Ex Parte Chu et al

Patent Trial and Appeal Board

Jun 29, 2018

13321998 (P.T.A.B. Jun. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/321,998 02/03/2012
26712 7590 07/03/2018
HODGSON RUSS LLP
THE GUARANTY BUILDING
140 PEARL STREET
SUITE 100
BUFFALO, NY 14202-4040
FIRST NAMED INVENTOR
Chih-Chang Chu
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.
018617.00349 6992
EXAMINER
KAHN, RACHEL
ART UNIT PAPER NUMBER
1766
NOTIFICATION DATE DELIVERY MODE
07 /03/2018 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):
ipdocketing@hodgsonruss.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHIH-CHANG CHU and XUAN PANG 1
Appeal2017-003744
Application 13/321,998
Technology Center 1700
Before BEYERL YA. FRANKLIN, N. WHITNEY WILSON, and
WESLEY B. DERRICK, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellants identify the real party in interest as Cornell University. Appeal
Br. 2.
Appeal2017-003744
Application 13/321,998
Appellants request our review under 35 U.S.C. § 134 of the
Examiner's decision rejecting claims 1-3 and 6-8. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b).
STATEMENT OF THE CASE
Claim 1 is illustrative of Appellants' subject matter on appeal and is
set forth below:
1. A polymer having the following structure comprising an [AA ]m
block and [PXLl]n or [PXL2]n block:
+-AA 1 r PXLI or PXL2 l J:T h
wherein
AA= ~o
0
l __...o o~R -l-
r N~ T (eJ; N H H
0 0
and
PXL 1 = r li. JI l ~o o, ~. l 1 \"-J:. '-._N,,. ll t1:t 1f -~-+
H O 0
and
0 0 R' 0 O
PXL2 = r)l ~ N)y~~ jL~ _ J -~+ 1 \"'}t ..... H RIR' 0 uO/ Y
O . R/R'
wherein the [AA]m block and [PXLl]n or [PXL2]n blocks are connected by
an amide bond,
wherein R is a side chain of a naturally-occurring amino acid,
wherein R' is an alkyl group comprising an alkene group,
wherein L = CH2, CH2-CH2 or CH2-(CH2-0-CH2)k-CH2 and k is from 1 to 6;
wherein r and v and t are from 2 to 8,
wherein s and w and u are from 2 to 6, and
wherein the ratio of m to n is from 1 to 4.
2
Appeal2017-003744
Application 13/321,998
The Examiner relies on the following prior art references as evidence
of unpatentability:
Pacetti et al. US 2005/0265960 Al Dec. 1, 2005
(hereinafter "Pacetti")
Zhang et al. WO 2007 /035938 A2 Mar. 29, 2007
(hereinafter "Zhang")
Guinn et al., Synthesis and Characterization of Polyamides Containing
Unnatural Amino Acids, 35 Biopolymers 503-512 (1995) (hereinafter
"Guinn").
Nicholson, Cross linking, The Chemistry of Polymers, 254---65
(RSC Publishing 3d ed. 2006) (hereinafter "Nicholson").
THE REJECTIONS
1. Claims 1, 3, and 6-8 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Pacetti in view of Guinn and Nicholson.
2. Claim 2 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Pacetti in view of Guinn and Nicholson and further in view of Zhang.
ANALYSIS
To the extent that Appellants have presented substantive arguments
for the separate patentability of any individual claims on appeal, we will
address them separately consistent with 37 C.F.R. § 41.37(c)(l)(iv).
Upon consideration of the evidence on this record and each of the
respective positions set forth in the record, we find that the preponderance of
evidence on this record supports the Examiner's findings and conclusion that
the subject matter of Appellants' claims is unpatentable over the applied art.
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Application 13/321,998
Accordingly, we sustain each of the Examiner's rejections on appeal for
essentially the reasons set forth in the Non-final Office Action dated
December 9, 2014 (to which the Final Office Action refers), in the Answer,
and below.
Rejection 1
Appellants present several lines of argument throughout the Appeal
Brief. Appellants submit that it would not have been obvious to have
selected a species from the enormous genus of Pacetti without further
motivation. Appellants also argue that the rejection lacks a viable
motivation to combine Pacetti and Guinn. Appellants also argue that the
teachings of Pacetti fail to provide a reasonable expectation of success in
making the polymers cited in the Non-final Office Action dated December 9,
2014. For each line of argument, we essentially agree with the Examiner's
statement of response made on pages 3-9 of the Answer, which we
incorporate herein in conjunction with the following analysis.
With regard to species-genus argument, this argument is presented on
pages 4--9 of the Appeal Brief, which we do not repeat herein. We are in
agreement with the Examiner's position as presented in the Office Action
mailed on December 9, 2014, and in the Examiner's response to argument
beginning on pages 3-5 of the Answer. Therein, the Examiner adequately
explains how Appellants' arguments that 1) the genus of the polymer
structures in Pacetti is "enormous", and that 1) one would not identify the
claimed polymers from the genus in Pacetti, are unpersuasive. See In re
Corkill, 771F.2d1496, 1500 (Fed. Cir. 1985) (an obviousness rejection of
claims affirmed in light of prior art teaching that "hydrated zeolites will
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Appeal2017-003744
Application 13/321,998
work" in detergent formulations, even though "the inventors selected the
zeolites of the claims from among 'thousands' of compounds"); In re Susi,
440 F.2d 442, 445 (CCPA 1971) (obviousness rejection affirmed where the
disclosure of the prior art was "huge, but it undeniably include[ d] at least
some of the compounds recited in appellant's generic claims and [was] of a
class of chemicals to be used for the same purpose as appellant's
additives"). 2 Also, the Examiner's findings involve an embodiment of a
smaller subgenus taught by Pacetti, such that the claimed species need not be
selected from an "enormous genus" as Appellants' argue. See Ans. 3--4.
Appellants' further arguments that the Examiner erred in focusing on
paragraphs 40 and 46 of Pacetti are unpersuasive because the teaching of
prior art extends to all that is disclosed, and is good for all that it would have
fairly suggested to one of ordinary skill in the art at the time of the
invention. Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir.
1989) (internal quotations omitted); In re Boe, 355 F.2d 961, 965 (CCPA
1966) (All of the disclosures in a prior art reference "must be evaluated for
what they fairly teach one of ordinary skill in the art."). This teaching from
Pacetti includes polymers formed from use of a relatively limited number of
diacid and diol monomers. That is, Pacetti teaches a subgenus, even if it
also teaches many other polymers.
With regard to whether there is sufficient motivation for making the
proposed selection, we are unpersuaded of reversible error because Pacetti
teaches use of all its polymers, including those of the subgenus, and the issue
is rather whether the subgenus sufficiently identifies encompassed species,
2 On pages 2--4 of the Reply Brief, Appellants further argue the "enormous
genus" set forth in Pacetti, which is equally unpersuasive.
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Appeal2017-003744
Application 13/321,998
and that these are suitable for use. See In re Petering, 301F.2d676, 681-82
(CCPA 1962) (finding a prior art reference disclosing not only a broad class,
but a more limited class of compounds sufficient to render claims
unpatentable under§ 103). Contrary to Appellants' position, it is not
necessary that those of the subgenus, as defined by paragraphs 40 and 46,
are more suitable than those of the genus generally. While cast inaptly as
pursuing "known potential solutions with a reasonable expectation of
success" (Ans. 4--5), the Examiner's determination that use of the subgenus
would have been obvious is not shown to be harmful error because
Appellants fail to show Pacetti does not teach the relied on subgenus.
With regard to the argument that the rejection lacks viable motivation
to combine Pacetti and Guinn as presented on pages 10-12 of the Appeal
Brief, 3 we are unpersuaded by such argument for the reasons provided by
the Examiner on pages 6-8.
With regard to the argument4 that the teachings of Pacetti fail to
provide a reasonable expectation of success in making the polymers cited in
the Office Action mailed December 9, 2014, we agree with the Examiner's
stated position as set forth on page 8 of the Answer.
In view of the above, we affirm each rejection.
3 Appellants further discuss this argument on pages 4--5 of the Reply Brief.
4 Appellants further discuss this argument on page 5 of the Reply Brief.
Appellants argue that when the Examiner refers to paragraph [0072] of
Pacetti, the Examiner is not considering the reference as a whole. This
argument is not persuasive, for the reasons discussed, supra, regarding that
Pacetti' s teaching of an embodiment pertaining to a subgenus is sufficient.
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DECISION
Each rejection is affirmed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a).
ORDER
AFFIRMED
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