Yin-Xiong Li

Patent Trials and Appeals Board

Aug 28, 2019

11888822 - (D) (P.T.A.B. Aug. 28, 2019)

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.
11/888,822 08/02/2007 Yin-Xiong Li 5056U.001 5065
21917 7590 08/28/2019
MCHALE & SLAVIN, P.A.
2855 PGA BLVD
PALM BEACH GARDENS, FL 33410
EXAMINER
MARVICH, MARIA
ART UNIT PAPER NUMBER
1633
NOTIFICATION DATE DELIVERY MODE
08/28/2019 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):
uspatents@mchaleslavin.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte YIN-XIONG LI.1
__________

Appeal 2018-006321
Application 11/888,822
Technology Center 1600
__________

Before DONALD E. ADAMS, DEMETRA J. MILLS, and
JOHN E. SCHNEIDER, Administrative Patent Judges.

SCHNEIDER, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a UV
absorbing composition which have been rejected for failure to comply with
the written description requirement, as anticipated and as obvious. We have
jurisdiction under 35 U.S.C. § 6(b).2
We AFFIRM.

1 Appellant identifies the real party in interest as the inventor, Yin Xiong Li.
Appeal Br. 3.
2 We have considered and herein refer to the Specification of Aug. 2, 2007
(“Spec.”); Non-Final Office Action of Oct. 5, 2016 (“Non-Final Act.”);
Appeal Brief of May 17, 2017 (“Appeal Br.”); Examiner’s Answer of Mar.
30, 2018 (“Ans.”); and Reply Brief May 30, 2018 (“Reply Br.”).

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STATEMENT OF THE CASE
Although protection systems exist for UV wavelengths in the range of
300nm or longer, no practical and comprehensive system is available for UV
wavelengths below 300nm. Id. at 4. The Specification describes a system
which combines traditional UV pigments, organic chemicals, or both, with
nucleic acids to create a broad spectrum UV absorbing composition. Id. at
5.
Claims 22–24, 28, 29, 31–34, and 36–433 are on appeal. Claim 29 is
representative and reads as follows:
29. A composition for protecting genetic material from
ultraviolet radiation-induced damage, the composition
comprising:
at least one single stranded or double stranded
polynucleotide structure and at least one electromagnetic
radiation shielding nanoparticle comprising an ion, an oxide, a
metal, or a boron containing compound having an atomic mass
of greater than 25 and a molecular weight of greater than 50
bound to said at least one single stranded or double stranded
polynucleotide structure;
wherein said composition absorbs ultraviolet radiation of
wavelength of at least 220nm to 400nm.

The claims have been rejected as follows:
Claims 22–24, 28, 29, 31–34, and 36–43 have been rejected under
35 U.S.C. § 112, first paragraph for failure to comply with the written
description requirement.

3 Claims 1–11 are pending in the application but have been withdrawn from
consideration. Non-Final Act. 1.
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Claims 22, 23, 28, 29, 31, 32, 34, 36, 38, and 40–42 have been
rejected under 35 U.S.C. § 102(b) as anticipated by Dierker.4
Claims 22–24, 28, 29, 31–34, and 36–43 have been rejected under
35 U.S.C. § 102(b) as anticipated by Li.5
Claims 22–24, 28, 29, 31–34, and 36–43 have been rejected under
35 U.S.C. § 102(b) as anticipated by Lyles.6
Claims 22–24, 28, 29, 31–34, and 36–43 have been rejected under
35 U.S.C. § 103(a) as unpatentable over Dierker in view of Li or Lyles.

WRITTEN DESCRIPTION
Issue
The issue with respect to this rejection is whether a preponderance of
the evidence supports the Examiner’s conclusion that the claims contain
subject matter which was not described in the Specification in such a way as
to reasonably convey to one skilled in the relevant art, that the inventor, at
the time the application was filed, had possession of the claimed invention.
The Examiner finds that the following elements of the claims are not
supported by the present Specification and constitute new matter:
1) The polynucleotide is bound to a nanoparticle (claim 29);
2) The nanoparticle has an atomic mass greater than 25 and a
molecular weight greater than 50 (claim 29); and

4 Dierker et al., US 8,518,386 B2, issued Aug. 27, 2013 (“Dierker”).
5 Yin-Xiong Li, US 6,117,846, issued Sept. 12, 2000 (“Li”).
6 Mark B. Lyles, US 6,890,912 B2, issued May 10, 2005 (“Lyles”).
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3) The polynucleotide is bound to at least one biomolecule to form a
macro-polymer (claim 41).
Non-Final Act. 3–4. The Examiner also finds that the Specification does not
contain an adequate written description of the broad class of compositions
embraced by the claims. Id. at 6–7.

Principles of Law
A description adequate to satisfy 35 U.S.C. § 112, first paragraph,
“must ‘clearly allow persons of ordinary skill in the art to recognize that [the
inventor] invented what is claimed.’ In other words, 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 Pharm., Inc. v. Eli Lilly & Co.,
598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (citation omitted, alteration
in original).
“[T]he test requires an objective inquiry into the four corners of the
specification from the perspective of a person of ordinary skill in the art.
Based on that inquiry, the specification must describe an invention
understandable to that skilled artisan and show that the inventor actually
invented the invention claimed.” Id.
A “sufficient description of a genus instead requires the disclosure of
either a representative number of species falling within the scope of the
genus or structural features common to the members of the genus so that one
of skill in the art can ‘visualize or recognize’ the members of the genus.” Id.
at 1350.
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Analysis
We will separately address each of the issues raised by the Examiner
with respect to the failure to comply with the written description
requirement.

a. Polynucleotide bound to a nanoparticle and the polynucleotide is
bound to a biomolecule

The Examiner finds that the Specification is devoid of any teaching
that the polynucleotide is bound to either the nanoparticle or to the
biomolecule. Non-Final Act. 5–6.
Appellant contends that the Specification teaches that the nucleotide is
bound to the nanoparticle as the Specification teaches that the nucleotide is
attached to the nanoparticle. Appeal Br. 17 (citing Spec. 10). Appellant also
points to the teaching in the Specification that the nanoparticles are coated
with nucleotides. Appeal Br. 17 (citing Spec. 6). Appellant contends that
given the nature of the nucleic acid structure and the particles, one skilled in
the art would recognize that the attachment referred to in the Specification is
a bond. Appeal Br. 17.
We have considered both the Examiner’s and Appellant’s arguments
and find that the Examiner has the better positon. We discern nothing in the
Specification that teaches that any form of bonding occurs when the
nucleotides are combined with the nanoparticles. Paragraph 41 cited by
Appellant only states that the nucleotide was attached to micro-fine particles
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using a “proprietary process.”7 Spec. 10. Nothing in this disclosure
suggests that any form of bonding occurs during the “proprietary process.”
In addition, in example 3, the nucleic acids and zinc oxide are added
separately to the compositions. Spec. 20, Table 3. Here again we discern
nothing which teaches that the nucleic acid is bound to the nanoparticle.8
With respect to Appellant’s contention that the polynucleotide
structure would allow for chemical or physical bonding with the
nanoparticles, Appellant has offered no persuasive evidence to support this
contention other than attorney argument. “Attorneys’ argument is no
substitute for evidence.” Johnston v. IVAC Corp., 885 F.2d 1574, 1581
(Fed. Cir. 1989).
We also find that the Specification does not support the limitation
calling for the nucleotides to be bound to a biomolecule. While the
Specification recites various biomolecules that can be used in the practice of
the invention, appellants do not point to any teaching in the specification,
nor have we found any teaching, which supports the limitation that the
nucleotides are bound to the biomolecules. Spec. 8–9.

b. The nanoparticle has an atomic mass greater than 25 and a
molecular weight greater than 50

7 We question whether reliance on an undisclosed proprietary process fulfills
the best mode requirement of 35 U.S.C. § 112
8 We note that if Appellant had produced evidence that the nucleic acids
inherently bonded with the nanoparticle and biomolecules, our conclusion
regarding the Examiner’s rejection for obviousness might be different.
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The Examiner finds that it is unclear where the atomic mass and
molecular weight values recited in claim 29 arose. Non-Final Act. 9.
Appellant contends that one skilled in the art would be able to
determine the values from the examples of electromagnetic radiation
shielding particles listed in the Specification. Appeal Br. 20.
We have considered the arguments of both the Examiner and
Appellant and find Appellant has the better argument.
Molecular weight is defined as the sum of the atomic weights
(masses) of the atoms in a molecule. HAWLEY’S CONDENSED CHEMICAL
DICTIONARY, 791 (Richard J. Lewis, Sr. ed. 1993). The Specification lists
several compounds or elements where at least one of the atoms has an
atomic mass greater than 25 and a molecular weight greater than 50
including lead oxide and copperized lead.9 Spec. 8. Based on this
disclosure we find that there is adequate written support of this limitation.

c. Lack of support for the claimed genus.
The Examiner finds that there is a lack of written support for the
broadly claimed genus of compositions which UV radiation across the range
of wavelengths 220–400nm. Non-Final Act. 6. The Examiner finds that the
Specification discloses a single species, a composition of 1% nucleic acid
and collagen fiber composite. Id. at 7. The Examiner finds that the
Specification does not provide any indication that any other compositions

9 We note that the particles used in Example 3, zinc oxide, do not meet this
limitation as zinc oxide has a molecular weight of 38.
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will have the same properties and that the Specification provides a
structural-functional nexus to support a claim to a broader genus. Id.
Appellant contends that the teachings of the Specification are
sufficient and that Appellant is not required to provide examples of every
possible composition that would fall within the claims. Appeal Br. 19.
Appellant points to Example 1 as showing that the disclosed composition
absorbs UV radiation in the recited range. Id. at 20.
We have considered the arguments presented by the Examiner and
Appellant and find that the Examiner has the better position. The present
Specification discloses only a single composition which exhibits UV
absorption over the claimed range. Spec. Figs. 1 and 1A. Appellant has not
pointed to anything nor do we find anything in the Specification which show
structural features common to the members of the genus so that one of skill
in the art can ‘visualize or recognize’ the members of the genus.” Ariad,
598 F.3d at 1350.

Conclusion
We conclude that a preponderance of the evidence supports the
Examiner’s conclusion that the claims are unpatentable for failure to comply
with the written description requirement.

ANTICIPATION
Dierker
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The issue with respect to this rejection is whether a preponderance of
the evidence supports the Examiner’s conclusion that claims 22, 23, 28, 29,
31, 32, 34, 36, 38, and 40–42 are anticipated by Dierker.
The Examiner finds that Dierker discloses a composition comprising
UV protecting components such as metal oxides, biogenic material such as
DNA, alginates, vitamins, and silicates. Ans. 8. The Examiner concludes
that the compositions of Dierker anticipate claims 22, 23, 28, 29, 31, 32, 34,
36, 38, and 40–42. Id.
Appellant contends that although Dierker teaches the inclusion of
DNA and other compounds, there are part of a laundry list of compounds
that may be included in the composition. Reply Br. 7. Appellant also
contends that the composition of Dierker are merely a mixture of
components and that the DNA is not bound to the other components. Id.
We have considered the arguments presented by the Examiner and
Appellant and concluded that Appellant has the better position. To establish
anticipation, every element and limitation of the claimed invention must be
found in a single prior art reference, arranged as in the claim. Karsten Mfg.
Corp. v Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed Cir. 2001). Although
Dierker discloses each of the elements of the claims, we do not find that they
are arranged as in the claims. Dierker teaches that the different elements
may be used in the final composition, but there is not teaching of a
composition which contains all of the recited elements. Therefore, Dierker
does not anticipate the claims.

Li
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The issue with respect to this rejection is whether a preponderance of
the evidence supports the Examiner’s conclusion that claims 22–24, 28, 29,
31–34 and 36–43 are anticipated by Li.
The Examiner finds that Li discloses a composition which can be used
as a UV absorber to prevent genetic damage. Ans. 8. The Examiner finds
that Li discloses the use of nucleic acids in the composition as well as other
UV absorbing materials such as zinc oxide, titanium oxide, and cellulose.
Id. The Examiner finds that Li teaches that the disclosed compositions
absorb UV radiation at a specific wavelength. Id.
Appellant contends that Li does not teach the use of at least one
electromagnetic radiation shielding nanoparticle bound to the nucleic acid.
Reply Br. 9.
We find that the Examiner has not established a prima facie case of
anticipation. “[T]he examiner bears the initial burden, on review of the
prior art or on any other ground, of presenting a prima facie case of
unpatentability. If that burden is met, the burden of coming forward with
evidence or argument shifts to the applicant.” In re Oetiker, 977 F.2d 1443,
1445 (Fed. Cir. 1992).
As noted above, anticipation requires that each and every element and
limitation of the claimed invention be found in a single prior art reference
and arranged as in the claim. Karsten, 242 F.3d at 1383. Although Li
discloses the different elements of the claims, nowhere does Li teach an
electromagnetic radiation shielding particle bound to the nucleic acid. The
evidence does not support a finding of anticipation.

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Lyles
Issue
The issue with respect to this rejection is whether a preponderance of
the evidence supports the Examiner’s conclusion that claims 22–24, 28, 29,
31–34, and 36–43 are anticipated by Lyles.
The Examiner finds that Lyles discloses a sunscreen formulation
comprising nucleic acids. Ans. 9. The Examiner finds that Lyles teaches
that the composition may also comprise of collagen, keratin, and polymers
comprising UV absorbing agents such as zinc oxide and titanium. Id. The
Examiner finds that the composition of Lyles absorbs UV radiation at
220nm to 400nm. Id.
Appellant contends that Lyles does not anticipate or teach that the
electromagnetic radiation shielding nanoparticle is bound to the nucleic acid.
Reply Br. 11.
As with Li above, we find that the Examiner has not presented a prima
facie case of anticipation based on Lyles. Although Lyles teaches the use of
the individual elements, Lyles does not disclose an electromagnetic radiation
shielding particle bound to a nucleic acid. See Lyles, col. 4, l. 58– col. 5, l.
3. Thus the evidence does not support a finding of anticipation.

OBVIOUSNESS
The issue with respect to this rejection is whether a preponderance of
the evidence supports the Examiner’s conclusion that the subject matter of
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claims 22–24, 28, 29, 31–34, and 36–43 would have been obvious over
Dierker combined with Li or Lyles.
The Examiner finds that Dierker teaches the elements of the claims a
recited above, with the exception of the concentrations recited in the
dependent claims. Ans. 9. The Examiner finds that Li and Lyles teach the
concentration of nucleic acids recited in the claims. Id. at 9–10. The
Examiner concludes,
It would have been obvious to one of ordinary skill in the
art at the time the invention was made to establish the
concentrations as taught by Lyles and Li et al with the
compositions of Dierker et al because Dierker et al teach that it
is within the ordinary skill of the art to and because Lyles and
Li et al teach that it is within the ordinary skill of the art to use
particular dilutions that are effective at blocking UV. One
would have been motivated to do so in order to receive the
expected benefit of using known concentrations that would
work effectively to block UV wavelengths. Based upon the
teachings of the cited references, the high skill of one of
ordinary skill in the art, and absent evidence to the contrary,
there would have been a reasonable expectation of success to
result in the claimed invention.

Id. at 10–11.
Appellant contends that the references do not teach or suggest all of
the limitations of the claims. Reply Br. 11–14. Specifically Appellant
contends that none of the references teach the inclusion of an
electromagnetic radiation shielding nanoparticle which is bound to the
nucleic acid. Id. at 14. Appellant argues that absent this element, the
resulting composition would not exhibit UV absorption over the claimed
range of UV radiation. Id.
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After considering the arguments presented by both the Examiner and
Appellant as well as the evidence of record, we find Appellant has the better
position. The Examiner has not pointed to any evidence of record nor have
we found any evidence that teaches or suggests that combining the elements
of the references would result in bonding between the nucleic acids and the
metal oxides.

Based on the evidence before us we conclude that a preponderance of
the evidence does not support the Examiner’s finding of obviousness.

SUMMARY
We affirm the rejection under 35 U.S.C. § 112, first paragraph.
We reverse the rejections under 35 U.S.C. § 102(b).
We reverse the rejection under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED