Ex Parte Jose-Yacaman et al

Patent Trial and Appeal Board

Dec 21, 2015

11792433 (P.T.A.B. Dec. 21, 2015)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111792,433 02/10/2008
42640 7590
Yudell Isidore PLLC
10601 RR2222, Ste. Rll 1
Austin, TX 78730
12/23/2015
FIRST NAMED INVENTOR
Miguel Jose-Y acaman
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.
NT060 3628
EXAMINER
CABRAL, ROBERTS
ART UNIT PAPER NUMBER
1618
NOTIFICATION DATE DELIVERY MODE
12/23/2015 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):
Patents@yudellisidore.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MIGUEL JOSE-Y ACAMAN, KURT A. SCHRODER,
KARL M. MARTIN, and DARRIN L. WILLAUER 1
Appeal2013-006083
Application 11/792,433
Technology Center 1600
Before JEFFREY N. FREDMAN, JACQUELINE T. HARLOW, and
RICHARD J. SMITH, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims directed to
the use ofnanomaterials, comprised of metals, in anti-viral applications.
(Spec., ,-i 7.) We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is NovaCentrix
Corporation. (Appeal Br. 3.)
Appeal2013-006083
Application 11/792,433
STATEivIENT OF THE CASE
Claims on Appeal
Claims 1, 3-7, and 39 are on appeal. 2 Claims 1 and 39 are illustrative
and read as follows:
1. A process comprising:
providing an absorbent material, wherein said absorbent
material is selected from a group consisting of tissues,
bandages, feminine products, diapers, gauzes, sponges, and a
combination thereof;
infusing a composition of generally unagglomerated
nanoparticles into said absorbent material, wherein said
composition includes a carbon and a metal selected from a
group consisting of silver, copper, iron, nickel and/or a
combination thereof;
configuring said absorbent material for topical
applications to allow said composition to provide anti-viral
effects on a surface when comes into contact with said surface.
39. A process comprising:
providing a nanometal composition having a metal
selected from a group consisting of silver; copper; iron; nickel
and/ or a combination thereof;
incorporating said nanometal composition within a drug
in a drug delivery system to provide anti-viral effects on a
patient after a delivery of said drug to said patient, wherein
said drug delivery system includes a material selected from the
group consisting of Poly(2-hydroxy ethyl methacrylate ),
Poly(N-vinyl pyrrolidone ), Poly( methyl methacrylate ),
Poly(vinyl alcohol), Poly(acrylic acid), Polyacrylamide,
Poly( ethylene-co-vinyl acetate), Poly( ethylene glycol),
Poly(methacrylic acid), Polylactides (PLA), Polyglycolides
(PGA), Poly(lactide-co-glycolides) (PLGA), Polyanhydrides,
Polyorthoesters, and combinations thereof.
(Appeal Br. 9, 10) (emphasis added).
2 Claims 2, 8-38, and 40-51 are cancelled.
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Appeal2013-006083
Application 11/792,433
Examiner's Rejections
A. Claims 1, 3, 4, 6, 7, and 39 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Burrell. 3 (Final Act. 3; Adv. Act.) 4
B. Claims 1, 3, 4, 6, 7, and 39 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Burrell and Schroder '785. 5 (Final Act. 5; Adv. Act.)
C. Claim 5 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Burrell, Schroder '785, and Schroder '205. 6 (Final Act. 9; Adv. Act.)
Appellants did not separately argue this rejection and the rejection is
therefore affirmed. 7 (Appeal Br. 4.)
D. Claims 5 and 39 stand rejected under 35 U.S.C. § 112, first paragraph,
as failing to comply with the written description requirement. (Final Act. 7-
8; Adv. Act.) Appellants did not separately argue the rejection of claim 5
under Section 112, and that rejection is therefore affirmed.
Appellants have presented arguments for the patentability of claims 1
and 3, 4, 6, and 7 as a group. (See Appeal Br. 4---6.) Therefore, we select
claim 1 as the representative claim to decide the appeal of the rejection of
these claims.
FINDINGS OF FACT
We adopt the Examiner's findings and analysis concerning the prior
art. The following findings are included for emphasis and reference
convemence.
3 U.S. Patent Publication No. 2003/0099718 Al, published May 29, 2003.
4 Office Action dated Oct. 5, 2011; Advisory Action dated Nov. 22, 2011.
5 U.S. Patent Publication No. 2005/0061785 Al, published Mar. 24, 2005.
6 WO 2006/096205, published Sept. 14, 2006.
7 See 37 C.F.R. § 41.37(c)(l)(iv) andHyattv. Dudas, 551F.3d1307, 1313-
14 (Fed. Cir. 2008).
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Appeal2013-006083
Application 11/792,433
FF 1. The Examiner finds that Burrell teaches a compos1t10n compnsmg
carbon, including carbides of one or more of the antimicrobial metals.
(Final Act. 4 and Ans. 3, citing Burrell, i-fi-152, 111, 112; Abstract.)
FF 2. The Examiner finds that Burrell teaches that the antimicrobial metal
may be formed on substrates such as polyorthoesters. (Final Act. 4 and Ans.
4, citing Burrell, i-fi-f 120, 121.)
FF 3. The Examiner finds that the term "drug," as used in claim 39, is given
its broadest reasonable interpretation, to include drug carriers including
solutions. (Final Act. 5.) Appellants do not dispute this interpretation.
FF 4. The Examiner states that, with respect to claim 1, "[a]bsent evidence
or reasoning to the contrary, the Examiner gives the term "generally
unagglomerated" little weight and assumes that the composition taught in
Burrell may contain unagglomerated nanoparticles and, if not, they at least
would function similarly." (Final Act. 5.)
ISSUE NO. 1
Whether a preponderance of evidence of record supports the
Examiner's finding that claims 1 and 39 are anticipated by Burrell.
Principles of Law
A claim is anticipated if a prior art reference discloses every limitation
of the claimed invention, either explicitly or inherently. In re Schreiber, 128
F.3d 1473, 1477 (Fed. Cir. 1997). In considering the disclosure of a
reference for anticipation, it is proper to take into account not only specific
teachings of the reference but also the inferences that one skilled in the art
would reasonably be expected to draw therefrom. In re Preda, 401 F .2d
825, 826 (CCPA 1968).
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Appeal2013-006083
Application 11/792,433
Analysis
Appellants argue that claim 1 is not anticipated because, in the
claimed step of infusing a composition, the composition "includes a carbon."
(Appeal Br. 4--5.) In particular, Appellants argue that Burrell's teachings of
alcohols and carbides are not related to the claimed composition. (Id.)
Appellants argue that claim 39 is not anticipated because "the Examiner has
not shown that Burrell has disclosed the claimed drug delivery system." (Id.
at 5.) Appellants also argue that Burrell does not disclose "incorporating
said nanometal composition within a drug in a drug delivery system to
provide anti-viral effects on a patient after a delivery of said drug to said
patient" as recited in claim 39. (Reply Br. 2.)
We are not persuaded by Appellants' argument. The Examiner finds
that Burrell teaches a composition comprising carbon and cites to Burrell' s
teaching that the antimicrobial coating can be formed from carbides (which
include carbon) of one or more of the antimicrobial metals. (FF 1.) As to
claim 39, Burrell teaches that the antimicrobial metal may be formed on
substrates, including one or more of the "drug delivery system" materials
recited in claim 39. (FF 2; Burrell, i-fi-f 120, 121.) Finally, based on the
interpretation of the term "drug" (FF 3), the Examiner describes Burrell's
teaching of "incorporating the nanometal within a drug in a delivery
system." (Final Act. 4--5; Ans. 3--4.)
Conclusion
We conclude that the preponderance of the evidence of record
supports the Examiner's finding that Burrell discloses every limitation of
claims 1 and 3 9, and that claims 1 and 3 9 are therefore anticipated by
Burrell.
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Appeal2013-006083
Application 11/792,433
Claims 3, 4, 6, and 7 were not argued separately and therefore fall
with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
ISSUE NO. 2
Whether a preponderance of evidence of record supports the
Examiner's conclusion of obviousness with respect to claims 1 and 39.
Analysis
The Examiner's obviousness rejection as to claims 1 and 39 is based
on the finding that Burrell does not expressly teach unagglomerated
nanoparticles, but that Schroder '785 teaches a process for producing
unagglomerated nanoparticles. 8 (Final Act. 5-7.) Appellants argue that
claim 1 is not obvious because, in addition to their anticipation arguments,
"the claimed absorbent material, the claimed composition and its anti-viral
effects in Claim 1 are not disclosed by Burrell." (Appeal Br. 6.) As to claim
39, Appellants argue that the claimed composition and drug delivery system
are not disclosed by Burrell or Schroder '785. (Id.)
We are not persuaded by Appellants' arguments. Anticipation is the
"epitome of obviousness," In re McDaniel, 293 F.3d 1379, 1385 (Fed. Cir.
2002) (citations omitted), and claims 1 and 39 are therefore obvious.
Moreover, Schroder '785 was included for its teaching ofunagglomerated
nanoparticles, an element found to be inherently present by the Examiner in
Burrell (see Final Act. 5), and Appellants have not provided any reasoning
or evidence contrary to the Examiner's finding that Burrell includes
unagglomerated nanoparticles. (FF 4.)
8 Claim 39 does not include the term "unagglomerated nanoparticles."
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Application 11/792,433
Conclusion of Law
A preponderance of evidence of record supports the Examiner's
conclusion that claims 1 and 39 are obvious under 35 U.S.C. § 103(a).
Claims 3, 4, 6, and 7 were not argued separately and therefore fall with
claim 1. 3 7 C.F .R. § 41.3 7 ( c )(1 )(iv).
ISSUE NO. 3
Whether the Specification's description shows that Appellants were in
possession of "incorporating said nanometal composition within a drug in a
drug delivery system" as recited in claim 39.
Principles of Law
In evaluating compliance with the written description requirement,
"the test for sufficiency is whether the disclosure of the application relied
upon reasonably conveys to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing date." Ariad
Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)
(citing cases).
Analysis
The Examiner rejected claim 39 for lack of written description support
for the language "within a drug," noting the absence of any disclosure in the
Specification of "how or at least which drug or drug type, the nanometal
would be incorporated within." (Final Act. 7-8; Ans. 4.) Appellants
respond by stating
This [inc o rp orating] step is supported by "pharmaceutical
application is to incorporate the material in a time release
drug delivery system, such as Poly(2-hydroxy ethyl
methacrylate ), Poly(N-vinyl pyrrolidone ), Poly( methyl
methacrylate ), Poly( vinyl alcohol), Poly( acrylic acid),
Polyacrylamide, Poly( ethylene-co-vinyl acetate), Poly( ethylene
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Application 11/792,433
glycol), Poly(methacrylic acid), Polylactides (PLA),
Polyglycolides (PGA), Poly(lactide-co-glycolides) (PLGA),
Polyanhydrides, Polyorthoesters" in lines 4-9 of paragraph 62
of the Specification.
(Appeal Br. 7.)
We are not persuaded by Appellants. The Specification does not
show that Appellants had possession of incorporating the nanometal
composition "within a drug" in a drug delivery system. This is particularly
so given that the Specification describes the nanometal as an "anti-viral
agent." (Spec. i-f 13.) As written, claim 39 thus recites the incorporation of
such anti-viral agent "within a drug" in a drug delivery system, but the
Specification does not describe any such drug that the anti-viral agent could
be incorporated within. The Specification thus fails to show that Appellants
had "possession of the claimed subject matter as of the filing date." See
Ariad, 598 F.3d at 1351.
Conclusion
A preponderance of evidence of record supports the Examiner's
finding that Appellants' Specification fails to provide written description
support for claim 39. The rejection of claim 39 under the written description
requirement of 35 U.S.C. § 112, first paragraph, is affirmed.
SUMMARY
We affirm the rejections of all appealed claims.
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).
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Appeal2013-006083
Application 11/792,433
KRH
AFFIRl\rIED
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