Henry Wu

Patent Trials and Appeals Board

Jun 2, 2021

2020003625 (P.T.A.B. Jun. 2, 2021)

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.)
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Application 14/595,695

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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
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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
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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
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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.
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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

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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