Ex Parte Wang et al

Patent Trial and Appeal Board

Apr 14, 2016

12539324 (P.T.A.B. Apr. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/539,324 08/11/2009
22827 7590 04/14/2016
DORITY & MANNING, PA
POST OFFICE BOX 1449
GREENVILLE, SC 29602-1449
FIRST NAMED INVENTOR
Qian Wang
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.
USC-187 9088
EXAMINER
ZOU, NIANXIANG
ART UNIT PAPER NUMBER
1648
MAILDATE DELIVERY MODE
04/14/2016 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 QIAN WANG and TAO LI
Appeal2013-009455
Application 12/539,324
Technology Center 1600
Before DEMETRA J. MILLS, ERIC B. GRIMES, and JOHN G. NEW,
Administrative Patent Judges
MILLS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134. The Examiner has rejected
the claims as unpatentable under 35 U.S.C. § 103(a) as being obvious. We
have jurisdiction under 35 U.S.C. § 6(b ).
We Affirm.
Appeal2013-009455
Application 12/539,324
STATEMENT OF CASE
The present Specification discloses core-shell bionanocomposites
which can generally be described as having a polymeric core with
biomacromolecules attached about the outer surface of the core to form a
shell. Spec. 9. The Specification discloses a first method of making
bionanocomposites based on self-assembly along with polymerization
including emulsion and living polymerization. Spec. 10. The polymeric core
may be P4VP (poly(4-vinylpyridine)) and the shell coating may be CPMV
(cowpea mosaic virus). Spec. 12-14.
The following claim is representative.
1. A bionanocomposite comprising
a core comprising a polymer having pyridine functional
groups, wherein the core defines an outer surface having a
surface area; and
a shell comprising a plurality of biomacromolecules,
\~1herein the shell is positioned about the outer surface of the
core such that the shell covers at least about 50% of the surface
area of the polymeric core;
wherein the polymer having pyridine functional groups
non-covalently interacts with the biomacromolecules to form
the bionanocomposite.
11. A method of forming a bionanocomposite defining a shell
and a core, the method comprising
non-covalently attaching biomacromolecules about a
polymeric core, wherein the polymeric core comprises a
polymer having pyridine functional groups and defines an outer
surface having a surface area, and wherein the
biomacromolecules cover at least about at least about 50% of
the surface area of the polymeric core to form a shell.
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Appeal2013-009455
Application 12/539,324
Cited References
Justin T. Russel et al., Self-Assemble and Cross-Linking of Bionanoparticles
at Liquid-Liguid Interfaces, 44 ANGEW. CHEM. INT. ED., 2420-2426 (2005).
Syuji Fujii et al., Stimulus-Responsive Particulate Emulsifiers Based on
Lightly Cross-Linked Poly(4-vinylpyridine)-Silica Nanocomposite
Microgels, 22 LANGMUIR, 6818---6825 (2006).
Additional Reference
Rembamn 1 et al.,
Grounds of Rejection
us 4,259 ,223 Mar. 3 1, 19 81
Claims 1-3, 6-8, 10-16, 19, and 20 were rejected under 35 U.S.C.
§103(a) as being unpatentable over Russel and Fujii.
FINDINGS OF FACT
The Examiner's findings of fact are set forth in the i~\'.l.ns\~1er at pages
3-8. The following facts are highlighted.
1. Russell teaches a bionanocomposite comprising a core of
perfluorodecalin droplets and a shell of CPMV particles segregated at
the perfluorodecalin-water interface, thus, stabilizing the dispersion of
the oil droplets; see e.g., para. 1, fight col. p. 2420.
1 Rembaum was cited in the Answer, page 6, but is not cited by the
Examiner in the statement of rejection. According to the Examiner,
Rembaum teaches that a microsphere made of polyvinyl pyridine binds to
RNA, DNA, virus, and bacteria. This teaching further strengthens the
ground of rejection based on Russell and Fujii. We do not include
Rembaum as a cited reference as it has not been properly cited by the
Examiner.
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Application 12/539,324
2. The bionanocomposite of Russel has a diameter from about 10 to
about 100 nanometers. Ans. 3.
3. Russell also teaches a method of forming the bionanocomposite,
comprising non-covalently attaching biomacromolecules about a
polymeric core by combining an organic solution containing the
perfluorodecalin with an aqueous solution containing the CPMV to
form an emulsion; mixing the emulsion; and removing the organic
solvent by evaporating; see e.g., para. 1, right col. p. 2421 and para. 1,
right col. p. 2422.8.
4. Russell does not teach that: (1) the core is made of "a polymer having
pyridine functional groups", specifically poly( 4-vinylpyridine ); and
"the shell covers at least about 50% of the surface area of the
polymeric core" (Claims 1, 8, and 11 ). Ans. 3--4.
5. Fujii teaches a silica nanocomposite microgel particle (P4VP-Si02),
wherein poly( 4-vinylpyridine) is the polymer core, and the shell
covers at least about 50% of the surface area of the polymeric core;
see e.g., the bridging para. between left and right col. p. 6819, and
para. 2, left col. p. 6821.
6. Fujii discloses pH responsive, stable, nanoparticles made of
poly( 4-vinylpyridine) para. 1 and 2, left col. p. 6821.
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Application 12/539,324
7. Fujii, page 6818, first column, discloses that
The use of colloidal particles to prepare and stabilize
emulsions (so-called "Pickering emulsions"[2]) has been
recognized for over a century .... Most of the literature is
concerned with various types of inorganic particles such as
silica, barium sulfate, calcium carbonate, or carbon black,
although recently there have been several interesting examples
of organic particles used as particulate emulsifiers.
Emphasis added.
8. Fujii, page 6818, second column, discloses that
Russell et al. used ultrafine CdSe sols8 and 30 nm cowpea
mosaic virus particles ... as nanoscale particulate emulsifiers to
stabilize either oil-in-water and/or water-in-oil emulsions. It
was demonstrated that these nanoparticles assembled at the
droplet interface and could be subsequently cross-linked so as
to stabilize these superstructures.
PRINCIPLES OF LAW
In making our determination, 'lie apply the preponderance of the
evidence standard. See, e.g., Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427
2 A Pickering emulsion is an emulsion that is stabilized by solid particles (for
example colloidal silica) which adsorb onto the interface between the two
phases. This type of emulsion was named after S.U. Pickering, who
described the phenomenon in 1907, although the effect was first recognized
by Walter Ramsden in 1903. If oil and water are mixed and small oil
droplets are formed and dispersed throughout the water, eventually the
droplets will coalesce to decrease the amount of energy in the system.
However, if solid particles are added to the mixture, they will bind to the
surface of the interface and prevent the droplets from coalescing, thus,
causing the emulsion to be more stable. https://en.wikipedia.org/wiki/
Pickering_emulsion.
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Application 12/539,324
(Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings
before the Office).
"In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness. Only if that
burden is met, does the burden of coming forward with evidence or
argument shift to the applicant." In re Rijckaert, 9 F.3d 1531, 1532 (Fed.
Cir. 1993).
Obviousness - Russel in view of Fujii
We find that the Examiner has provided evidence to support a prima
facie case of obviousness. We provide the following additional comment to
the Examiner's argument set forth in the Final Action and Answer.
Appellants only provide argument for independent claims 1 and 11 as a
group in the Brief (p. 3-5).
The Examiner concludes from the listed findings of fact, herein, that
It would have been prima facie obvious to one of
ordinary skill in the art at the time the invention was made to
substitute the perfluorodecalin droplets of Russell's for the
polymer ofpoly(4-vinylpyridine) ofFujii's in order to make a
... bionanocomposite. One skilled in the art would have been
motivated to generate the claimed invention with a reasonable
expectation of success, given the success of the prior art that
CPMV particles can be assembled at the droplet interface,
resulting a in bionanocomposite, as illustrated by Russell, and
also given that poly( 4-vinylpyridine) can be polymer core of a
nanoparticle, and act as pH-responsive emulsifier of a
nanoparticle, as taught by Fujii. Therefore, the invention as a
whole was clearly prima facie obvious to one of ordinary skill
in the art at the time the invention was made.
Ans. 4--5.
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Appellants contend that
In making the rejection, the Examiner apparently
assumes that the interaction between poly( 4-vinylpyridine) and
biomacromolecules (as taught by Russell) would perform the
same as the interaction between poly( 4-vinylpyridine) and silica
particles (as taught by Fujii). This assumption is completely
unfounded, and finds no support in the references. Instead, one
of ordinary skill in the art would have readily recognized that
the interaction between poly( 4-vinylpyridine) and
biomacromolecules (e.g., CPMV) would not be the same as the
interaction between poly( 4-vinylpyridine) and silica particles.
Br. 4--5. Appellants further argue that
The Examiner refers to the Fijii's [sic] introductory
paragraphs, which discusses others' works, and states that this
discussion bridges the divide between inorganic particles and
organic particles. This discussion, however, expressly
distinguishes various inorganic particles and organic particles in
its second sentence. There is simply no support in the teachings
of either cited reference for the Examiner's statement that
"silica particles are just an example used as emulsifier in the
study on poly( 4-vinylpyridine) nanocomposite." (Final Office
Action, page 6).
Br. 5. Finally, Appellants argue that Russell teaches that crosslinking is
required or essential to the formation of stable particles. Br. 6.
We conclude that the Examiner has established a prima facie case of
obviousness on the evidence before us which has not been rebutted by
Appellants. Both Russel and Fujii disclose the formation of Pickering
emulsions. Russel, page 2420, col. 2, 1. 2; Fujii, page 6818, col. 1. Russel
discloses a Pickering emulsion comprised of a perfluorodecalin
droplet/particle coated with an organic CPMV. Rusell, p. 2422, col. 2. Fujii
discloses a Pickering emulsion comprised of poly( 4-vinylpyridine) particle
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Application 12/539,324
with an inorganic Si02 coating. Fig. 1. Fujii discloses that other particulate
polymers may also be used in Pickering emulsions, including poly(2-
( dimethylamino )ethyl methacrylate )-based diblock copolymer and
po 1 ystyrene/po ly[2-( dimethy lamino )ethyl methacry late-stat-ethylene glyco 1
dimethacrylate. P. 6829, col. 1.
Thus, it would have been obvious to one of ordinary skill in the art at
the time of the invention that numerous types of Pickering emulsions could
have been prepared using various particles and coating materials, including
organic and inorganic coating materials known in the art as disclosed in Fujii
and Russel.
After that burden is met, the burden of coming forward with evidence
or argument to rebut the Examiner's prima facie case shifts to the applicant.
In re Rijckaert, 9 F.3d 1531, 1532 (Fed. Cir. 1993). Appellants have not
established with evidence or argument that one of ordinary skill in the art
would not have expected that the substitution of one oil droplet/particle or
polymer for another in a Pickering emulsion would not form a
bionanocomposite, as claimed. Appellants argue that one of ordinary skill in
the art would have readily recognized that the interaction between poly( 4-
vinylpyridine) and biomacromolecules (e.g., CPMV) would not be the same
as the interaction between poly( 4-vinylpyridine) and silica particles.
However, Appellants adduce no evidence of record in support of this
contention and their arguments are therefore only attorney argument and do
not constitute evidence that one of ordinary skill in the art would not have
expected poly( 4-vinylpyridine) and CPMV to form bionanoparticles based
on the disclosures of the cited references. See In re Pearson, 494 F.2d 1399,
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Application 12/539,324
1405 (CCPA 1974) ("Attorney's argument in a brief cannot take the place of
evidence.").
As to Appellants' arguments that both Russel and Fujii require cross-
linking between the particle and coating (App. Br. 6-7) and teach way from
non-crosslinked particle/coating interactions, we are not persuaded. Russel
studied force-deformation measurements on droplets with particle
assemblies that were both non-cross-linked and cross-linked using
glutaraldehyde. Russel, p. 2424, col 2. Thus, Russel discloses the
preparation of non-crosslinked droplet/particle assemblies. P. 2424, col. 2.
Likewise, Fujii describes that, "Non-cross-linked nanocomposite particles
were ... synthesized in the absence of any cross-linking monomer using the
protocol described by Percy et al." P. 6820, col. 1. Therefore, while the
cited references disclose that cross-linked droplet/particle assemblies were
preferred for use in a low pH environment (not within the scope of claims 1
and 11 ), each of the cited references discloses that the preparation of non-
crosslinked coated droplet or polymer assemblies was known at the time of
the invention.
A preponderance of the evidence does not support patentability and
the obviousness rejection is affirmed for the reasons of record.
CONCLUSION OF LAW
The cited references support the Examiner's obviousness rejection,
which is affirmed for the reasons of record, and herein.
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Appeal2013-009455
Application 12/539,324
TIME PERIOD
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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