Ex Parte Bangera et al

Patent Trial and Appeal Board

Aug 5, 2016

12322367 (P.T.A.B. Aug. 5, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/322,367 0113012009
44765 7590 08/09/2016
INTELLECTUAL VENTURES - ISF
ATTN: DOCKETING, ISF
3150 - 139th Ave SE
Bldg.4
Bellevue, WA 98005
FIRST NAMED INVENTOR
Mahalaxmi Gita Bangera
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.
0206-004-001-COOOOl 7581
EXAMINER
LEONARD, ARTHURS
ART UNIT PAPER NUMBER
1633
NOTIFICATION DATE DELIVERY MODE
08/09/2016 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):
ISFDocketlnbox@intven.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MAHALAXMI GITA BANGERA, ED HARLOW,
RODERICK A. HYDE, MURIEL Y. ISHIKAWA,
EDWARD K. Y. JUNG, ERIC C. LEUTHARDT,
NATHAN P. MYHRVOLD, DENNIS J. RIVET,
ELIZABETH A. SWEENEY, CLARENCE T. TEGREENE,
LOWELL L. WOOD, JR., and VICTORIA Y. H. WOOD. 1
Appeal2014-006769
Application 12/322,367
Technology Center 1600
Before LORA M. GREEN, FRANCISCO C. PRATS, 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
devices and methods for providing a tubular nanostructure in a lipid bilayer
membrane which have been rejected obvious. We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.
1 Appellants identify the real party in interest as Searete LLC. Appeal Br. 4.
Appeal2014-006769
Application 12/322,367
STATEMENT OF THE CASE
The invention related to devices and methods for inserting a tubular
nanostructure into a lipid bilayer membrane to form a pore in the membrane.
Spec. 2-3. The pore allows transport of a compound across the membrane
which, in tum, can cause death of a target cell. Spec. 3.
Claims 95-99, 110-118, 120, 121, 123, 125-127, 129-131, 133, 135-
143, 145, 147-149, 151-1532, 155, 157-166 are on appeal. 3 Claim 95 is
illustrative and reads as follows:
95. A method for providing a stable pore in a lipid bilayer
membrane comprising: positioning one or more elements at
one or more of an intracellular end and an extracellular end
of a tubular nanostructure, positioning the tubular
nanostructure across a lipid bilayer membrane, wherein the
tubular nanostructure includes a hydrophobic surface region
flanked by two hydrophilic surface regions configured to
form a pore in the lipid bilayer membrane and including at
least one ligand configured to bind one or more cognates on
the membrane, and reversibly blocking the pore with the one
or more elements to control transport of molecules through
the tubular nanostructure.
2 Both the Examiner and Appellants list claim 150 as being subject to
appeal, Ans. 2, Appeal Br. 13, yet the Claims Appendix and the Final Action
indicate the claim 150 was cancelled. Appeal Br. 49, Final Act. 2. A review
of the prosecution history reveals that claim 150 was cancelled and is not on
appeal. Amendment filed Sep. 20, 2012.
3 Claims 124, 132, 134, 146, 154, and 156 are also pending, but stand
withdrawn from consideration. Ans. 2.
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Appeal2014-006769
Application 12/322,367
The claims stand rejected as follows:
Claims95-97, 110, 111, 114--117, 120, 121, 123, 125, 126, 131, 139-
143, 145, 147, 148, 153, 160-1624, 164, and 166 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Klein et al. (US 2004/0023372 Al;
published Feb. 5, 2004) ("Klein") in view of Ambudkar et al. (A novel way
to spread drug resistance in tumor cells: functional intercellular transfer of
P-glycoprotein (ABCBJ), 26 TRENDS IN PHARMACOLOGICAL SCIENCES 385
(2005)) ("Ambudkar").
Claims 98, 99, 112, 113, and 118 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Klein in view of Ambudkar in further view of
Kam et al. (Carbon nano tubes as multifunctional biological transporters
and near-infrared agents for selective cancer cell destruction, 102 PROC.
NAT'L ACAD. SCI. 11600 (2005)) ("Kam").
Claims 127, 130, 133, 149, 152, and 155 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Klein in view of Ambudkar in
further view of Elkin et al. (Immuno-Carbon Nanotubes and Recognition of
Pathogens, 6 CHEMBIOCHEM 640 (2005)) ("Elkin").
Claims 129, 151, 163, and 165 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Klein in view of Ambudkar in further review
ofKomeva et al. (Carbon Nanotubes Loaded with Magnetic Particles, 5
NANO LETTERS, 879 (2005)) ("Komeva").
4 Appellants' Appeal Brief lists the rejected claims as including claims 160-
162, Appeal Br. 15, while the Examiner's Answer list only claims 161 and
162. Ans. 2. The Final Action lists the rejected claims as including claim
160. Final Act. 3.
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Appeal2014-006769
Application 12/322,367
Claims 135-138 and 157-1595 stand rejected under 35 U.S.C. §
103(a) as unpatentable over Klein in view of Ambudkar in further view of
Didenko et al. (Horseradish peroxidase-driven fluorescent labeling of
nanotubes with quantum dots, 40 BIOTECHNIQUES 295 (2006)) ("Didenko").
DISCUSSION
Issue
In rejecting the pending claims, the Examiner finds that Klein teaches
a method for providing "tubular nanostructure comprising a hydrophobic
surface region flanked by two hydrophilic surface regions to form a pore in a
lipid bilayer membrane and a ligand to bind one or more cognates." Final
Act. 3. The Examiner acknowledges that Klein does not teach that one or
more elements are at the end of the tube and that the elements reversibly
block the port to control transport. Final Act. 4. The Examiner finds that
Ambudkar teaches the use of tunneling nanotubes to transfer membrane
proteins to a variety of cells. Final Act. 7. The Examiner finds that
Ambudkar teaches using ATP dependent drug effect pump ABCB 1 to
decrease cellular accumulation of anticancer drugs. Id. The Examiner,
therefore, finds that Ambudkar teaches "elements (ATP dependent drug
efflux pump ABCB 1) which are on the extracellular end of the nanostructure
as these elements are used to transport to the extracellular space." Id. The
Examiner concludes that "it would be prima facie obvious to one of ordinary
5 Appellants' Appeal Brief lists the rejected claims as claims including
claims 157-159, Appeal Br. 49, whereas the Examiner's Answer lists claims
157-160. Ans. 14. The Final Action show the rejection to include only
claims 157-159.
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Appeal2014-006769
Application 12/322,367
skill in the art to modify the method of Klein et al. such that the tubular
nanostructure is modified for elements includes an ATPase transport element
(an extracellular element)." Final Act. 8.
Appellants contend that the Examiner has not established that the
references are properly combinable in that Klein refers to a stable nanometer
pore whereas Ambudkar refers to a short-lived tunneling nanotube. Appeal
Br. 27-28. Appellants also argue that the Examiner failed to provide a
proper motivation to combine the references. Appeal Br. 29-30. Appellants
also contend that the Examiner used impermissible hindsight to combine the
references. Appeal Br. 30-33. Appellants conclude by arguing that Klein
does not teach all the elements of the claims in that Klein does not teach or
suggest the use of one or more elements that control the transport of
molecules through the tubular nanostructure and that reversibly block the
pore of the tubular nanostructure. Appeal Br. 33-34.
The issue presented is whether the Examiner has established by a
preponderance of the evidence that the pending claims would have been
obvious in view of Klein combined with Ambudkar or Klein, combined with
Ambudkar and Kam, Elkins, Komeva or Didenko as defined by 35 U.S.C.
§ 103(a).
Findings of Fact
FF 1. Klein teaches providing "a tubular nanostructure for providing a
stable, nanometer-sized pore across a lipid bilayer membrane comprising a
tubular body having a hydrophobic region flanked by hydrophilic regions."
Klein i-f 10.
FF2. The pores of Klein are capable of transporting molecules across
the membrane. Klein i-f 29.
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Appeal2014-006769
Application 12/322,367
FF3. Ambudkar teaches that multidrug resistance can minimize the
effectiveness of chemotherapy. Ambudkar, Abstract.
FF4. According to Ambudkar, such resistance may be attributed to
elevated expression of ATP-dependent drug-efflux pump ABCB 1, and a
naive cancer cell may increase the expression of AB A Cb 1 by accepting it
from a donor cell. Ambudkar 385, Figure l(d).
FF5. Ambudkar discloses use of tunneling nanotubes to transfer
membrane proteins between cells. Ambudkar, Fig. 1 ( d).
FF6. Ambudkar discloses that the tunneling nanotube may be one
pathway for transferring the ATP-dependent drug-efflux pumps between
cells. Ambudkar, 385-386.
Principles of Law
Obviousness is not established where the Patent Office "has not
shown the existence of all of the claimed limitations in the prior art or any
suggestion leading to their combination in the manner claimed by
appellants." In re Ehrreich, 590 F.2d 902, 910 (CCPA 1979).
Analysis
Claims 95, 110, and 116 are independent claims, and contain the
limitation of"reversibly blocking the pore with one or more of the one or
more elements to control transport of molecules through the tubular
nanostructure." Appeal Br. 54--56 (Claims Appendix). The remaining
claims depend from claims 95, 110, or 116. Appeal Br. 54--60 (Claims
Appendix). We agree with Appellants that a preponderance of the evidence
does not support the Examiner's prima facie case of obvious as the cited
references fail to teach or suggest all the limitations of the pending claims.
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Application 12/322,367
Specifically, the Examiner has offered no evidence that either Klein or
Ambudkar teach or suggest "reversibly blocking the pore with the one or
more elements to control transport of molecules through the tubular
nanostructure."
The Examiner refers to Figure 1 d of Ambudkar to support for the
proposition that Ambudkar teaches a method of controlled and reversible
transport of molecules between cells using tubular nano structures. Ans. 9.
Thus, according to the Examiner, Ambudkar teaches "a method of controlled
and reversible transport of molecules between cells using tubular
nanostructures." Ans. 9. We are unpersuaded. The limitation at issue calls
for "reversibly blocking the pore with the one or more elements." Appeal
Br. 54 (Claims Appendix). The Examiner has not cited to anything in
Ambudkar that teaches or suggests this limitation. We do not agree that the
creation and collapse of an intercellular tube discussed by the Examiner
(Ans. 9), teaches the use of elements to reversibly block a tubular
nano structure.
The Examiner argues that Klein teaches the limitation of "reversibly
blocking the pore with the one or more elements to control transport of
molecules through the tubular nanostructure." Ans. 16. The Examiner finds
that Klein teaches the presence of escort lipids which act to "occlude the
nanostructure end" preventing the nanotube from being clogged by the
membrane lipids during the insertion process. Id. We agree with Appellants
that the escort lipids of Klein do not satisfy the limitation. Reply Br. 3--4.
As the Examiner noted, the escort lipids only occlude the nanotube during
the insertion process. Ans. 16. Klein teaches that after insertion, the escort
lipids detach from the hydrophilic region of the nanotube and become
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Application 12/322,367
incorporated into the membrane. Klein if 29. Thus, the escort lipids are not
present at the nanotube to reversibly block the pore to control transport
through the nanostructure. Reply Br. 3--4.
Turning to the tertiary references, the Examiner has not pointed to
anything in Kam, Elkins, Komeva or Didenko that teaches or suggests
reversibly blocking the pore with one or more elements.
Conclusion of Law
We conclude that the Examiner has failed to establish by a
preponderance of the evidence that the pending claims would have been
obvious in view of Klein combined with Ambudkar or Klein combined with
Ambudkar and Kam, Elkins, Komeva or Didenko as defined by 35 U.S.C.
§ 103(a).
DECISION
We reverse the rejection of claims 95-99, 110-118, 120, 121, 123,
125-127, 129-131, 133, 135-143, 145, 147-153, 155, 157-159,and 160-
166.
REVERSED
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