Ex Parte Liu et al

Patent Trial and Appeal Board

Dec 15, 2015

13072591 (P.T.A.B. Dec. 15, 2015)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/072,591 03/25/2011
21971 7590 12/17/2015
WILSON, SONSINI, GOODRICH & ROSATI
650 PAGE MILL ROAD
PALO ALTO, CA 94304-1050
FIRST NAMED INVENTOR
WenqiuLiu
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.
34305-707.201 6313
EXAMINER
JAVIER, MELISSA L
ART UNIT PAPER NUMBER
1611
NOTIFICATION DATE DELIVERY MODE
12/17/2015 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):
patentdocket@wsgr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WEN QIU LIU and JAMES F. HAINFELD
Appeal2013-005138 1
Application 13/072,591
Technology Center 1600
Before DEMETRA J. MILLS, ERIC B. GRIMES, and TA WEN CHANG,
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 for obviousness. We have jurisdiction under 35 U.S.C. § 6(b).
STATEMENT OF CASE
According to the Specification, in some embodiments, "functionalized
nanoparticles are used in vivo to provide imaging of various targets by
various technologies such as x-ray CT or planar x-rays, .... " Spec. i-f 9.
1 Appellants identify the Real Party in Interest as Nanoprobes, Inc. Br. 3.
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Application 13/072,591
Further according to the Specification, synthesis of functionalized gold
nanoparticles larger than 1.8 nm "has been met with a number of difficulties
including aggregation, low activity, poor solubility, and high non-specific
background." Spec. if 38.
The following claim is representative.
1. A composition comprising a plurality of gold nanoparticles bound
to at least one multidentate ligand chelated to a metal ion, wherein
at least 90% of the plurality of gold nanoparticles have an effective
diameter of 5 nm± 25%.
Cited References
Zhong US 2007/0125196 Al Jun. 7,2007
(hereinafter "Zhong")
Hu et al., Protein Assembly Through Site-specific Interactions with
Gold Nanoparticles, 951 Mater. Res. Soc. Symp. Proc. 0951-EI0-10
(2007) (hereinafter "Hu").
Reddy et al., 5 nm Gold-Ni-NTA binds His Tags, 11 Microsc
Microanal 1118 (2005) (hereinafter "Reddy").
Hainfeld et al., New Frontiers in Gold Labeling, 48 J Histochem
Cytochem 471 (2000) (hereinafter "Hainfeld").
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Application 13/072,591
Kabashin et al., Synthesis of colloidal nanoparticles during
femtosecond laser ablation of gold in water, 94 J. Appl. Phys. 7941
( 2 00 3) (hereinafter "Kabashin").
Grounds of Rejection
1. Claims 1-6, 9, and 11-14 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Hu in view of Zhong and Kabashin.
2. Claims 7-8, and 10 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Hu in view of Zhong, Kabashin and Hainfeld.
FINDINGS OF FACT
The Examiner's findings of fact are set forth in the Answer at pages
5-9. The following facts are highlighted.
1. Hu teaches
the synthesis of Ni-NT A [ nitrilotriacetic acid] functionalized
gold nanoparticles (see third paragraph). The size of the
gold nanoparticles ranged from 2 to 6nm (see third
paragraph). Specifically, 4.4nm Ni-NTA functionalized Au
nanoparticles with a standard deviation of 1 nm, were used
with 6x-histidine-tagged proteins (see fourth paragraph).
This meets the limitation recited by the instant claim of gold
nanoparticles having an effective diameter of 5nm±25%
(5nm±l.25nm or 3.75nm to 6.25nm).
Ans. 5---6.
2. Hu further discloses that
Many efforts have been pursued to conjugate inorganic
nanoparticles (NPs) possessing size-dependent optical, electrical,
magnetic, and electrochemical properties to biomolecules showing
various binding properties and biochemical functionalities [3-7].
However, the control of biomolecular density, surface orientation
and binding affinity to NPs remains challenging, and has seldom
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Application 13/072,591
been reported. Here, we report the design of protein-NP
assemblies by controlling the functionality ofNPs and the
placement of genetic tags in proteins. Our study provides the
flexibility in control of higher order protein geometrical and
topological architectures on NP surfaces.
Hu, 0951-E 10-10 (first page) (emphasis added).
3. Zhong discloses a method of synthesizing highly monodispersed 2
Au nanoparticles having diameters in the range of 30-90 nm. Seed
nanoparticles are provided in a controlled concentration. Zhong
Abstract.
4. Zhong teaches that polydispersed nanoparticles can be size
selected using a variety of techniques, such as differential mobility
analysis (see [0003]). Ans. 11.
5. Zhong discloses that seeds having a diameter of approximately
3.5±0.7 nm are prepared. Zhong 2, i-f 24. These seeds are then used to
synthesize larger particles with diameters in the range of
approximately 5.5±0.6 nm and 8.0±0.8 nm by varying CTAB
( cetyltrimethylammonium bromide) and seeds (3 .5±0. 7 nm)
quantities. Id. at 2, i-f 24.
6. Zhong i-f 2, teaches a need for high monodispersity nanoparticles,
including gold nanoparticles, and that
the ability to control the size, shape and monodispersity of such
gold nanoparticles is one of the most important areas for the
targeted applications. This is because the electronic, optical, and
2 Monodispersed means, "characterized by particles of uniform size in a
dispersed phase." http://www.merriam-webster.com/dictionary
/monodisperse
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Application 13/072,591
chemical/biological properties exploited in these applications are
highly dependent on the size, shape and size monodispersity of the
nanoparticles. Few standard protocols have been established to
allow preparation of gold nanoparticles of the desired sizes, shapes
and high monodispersity in a systematic way. Such ability is
critical for the targeted applications.
Id. at 1, i1 2 (emphasis added).
PRINCIPLES OF LAW
In making our determination, we apply the preponderance of the
evidence standard. See, e.g., Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427
(Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings
before the Patent and Trademark Office). The Board "determines the scope
of claims in patent applications not solely on the basis of the claim language,
but upon giving claims their broadest reasonable construction 'in light of the
specification as it would be interpreted by one of ordinary skill in the art."'
Phillips v. AWHCorp., 415F.3d1303, 1316 (Fed. Cir. 2005) (quoting In re
Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
"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) (citations omitted). In order to determine whether a prima facie
case of obviousness has been established, we consider the factors set forth in
Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966): (1) the scope and
content of the prior art; (2) the differences between the prior art and the
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claims at issue; (3) the level of ordinary skill in the relevant art; and ( 4)
objective evidence of nonobviousness, if present.
"The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results."
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
Obviousness Rejection
Claims 1-6, 9, and 11-14 are rejected under 35 U.S.C. §103(a) as
being unpatentable over Hu in view of Zhong and Kabashin.
ANALYSIS
Claims 1-6, 9, and 11-14 are rejected under 35 U.S.C. §103(a) as
being unpatentable over Hu in view of Zhong and Kabashin.
We agree with the Examiner's fact finding, statement of the rejection
and responses to 1A~ppellants' arguments as set forth in the i~\~ns\~1er. \X/ e 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 Rejection and Answer.
Appellants submit that there is no proper rationale to modify or
combine the cited references in the manner proposed by the Examiner to
arrive at the claimed subject matter because there is no reasonable
expectation of success to modify Hu in view of either Zhong or Kabashin.
Br. 10.
We are not persuaded. The Examiner concluded that
A person of ordinary skill in the art at the time that the
invention was made would utilize a monodisperse plurality of
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nanoparticles for the composition taught by Hu []. One would be
motivated to do so as the electronic, optical, and chemical/biological
properties are highly dependent on the size, shape, and size
monodispersity of the nanoparticles as taught by Zhong et al. and
Kabashin et al. Further, both Zhong et al. and Kabashin et al. teach
methods to achieve monodisperse gold compositions, either by
various size selection techniques for polydisperse samples (such as
differential mobility analysis) taught by Zhong et al. or by a step by
step synthesis of gold nanoparticles by a femtosecond pulse of a laser
as taught by Kabashin et al. to create a monodisperse composition.
Ans. 7; Final Act. 4. Thus, one of ordinary skill in the art recognizing that
electronic, optical, and chemical/biological properties of nanoparticles for
desired "chemical, bioanalytical, biomedical, [or] optical" applications
(Zhong 1, i-f 2) are highly dependent on the size and shape of the
nanoparticles, would have been motivated by Zhong and Hu (FF2) to select
the appropriate size monodispersity of the nanoparticles for the desired
scientific application, for example, for the scientific applications of Hu.
Hu teaches gold nanoparticles conjugated to histidine tagged proteins.
Ans. 6. In Hu, 4.4nm Ni-NTA functionalized Au nanoparticles with a
standard deviation of 1 nm were used. This meets the limitation recited by
the instant claim of gold nanoparticles having an effective diameter of
5nm±25% (5nm±l.25nm or 3.75nm to 6.25nm). Id. Zhong teaches
methods of making and sizing gold seed particles having the claimed size,
e.g., 5.5±0.6 nm (FF5) and the need to size nanoparticles uniformly
(monodisperse) for specific scientific applications.
We agree with the Examiner that it would have been obvious to one of
ordinary skill in the art at the time of the invention to use the gold
nanoparticle sizing method of Zhong to size the protein tagged gold
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nanoparticles of Hu to achieve size-selected nanoparticles in which at least
90% have an effective diameter of 5nm±25%.
Specifically, one of ordinary skill in the art would have been
motivated to uniformly size the 5.5±0.6 nm gold nanoparticles of Zhong (as
they are within the desired size proposed in Hu), and tag them with a protein
in the manner of Hu. Reason to size-select Zhong's nanoparticles is
provided by Zhong, which teaches that
Gold nanoparticles are one of the most widely used classes of
nanomaterials for chemical, bioanalytical, biomedical, optical
and nanotechnological applications," and "the electronic,
optical, and chemical/biological properties exploited in these
applications are highly dependent on the size, shape and size
monodispersity of the nanoparticles.
Zhong 1, i-f 2.
Appellants argue that there is no reasonable expectation of success to
size select Ru's nanoparticles. Br. 10. We are not persuaded. Zhong
discloses using gold seed nanoparticles, and use of these seeds to synthesize
nanoparticles similar to the size of nanoparticles used in Hu with "high size
monodispersity." Zhong 2, i-fi-124, 28; see also id. at 2, i-f 22 ("The present
invention provides methods for controllably forming highly size
monodispersed gold (Au) nanoparticles of any desired size and shape.").
Zhong also states that, "[i]f necessary, particles having different sizes may
be separated from excess reducing/capping agents by centrifugation or any
other suitable process." Id. i-f 28. Appellants have not provided evidence
that the method of sizing Zhong's gold nanoparticles could not be used to
size the particles of Hu.
Appellants argue that there is no reasonable expectation of success of
using Kabashin's nanoparticles in Ru's process (Br. 12) and that Kabashin
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does not teach how to make or isolate "a single nanoparticle" from a
colloidal solution of nanoparticles. Br. 13. The pending claims do not
exclude nanoparticles that are in solution, due to the transitional phrase
"comprising."
Appellants present no argument with respect to the rejections of
claims 7, 8, and 10, which are summarily affirmed. All obviousness
rejections are affirmed.
CONCLUSION OF LAW
The cited references support the Examiner's obviousness rejections,
which are affirmed for the reasons of record. All claims fall.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
tc
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