Ex Parte Qiu et alDownload PDFPatent Trial and Appeal BoardSep 20, 201612011652 (P.T.A.B. Sep. 20, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/011,652 01129/2008 31781 7590 09/22/2016 ALCON RESEARCH, LTD, PA TENT DEPARTMENT 11460 JOHNS CREEK PARKWAY JOHNS CREEK, GA 30097-1556 FIRST NAMED INVENTOR Y ongxing Qiu 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. PAT050621-US-NP 9593 EXAMINER BASQUILL, SEAN M ART UNIT PAPER NUMBER 1613 NOTIFICATION DATE DELIVERY MODE 09/22/2016 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): patent. docketing@alcon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte YONGXING QIU and XINMING QIAN Appeal2015-001500 Application 12/011,652 1 Technology Center 1600 Before JOHN G. NEW, ELIZABETH A. LA VIER, and TA WEN CHANG, Administrative Patent Judges. LA VIER, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellants seek reversal of the Examiner's rejection of claims 1, 2, 4, 5, and 7-9. We have jurisdiction under 35 U.S.C. § 6(b). For the reasons set forth below, we AFFIRM. BACKGROUND The Specification describes antimicrobial medical devices, particularly contact lenses, with silver nanoparticles distributed therein, and 1 Appellants state the real party in interest is Novartis AG. Appeal Br. 3. Most of the pages of the Appeal Brief are not paginated; page numbers are calculated herein by counting from the first page. Appeal2015-001500 Application 12/011,652 methods for making the same. See Spec. 1:6-9; 2:15-3:4. Claim 1 is illustrative: 1. A method for making an antimicrobial contact lens, comprises the steps of: obtaining a polymerizable dispersion comprising in-situ formed Ag-nanoparticles and a silicone-containing monomer or macromer or prepolymer; reducing a yellowish color of the Ag-nanoparticles-containing polymerizable dispersion by treating the Ag-nanoparticles- containing polymerizable dispersion with chloride; introducing an amount of the chloride[2]-treated polymerizable dispersion in a mold for making an antimicrobial contact lens; and polymerizing the chloride-treated polymerizable dispersion in the mold to form the antimicrobial contact lens containing Ag- nanoparticles, wherein the step of reducing a yellowish color of the Ag- nanoparticles-containing polymerizable dispersion by treating the Ag-nanoparticles-containing polymerizable dispersion with chloride is performed according to either procedure A or procedure B or combination thereof, wherein the procedure A comprises: (1) adding chloride salt in solid form, directly into the dispersion; (2) mixing thoroughly resultant mixture for a period of time long enough to reduce the yellowish color of Ag-nanoparticles-containing polymerizable dispersion; and (3) removing remaining solid chloride salt, 2 The Claims Appendix includes an apparent marked-up edit to this word: "chloritge." Appeal Br. 11 (Claims Appendix). This same edit appeared in the Claim Amendments filed on January 21, 2014, and the Examiner acknowledged this change in withdrawing an objection to claim 1 in the Final Office Action (see Final Action 2). Accordingly, we assume that the inclusion of this markup in the Claims Appendix was inadvertent, and omit the markup here. 2 Appeal2015-001500 Application 12/011,652 wherein the procedure B comprises: (1) adding a NaCl or hydrochloride solution into the polymerizable dispersion and (2) mixing thoroughly resultant mixture for a period of time long enough to reduce the yellowish color of Ag-nanoparticles- containing polymerizable dispersion. Appeal Br. 11 (Claims Appendix). REJECTION MAINTAINED ON APPEAL Claims 1, 2, 4, 5, and 7-9 stand rejected under 35 U.S.C. § 103, as unpatentable over Qiu3 and Pritchard.4 Ans. 2. DISCUSSION Qiu teaches an antimicrobial contact lens containing distributed silver nanoparticles (see Qiu Abstract). The Examiner relies on Qiu to teach all of the limitations of the rejected claims (see Final Action 3--4), except for those limitations relating to "treating either the silver nanoparticles or polymerizable solution with chloride ion," and "the resulting color change" (id. at 4). For those aspects of the claims, the Examiner turns to Pritchard's disclosure that "silver nanoparticles carry a yellowish color indicating that the nanoparticles have indeed formed" (id. at 4 (citing Pritchard i-f 147)) and that "this coloring may be reduced or removed ... by treatment with a sodium chloride solution, which Pritchard believes is the result of the formation of silver chloride" (id. (citing Pritchard i-f 148)). The Examiner finds one of ordinary skill in the art would have been motivated to combine Qiu and Pritchard in the manner claimed, because: 3 Qiu et al., US 2005/0013842 Al, published Jan. 20, 2005. 4 Pritchard et al., US 2005/0220882 Al, published Oct. 6, 2005. 3 Appeal2015-001500 Application 12/011,652 the contact lenses of Qiu ordinarily require optical clarity to properly function as contact lenses, and Pritchard not only discloses a method of reducing or eliminating discoloration caused by the antimicrobial silver contained in the lenses of Qiu, but also indicates that the antimicrobial efficacy of such silver particles can be improved by treatment with chloride ion. Id. at 5. Appellants argue that there are "at least two big differences" between the claims and Pritchard: (1) Pritchard teaches "the yellow color disappears in certain gels," not polymerizable dispersions; and (2) in the claims, "the dispersion is treated with chloride and yellow color is reduced before introducing into the mold," whereas in Pritchard, "the gel is formed first and then extruded to a bath containing physiological saline and then yellow color is reduced." Appeal Br. 6. We are unpersuaded. The Examiner employs Pritchard only for a very narrow purpose, i.e., Pritchard's teaching of the effect of chloride exposure on silver nanoparticles. As the Examiner puts it; Appellants' arguments "ignore[] the explicitly recited trees of basic chemistry provided by Pritchard for the forest of specific and exemplary medical devices Pritchard describes." Ans. 6. The Examiner further explains: Pritchard equally clearly attributes the removal of such yellowish tint, arising out of the presence of the aforementioned silver nanoparticles, to the exposure to and reaction with chloride ion to provide an equally, if not more advantageous, silver chloride nanoparticle. This represents a fundamental teaching of basic inorganic chemistry, in that it is clear to any skilled artisan from this disclosure that a yellowish silver nanoparticle exposed to, and therefore reacted with chloride ion reduces the yellowish appearance of that nanoparticle. Ans. 7. Furthermore, Appellants' attempts to distinguish the references from the claimed invention based on the point in the process at which chloride 4 Appeal2015-001500 Application 12/011,652 exposure occurs are not persuasive because, as the Examiner notes, "the mere rearrangement of process steps cannot, absent unexpected results, distinguish a claimed invention from prior art which rearranges known process steps." Ans. 7 (citing In re Burhans, 154 F.2d 690 (CCPA 1946)). Appellants retort that the post-curing phosphate buffered saline (PBS) exposure data from Qiu indeed show that the results of the claimed invention are unexpected. See Reply Br. 3. We are not persuaded that Qiu's data regarding the effect of saline (i.e., chloride) exposure after the lens itself has already been manufactured (Qiu packages and autoclaves the completed lenses in PBS, see Qiu i-f 406) have any bearing on whether one of skill in the art would have expected chloride to have an effect during the process of lens-making. Accordingly, as applied to chloride exposure during the process of making lenses, we agree with the Examiner that "[ n ]othing of Qiu actually contradicts the teachings of Pritchard concerning the ability of chloride ion to remove the yellowish tint associated with the presence of antimicrobial silver nanoparticles in gel medical devices." Ans. 5---6. As Appellants have not demonstrated unexpected results from the order of steps as arranged in claim 1, Appellants have not shown that their arrangement of steps is nonobvious over the alternative arrangements of steps in the prior art. Additionally, Appellants argue that Pritchard is directed to a different technical field than Qiu, i.e., occlusive, swellable medical devices rather than contact lenses, and seeks to solve different problems. See Appeal Br. 8-9. Accordingly, Appellants maintain that one of skill in the art of contact lenses would not have consulted Pritchard, and, even if they had done so, would not have had a reasonable expectation of success in arriving at the 5 Appeal2015-001500 Application 12/011,652 claimed invention. See id. at 9. Appellants thus attribute the Examiner's rejection to impermissible hindsight reconstruction. See id. These arguments are also unpersuasive, and attribute an overly narrow range of interest and creativity to the person of ordinary skill in the art. Cf KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 420-21 (2007) (explaining that a person with ordinary skill in the art is "a person of ordinary creativity, not an automaton," and "in many cases ... will be able to fit the teachings of multiple patents together like pieces of a puzzle"). The distinctions between the references highlighted by Appellants (see Appeal Br. 8-9) do not convince us that one of ordinary skill in the art would not have considered both references. Both Qiu and Pritchard teach using silver nanoparticles for antibacterial purposes in biomedical polymeric compositions, and recognize that the silver nanoparticles can cause an undesirable yellowish color. As quoted above, the Examiner explains that Qiu's quest for optical clarity in contact lenses would have motivated the ordinarily skilled artisan to modify Qiu with Pritchard's method for eliminating the discoloration caused by antimicrobial silver nanoparticles, as well as for enhancing the antimicrobial effect. See Final Action 5. Furthermore, whether two references are analogous art is determined by two separate tests: "(1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor's endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved." In re Bigio, 381F.3d1320, 1325 (Fed. Cir. 2004). Even if we accept, arguendo, Appellants' argument that the references are from different fields of endeavor, Pritchard is still pertinent to the particular 6 Appeal2015-001500 Application 12/011,652 problem taught by Qiu, viz., reducing the yellowing cause by the formation of silver nanoparticles. Having considered all of Appellants' arguments, we are unpersuaded that the Examiner erred in rejecting claim 1 over Qiu and Pritchard. Appellants argue claim 5 together with claim 1, and offer no separate arguments for the dependent claims. Accordingly, claims 2, 4, 5, and 7-9 fall with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv). CONCLUSION The rejection of claims 1, 2, 4, 5, and 7-9 under 35 U.S.C. § 103(a) is affirmed for the reasons of record and as explained herein. 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 7 Copy with citationCopy as parenthetical citation