Ex Parte Rubner et al

Patent Trial and Appeal Board

Apr 6, 2017

14135666 (P.T.A.B. Apr. 6, 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.
14/135,666 12/20/2013 Michael F. Rubner PAT032816-US-DIV03 1568
7590
ALCON RESEARCH, LTD.
PATENT DEPARTMENT
11460 JOHNS CREEK PARKWAY
JOHNS CREEK, GA 30097-1556
EXAMINER
FRAZIER, BARBARA S
ART UNIT PAPER NUMBER
1611
NOTIFICATION DATE DELIVERY MODE
04/10/2017 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):
patent, docketing @ alcon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL F. RUBNER, SUNG YUN YANG, YONGXING QIU
QIU, LYNN COOK WINTERTON, and JOHN MARTIN LALLY1
Appeal 2016-005868
Application 14/135,666
Technology Center 1600
Before FRANCISCO C. PRATS, RICHARD J. SMITH, and
RACHEL H. TOWNSEND, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35U.S.C. § 134 involving claims to a medical
device. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
Background
“Contact lenses are often exposed to one or more microorganisms
during wear, storage and handling. They can provide surfaces onto which
1 According to Appellants, the real party in interest is Novartis AG. (Appeal
Br. 3.)
Appeal 2016-005868
Application 14/135,666
the microorganisms can adhere and then proliferate to form a colony.”
(Spec. 1,11. 11-13.)
“Currently, a wide variety of antimicrobial agents have been proposed
to be used as coatings for contact lenses . . . [hjowever, such antimicrobial
coatings have disadvantages and are unsatisfactory.” {Id. 2,11. 16—21.)
Claims on Appeal
Claims 19—23 are on appeal.2 (Claims Appendix, Appeal Br. 10.)
Claim 19 is illustrative and reads as follows:
19. A medical device comprising a core material and an antimicrobial
metal-containing LbL coating that is not covalently attached to the medical
device and can impart to the medical device an increased hydrophilicity,
wherein the antimicrobial metal-containing LbL coating comprises at least
one layer of a coating material having -COOAg groups and silver
nanoparticles formed by autoclaving the core material and the coating to
reduce Ag+ ions associated with the —COO' groups of the negatively
charged polyionic material, wherein the medical device having the silver
nano-particle-containing antimicrobial LbL coating exhibits at least 50%
inhibition of viable microorganisms.
Examiner’s Rejection
Claims 19—23 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Winterton3 and Wang,4 as evidenced by Pratt5 and/or Burrell.6 (Final
2 The term “LbL coating” is defined by Appellants in their Specification as
“a coating that is not covalently attached to an article, preferably a medical
device, and is obtained through a layer-by-layer (‘LbL’) deposition of
polyionic or charged materials on an article.” (Spec. 5,11. 28—30.)
3 Winterton et al., US 2001/0045676 Al, pub. Nov. 29, 2001 (“Winterton”).
4 Wang et al., Metallodielectric Photonic Structures Based on
Poly electrolyte Multilayers, Adv. Mater. 14(21), 1534—37 (2002) (“Wang”).
5 Pratt et al., US 4,849,223, issued July 18, 1989 (“Pratt”).
6 Burrell et al., US 5,681,575, issued Oct. 28, 1997 (“Burrell”).
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Act. 2—6.)7
FINDINGS OF FACT
We adopt the Examiner’s findings as our own, including with regard
to the scope and content of, and motivation to combine, the prior art. The
following findings are included for emphasis and reference purposes.
FF 1. The Examiner finds that “Winterton teaches biomedical devices, such
as ophthalmic lenses, and methods of making such devices having a surface
coating including at least one polyionic layer.” (Final Act. 3, citing
Winterton Abstract.)
FF 2. The Examiner finds that the coating taught by Winterton is formed by
layering a polycationic material, such as poly(allylamine hydrochloride)
(PAH), and a polyanionic material such as polyacrylic acid (PAA), and that
the coating is added to the lens in order to alter the surface properties. (Final
Act. 3, citing Winterton || 22, 43, 63—64, 70, 72, and 194—195.)
FF 3. The Examiner finds that the coating of Winterton can include other
additives, such as antimicrobials. (Final Act. 3, citing Winterton 194.)
FF 4. The Examiner finds that Wang teaches “that an LBL coating
assembly, such as PAH/PAA, may have in-situ nanoparticulate synthesis
with silver to form silver nanoparticles.” (Final Act. 3, citing Wang 1534
and 1537.)
FF 5. The Examiner finds that Wang “teaches that LbL assembly affords
precise control over layer thicknesses, and in-situ nanoparticulate synthesis
facilitates the tuning of refractive index within specified regions of these
layers.” (Final Act. 3, citing Wang 1534.)
7 Office Action dated June 24, 2015.
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Application 14/135,666
FF 6. The Examiner finds that
Wang teaches that the Ag nanoparticle concentration can be
systematically tuned via PAH/PAA assembly pH, which controls
the carboxylic acid group concentration available for silver
cation exchange, and the multiple cycling of the nanoparticle
synthesis . . . and therefore it would be within the purview of the
skilled artisan to have both -COOAg groups and silver
nanoparticles present, absent evidence to the contrary.
(Final Act. 5, citing Wang 1535.)
FF 7. The Examiner finds that
one skilled in the art, looking to improve the surface properties
of an ophthalmic lens coated with a Lbl assembly of PAA/PAH
(the invention of Winterton), would look to the teachings of
Wang and consider them relevant, since Wang is also concerned
with Lbl assembly of PAA/PAH, and would be motivated to
utilize the teachings of Wang and add nanoparticulate silver ions
by in-situ nanoparticulate synthesis to the Lbl assembly of
Winterton [], since this would provide improved tuning of the
refractive index within the layers of the Lbl assembly, thereby
improving the surface properties of the lens.
(Final Act. 4.)
FF 8. The Examiner finds that “silver is known to possess antimicrobial
activity when present in a medical device, such as a contact lens, as
evidenced by Pratt and/or Burrell,” and that “the skilled artisan would
reasonably expect the antimicrobial coating to exhibit at least 50% inhibition
of viable microorganisms, absent evidence to the contrary.” (Final Act. 4—5,
citing Pratt col. 1,11. 23—31 and Burrell col. 15, Example 10.)
FF 9. The Examiner finds that Winterton and Wang are analogous art.
(Ans. 5.)
FF 10. The Examiner finds that one of skill in the art “would reasonably
expect success from the addition of nanoparticulate silver ions to the
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Application 14/135,666
multilayer assembly of Winterton [] because [Winterton and Wang] are
drawn to multilayer assemblies based on PAH and PAA.” (Final Act. 4.)
DISCUSSION
We adopt as our own the Examiner’s findings, analysis, and
conclusions as set forth in the Final Action (Final Act. 2—8) and Answer
(Ans. 2—7). We discern no error in the rejection of the claims as obvious.
Issue
Whether a preponderance of evidence of record supports the
Examiner’s rejection under 35 U.S.C. § 103(a).
Analysis
Appellants contest the obviousness conclusion by advancing several
arguments, which are addressed below. We limit our consideration to claim
19 because the claims were not argued separately.
We note at the outset that the rejection is based on the combination of
Winterton and Wang, as evidenced by Pratt and Burrell. (Final Act. 2—3.)
Winterton teaches the surface coating of a contact lens, wherein the coating
may comprise layers of PAA/PAH and include an antimicrobial. (FF 1—3.)
Wang teaches an LbL assembly of PAA/PAH using silver nanoparticles,
which are known to have antimicrobial activity as evidenced by Pratt and
Burrell. (FF 4, 5, and 8.) Accordingly, Appellants’ arguments regarding
Pratt and Burrell that are beyond the scope of evidencing silver’s
antimicrobial activity (e.g., Appeal Br. 4—5, 8) are unpersuasive because
they do not properly address the rejection and otherwise fail to show error on
the part of the Examiner.
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Argument No. 1
Appellants argue that the cited references do not disclose or suggest
“all of the limitations of the invention as currently claimed.” (Appeal Br. 4.)
In particular, Appellants argue that Winterton “does not teach medical
device having the silver nano-particle-containing antimicrobial LbL coating
exhibits at least 50% inhibition of viable microorganisms,” and that Wang,
Pratt, and Burrell “cannot fill the gaps left by” Winterton. {Id.) Appellants’
also argue that Burrell does not teach that nanocrystalline silver powder
produces an antimicrobial effect. (Appeal Br. 4—6.)
We are not persuaded. The test for obviousness is “what the
combined teachings of the references would have suggested to those of
ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981)
(citing cases). Here, the Examiner has established that all of the claimed
limitations are taught or suggested by the combined teachings of the prior
art. (FF 1-9.)
Appellants’ arguments regarding Burrell’s teachings are unpersuasive.
Burrell clearly teaches that nanocrystalline silver powder has antimicrobial
activity, as well as the conditions under which the anti-microbial effect of
silver nanoparticles may be “improved.” (See Burrell Example 10; FF 8;
Ans. 4.)
Argument No. 2
Appellants argue that the Examiner has not adequately explained why
one skilled in the art would combine Winterton and Wang. (Appeal Br. 6—
8.) In particular, Appellants argue that Wang’s teachings regarding tuning
the refractive index are not applicable to a contact lens because a contact
lens needs a constant refractive index and the release of silver nanoparticles
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to provide an antimicrobial property will change the refractive index of the
contact lens. (Appeal Br. 7—8.)
We are not persuaded. The Examiner has explained why one of skill
in the art would combine Winterton and Wang. (FF 7.) Moreover, contrary
to Appellants’ arguments, we find that Wang is analogous art, at least
because we find that Wang’s teachings of the assembly of layered coatings
of PAH/PAA that also include a known antimicrobial element (FF 4) are “at
least ‘reasonably pertinent to the particular problem with which the inventor
is involved.’” In re Ethicon, 844 F. 3d 1344, 1351 (Fed. Cir. 2017) (quoting
In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). In addition, Appellants
acknowledge that “[a]n invention may improve certain properties [and] may
compromise other properties.” (Reply Br. 4.) See, e.g., Medichem, S.A. v
Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (“[A] given course of
action often has simultaneous advantages and disadvantages, and this does
not necessarily obviate motivation to combine.”). Here, while the use of
silver nanoparticles in the coating of Winterton may also have certain
disadvantages, we are not persuaded that such overrides the Examiner’s
identified motivation to combine articulated in Wang, i.e., that the in situ
nanoparticle synthesis facilitates tuning of refractive index within the
PAH/P AA layers, or that the Examiner erred in combining the teachings of
Winterton and Wang.
Argument No. 3
Appellants argue that the Examiner has not explained how one skilled
in the art would have a reasonable expectation of success to arrive at the
claimed invention. (Appeal Br. 8.) To the extent those arguments focus on
Pratt and Burrell, they are unpersuasive for the reasons stated above.
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Moreover, the Examiner has explained why one of skill in the art would
have a reasonable expectation of success, and we discern no error in that
finding. (FF 10.)
Appellants also argue that a person of skill in the art would know that
certain process steps referred to in Wang would cause the “contact lens [to]
be destroyed.” (Reply Br. 5.) Appellants provide no evidence for this
statement or, even if true, why a person of ordinary skill in the art would
thus not be able to utilize the teachings of Wang in connection with a
medical device. SeeKSR Inti Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007)
(“A person of ordinary skill is also a person of ordinary creativity, not an
automaton.”); In re Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985) (skill is
presumed on the part of one of ordinary skill in the art). The argument
regarding destruction of a contact lens is also unpersuasive because the
reasonable expectation of success requirement “refers to the likelihood of
success in combining references to meet the limitations of the claimed
invention.” Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821
F.3d 1359, 1367 (Fed. Cir. 2016). Claim 19 recites a “medical device,” a
term that is not limited to a contact lens. (See Spec. 4,11. 20—30.)
Argument No. 4
Appellants argue that Burrell teaches away from the claim limitation
of 50% inhibition of viable microorganisms. (Appeal Br. 8—9.) Burrell was
cited as evidence of the antimicrobial activity of silver nanoparticles. (FF
8.) Moreover, we are not persuaded that Burrell teaches away because
Appellants have not explained how Burrell criticizes, discredits, or otherwise
discourages the claimed invention, particularly the use of silver
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nanoparticles as an antimicrobial. See In re Fulton, 391 F.3d 1195, 1201
(Fed. Cir. 2004).8
Conclusion of Law
A preponderance of evidence of record supports the Examiner’s
rejection of claim 19 under 35 U.S.C. § 103(a). Claims 20-23 were not
argued separately and fall with claim 19.
SUMMARY
We affirm the rejection of all claims on appeal.
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
8 We also acknowledge, but are unpersuaded by, Appellants’ argument
regarding “hindsight reconstruction.” (Reply Br. 5.) Appellants point to no
evidence that any of the Examiner’s findings were beyond the level of
ordinary skill at the time of the invention or could have been taken only
from Appellants’ Specification. See In re McLaughlin, 443 F.2d 1392, 1395
(CCPA 1971).
9