Ex Parte LIN et al

Patent Trial and Appeal Board

Jul 16, 2018

14060749 (P.T.A.B. Jul. 16, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
14/060,749
85937 7590
Boulware & Valoir
Tamsen Valoir
2603 Augusta Drive
Suite 1350
Houston, TX 77057
FILING DATE FIRST NAMED INVENTOR
10/23/2013 Ying-Ying LIN
07/18/2018
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.
COP:42166US 2438
EXAMINER
BLAND, ALICIA
ART UNIT PAPER NUMBER
1768
NOTIFICATION DATE DELIVERY MODE
07/18/2018 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):
patent@boulwarevaloir.com
nseigel@boulwarevaloir.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte YING-YING LIN, CORYBERKLAND, JENN-TAI
LIANG, AHMAD MORADI-ARAGHI, TERRY M.
CHRISTIAN, RILEY B. NEEDHAM, JAMES H. HEDGES,
MIN CHENG, FA YE L. SCULLY, AND DAVID R. ZORNES
Appeal2017-006188
Application 14/060,749
Technology Center 1700
Before TERRY J. OWENS, MONTE T. SQUIRE, and
LILAN REN, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1---6, 8, 9, 13-16, and 18-26. We have jurisdiction under
35 U.S.C. § 6(b).
The Invention
The Appellants claim compositions containing a polyelectrolyte
complex nanoparticle. Claim 1 is illustrative:
1. A composition comprising a polyelectrolyte complex
nanoparticle comprising a polyalkylenimine of less than 2000 Da and a
polyanion, said nanoparticle having a size of less than one micron.
Appeal2017-006188
Application 14/060,749
Berkland (Berkland '229)
Berkland (Berkland '578)
The References
US 2008/0058229 Al
US 2008/0223578 Al
The Rejection
Mar. 6, 2008
Sept. 18, 2008
Claims 1-6, 8, 9, 13-16, and 18-26 stand rejected under
35 U.S.C. § 103 over Berkland '229 in view ofBerkland '578. 1
OPINION
We reverse the rejection. We need address only the independent
claims (1, 14, 15, and 18-20). Those claims require a polyelectrolyte
complex nanoparticle comprising a polyalkylenimine ( claim 1) or
polyethylenimine ( claims 14, 15, and 18-20) of less than 2000 Da.
Berkland '229 exemplifies a polyelectrolyte complex nanoparticle
comprising a polyethylenimine of 10,000 Da (i-f 93) or 25,000 Da (i1i187, 93,
110).
The Examiner finds (Ans. 3):
Berkland discloses that varying the polyelectrolyte molar mass
and mass ratio of the polycation to polycation [ sic, polyanion]
resulted in direct control over the polymer complex diameter
and zeta potential (a measure of the charge of the complex).
Thus, Berkland teaches the MW and the ratio ofpolycation
(positive charge, PEI) to polyanion (which inherently changes
the overall amount of positive/negative charges) to be a result
effective variable, changing one or the other directly controls
the overall diameter and zeta potential.
The disclosure in Berkland '229 (i-f 85) and Berkland '578 (i-f 54) addressed
in that finding is:
1 The Examiner includes alternative primary references in the statement of
the rejection but does not apply them in a rejection (Ans. 2, 5). Accordingly,
we do not further discuss those references.
2
Appeal2017-006188
Application 14/060,749
Varying polyelectrolyte molar mass and the mass ratio of
polycation to dextran sulfate resulted in direct control over
polymer complex diameter and zeta potential including the
production of small ( about 100 to 300 nm, preferably about
200 nm) complexes. Exemplary data for chitosan paired with
dextran sulfate are shown in Fig. 1 ....
Based upon that finding, the Examiner concludes (Ans. 3--4):
It would have been obvious to one of ordinary skill in the art at
the time of the invention to include in Berkland '229 to
increase/decrease the molar mass (thus embracing the 2000 da
requirements) and to increase/ decrease the mass ratio of
polycation to polyanion (thus, embracing the predominance of
positive charge wherein PEI exceeds PVS [polyvinyl sulfonic
acid polyanion]) in order to control the final particle size and
charge.
The Appellants dispute the Examiner's finding that Berkland '229
discloses that changing the molar mass provides direct control over the
polymer complex's diameter and zeta potential, arguing that Berkland's
Figure 1 indicates that only the mass ratio, not the individual components'
molar masses, determines the polymer complex's diameter and zeta potential
(Reply Br. 2-3). Thus, we do not accept the Examiner's finding as fact. See
In re Kunzmann, 326 F.2d 424,425 n.3 (CCPA 1964).
The Examiner does not establish that the applied references would
have suggested, to one of ordinary skill in the art, varying Berkland '229's
polyethylenimine's molar mass to control the polymer complex's diameter
and zeta potential, let alone varying it to a value less than 2000 Da. Thus,
the record indicates that the Examiner's rejection is based upon
impermissible hindsight in view of the Appellants' disclosure. See In re
Warner, 379 F.2d 1011, 1017 (CCPA 1967) ("A rejection based on section
103 clearly must rest on a factual basis, and these facts must be interpreted
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Appeal2017-006188
Application 14/060,749
without hindsight reconstruction of the invention from the prior art").
Accordingly, we reverse the rejection.
DECISION
The rejection of claims 1---6, 8, 9, 13-16, and 18-26 under
35 U.S.C. § 103 over Berkland '229 in view ofBerkland '578 is reversed.
The Examiner's decision is reversed.
REVERSED
4