, Appellants' arguments fail to persuade us that Examiner erred in rejecting claims 1-12 as anticipated by Walker. Accordingly, we affirm that rejection. II. Obviousness Examiner's obviousness rejection is largely premised on the same findings supporting the anticipation rejection. Final Act. 6. In addition, Examiner found that to the extent Walker does not "explicitly teach" certain aspects of the sensors recited in claims 8-12, it would be obvious to use Walker's nanoparticles in such applications as "Walker teaches this application as a focus of the field" and doing so would "improve[] shelf life." Id. at 6-7. Appellants do not challenge Examiner's additional findings concerning the sensors in claims 8-12, nor do they offer any other argument beyond the arguments we have already addressed in affirming Examiner's rejection under 35 U.S.C. § 102. Accordingly, we determine that the obviousness rejection is supported by the preponderance of the evidence and affirm for the same reasons discussed above. III. Obviousness-type Double Patenting Examiner additionally rejected claims 1-12 for ODP over claims 1-13 of the '907 patent and claims 1-8 of the '017 patent. Final Act. 8-9. The '907 and '017 patents both issued from applications in the same patent 7 Appeal2019-000197 Application 14/581,203 family as Walker. Examiner determined that the claims of these patents while "not identical" are "not patentably distinct." Id. Appellants group these rejections together in their Appeal Brief. Appellants first request review "in view of the above." App. Br. 11. It is not clear what Appellants are referring to here. All of the prior arguments in Appellants' Brief concern the disclosure in Walker, not the claims of the '907 and '017 patents, which forms the bases for Examiner's ODP rejections. To the extent Appellants contend that the claims of the '907 and '017 patent require polymer chains that are cross-linked, we disagree. Turning first the '907 patent, there is no mention of cross-links or a cross-linking agent in claims 1-13 of that patent. Rather, claim 1 describes a functionalized protein (i.e., a biomolecule) with a covalently attached "thermally responsive polymer shell" that "encapsulate[ s ]" the protein. Claim 2 teaches that the polymer is attached via chemical moieties, similar to those described in Appellants' Specification. See Spec. 11-12 (describing attachment via amine and carboxylic acid groups). Claim 5 teaches that thermally responsive polymer consists of poly(N-isopropylacrylamide ), which is the "most preferred thermally responsive polymer" taught in Appellants' Specification. See id. at 27. Claim 13 teaches that more than one thermally responsive polymer may be used. Likewise, there is no mention of cross-links or a cross-linking agent in claims 1-8 of the '017 patent. Instead, claim 1 is directed to a method for protecting a protein by "completely encapsulating" it in "within one or more thermally responsive polymeric nanoparticles" by raising the temperature to cause a conformational change. Claim 3 teaches that "at least one moiety" is 8 Appeal2019-000197 Application 14/581,203 grafted to the surface of the protein to bind the polymer. Claim 8 teaches that the at least one of the thermally responsive comonomers is N- isopropylacrylamide. Thus, in both instances the claims of the '907 and '017 patent support Examiner's ODP determination. While the language of Appellants' present claims differs somewhat from that of the '907 and '017 patent claims, Appellants do not offer any specific argument that these differences somehow affect the ODP analysis, much less that they evidence patentable distinction between the claim sets. Finally, Appellants request review of Examiner's ODP rejections in light of the "unexpected results described in the as filed application, and contained in the claims, namely as recited in Claims 1 and 8: 'wherein at least one polymer is stimuli responsive, wherein said chain collapses in response to said stimuli and envelopes said functionalized biomolecule to form a reversible nanoparticle structure."' App Br. 11. Appellants do not further elaborate on these alleged unexpected results. As such, their argument amounts to little more than a legal conclusion with no explanation of how it applies to the facts here. See Microstrategy Inc. v. Business Objects Americas, 238 Fed. Appx. 605, 610 (Fed. Cir. June 25, 2007) ("The recitation of the applicable law, however, does not prevent the waiver of an argument unless that recitation is accompanied by an explanation of how the law applies to the facts of the particular case."). Unaided by Appellants' undeveloped argument, we have reviewed the Specification and determine that it does not contain sufficient evidence of unexpected results to overcome Examiner's ODP determinations. The '907 and 'O 17 patent claims recite functionalized biomolecules protected by polymers that collapse in response to stimuli to encapsulate and stabilize the 9 Appeal2019-000197 Application 14/581,203 biomolecule. Given its broadest reasonable interpretation, Appellants' present claim language, i.e., "envelops said functionalized biomolecule," encompasses "encapsulating" or even "completely encapsulating" the biomolecule as recited in the '907 and '017 patent claims. Accordingly, we disagree with the Specification's claim that "[t]he current invention provides an improved method and resulting material" over the '907 patent because the claims defining that invention are not patentably distinct from those of the '907 and '017 patents. See Spec. 6. In addition, the '907 and '017 patents teach that such encapsulation "protect[ s] the protein from detrimental environmental conditions," allows the biomolecule to retain "activity," and is "reversible," '907 patent col. 10, 11. 22-23, col. 12, 11. 36-38, col. 13, 1. 1. These are the same benefits taught in the present Specification. See Spec. 9- 10. Appellants have not shown that the unexpected results they allege are anything more than an obvious difference in degree from that reported in the '907 and '017 patents. See Galderma Labs., L.P. v. Tolmar, Inc., 737 F.3d 731,739 (Fed. Cir. 2013) ("Unexpected results that are probative of nonobviousness are those that are different in kind and not merely in degree from the results of the prior art.") (internal quotations omitted). For these reasons, we are unpersuaded by Appellants' arguments concerning Examiner's ODP rejections and affirm the same. SUMMARY We affirm the rejection of claims 1-12 under 35 U.S.C. § 102 as anticipated by Walker. We affirm the rejection of claims 8-12 under 35 U.S.C. § 103 as unpatentable over Walker. 10 Appeal2019-000197 Application 14/581,203 We affirm the rejection of claims 1-12 for ODP over claims 1-13 of the '907 patent. We affirm the rejection of claims 1-8 for ODP over claims 1-8 of the '01 7 patent. 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 11 Copy with citationCopy as parenthetical citation