Ex Parte Mulqueen et al

Patent Trials and Appeals Board

Apr 19, 2019

14130848 - (D) (P.T.A.B. Apr. 19, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/130,848 03/27/2014
153842 7590 04/23/2019
Dinsmore & Shohl LLP
801 Pennsylvania Avenue, N.W.
Suite 610
Washington, DC 20004
FIRST NAMED INVENTOR
Patrick Joseph Mulqueen
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.
SYG-0123PA
(115701-124)
CONFIRMATION NO.
8988
EXAMINER
PEEBLES, KATHERINE
ART UNIT PAPER NUMBER
1617
NOTIFICATION DATE DELIVERY MODE
04/23/2019 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):
vrodwell@dinsmore.com
dcipdocket@dinsmore.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PA TRICK JOSEPH MULQUEEN, NIALL RAE THOMSON,
SIMON RICHARD BIGGS, NELLY CHAGNEUX, MATHIEU EDMOND
RENE DUBOIS, PRODIP SARKER, and SHANE SCANLON
Appeal2018-008710
Application 14/130,848
Technology Center 1600
Before ULRIKE W. JENKS, TIMOTHY G. MAJORS, and
MICHAEL A. VALEK, Administrative Patent Judges.
VALEK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants submit this appeal 1 under 35 U.S.C. § 134 involving
claims to a micelle-coated organic crystalline agrochemical particle, which
have been rejected as obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
Claims 1 and 4--14 are on appeal, and can be found in the Claims
1 Appellants identify the real party in interest as Syngenta Crop Protection,
LLC. App. Br. 3. Herein we refer to the Final Office Action mailed
October 23, 2017 ("Final Act."), Appeal Brief filed April 17, 2018 ("App.
Br."), and Examiner's Answer mailed June 4, 2018 ("Ans.").
Appeal2018-008710
Application 14/130,848
Appendix of the Appeal Brief. Claim 1 is the only independent claim. It
reads as follows:
1. A composition comprising:
an orgamc crystalline particle compnsmg an
agrochemical; and
micelles coating the particle, wherein the micelles
comprise an AB block copolymer, wherein the AB block
copolymer comprises:
(i) a first hydrophobic block A, wherein the first
hydrophobic block A is a homopolymer of an acrylate or
alkylacrylate monomer; a copolymer comprising two or three
different monomers selected from acrylate or alkylacrylate
monomers; a homopolymer of a styrenic derivative monomer;
a copolymer comprising two different monomers selected
from styrenic derivative monomers; a homopolymer of an
alkene or diene monomer; a copolymer comprising two
different monomers selected from alkene and diene
monomers; a homopolymer of a heterocyclic monomer; or a
random, alternating, gradient or block copolymer comprising
monomers selected from acrylate monomers, alkylacrylate
monomers, styrenic derivative monomers, alkene monomers
and diene monomers; and
(ii) either a second hydrophobic block B or a hydrophilic
block B having a different affinity than the block A for a
liquid medium in which the AB copolymers are dispersed
such that micelles are formed; and wherein the composition
is a sustained release composition.
App. Br. 20. Claims 6 and 7 are dependent from claim 1 and additionally
require that the micelles "have a largest dimension of from 3 to 500 nm" and
"each comprise from 10 to 1000 copolymer molecules" respectively.
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Application 14/130,848
Appellants seek review of the following obviousness rejections: 2
I. Claims 1, 4, 5, and 8-14 under 35 U.S.C. § 103 as unpatentable over
Caruso, 3 Addison, 4 and Speaker. 5
II. Claims 6 and 7 under 35 U.S.C. § 103 as unpatentable over Caruso,
Addison, Speaker, and Biggs. 6
Regarding the first rejection, Appellants argue claims 12-14 separately from
independent claim 1. Claims 12-14 additionally require a "chemical
contained in the core of the micelles" that is a "photoprotectant,"
"biologically active compound," or "adjuvant" respectively. Appellants do
not argue claims 4, 5, and 8-11 separately from claim 1 so those claims
stand or fall with claim 1. 37 C.F.R. § 41.37 (c)(l)(iv).
2 Appellants do not seek review of the provisional obviousness-type double
patenting rejection of claims 1 and 4--14 over claims 1-14 of co-pending
Patent Application No. 14/130,860. App. Br. 5, fn. 1; see also Final Act.
13-15. We therefore summarily affirm this rejection. See MPEP § 1205.02
("If a ground of rejection stated by the examiner is not addressed in the
appellant's brief, appellant has waived any challenge to that ground of
rejection and the Board may summarily sustain it, unless the examiner
subsequently withdrew the rejection in the examiner's answer.").
3 Frank Caruso et al., Microencapsulation of Uncharged Low Molecular
Weight Organic Materials by Polyelectrolyte Multilayer Self-Assembly,
Langmuir, Vol. 16, 8932-8936 (2000) ("Caruso").
4 Timothy Addison et al., Polymeric Microcapsules Assembled From a
Cationic/Zwitterionic Pair of Responsive Block Copolymer Micelles,
Langmuir, Vol. 26, 6281---6286 (2009) ("Addison").
5 Tully J. Speaker et al., U.S. Pat. 5,686,133, issued Nov. 11, 1997
("Speaker").
6 Simon Biggs et al., WO 2010/038046 Al, published April 8, 2010
("Biggs").
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Application 14/130,848
The issue for each of the above rejections is: Does the preponderance
of evidence of record support Examiner's conclusion that the cited prior art
renders obvious the claimed compositions?
Findings of Fact
FF 1. Caruso teaches microencapsulation of organic crystalline particles
using "electrostatic layer-by-layer deposition" to "form[] a multilayered
polymeric shell around the crystalline cores." Caruso 8932, Abst. According
to Caruso, "microcapsules have received considerable attention because of
their technological importance in the fields of medicine, pharmaceutics,
agriculture, and cosmetics" with "applications ... associated with the
controlled release of encapsulated active ingredients ( e.g., drugs, vaccines,
antibodies, hormones, pesticides, and fragrances) under well-defined
conditions." Id. at 8932, left column. Caruso teaches that the "concept of
using a solid core as a template on which to layer-by-layer assemble polymer
layers to effect encapsulation of the core material" is "a versatile means to
fabricate core-shell materials and to encapsulate biological macromolecules."
Id. at 8932, right column.
FF2. Caruso teaches "[t]wo uncharged microcrystalline substances, pyrene
(PYR) and fluorescein diacetate (FDA)" that were coated using the
techniques described therein. Caruso 8932, Abst. Caruso teaches that PYR
and FDA are "model ( drug) systems" used to demonstrate encapsulation of
"poorly water-soluble crystalline materials." Id. at 8932-8933; see also id. at
8936, right column ("The systems examined provide excellent model drug
release systems to study various parameters on the release rate of
encapsulated low molecular weight compounds.").
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FF3. Addison teaches "the preparation of hollow microcapsules with a
membrane constructed entirely from a cationic/zwitterionic pair of pH-
responsive block copolymer micelles" using a "layer-by-layer" deposition
approach. Addison 6281, Abst. Addison teaches that these microcapsules
are formed by depositing alternating layers of poly[2-( dimethylamino )ethyl
methacrylate-block-poly(2-( diethylamino )ethyl methacrylate )] (PDMA-
PDEA) and poly(2-( diethylamino )ethyl)methacrylate-block-poly(methacrylic
acid) (PDEA-PMAA) copolymer micelles onto a crystalline core comprising
calcium carbonate. Id.
FF4. Addison teaches that the calcium carbonate in the core is a "template"
on which the block copolymer micelles are deposited to form the
microcapsules. Addison 6281, Abst. Addison teaches that the calcium
carbonate core is dissolved after the microcapsule is formed so that the
microcapsule can be loaded with another molecule. Id. at 6285. For
example, Addison describes the loading of such capsules with "chrysoidine
dye" to demonstrate that "the copolymer chains retain their structuring
following dissolution of the particle template." Id. at 6284--85, Fig. 4.
FF5. Addison teaches that "block copolymer micelles," like those it
describes, "have potential applications in drug delivery, agrochemical
formulations, and personal care products" for the "triggered release of
encapsulated actives." Addison 6282, left column. In particular, Addison
teaches that its block copolymer micelles can be used to "load the same
hydrophobic active within a multilayered capsule membrane." Addison
6285, right column. According to Addison, "the flexibility of this method
should provide the opportunity to load alternate ( or fewer) layers, thereby
allowing release profiles ... to be further tuned." Id.
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FF6. Speaker teaches microcapsules comprising a polymer wall. Speaker
col. 2, 11. 44--54. Speaker teaches that these microcapsules provide for
"[s]ustained and/or controlled release formulations" of various active
ingredients in the core of the capsule. Id. at col. 16, 11. 39--40. In addition,
Speaker teaches that the core materials for such capsules include, inter alia,
"agricultural agents," "pesticides," and "photoprotective agents, which may
be employed as adjuvants." Id. at col. 13, 11. 9-17.
FF7. Biggs teaches the use of AB block copolymers as a surface treatment
to provide "functional benefits associated with easy-clean surface treatments
such as dirt-repellency, spot-free finishes and anti-fogging properties." Biggs
1. Biggs teaches that its AB block copolymers comprise "one or more
monomers" such as an "alkyl alkylacrylate" in a hydrophobic block A. Id. at
16. Biggs teaches a hydrophilic block B comprising monomers such as "2-
( diethyl amino) ethyl methacrylate," i.e., PDEA. Id. at 18.
FF8. Biggs teaches that such AB block copolymers tend to form micelles
having a diameter between 3 and 300 nm. Biggs 19, 21.
Analysis
I. Rejection of claims 1, 4, 5, and 8-14 as obvious over Caruso,
Addison, and Speaker
Examiner finds that Addison teaches all of the limitations of claim 1
other than the agrochemical in the core. Specifically, Examiner determines
that Addison's PDEA-PMAA copolymer micelles disclose the claimed AB
block polymer comprising a hydrophobic block A (PMAA) and a
hydrophilic block B (PDEA), as claimed. Final Act 5. Examiner
acknowledges that the calcium carbonate template taught in Addison is not
an organic crystalline agrochemical, but finds that it would have been
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obvious to apply Addison's coating technique to an organic crystalline
active agent core, like that taught in Caruso, to "take advantage of the
benefits disclosed by Addison ... including the ability to co-deliver an
additional active agent entrapped within the micelle core and the ability to
tailor active agent release .... " Id. at 6. Examiner further finds that both
Addison and Caruso teach "agricultural applications for their compositions"
and that Speaker teaches the use of polymer coatings to provide sustained
release of both drugs and agrochemicals. Id. Finally, regarding the
"sustained release" limitation of claim 1, Examiner determines that this term
is not defined in the Specification and no specific release profile is required
by the claims. Final Act. 12. Thus, Examiner finds that this limitation is
taught by all three references because the "release of any active agent from a
crystal that is coated with polymer would be delayed relative to an uncoated
crystal as the active agent must also pass through the polymer coating." Id.
at 7.
Appellants do not advance any specific argument contesting
Examiner's finding that Addison discloses the "AB block copolymer"
micelle and "sustained release" limitations recited in claim 1 in their appeal
brief. Instead, Appellants frame their arguments from the perspective of one
of skill beginning with the PRY and FDA coated particles taught in Caruso.
See generally App. Br. 10-14. Pointing to Examiner's stated rationale for
combining Addison and Caruso, Appellants contend that "given the teaching
of Caruso" one of skill "would be primarily concerned with improving the
water dispersibility of the pyrene or fluorescein diacetate microcrystals" and
not co-delivering an active agent from the micelle core or tailoring active
agent release. App. Br. 11. Therefore, urge Appellants, there is no teaching
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"that would have lead one skilled in the art to modify Caruso's disclosed
teaching by (1) replacing Caruso's encapsulation process with Addison's
micelle encapsulation process, and (2) replace Caruso's pyrene or
fluorescein diacetate microcrystals with an organic crystalline
agrochemical." App. Br. 12.
We are not persuaded by Appellants' arguments and agree with
Examiner's statement of the rejection and responses to Appellants'
arguments in both the Answer and Final Action, which we adopt and
incorporate by reference. We provide the following additional comments to
Appellants' arguments.
As Examiner notes, the rejection does not require that one begin with
the particular model systems, PYR and FDA, taught in Caruso. Ans. 14--15.
Addison teaches the AB block copolymer micelles in claim 1. FF3. "All
that is required [under the logic of Examiner's rejection] is to replace the
crystalline particle in Addison's coating method with another crystalline
particle that the prior art has shown to be amenable to polymer coating."
Ans. 16. As explained above, Addison teaches that the calcium carbonate in
their core is only a "template" that is dissolved so that the microcapsule can
be loaded with an active agent in its core. FF4. Caruso is likewise not
limited to a PYR and FDA core. Rather, it teaches that these are "model"
systems and that the techniques therein have broader application, including
for agrochemicals such as pesticides. FF1-FF2. Addison likewise teaches
that its micelles have application as coatings to control the release of
"agrochemical formulations." FF5. Accordingly, we determine that
Examiner has articulated a sufficient rationale as to why it would have been
obvious for a skilled artisan to use Addison's AB block copolymer micelles
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to coat an organic crystalline particle comprising an agrochemical, as
claimed.
We are also not persuaded by Appellants' arguments attempting to
limit Caruso and Addison to the particular substrate materials used in the
experiments they describe. As explained above, both references expressly
teach that their layer-by-layer coating techniques have broader application
than the specific molecules they use as a "model" or "template" to
demonstrate those techniques. FF1-FF5. Moreover, "non-obviousness
cannot be established by attacking references individually where the
rejection is based on the teachings of a combination of references." Soft Gel
Techs., Inc. v. Jarrow Formulas, Inc., 864 F.3d 1334, 1341 (Fed. Cir. 2017)
(quoting In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986)).
Here, Examiner's rejection is premised on the application of Addison's AB
block copolymer micelles to coat an organic crystalline particle, as taught in
Caruso, and both references provide an express rationale for that
combination. Accordingly, we determine that the preponderance of the
evidence supports Examiner's rejection as to claims 1, 4, 5, and 8-11.
Regarding separately argued claims 12-14, Appellants additionally
contend that it would not be obvious to incorporate the chemicals recited in
claims 12-14, i.e., a "photoprotectant," "biologically active compound," and
"adjuvant," into the core of Addison's micelles because "Caruso is primarily
interested in improving the water dispersibility of the pyrene or fluorescein
diacetate microcrystals." App. Br. at 14--15.
We are not persuaded by Appellants' arguments and agree with
Examiner's finding that Addison in combination with Speaker discloses the
limitations of claims 12-14. See Final Act. 8-9. Addison teaches a
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"hydrophobic active," i.e., a "chemical" as recited in claims 12-14, that is
encapsulated within "the individual cores of the micelles." Addison 6286,
right column. One of ordinary skill in the art would understand a compound
described as an "active" to be a "biologically active compound" as recited in
claim 13. 7 Regarding claims 12 and 14, Speaker teaches that
photoprotectants may be employed as adjuvants to be delivered along with
agricultural agents in polymer microcapsules. FF6. Examiner finds that,
given that teaching, it would have been obvious to include a photoprotectant
as an adjuvant to be co-delivered along with the active ingredient. Final Act.
8-9. This finding is supported by a preponderance of the evidence. FF5-
FF6. Indeed, the only argument that Appellants present to the contrary, i.e.,
that "Caruso is primarily interested" in other things, is essentially the same
argument they present for claim 1. App. Br. 15. For the same reasons we
explained above, we are not persuaded by that argument. Accordingly, we
affirm the rejection as to claims 12-14 as well.
II. Rejection of claims 6 and 7 as obvious over Caruso, Addison,
Speaker, and Biggs
Appellants advance the same arguments against the rejection of
claims 6 and 7 that they do above for the other claims. See App. Br. 17
7 To the extent Appellants contend that claim 13 requires a second
biologically active compound that is different from the agrochemical particle
coated by the micelles in claim 1, we disagree. Claim 13 is dependent from
claim 11, which merely recites that the "cores of the micelles [in claim 1]
contain a chemical." Nothing in the claim language requires that "chemical"
to be a different chemical than the agrochemical in claim 1. Moreover, the
Specification states that the coated crystalline particle may itself be a
biologically active compound and that the micelle core "may" be, but is not
necessarily, loaded with a second biologically active compound. Spec. 21,
11. 3-5.
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(incorporating arguments presented in section I.A.2 of the Appeal Brief).
We are not persuaded by those arguments for the same reasons explained
above. In addition, Appellants argue that Biggs is "non-analogous" art
because it is "directed to easy clean surface treatment compositions." Id. at
18 (internal quotations omitted).
We disagree with Appellants that Biggs' teachings are non-analogous
to Addison and the other cited references. Even though it is directed to
solving a different problem than the other references, Biggs is in the same
general field of endeavor (i.e., copolymer coatings) and therefore is
analogous art. See Innovention Toys, LLC v. MGA Entertainment, Inc., 637
F.3d 1314, 1321-22 (Fed. Cir. 2011). Indeed, Biggs teaches AB block
copolymer micelles comprising blocks of the same monomer units taught in
Addison. FF7. Biggs teaches that such materials have a tendency to form
micelles in a size range (3-300 nm) that substantially overlaps with the range
in claim 6 (3-500 nm) and the molecule number range in claim 7. 8 FF8.
Given that Addison teaches AB block copolymer micelles comprising the
same materials as those in Biggs, we agree with Examiner that a skilled
artisan would understand Biggs teachings regarding the physical
characteristics of those materials to be applicable to Addison's micelles,
notwithstanding the fact that Biggs teaches a different application for the
same components. See Ans. 9 (citing MPEP § 2144.07); see also Ryea, Inc.
v. Ag-Bag Corp., 857 F.2d 1418, 1425 (Fed. Cir. 1988) (Claimed bagging
machine, which differed from prior art machine in that the claimed brake
8 As Examiner found, the Specification equates a micellar aggregate size
range of "3-500 nm" to a range of "10-1000 molecules." Final Act. 9 (citing
Spec. 14, 11. 21-28). Appellants do not dispute that finding on Appeal.
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means were hydraulically operated as opposed to mechanically operated,
was obvious over the prior art machine in view of references teaching
hydraulically operated brakes that performed the same function, "albeit in a
different environment.").
For these reasons, we affirm the rejection of claims 6 and 7 as obvious
over Caruso, Addison, Speaker, and Biggs.
SUMMARY
We affirm the rejection of claims 1, 4, 5, and 8-14 under 35 U.S.C.
§ 103 as unpatentable over Caruso, Addison, and Speaker.
We affirm the rejection of claims 6 and 7 under 35 U.S.C. § 103 as
unpatentable over Caruso, Addison, Speaker, and Biggs.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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