Henry WuDownload PDFPatent Trials and Appeals BoardJun 2, 20212020003625 (P.T.A.B. Jun. 2, 2021) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 14/595,695 01/13/2015 Henry Wu 036687.00007 1075 38485 7590 06/02/2021 ARENT FOX LLP - New York 1717 K Street, NW Washington, DC 20006-5344 EXAMINER KISHORE, GOLLAMUDI S ART UNIT PAPER NUMBER 1612 NOTIFICATION DATE DELIVERY MODE 06/02/2021 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): patentdocket@arentfox.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HENRY WU Appeal 2020-003625 Application 14/595,695 Technology Center 1600 Before RACHEL H. TOWNSEND, DEVON ZASTROW NEWMAN, and MICHAEL A. VALEK, Administrative Patent Judges. TOWNSEND, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellant1 requests rehearing of the decision entered March 2, 2021 (“Decision”), which affirmed the Examiner’s rejections under 35 U.S.C. § 103. In our Decision, we affirmed inter alia, the Examiner’s rejection of claims 1–3, 5–7, 9, 10, 21–24, 26–29 as being unpatentable over Unger ’583, Unger ’575, and Larsson-Backstrom (rejection 1) and the rejection of the same set of claims as being unpatentable over Gross, Schneider, Unger ’583, and Larsson-Backstrom (rejection 2). Appellant requests rehearing of 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. The real party in interest is the inventor, Dr. Henry Wu. (Appeal Br. 3.) Appeal 2020-003625 Application 14/595,695 2 our Decision as to claims 26 and 29 with respect to rejection 1 only. Appellant does not seek rehearing for any of the other rejections affirmed in our Decision. We have considered Appellant’s Request; because the Request fails to establish that the Board misapprehended or overlooked a point of fact or law, we remain unpersuaded of error in the Examiner’s rejection. Thus, we deny the Request. DISCUSSION Regarding rejection 1, Appellant contends that Schneider “appears to be a necessary component of the Board’s stated reasoning” for affirming rejection 1 because the Decision refers to Schneider in one sentence of the analysis concerning that rejection (Request 2–3). For this reason, Appellant argues the Board erred in affirming rejection 1 because the Examiner did not cite Schneider in that rejection. Id. We do not find Appellant’s argument persuasive. While it is true that the Decision includes a single sentence referring to Schneider in addressing rejection 1, we disagree that the teaching cited there, nor anything else in Schneider, is a “necessary component” of the decision to affirm rejection 1 (Request 2). Indeed, as explained in the Decision, rejection 1 is fully supported by the teachings in Unger ’583, Unger ’575, and Larsson-Backstrom. In particular, as was noted in the Decision: Unger ’583 provides the recited phospholipids in its lists of materials that may be utilized in combination with fatty acids in preparing liposomes (Unger ’583 ¶ 29), and Unger ’575 provides the recited phospholipids in its lists of materials that Appeal 2020-003625 Application 14/595,695 3 may be utilized in combination with unsaturated lipids (Unger ’575 col. 8). (Decision 11.) In other words, the Unger references teach that phosphatidylcholine (PC) and phosphatidylserine (PS), (and relevant to claim 29, phosphatidylethanolamine (PE) and phosphatidylinositol (PI)) may be used to prepare liposomes, and that they may be used in combination (see id.). Moreover, as the Decision explained, “Unger ’575 teaches that combinations of phospholipids may be used and that ‘[t]he particular lipids are chosen to optimize the desired properties.’(Unger ’575 7:59–61, 8:35.)” (Id.) The Decision further noted that the Unger references both teach that inclusion of PS is advantageous in combination with other phospholipids because it is “‘beneficial to providing liposomes that do not have a propensity to rupture by fusing together.’ (Unger ’575 7:66–7:7; Unger ’583 ¶ 29.)” (Id.) As the Decision makes clear, the reason claims 26 and 29 were found to be obvious was because it is not inventive to select suitable items from a list to meet known requirements. (Id.) The fact that claims 26 and 29 use the transition phrase “consisting of” in connection with the materials for the shell does not render the claims nonobvious, because neither of the Unger references require “a shell containing more than trace amounts of other non-listed phospholipids.” (Appeal Br. 8.) Thus, the Unger references teach a shell that consists of the phospholipids recited in those claims. Thus, for the reasons discussed, it is evident that the sentence referring to Schneider in the discussion of rejection 1 is not necessary to affirm that rejection because a preponderance of the evidence supports the Examiner’s rejection based on the teachings in the Unger ’583, Unger ’575, and Larsson-Backstrom. Consequently, we are not persuaded that our Appeal 2020-003625 Application 14/595,695 4 Decision misapprehended the teachings in those references, nor erred in affirming rejection 1 by the Examiner with respect to claims 26 and 29 as being unpatentable over those references. For sake of clarity, we modify our Decision at 11–12 to make clear that the teachings in Schneider are not necessary to the affirmance of rejection 1, as follows: Appellant argues claims 26 and 29 separately asserting that the “shell consisting of” language in these claims renders them non-obvious because they “exclude microbubble compositions with a shell containing more than trace amounts of other non-listed phospholipids.” (Appeal Br. 8.) Unger ’583 provides the recited phospholipids in its lists of materials that may be utilized in combination with fatty acids in preparing liposomes (Unger ’583 ¶ 29), and Unger ’575 provides the recited phospholipids in its lists of materials that may be utilized in combination with unsaturated lipids (Unger ’575 col. 8). And Unger ’575 teaches that combinations of phospholipids may be used and that “[t]he particular lipids are chosen to optimize the desired properties.” (Unger ’575 7:59–61, 8:35.) Unger ’583 also teaches that combinations of phospholipids may be used. (Unger ’583 ¶ 29.) Apart from the foregoing, the prior art teaches that phosphatidylcholine, phosphatidylserine, and phosphatidylethanolamine are preferred phospholipids that can be laminarized to make stable microbubbles. (Schneider 6:50–65.) The Unger references teach that phosphatidylserine has advantages because it is negatively charged, which, when combined with other phospholipids, is “beneficial to providing liposomes that do not have a propensity to rupture by fusing together.” (Unger ’575 7:66–7:7; Unger ’583 ¶ 29.) “Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put into the last opening in a jig-saw puzzle. It is not invention.” Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 335 (1945); see also Merck & Co. v. Biocraft Laboratories, Inc., 874 F.2d 804, 807 (Fed. Cir. 1989). In light of the foregoing, we do not find Appellant’s assertion that the Appeal 2020-003625 Application 14/595,695 5 specific phospholipids that the liposomes must “consist of” render claims 26 and 29 non-obvious. Moreover, Appellant has not provided evidence that the claimed phospholipid combination provides an unexpected result as discussed above. In addition, we modify our Decision at 12 regarding rejection 2, as follows: The Examiner finds that Schneider discloses gas-filled liposomes containing soy lecithin. (Id. (citing Schneider Abstr., 6:34–68, and examples).)6 ___________ 6 We note that the section of column 6 of Schneider relied on by the Examiner teaches that phosphatidylcholine, phosphatidylserine, and phosphatidylethanolamine are preferred phospholipids that can be laminarized to make stable microbubbles. (Schneider 6:50–65.) The foregoing change regarding rejection 2 does not effect a substantive change in our reasoning for affirming the Examiner’s rejection and thus does not result in a new ground of rejection. As explained by our reviewing court, “[a] new ground of rejection . . . generally will not be found based on the Board ‘further explain[ing] the examiner’s rejection’ or the Board’s thoroughness in responding to an applicant’s argument.” In re Biedermann, 733 F.3d 329, 337 (Fed. Cir. 2013) (quoting In re Jung, 637 F.3d 1356, 1364–65 (Fed. Cir. 2011)). Our footnote addition simply identifies specific teachings of the prior art in a portion of that art that the Examiner specifically relied on in rejecting the claims. Thus, it is at most a further explanation of the Examiner’s basis for rejecting the claims. For completeness we note that, in light of the additional footnote to the Decision, footnote 6 in the Decision as originally issued is necessarily re- numbered as footnote 7. Appeal 2020-003625 Application 14/595,695 6 CONCLUSION In view of the foregoing discussion, although we have modified the Decision, our reasoning for affirming rejection 1 with respect to claims 26 and 29 is not substantively changed; we remain of the opinion that, as listed in the affirmed rejections, claims 26 and 29 are unpatentable over Unger ’583, Unger ’575, and Larsson-Backstrom. Accordingly, we deny the requested relief. DECISION SUMMARY In summary: Outcome of Decision on Rehearing: Claims 35 U.S.C. § Reference(s)/Basis Denied Granted 1–3, 5–7, 9, 10, 21–24, 26–29 103(a) Unger ’583, Unger ’575, Larsson- Backstrom 1–3, 5–7, 9, 10, 21–24, 26–29 1–3, 5–7, 9, 10, 21–24, 26–29 103(a) Gross, Schneider, Unger ’583, Larsson- Backstrom 1–3, 5–7, 9, 10, 21–24, 26–29 25, 30 103(a) Unger ’583, Unger ’575, Larsson- Backstrom, Xiong 25, 30 25, 30 103(a) Gross, Schneider, Unger ’583, Larsson- Backstrom, Xiong 25, 30 Overall Outcome 1–3, 5–7, 9, 10, 21–30 Appeal 2020-003625 Application 14/595,695 7 Final Outcome of Appeal after Rehearing: Claims 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–3, 5–7, 9, 10, 21–24, 26–29 103(a) Unger ’583, Unger ’575, Larsson- Backstrom 1–3, 5–7, 9, 10, 21–24, 26–29 1–3, 5–7, 9, 10, 21–24, 26–29 103(a) Gross, Schneider, Unger ’583, Larsson-Backstrom 1–3, 5–7, 9, 10, 21–24, 26–29 25, 30 103(a) Unger ’583, Unger ’575, Larsson- Backstrom, Xiong 25, 30 25, 30 103(a) Gross, Schneider, Unger ’583, Larsson-Backstrom, Xiong 25, 30 Overall Outcome 1–3, 5–7, 9, 10, 21–30 REHEARING DENIED Copy with citationCopy as parenthetical citation