Ex Parte Gillissen-Van Der Vight et al

Patent Trials and Appeals Board

Jun 12, 2019

14432349 - (D) (P.T.A.B. Jun. 12, 2019)

UNITED STA TES p A TENT 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.
14/432,349 03/30/2015 Mirian Hendrika Jacoba Gillis sen-Van Der Vight 28277-US-PCT 7560
109143 7590
DSM North America Inc.
Patent Department
6480 Dobbin Road
Columbia, MD 21045
06/14/2019 EXAMINER
KAHN, RACHEL
ART UNIT PAPER NUMBER
1766
NOTIFICATION DATE DELIVERY MODE
06/14/2019 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):
dsmna.ip@dsm.com
dsm_PAIR@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MIRIAN HENDRIKA JACOBA GILLISSEN-
V AN DER VIGHT, JENS CHRISTOPH THIES,
and GEORGE MIHOV
Appeal2018-006187
Application 14/432,349
Technology Center 1700
Before DEBRA L. DENNETT, LILAN REN, and
MERREL C. CASHION, JR., Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Appellant2 appeals under 35 U.S.C. § 134(a) from a rejection of
claims 1-7, 9, 13-20, and 22. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 In our Decision, we refer to the Specification filed March 30, 2015
("Spec."); the Non-Final Office Action dated August 23, 2017 ("Non-Final
Act."); the Appeal Brief filed January 16, 2016 ("App. Br."); the Examiner's
Answer dated March 30, 2018 ("Ans."); and the Reply Brief filed May 29,
2018 ("Reply Br.").
2 Appellant is the Applicant, DSM IP Assets B.V., and is identified as the
real party in interest. App. Br. 2.
Appeal2018-006187
Application 14/432,349
The invention relates to polyesteramide copolymer fibers for use in
medical applications, especially for use in delivery ofbioactive agents.
Spec. 1. The claims are directed to fibers comprising a biodegradable
poly( esteramide) copolymer. Claim 1, reproduced below from the Claims
Appendix of the Appeal Brief, illustrates the claimed subject matter:
1. A fiber comprising a biodegradable poly( esteramide)
copolymer (PEA) according to structural formula (IV),
r . . ~
!10 0 H O 10 rl ~· !O t) H O O N 1 J H , H ! H , ll l • HI . ~ f I! .i !! i
""· . (:-ff·-C-N. ··.·,·-.t\-(:-o-R·-o-c-c-,. • •.. :c-R1-t~-~.{-C.-C-O-R'·-O-C-C-N ) i ~ J t:t ~ } ~ j
[ M ~.3 R1 t.• l M R4 R4 M
I , L "ii l ' l .
~
" \, q H \ /o O H \ 11 I ' l! ! . ' } l It . ij . l . ! I · :c~-~'··--c ........... N ......... ·C.--~- ~-t+·c ........... _.H'S ............. t:>, .............. ~-;,.. ........... Q:--.. ........................................ "J{$.;,.. .............. N:-;..-..t, ........................ ,. }-
I ! ~ ! t \ ! l . ! l 1
H t>--O<«<·R' H / . H (>·"()H 1-1 /h I
lt '~ g ' 11
) (~
Formula (IV)
wherein
m+p varies from 0.9-0.1 and q varies from 0.1 to 0.9
m+p+q=l whereby m or p could be 0
n varies from 5 to 300;
R1 is independently selected from (Cz-C20) alkylene;
R3 and R4 in a single backbone unit m or p, respectively, are
independently selected from the group consisting of hydrogen,
(C1--C6)alkyl, (C6--C1o)aryl, --(CH2)SH, -(CH2)2S(CH3), -
CH20H, --CH(OH)CH3, --(CH2)4NH3+, --CH2COOH, -
(CH2)COOH, --CHz-CO-NH2, --CH2CHz-CO-NH2, -
CH2CH2COOH, CH3--CHz-CH(CH3 }-, (CH3 )z-CH--CHz---,
H2N--(CH2)4-, Ph--CHz---, HO-p--Ph--CHz---, (CH3)z-CH-, Ph-
NH-, NH--(CH2)3--C-;
2
Appeal2018-006187
Application 14/432,349
Rs is selected from the group consisting of (Cz-C2o)alkylene,
alkyloxy, or oligoethyleneglycol;
R6 is selected from bicyclic-fragments of 1,4:3,6-
dianhydrohexitols of structural formula (III), cycloalkyl
fragments, aromatic fragments or heterocyclic fragments;
Formula III
R7 is (C6---C1o)aryl (C1---C6)alkyl;
Rs is (CH2)4;
wherein a is at least 0.05, bis at least 0.05 and a+b=l;
wherein them unit and/or p unit, and the a and b units, are
randomly distributed throughout the biodegradable
poly( esteramide) copolymer, and
wherein the fibers have an average diameter of from 50 to 1000
µm.
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Shalaby et al.
("Shalaby")
Chu et al. ("Chu")
DesN oyer et al.
("DesN oyer")
Guire et al.
("Guire")
Gomurashvili et al.
(''Gomurashvili")
us 4,550,730
US 6,503,538 Bl
US 2005/0288481 Al
US 2006/0018948 Al
US 2008/0299174 Al
3
Nov. 5, 1985
Jan. 7,2003
Dec. 29, 2005
Jan. 26, 2006
Dec. 4, 2008
Appeal2018-006187
Application 14/432,349
Pham et al.
("Pham")
US 2008/0314289 Al Dec. 25, 2008
REJECTIONS
The Examiner maintains the following rejections under 35 U.S.C.
§ I03(a)3:
1. Claims 1-3, 5-7, 9, and 15-18 as obvious over Gomurashvili in
view of Chu, Pham, and Shalaby. Non-Final Act. 4--11.
2. Claims 19 and 20 as obvious over Gomurashvili in view of
Chu, Pham, Shalaby, and Guire. Id. at 11-12.
3. Claim 22 as obvious over Gomurashvili in view of Chu, Pham,
Shalaby, and DesNoyer. Id. at 12-13.
OPINION
Rejection 1. The Examiner rejects claims 1-3, 5-7, 9, and 15-18 over
Gomurashivili in view of Chu, Pham, and Shalaby. Non-Final Act. 4--11.
Regarding claim 1, the sole independent claim, the Examiner finds that
Gomurashvili teaches a polyesteramide having the following chemical
structure for Formula (III):
3 Because this application claims priority to an application filed before the
March 16, 2013 effective date of the America Invents Act, we refer to the
pre-AIA version of the statute.
4
Appeal2018-006187
Application 14/432,349
Fornmla (III)
wherein R7 can be hydrogen (corresponding to the claimed Formula (IV)
unit "b", or "lysine-benzyl unit") or (C6---C1o)aryl(C1---C6)alkyl
(corresponding to the claimed Formula (IV) unit "a", or "lysine unit"). Non-
Final Act. 4--5. The Examiner finds that Gomurashvili fails to teach a
polyesteramide according to Formula (III) wherein the polyesteramide
contains a combination of "a" units and "b" units. Id. at 5.
For ease of reference, the claimed Formula (IV) is reproduced below:
Claimed Formula (IV)
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Appeal2018-006187
Application 14/432,349
The Examiner finds that Chu discloses a polyesteramide formed of the
same monomeric building block's as Gomurashvili' s. 4 Id. The Examiner
further finds that Chu's Formula (VII) includes a unit designated "p" that
corresponds to Gormurashvili' "q" unit. Id.
Chu Formula (VII)
0 0 H O O H t
A-Rl-A-,-f-U-o-R4-o-M-f-1
H R3 R3 H . . ill
-fO O H II II I . ..., ) 1 ..., . ... / ..., . . C R ( I \ ,CH;?-)4 I
H C-· O-R2 H
II JJ Ji
0
The Examiner finds that Chu discloses that each group "R2" in Chu's
Formula (VII) can independently be hydrogen or (C6--C1o)aryl(C1--C6)alkyl.
Non-Final Act. 5. The Examiner finds that it would have been within the
level of ordinary skill in the art to prepare a polyesteraminde having a
combination of both lysine units (where R2 of Chu Formula (VII) is
hydrogen) and lysine benzyl ester units (where R2 of Chu Formula (VII) is
benzyl). Id. at 6.
Appellant argues that the "principle disagreement" between the
Examiner and Appellant is whether the Examiner's "motivation for
modifying Gomurashvili to reach the instant claimed invention is credible
and without the benefit of impermissible hindsight reasoning." App. Br. 6.
More specifically, Appellant contends that the Examiner provides no
4 We do not agree that Gomurashvili' s units "m", "p", and "q" are each
taught by Chu.
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Appeal2018-006187
Application 14/432,349
motivation to modify Gormurashivili's Formula (III) to result in the claimed
Formula (IV). Id. at 8, 16-17. Appellant argues that Chu's teaching that
"each R2 can independently be hydrogen or [(C6---C1o)aryl(C1---C6)alkyl]"
does not mean that Chu teaches a single copolymer having multiple different
"p" units (i.e., having some "p" units wherein R2 is hydrogen in addition to
other "p" units wherein R2 is (C6---C1o)aryl(C1---C6)alkyl). App. Br. 14--15;
Reply Br. 2-3.
We agree with Appellant that the Examiner fails to provide an
apparent reason with the requisite reasoning for a skilled artisan to select
Gomurashvili and Chu and combine them-along with Pham and
Shamaly-to arrive at the claimed invention. PersonalWeb Techs., LLC, v.
Apple, Inc., 848 F.3d 987, 993 (Fed. Cir. 2017) (Reasoning that one of
ordinary skill would have understood that the combination of prior art
references would have allowed for features from one prior art reference to be
used with other features from a different prior art reference "seems to say
no more than that a skilled artisan, once presented with the two
references, would have understood that they could be combined. And that
is not enough: it does not imply a motivation to pick out those two
references and combine them to arrive at the claimed invention."); see
also Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015)
("[O]bviousness concerns whether a skilled artisan not only could have
made but would have been motivated to make the combinations or
modifications of prior art to arrive at the claimed invention."); InTouch
Techs., Inc. v. VGO Communications, Inc., 751 F.3d 1327, 1352 (Fed. Cir.
2014) (an expert succumbed to hindsight bias in conclusory references to her
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Appeal2018-006187
Application 14/432,349
belief that one of ordinary skill in the art could combine these references, not
that thev would have been motivated to do so).
.; '
For the reasons provided above, we do not sustain the Examiner's
Rejection 1 of independent claim 1. For the same reasons, we also fail to
sustain the rejection of other claims in Rejection 1: claims 2, 3, 5-7, 9, and
15-18.
Rejection 2. The Examiner rejects claims 19 and 20 over
Gomurashvili in view of Chu, Pham, Shalaby, and Guire. Non-Final Act.
11-12.
Appellant argues that Guire does not cure the deficiencies of
Gomurashvili and Chu in Rejection 1. App. Br. 21. We agree with
Appellant, and do not sustain the rejection of claims 19 and 20.
Rejection 3. The Examiner rejects claim 22 over Gomurashvili in
view of Chu, Pham, Shalaby, and DesNoyer. Non-Final Act. 12-13.
Appellant argues that DesN oyer does not cure the deficiencies of
Gomurashvili and Chu in Rejection 1. App. Br. 21. We agree with
Appellant, and do not sustain the rejection of claim 22.
DECISION
The Examiner's rejection of claims 1-7, 9, 13-20, and 22 is reversed.
REVERSED
8