Ex Parte Dunfield et al

Patent Trial and Appeal Board

Mar 8, 2016

12551134 (P.T.A.B. Mar. 8, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/551,134 08/31/2009
22879 7590 03/10/2016
HP Inc,
3390 E. Harmony Road
Mail Stop 35
FORT COLLINS, CO 80528-9544
FIRST NAMED INVENTOR
JOHN STEPHEN DUNFIELD
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.
82087571 2154
EXAMINER
KISHORE, GOLLAMUDI S
ART UNIT PAPER NUMBER
1612
NOTIFICATION DATE DELIVERY MODE
03/10/2016 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):
ipa.mail@hp.com
barbl@hp.com
yvonne.bailey@hp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN STEPHEN DUNFIELD and JAMES W. AYRES 1
Appeal2013-009691
Application 12/551,134
Technology Center 1600
Before ERIC B. GRIMES, JEFFREY N. FREDMAN, and
RICHARD J. SMITH, Administrative Patent Judges.
GRIMES, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a method
of making a microemulsion, which have been rejected as indefinite and
obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
STATEMENT OF THE CASE
The Specification states that the "invention is drawn to fluid-jet pens
configured for making liposome- and emulsion-containing bioactive agents."
(Spec. 1: 10-11.) The Specification states:
1 Appellants identify the Real Party in Interest as Hewlett-Packard
Development Company, LP. (Appeal Br. 3.)
Appeal2013-009691
Application 12/551,134
"Fluid-jet pen" includes pen architecture that is
substantially similar or the same as that found in the ink-jet arts.
Thermal-ink-jet pens or piezo-ink-jet pens provide such
examples. The reason the term "fluid-jet pen" is used rather than
"ink-jet pen" is because the pens used in accordance with the
present invention are optimized for emulsion/microemulsion or
liposome jetting and/or production .... No ink per se is typically
jetted, though ink may be included as a marker in a formulation
along with bioactive material.
(Id. at 7:31 to 8:8.)
Claims 1---6, 8-10, and 12-25 are on appeal. Claims 1 and 22 are
illustrative and read as follows:
1. A method of preparing a bioactive agent-
containing emulsion for delivery to a biological system,
comprising jetting:
(a) a bioactive agent, and
(b) a first fluid medium,
from a fluid-jet pen into a second fluid medium to form a
bioactive agent-containing microemulsion, wherein the second
fluid comprises a continuous phase of the microemulsion.
22. A method as in claim 1, wherein the second fluid is
within a second fluid-jet pen, said second fluid-jet pen being
configured for firing the microemulsion to a carrier medium.
The claims stand rejected as follows:
Claims 22-25 under 35 U.S.C. § 112, second paragraph, as indefinite
(Ans. 3);
Claims 1---6, 10, and 17 under 35 U.S.C. § 102(b) as anticipated by
Shechter2 (Ans. 3);
2 US 5,720,551, issued Feb. 24, 1998.
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Application 12/551,134
Claims 1---6, 8-10, and 12-25 under 35 U.S.C. § 103(a) as obvious
based on Shechter alone or combined with Fukui3 (Ans. 4);
Claims 1---6, 8-10, and 12-25 under 35 U.S.C. § 103(a) as obvious
based on Stimpson4 and Shechter (Ans. 6); and
Claim 20 under 35 U.S.C. § 103(a) as obvious based on either
Shechter alone or combined with Fukui, or Stimpson and Shechter, further
combined with Orban5 (Ans. 7).
I
The Examiner has rejected claims 22-25 as indefinite. The Examiner
finds that claim 22 and the claims that depend from it are confusing because
"[a]ccording to claim 22, the second fluid is within a second fluid jet pen
and said second fluid-jet pen being configured for firing the emulsion to a
carrier medium. If the second jet pen has only second fluid, it can't be an
emulsion, so this is inconsistent with claim 1." (Ans. 3.)
We agree with Appellants, however, that claim 22 is clear in requiring
that "as the first fluid is jetted from the fluid-jet pen recited in claim 1 into
the second fluid (which is now located inside a second fluid-jet pen) a
microemulsion forms. The microemulsion is now jetted from the second
fluid-jet pen." (Appeal Br. 11-12.) We therefore reverse the rejection under
35 U.S.C. § 112, second paragraph.
3 US 2003/0044454 Al, published Mar. 6, 2003.
4 Donald I. Stimpson et al., Parallel Production of Oligonucleotide Arrays
Using Membranes and Reagent Jet Printing, 25 BioTechniques 886 (1998).
5 US 2003/0045467 Al, published Mar. 6, 2003.
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Application 12/551,134
II
The Examiner has rejected claims 1---6, 10, and 17 as anticipated by
Shechter. The Examiner finds that Shechter "discloses a fluid jet system for
the production of emulsions and liposomes containing pharmaceuticals and
others. The apparatus contains two liquids, which mix and form [ ]
emulsions." (Ans. 4.)
Appellants argue that Shechter contains "no disclosure regarding the
use of a 'fluid-jet pen' as defined by Appellants." (Appeal Br. 16.)
Appellants argue that the Specification states that "such fluid-jet pens are
substantially similar to ink-jet pens as found in the ink-jet arts but are
optimized for emulsions/liposome/microemulsion jetting and/or production
rather thanjetting ink." (Id.)
We agree with Appellants that the Examiner has not shown that
Shechter discloses a process meeting all of the limitations of claim 1, which
requires jetting a bioactive agent and fluid medium from a fluid-jet pen into
a second fluid medium. The Examiner finds that Shechter discloses a fluid-
jet pen because "[t]he reference discloses ajet pen which contains fluid and
therefore, it is a fluid jet pen given the broadest interpretation of the claims."
(Ans. 8.) However, claims are not given their "broadest interpretation" per
se but "their broadest reasonable interpretation consistent with the
specification." In re Hyatt, 211F.3d1367, 1372 (Fed. Cir. 2000).
Here, the Specification states that a "fluid-jet pen," as recited in claim
1, has a "pen architecture that is substantially similar or the same as that
found in the ink-jet arts." (Spec. 7:31-32.) Shechter discloses a method of
emulsification in which "a jet of fluid is directed along a first path, and a
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Application 12/551,134
structure is interposed in the first path to cause the fluid to be redirected in a
controlled flow along a new path, the first path and the new path being
oriented to cause shear and cavitation in the fluid." (Shechter 2:31-36.)
Shechter also discloses a "method for use in causing emulsification of a first
fluid component within a second fluid component. In the method, an
essentially stagnant supply of the first fluid component is provided in a
cavity. Ajet of the second fluid component is directed into the second fluid
component." (Id. at 2:67 to 3:4.)
However, the Examiner has not pointed to any disclosure in Shechter
of jetting a fluid, whether or not it contains a bioactive agent, from a pen that
has an architecture that is substantially similar to, or the same as, an ink-jet
pen. Thus, the Examiner has not pointed to evidence that is adequate to
support a finding that Shechter discloses a method meeting all of the
limitations of claim 1 on appeal. See In re Skvorecz, 580 F.3d 1262, 1266
(Fed. Cir. 2009) ("Anticipation requires that all of the claim elements and
their limitations are shown in a single prior art reference.")
We therefore reverse the rejection of claim 1, and dependent claims
2---6, 10, and 17, as anticipated by Shechter.
III
The Examiner has rejected all of the claims on appeal as obvious
based on Shechter alone or combined with Fukui. (Ans. 4.) The Examiner
has also rejected claim 20 as obvious based on Shechter alone or combined
with Fukui, further combined with Orban. (Id. at 7.) In both rejections,
however, the Examiner relies on Shechter as disclosing the limitations of
claim 1, and cites Fukui only for teaching that "in an emulsion composition[]
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the hydrophilic agents are in the aqueous medium and the lipophilic agents
are in the oil phase." (Id. at 5, 7.) As discussed above, however, the
Examiner has not pointed to evidence showing that Shechter discloses a
"fluid-jet pen" as required by claim 1, under the broadest reasonable
interpretation of that term consistent with the Specification. We therefore
reverse the rejections under 35 U.S.C. § 103(a) based on Shechter alone or
combined with Fukui, or further combined with Orban.
IV
The Examiner has rejected all of the claims on appeal as obvious
based on Stimpson and Shechter. (Ans. 6.) The Examiner has also rejected
claim 20 as obvious based on Stimpson and Shechter, further combined with
Orban. (Id. at 7.) The Examiner finds that "Stimpson teaches the use of
piezo jetting apparatus for jetting DNA solutions." (Id. at 6.) The Examiner
finds that Stimpson does not teach "the use of the jetting pen for the
preparation and jetting of one phase into another phase to form emulsions
[or] micro emulsions" but concludes that "one of ordinary skill in the art
would be motivated to use the jetting pen of Stimpson for the preparation of
an emulsion by jetting since the reference of Schechter [sic] teaches that
fluid jet apparatus can be used to prepare pharmaceutical containing
emulsions and micro emulsions." (Id.)
Appellants argue that "Stimpson discloses jetting biological materials
to form arrays" and "jetting an aqueous medium onto a solid substrate does
not inherently form an emulsion." (Appeal Br. 23.) Appellants argue that
"the Examiner has provided no apparent reasoning why one skilled in the
biological arts would attempt emulsion formation based on Schechter [sic]."
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(Id.) Appellants maintain that, "based on the teachings of the present
references, one skilled in the art tasked with making a microemulsion would
not start with or use the teachings of Stimpson since Stimpson is not directed
at forming microemulsions." (Id. at 24.)
We agree with Appellants that the Examiner has not shown that it
would have been obvious to a person of ordinary skill in the art to combine
the teachings of Stimpson and Shechter. Stimpson discloses a method of
producing oligonucleotide arrays "using microporous materials and reagent
jetting." (Stimpson 886, abstract.) Stimpson states that "Li]etting was
carried out using piezoelectric (PZT) actuated delivery [] and thermal ink-jet
printing." (Id. at 886, right col.) "For PZT printing, the oligonucleotides
were diluted ... [and] loaded into the jet head. Jetting rates for PZT inkjet
printing were about 0.1 µLiem." (Id. at 886-887.)
Thus, Stimpson discloses using an ink jet pen, which Appellants'
Specification states is substantially the same as the "fluid-jet pen" recited in
the claims, to jet oligonucleotides onto a solid support to form microarrays.
Stimpson does not, however, disclose making an emulsion by jetting a
mixture of a bioactive agent and a fluid medium into another fluid medium.
As Appellants point out, Shechter also does not disclose using a fluid-jet pen
to form an emulsion.
In addition, Shechter describes particular chamber arrangements, and
states that temperatures and jet velocities are chosen to allow cavitation for
microemulsion formation. (Sheeter 3:3-15.) Stimpson does not suggest
modifying any of these parameters and, therefore, the pens of Stimpson and
Schecter do not appear to be obvious equivalents. Thus, we cannot agree
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with the Examiner's conclusion that it would have been obvious to combine
the methods disclosed by Stimpson and Shechter to derive a method of
making an emulsion by jetting a fluid medium containing a bioactive agent
from a fluid-jet pen into a second fluid medium, as required by claim 1 on
appeal.
SUMMARY
We reverse all of the rejections on appeal.
REVERSED
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