Ex Parte Kelch et alDownload PDFPatent Trials and Appeals BoardMar 30, 201612300870 - (D) (P.T.A.B. Mar. 30, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/300,870 86012 7590 VLP Law Group LLP 555 Bryant Street Suite 820 Palo Alto, CA 94301 05/14/2009 04/01/2016 FIRST NAMED INVENTOR Steffen Kelch 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. 5661-5PUS 3559 EXAMINER PALLAY,MICHAELB ART UNIT PAPER NUMBER 1617 NOTIFICATION DATE DELIVERY MODE 04/01/2016 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@vlplawgroup.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte STEFFEN KELCH, ANDREAS LENDLEIN, and YAKAIFENG1 Appeal2013-006423 Application 12/300,870 Technology Center 1600 Before DEMETRA J. MILLS, ULRIKE W. JENKS, and RICHARD J. SMITH, Administrative Patent Judges. JENKS, Administrative Patent Judge. uECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) involving claims directed to a multiblock copolymer with shape memory properties. The Examiner rejects the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 According to Appellants, the Real Party in Interest is GKSS- Forschungszentrum Geesthacht GmbH. (Br. 2.) Appeal2013-006423 Application 12/300,870 STATEMENT OF THE CASE Claims 1, 4, 5, and 9 are on appeal, and can be found in the Claims Appendix of the Appeal Brief. 2 Claim 1 is representative of the claims on appeal, and reads as follows: 1. Multiblock copolymer with shape memory properties and an average molecular weight MW in the range of 10,000 to 100,000 g/mol, wherein the multiblock copolymer comprises: (i) poly( depsipeptide) segments of formula (1 ): (1) where Xis a bridge selected from the group: (X1) and {X2} where 0 = 2 - 20 and p = 1 - 10; R represents a group selected from H or a branched or unbranched C1-C10 alkyl radical; and n and m are given such that the poly( depsipeptide) segments have an average molecular weight Mw in the range of 1,000 to 20,000 g/mol; and (ii) poly(E-caprolactone) segments with an average molecular 2 Appellants acknowledge that claims 3, 6-8, 11, and 13-15 are withdrawn and claims 2 and 10 have been canceled (Br. 2). 2 Appeal2013-006423 Application 12/300,870 weight Mw in the range of 1,000 to 10,000 g/mol. (Br. Claims Appendix.) Appellants seek review of the Examiner's rejection of claims 1, 4, 5, and 9 under 35 U.S.C. § 103(a) over Langer3 in view of Feng. 4 (Br. 4.) As Appellants do not argue the claims separately, we focus our analysis on claim 1, and claims 4, 5, and 9 stand or fall with that claim. 37 C.F.R. § 41.37 (c)(l)(iv). Langer discloses shape memory polymers including hard and soft segments and suggests the combination of a poly( E-caprolactone) block (soft segment) and a polydepsipeptide (hard segment) (Final Act. 3--4). The Examiner finds that Langer "does not disclose a specific example that includes both a poly( E-caprolactone) block and a polydepsipeptide block." (Id. at 3.) Additionally, the Examiner acknowledges that Langer does not "disclose a poly( depsipeptide) segment of PIBMD" (poly(3(S)- isobutylmorpholine-2,5-dione )diol) (Id. at 4). 5 Feng "discloses that the copolymerization of morpholine-2,5-diones (i.e., poly( depsipeptide) segments) with E-caprolactone produces poly( ester amide )s with a wide variety of properties" (Id. at 5). The Examiner acknowledges that neither Feng nor Langer disclose PIBMD. The Examiner concludes that since PBMD and PIBMD are such close isomers, and since 3 Langer et al., US 6,388,043 Bl, issued May 14, 2002. 4 Feng et al., Synthesis and Characterization of New Block Copolymers with Poly(ethylene oxide) and Poly[3(S)-sec-butylmorpholine-2,5-dione] Sequences, 1 Macromol. Biosci. 30-39 (2001). 5 Appellants elected the species PCL/PIBMD in response to the Election/Restriction requirement of February 24, 2011. (See response submitted March 23, 2011.) 3 Appeal2013-006423 Application 12/300,870 both are used in block polymer degradable medical materials, it would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made to substitute an isobutyl group for a sec-butyl group in the PBMD of Feng et al. to produce PIBMD, with a reasonable expectation of success. (Final Act. 5.) Appellants contend that the polymers of Langer contain an infinite number of alternatives (Br. 4-5, and 8), that the Examiner has not provided a sufficient articulated rationale that the combination would have been predictable (Id. at 6-7), that the combination lacks a reasonable expectation of success (Id. at 8), that the substitution as suggested by the Examiner is not supported (Id. at 9), and that there are unexpected results with respect to the shape polymer (Id. at 9-10). The issue is: Does the preponderance of evidence of record support the Examiner's conclusion that the combination of references renders the claimed multiblock shape memory polymer obvious, and if so have Appellants provided sufficient evidence of secondary considerations to overcome the prima facie showing of obviousness? Findings of Fact FF 1. Langer teaches shape memory polymers having at least two different shapes (see Langer col. 24, 11. 18-19). "[T]he polymer comprises hard and soft segments and at least one of the hard and soft segments is selected from the group consisting of polyhydroxy acids, polyorthoesters, polyether esters, polyesters, polyamides, polyesteramides, polydepsidpetides, aliphatic polymrethanes, polysaccharides, polyhydroxyalkanoates, and copolymers thereof' (Langer col. 25, 11. 3-9 (emphasis added); see also Ans. 4). 4 Appeal2013-006423 Application 12/300,870 FF2. Langer teaches that "[t]he polymers incorporate 'hard' and 'soft' segments. The segments preferably are oligomers. As used herein, the term 'oligomer' refers to a linear chain molecule having a molecular weight up to 15,000 Daltons .... Preferably, the number average molecular weight of the polymer segment is greater than 400, and is preferably in the range of between 500 and 15,000." (Langer col. 6: 32--43; see also Final Act. 3.) Langer also disclosed that "[t]he ratio by weight of the hard segment: soft segments is between about 5:95 and 95:5, preferably between 20:80 and 80:20." (Langer col. 5: 4-6.) FF3. The Examiner finds that "poly(E-caprolactone) is a species of polyester." (Ans. 4.) FF4. Feng teaches "[t]he copolymerization of morpholine-2,5-diones with D,L-lactide (DLLA), glycolide (GA) or E-caprolactone (CL) produces poly(ester amide)s with a wide variety of properties." (Feng 30 (footnote omitted); see also Final Act. 5 ("morpholine-2,5-diones (i.e., poly( depsipeptide) segments)").) FF5. Feng teaches that "[b]ecause rate of the biodegradation of PBMD [(poly[3(S)-sec-butylmorpholine-2,5-dione ])] is low, the copolymerization of morpholine-2,5-diones with lactones or lactides such as CL and LA are an effective approach to improve the degradation properties of poly(morpholine-2,5-diones)." (Feng 38.) FF6. Feng discloses the production of PBMD/PEO (poly( ethylene oxide) block copolymers with different architectures (Feng 30.) PBMD 5 Appeal2013-006423 Application 12/300,870 (poly[3(S )-sec-butylmorpholine-2,5-dione]) has the following structure: (Feng 32). FF7. Feng teaches an ABA triblock copolymer with a Mw 29800. (Feng 32, Table 2; see also Final Act. 4-5.) The ABA copolymer has the following structure: The structure shows the triblock copolymer with A= PBMD and B = PEO (Feng 32, Table 2; see also Final Act. 5). FF8. The Examiner finds that PIBMD (poly(3(S)-isobutylmorpholine-2,5- dione )diol) has the following structure: (Ans. 9.) Principle of Law "The question of 'structural similarity' in chemical patent cases has generated a body of patent law unto itself. Particular types or categories of 6 Appeal2013-006423 Application 12/300,870 structural similarity without more have, in past cases, given rise to prima facie obviousness; see, e.g., In re Dillon, 919 F.2d 688, 692-94 (Fed. Cir. 1990) (tri-orthoesters and tetra-orthoesters), cert. denied 500 U.S. 904 (1991); In re May, 574 F.2d 1082, (CCPA 1978) (stereoisomers); In re Wilder, 563 F.2d 457 (CCPA 1977) (adjacent homologs and structural isomers); In re Hoch, 428 F.2d 1341(CCPA1970) (acid and ethyl ester)." In re Jones, 958 F.2d 347, 349-50 (Fed. Cir. 1992) (footnote omitted). When such 'close' structural similarity to prior art compounds is shown, in accordance with these precedents the burden of coming forward shifts to the applicant, and evidence affirmatively supporting unobviousness is required." In re Grabiak, 769 F.2d 729, 731 (Fed. Cir. 1985). Analysis After considering the evidence and the arguments, we conclude the weight of the evidence favors the Examiner's conclusion of obviousness. Accordingly, we adopt the Examiner's findings, analysis concerning the scope content of the art, and reasoning (see Final Action 3-7), and agree that the Examiner properly found Appellants' arguments unpersuasive (see Response to Argument, Final Act. 7-9 and Ans. 2-11 ). We provide the following points for emphasis. We are not persuaded by Appellants' contention that the polymers of Langer contain an infinite number of alternatives (Br. 4-5, and 8). Here, the Examiner is relying on Langer to teach shape memory polymers made up of hard and soft segments (see FFl and FF2). The reference teaches that in order to produce a shape memory polymer you need to select at least one hard and soft segment (FF 1 ). The Examiner finds that polyester encompasses the species poly( E-caprolactone) (FF3 ). Poly( E-caprolactone) 7 Appeal2013-006423 Application 12/300,870 is identified in Langer as belonging to the soft segment (see Ans. 4 "specifically discloses poly( E-caprolactone) in soft segments of the shape memory multiblock copolymer compositions in Example l "). Here, the Examiner is relying on a list of hard and soft segments in Langer that includes a group with only 10 members and instructs that one of each kind of segment must be included in the product. "[B]oth poly( depsipeptide) and poly(E-caprolactone) are disclosed by Langer ... as suitable segments for inclusion in shape memory multi block copolymer compositions" (Ans. 4). We find a list that includes only 10 members and specifically has identified that some of the members in the list are either belonging to the hard or soft segment further decreases the probable combination. Accordingly, we are note persuaded by Appellants contention that the combination in Langer is infinite. We are not persuaded by Appellants' contention that the Examiner has not provided a sufficient articulated rationale that the combination would have been predictable (Br. 6-7). Here Langer instructs that in order to make a shape memory polymer you need to combine hard and soft segments (FFl and FF2). Although Langer teaches the general combination of poly( E- caprolactone) containing segments and depsipeptide containing segments in the production of a shape memory polymer (FFl ), the Examiner acknowledges that the reference does not exemplify such a product (see Final Act. 3). The Examiner looks to Feng's disclosure for teaching "copolymerization of morpholine-2,5-diones (i.e., poly( depsipeptide) segments) with [poly(]E-caprolactone[)]." (Final Act. 5; see also FF4-FF7.) Feng explains that the copolymerization of depsipeptide and polylactone produced poly( ester amides) with a wide range of uses (FF 4) specifically 8 Appeal2013-006423 Application 12/300,870 indicating that such a combination would improve the degradation properties of the polymer (FF5). The Examiner concludes that A person of ordinary skill in the art at the time the invention was made would have been motivated to combine these teachings [ (of Langer and Feng)] in order to use a poly( depsipeptide) having hydrophilic PEO blocks [as disclosed in Feng] in the main chain of the polymer which increases degradation rates due to accelerated permeation of water into the matrix, which improves its properties as a drug delivery system, as taught by Feng et al. Further motivation to combine such morpholine-2,5-diones with caprolactone is also provided by Feng et al. which discloses that such combination is an effective approach to improve degradation properties and greatly expand the scope of application as medical materials. (Final Act. 6-7.) In other words, the Examiner reasons that Feng' s disclosed polydepsipeptide, specifically PBMD, is known to have a low biodegradation rate but this rate can be improved by incorporating either PEO or poly( E-caprolactone) into the polymer to improve the degradation rate (FF4 and FF5). We are also unpersuaded by Appellants' contention that the combination lacks a reasonable expectation of success (Br. 8) and that "none of the copolymers described in Feng has shape memory effects" (Br. 9). Here, Feng discloses the production of a triblock copolymer with PEO/PBMD (FF6 and FF7). Feng suggests that in order to improve the biodegradation of these polymers you want to copolymerize PBMD with a poly( E-caprolactone) (FF5). Langer teaches that combinations of a polyester and a polydepsipeptide produce compositions that have shape memory character. (See FFl, FF4, and FF5.) Langer also teaches that is desirable to make the polymer biodegradable. "Biodegradable polymers degrade at a 9 Appeal2013-006423 Application 12/300,870 controlled rate depending on the composition and crosslinking of the polymer. Degradable polymeric implants eliminate the need for implant retrieval and can be used simultaneously to deliver therapeutic agents." (Langer col. 16: 30-37; see also Final Act. 3.) Here, the combination as suggested by the Examiner would result in a copolymer that is readily degradable as suggested by Feng. The law does not require that the teachings of the reference be combined for the reason or advantage contemplated by the inventor, as long as some suggestion to combine the elements is provided by the prior art as a whole. In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992); In re Kronig, 539 F.2d 1300, 1304 (CCPA 1976). Here, the record establishes that when PBMD is combined with poly( E-caprolactone) this makes the polymer more readily degradable (FF5), and Langer tells us that this polymer should have shape memory because it is made of hard and soft segments (FF 1; see also Ans. 5). Even if the Examiner's reason for combining the references is not for the purpose of creating a shape memory polymer, that feature is a natural result of the combination of PBMD with poly(E-caprolactone) (see FF6) and therefore renders the claim obvious. We are also unpersuaded by Appellants' contention that the substitution as suggested by the Examiner is not supported (Br. 9). The Examiner identified that "PIBMD is a close position isomer of PBMD[], the prior art suggests that the results of use of PIBMD as the polydepsipeptide block in Langer []would have been predictable and that there would have been a reasonable expectation of success" (Ans. 5; see also FF6 and FF8). Additionally, the Examiner finds that "the structures of PBMD and PIBMD are identical except that a single methyl group from PBMD noted as 7 as 10 Appeal2013-006423 Application 12/300,870 drawn is moved one position from position 6 to position 8 as drawn, to form PIBMD. Hence, the chemical name changes from a sec-butyl to an iso- butyl." (Ans. 9; see also FF6 and FF8.) There is a presumption that compounds that have close structural similarity will also have similar properties. See In re Dillon, 919 F.2d 688, 692-94, In re Wilder, 563 F.2d 457. Because of the structural similarity between PBMD and PIBMD we find no error with the Examiner's position that the teachings of Feng can be extrapolated to include copolymers of PIBMD and poly( E-caprolactone) for the purpose of making multiblock copolymers that have improved biodegradation properties. We find that the Examiner has presented sufficient evidence to support the conclusion that the combination of references renders the multiblock copolymers having shape memory properties obvious. Because the Examiner presents a prima facie case of obviousness, we consider whether Appellants submit sufficient evidence or argument in rebuttal. See In re Grabiak, 769 F.2d 729, 731. Appellants contend that their polymers show unexpected results with the shape polymer (Br. 9-10). We agree with the Examiner's position that Appellants have provided insufficient evidence to establish "that it is unexpected that poly( depsipeptide) segments have sufficient elastic behavior to be useful as a compound of a shape memory polymer" (Ans. 10). Attorney's argument in a brief cannot take the place of evidence." In re Pearson, 494 F.2d 1399, 1405(CCPA) (citation omitted). We conclude that the evidence cited by the Examiner supports a prima facie case of obviousness with respect to claim 1, and Appellants have not provided sufficient evidence of secondary considerations that outweighs the 11 Appeal2013-006423 Application 12/300,870 evidence supporting the prima facie case. As Appellants do not argue the claims separately, claims 4, 5, and 9 fall with claim 1. 37 C.F.R. § 41.37 ( c )(1 )(iv). SUMMARY We affirm the rejection of claims 1, 4, 5, and 9 under 35 U.S.C. § 103(a) over Langer in view of Feng. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § l.136(a). AFFIRMED 12 Copy with citationCopy as parenthetical citation