Ex Parte Noar

Patent Trial and Appeal Board

Apr 20, 2017

12865765 (P.T.A.B. Apr. 20, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/865,765 10/15/2010 J. Barry Noar NOAR-001-US 5827
35938 7590
Acuity Law Group, P.C.
12707 High Bluff Drive
Suite 200
San Diego, CA 92130-2037
EXAMINER
PENNY, TABATHA L
ART UNIT PAPER NUMBER
1712
NOTIFICATION DATE DELIVERY MODE
04/24/2017 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):
docketing @ acuitylg.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte J. BARRY NOAR
Appeal 2016-004275
Application 12/865,7651
Technology Center 1700
Before BRADLEY R. GARRIS, GEORGE C. BEST, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL2
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1
and 10. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellant identifies the real party in interest as Singlogen Inc. Appeal
Br. 4.
2 In our Opinion below, we refer to the Final Action delivered electronically
on May 6, 2014 (“Final Act.”); the Advisory Action delivered electronically
on December 10, 2014 (“Advis. Act.”); the Appeal Brief filed February 26,
2015 (“Appeal Br.”); the Examiner’s Answer delivered January 11, 2016
(“Ans.”); and the Reply Brief delivered electronically on March 11, 2016
(“Reply Br.”).
Appeal 2016-004275
Application 12/865,765
The claims are directed to a method to confer transient water
solubility on a water insoluble aluminum phthalocyanine and to deposit the
aluminum phthalocyanine into or onto a material with the loss of the
transient water solubility. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A method to confer transient water solubility on a water
insoluble aluminum phthalocyanine and to deposit the
aluminum phthalocyanine into or onto a material with the loss
of the transient water solubility, comprising:
forming a mixture comprising said aluminum
phthalocyanine and a polyethylene glycol derivative, wherein
said mixture is formed in the absence of solvent;
heating the mixture in the absence of solvent to between
200 to 350°C to form a complex between said aluminum
phthalocyanine and said polyethylene glycol derivative;
recovering the complex in a first aqueous solution;
contacting the material with the complex in the first
aqueous solution, wherein the complex dissociates and deposits
the aluminum phthalocyanine into or onto the material in a
water insoluble form; and
removing undeposited complex by washing the material
with a second aqueous solution.
Appeal Br. 11 (Claims App’x).
2
Appeal 2016-004275
Application 12/865,765
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Dandliker et al. US 5,641,878 June 24, 1997
(“Dandliker”)
Devlin et al. US 6,060,598 May 9, 2000
(“Devlin”)
Buechler et al. US 7,322,927 B2 Jan. 29, 2009
(“Buechler”)
REJECTIONS
The Examiner maintains the rejection of claims 1 and 10 under 35
U.S.C. § 103(a) over Buechler in view of Dandliker and Devlin. Final
Act. 3.
OPINION
Only claim 1 and its dependent claim 10 are pending. Appeal Br. 5.
Appellant has not presented separate arguments specifically directed to
dependent claim 10. Asa consequence, claim 10 will stand or fall with
claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
Buechler is the primary reference on which the Examiner bases the
obviousness rejection of claim 1. See Final Act. 3. Appellant contends that
the Examiner confuses Buechler’s teachings concerning water soluble
metal-coordinated organic molecules and water insoluble metal-coordinated
organic molecules. Appeal Br. 7. Specifically, Appellant argues that
Buechler does not teach that water soluble phthalocyanine dyes can or
should be deposited in or on a latex matrix, urging that “nothing in the
primary Buechler et al. reference even hints that one could or should confer
3
Appeal 2016-004275
Application 12/865,765
water solubility transiently on a water insoluble aluminum phthalocyanine,
and then deposit the aluminum phthalocyanine into or onto a material with
the loss of that transient water solubility, as taught by the present invention
and claims.” Id. at 7—8 (emphasis in original). Appellant points to the
following same three excerpts of Buechler in the Appeal Brief and Reply
Brief as support for the argument that the reference “clearly distinguishes
between insoluble dyes suitable for particles, and water soluble dyes”:
The methodology teaches improved methods for incorporation
of dyes into particles to minimize fluorescence quenching and
to maximize fluorescence intensities of the dye molecules in the
particles. In addition, the design and synthesis of novel hybrid
phthalocyanine derivatives are described which are
incorporated into particles or are synthesized as water-soluble
molecules for use as labels and are directly coupled to proteins,
polypeptides, other labels, nucleic acids and the like. Buechler
col. 2,11. 41—49 (emphasis Appellant’s).
The hybrid phthalocyanine derivatives may also be synthesized
as water soluble compounds to be used for direct attachment to
proteins, polypeptides other labels or nucleic acids. Id. col. 7,
11. 30-33 (emphasis Appellant’s).
The fluorescent conjugates of water soluble hybrid
phthalocyanine derivatives, which are smaller in molecular
weight than the fluorescent particles described herein, will
diffuse faster in solution and result in binding reactions which
have faster kinetics. Fast kinetics of the binding reactions in
assays are preferred because the assays will reach equilibrium
binding in a shorter time, and in turn, assay results can be
obtained in a shorter time. Id. col. 22,11. 29—36 (emphasis
Appellant’s).
Appeal Br. 7—8, Reply Br. 4—5. Appellant thus contends that Buechler’s
disclosure is limited to teaching incorporation of water insoluble metal-
coordinated organic molecules into latex.
4
Appeal 2016-004275
Application 12/865,765
Appellant limits contentions regarding the secondary references to the
argument that nothing in the secondary references cures the alleged failure
of Buechler to suggest that water solubility should be introduced transiently
to deposit a phthalocyanine onto a surface. Appeal Br. 9—10. Any
additional argument regarding the teachings of the references or their
combination with Buechler is waived. See Hyatt v. Dudas, 551 F.3d 1307,
1314 (Fed. Cir. 2008).
The Examiner finds that Buechler’s teachings of incorporating dyes
into latex particles are not restricted to incorporation of dyes that are water
insoluble. Advis. Act. 3; Ans. 2. Like Appellant, the Examiner cites
excerpts from Buechler in support of this position, including one of the same
excerpts cited by Appellant (Buechler column 2, lines 41—49) which we do
not repeat here. Ans. 2—3. The Examiner cites Buechler’s Technical Field:
This invention relates generally to the synthesis of novel dyes
and labels and methods for the detection or visualization of
analytes and more specifically to fluorescent latex particles
which incorporate the novel fluorescent dyes and utilize, in
certain aspects, fluorescence energy transfer and intramolecular
energy transfer, for the detection of analytes in immunoassays
or in nucleic acid assays.
Id. col. 1,11. 30-36 (emphasis added). The Examiner also cites the
following Buechler excerpt:
Another important criteria for preparing particles exhibiting
fluorescence energy transfer is the selection of the solvent used
to swell and/or imbibe the dyes. The solvent system should
penetrate the interior of the particle, for example, when using
latex particles, and the dyes should also be soluble in the
solvent system so that the dyes in the solvent can enter the
interior of the particle.
Id. col. 9,11. [50]-65 (emphasis added).
5
Appeal 2016-004275
Application 12/865,765
In rejecting claim 1, the Examiner finds that Buechler teaches a
method which comprises mixing a metal-coordinated molecule with a water
soluble ligand under conditions in which the ligand associates with the
metal-coordinated molecule to form a complex between the ligand and the
molecule and recovering the complex. Final Act. 3. The ligand may impart
water solubility to the metal-coordinated molecule. Id. at 4. The Examiner
further finds that Buechler teaches the metal-coordinated molecule may be a
phthalocyanine and aluminum is a desirable metal center atom, mixing of
the metal-coordinated molecule and the ligand occurs in the presence of
heat, and the complex may be recovered by dissolution in water. Id. The
Examiner finds that Buechler teaches a method of depositing a water
insoluble metal-coordinated organic molecule onto or into a latex matrix,
which method comprises contacting the latex in an aqueous solution of
tetrahydrofuran (i.e., a first aqueous solution) with the complex and
providing conditions wherein the complex dissociates thus depositing the
metal ion-containing organic molecule, being in water insoluble form, in or
on the latex matrix, and recovering the matrix containing the organic
molecule by solubilizing the dissociated ligand in water. Id. at 3^4.
The Examiner acknowledges that Buechler does not explicitly teach a
polyethylene glycol derivative, as claimed, but finds that Dandliker teaches
polyethylene glycol or polyethylene glycol derivatives as axial ligands
complexed to, e.g., phthalocyanine. Id. at 4.
The Examiner concludes that it would have been obvious to one of
ordinary skill in the art at the time of the invention to modify the water
solubility imparting ligand of Buechler to incorporate a polyethylene glycol
derivative, as suggested by Dandliker. Id. Dandliker teaches polyethylene
6
Appeal 2016-004275
Application 12/865,765
glycol derivatives are suitable for imparting water solubility to
phthalocyanine derivatives. See, e.g., Dandliker col. 6,11. 59—61. One of
ordinary skill in the art would have been motivated to substitute the known
polyethylene glycol derivatives of Dandliker for the water soluble ligand in
Buechler to yield predictable results. In re Lackey, 371 Fed. App’x 80, 81
(Fed. Cir. 2010); see also In re Mayne, 104 F.3d 1339, 1340 (Fed. Cir. 1997)
(“Because the applicants merely substituted one element known in the art for
a known equivalent, this court affirms [the rejection for obviousness].”). A
claim is obvious where it “simply arranges old elements with each
performing the same function it had been known to perform and yields no
more than one would expect from such an arrangement.” KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007) (quotes and citation omitted).
Buechler teaches forming the complex by mixing the components in a
solution. Final Act. 4. The Examiner turns to Devlin for teaching a metal
phthalocyanine with polyethylene glycol derivative axial ligands prepared
by forming a mixture of the metal phthalocyanine and polyethylene glycol
derivative in the absence of a solvent, and heating the mixture in the absence
of a solvent to form a complex. Id. The Examiner concludes that it would
have been obvious to one of ordinary skill in the art at the time of the
invention to modify the method of forming the complex as suggested by
Devlin because Devlin shows it is a suitable synthesis method, and the
ordinarily skilled artisan would have recognized the environmental benefits
of a solvent-free process. Id. at 5. The Examiner’s explanation of the
reasons a person of ordinary skill in the art would have had to combine the
prior art teachings is sufficient when an allowance is made for “the
inferences and creative steps that a person of ordinary skill in the art would
7
Appeal 2016-004275
Application 12/865,765
employ.” KSR, 550 U.S. at 418. The Examiner has provided “some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness. Id. (citing In re Kahn, 441 F.3d 977, 998 (Fed.
Cir. 2006).
Even though the references do not explicitly disclose the transient
water solubility of aluminum phthalocyanine, it is a natural result of the
combination of the water insoluble aluminum phthalocyanine when mixed
with a polyethylene glycol derivative under the circumstances claimed. PAR
Pharm., Inc. v. TWIPharms., Inc., 773 F.3d 1186, 1195-96 (Fed. Cir. 2014)
(confirming the concept of inherency may be applied to obviousness when
the limitation at issue is the natural result of the combination of prior art
elements). In like manner, dissociation of the complex is a natural result of
deposition of the complex on a material such as latex. Thus, all elements of
claim 1 are disclosed in the combined references, with the exception of the
specific temperature range claimed.
Claim 1 requires heating the mixture in the absence of solvent to
between 200 to 350°C. Appeal Br. 11 (Claims App’x). The Examiner
acknowledges that the combined references do not explicitly teach heating to
the claimed range. Final Act. 5. However, the Examiner points out that,
“where the general conditions of a claim are disclosed in the prior art, it is
not inventive to discover the optimum or workable ranges by routine
experimentation.” Id. (citing In reAller, 220 F.2d 454, 456 (CCPA 1955);
see alsoA? re Woodruff, 919 F.2d 1575, 1577—78 (Fed. Cir. 1990) (where the
difference between the claimed invention and the prior art is some range, the
applicant must show that the particular range is critical, generally by
8
Appeal 2016-004275
Application 12/865,765
showing that the claimed range achieves unexpected results relative to the
prior art range).
For the reasons provided above, Appellant fails to show harmful error
in the § 103 rejection of claim 1. We sustain the Examiner’s rejection of
claim 1. We sustain the rejection of claim 10, which Appellant did not argue
separately, for the same reasons.
DECISION
For the above reasons, the Examiner’s rejection of claims 1 and 10 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
9