Ex Parte Scales et al

Patent Trial and Appeal Board

Sep 25, 2017

13840919 (P.T.A.B. Sep. 25, 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.
13/840,919 03/15/2013 Charles W. Scales VTN5370USNP 7646
27777 7590 09/27/2017
JOSEPH F. SHIRTZ
JOHNSON & JOHNSON
ONE JOHNSON & JOHNSON PLAZA
NEW BRUNSWICK, NJ 08933-7003
EXAMINER
SALAMON, PETER A
ART UNIT PAPER NUMBER
1765
NOTIFICATION DATE DELIVERY MODE
09/27/2017 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):
j nju spatent @ coru s .j nj. com
lhowd@its.jnj.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHARLES W. SCALES, KEVIN P. MCCABE, and
BRENT MATTHEW HEALY
Appeal 2016-006290
Application 13/840,919
Technology Center 1700
Before CATHERINE Q. TIMM, N. WHITNEY WILSON, and
JENNIFER R. GUPTA, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s April
24, 2015 decision finally rejecting claims 1—27, 33, 34, and 81—90 (“Final
Act.”). We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We reverse.
1 Appellants identify the real party in interest as Johnson & Johnson Vision
Care, Inc. (Appeal Br. 3).
Appeal 2016-006290
Application 13/840,919
CLAIMED SUBJECT MATTER
Appellants’ invention is directed to a compositions comprising a block
copolymer of formula [A]-B-[Q], where [A] is a polymer with an affinity for a
substrate, B is a linking group, and [Q] comprises a semi-crosslinked, ungelled
polymer (Abstract). These copolymers are said to be able to be incorporated
into a variety of substrates, in particular contact lenses, to improve their
wettability and lubricity, and inhibit protein and/or lipid uptake thereof (Spec.
1). Details of the claimed invention are set forth in representative claims 1 and
11, as reproduced below from the Claims Appendix (emphasis added):
1. A composition comprising a water soluble, block copolymer
of the following formula:
[A]-B-[Q], wherein
[A] is a segment that has an affinity for a medical device;
B is a linking group comprising an optionally-substituted,
polyvalent linking group having a molecular weight of no more
than 1000 g/mole; and
[Q] comprises a semi-crosslinked, ungelled segment derived
from copolymerization of at least one ethylenically unsaturated
monomer with a polyfunctional ethylenically unsaturated
monomer.
11. A composition comprising an amphiphilic nanogel material
comprising one or more cross-linked copolymers, wherein said
copolymer comprises one or more hydrophilic segments having a
degree of polymerization in the range of about 10 to about 10,000,
and wherein said one or more hydrophilic segments contains a
linear silicone segment on at least one terminal end, wherein said
linear silicone segment comprises between about 1 and about 200
siloxy units, and said amphiphilic nanogel material associates via
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Appeal 2016-006290
Application 13/840,919
the linear silicone segment, with a surface comprising at least one
partially hydrophobic substrate.
REJECTIONS
I. Claims 1—27, 33, 34, and 81—90 are rejected under
35 U.S.C. § 103(a) as unpatentable over Scales.2
II. Claims 1, 2, 11—17, 33, and 34 are rejected under 35 U.S.C. § 102(a)
as anticipated by Scales.
III. Claims 33 and 34 are provisionally rejected on the grounds of
nonstatutory double patenting over claims 13 and 14 of Application No.
13/100,473.3
DISCUSSION
Rejections I. and II. Scales is identified in the Background section of
the Specification as disclosing block copolymers for use in connection with
contact lenses which have linear or branched hydrophilic segments
(corresponding to the claimed Q block) (Spec. 1 5). Appellants argue that
the key difference between their composition and the composition disclosed
in Scales is in the nature of the Q block (Appeal Br. 6). In particular,
Appellants contend that the “differentiating feature” of claimed invention is
the presence of a semi-crosslinked, ungelled segment in Q, and that the
portion of Scales’s composition which corresponds to the Q block is not
crosslinked {id.).
2 Scales et al., US 2011/0275734 Al, published November 10, 2011.
3 This application issued as US 9,522,980 on December 20, 2016.
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Appeal 2016-006290
Application 13/840,919
In this regard, the Examiner finds that Scales discloses that Group Q
of Scales “comprises any desired structure such as linear, branched or
combed structure and is derived from the copolymerization of mono-
functional and di-functional hydrophilic monomers” (Final Act. 6, citing
Scales 60-62). The Examiner further finds that:
Scales exemplifies that the hydrophilic component may include
crosslinking agents such as 2-hydroxyethyl methacrylate
(HEMA), ethylene glycol methacrylates, N- (2-
hydroxyethyl)(meth)acrylamide, N,N-bis(2-
hydroxyethyl)acrylamide and the like [0062], The first three
are difunctional and the last is trifimctional. The disclosed
mixture of monofimctional and polyfimctional monomers
produces a hydrophilic random copolymer for segment Q
having residual reactive groups which can be crosslinked to
other reactive groups on other hydrophilic block copolymer
molecules through the remaining pendant reactive group of the
crosslinker monomer.
(Final Act. 6, emphasis added). The Examiner further finds that Scales’s
hydrophilic component Q comprises hydrophilic monomers which have at
least one polymerizable double bond and at least one hydrophilic functional
group, which may themselves be used as crosslinking agents (Ans. 26, citing
Scales 1135). The Examiner also finds that Scales teaches the inclusion of
one or more cross-linking monomers “to the reaction mixture” but that such
an addition is optional if the hydrophilic monomers act as the crosslinking
agent (Ans. 27, citing Scales 1150).
Having reviewed the arguments and evidence set forth in the Final
Action and the Answer, and the Appeal and Reply Briefs, we determine that
a preponderance of the evidence of record does not support the Examiner’s
finding that Scales discloses a block Q which is crosslinked as required by
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Appeal 2016-006290
Application 13/840,919
the independent claims on appeal. Accordingly, Appellants have
demonstrated reversible error in the anticipation and obviousness rejections
over Scales.
Appellants argue that Scales teaches that the block corresponding to
the claimed Q block is not crosslinked. First, Appellants point to Scales
paragraph 43, which discloses that component Q has the following structure:
where U is selected from the group consisting of hydrogen, halogen, C1-C4
alkyl which may be optionally substituted with hydroxyl, alkoxy, aryloxy
(OR"), carboxy, acyloxy, aroyloxy (O2CR"), alkoxy-carbonyl,
aryloxycarbonyl (CO2R") and combinations thereof, and V is independently
selected from the group consisting of hydrogen, R", CO2H, CO2R", COR",
CN, CONH2, CONHR", CONR"2, O2CR", OR" and halogen; plus cyclic
and acyclic N-vinyl amides (Scales Tflf 43 46). Appellants argue that these
moieties do not have crosslinking functionality4 (Appeal Br. 11). The
Examiner does not directly contest these statements by Appellants.
The Examiner finds that a section of Scales which describes that
certain hydrophilic monomers can act as crosslinking agents teaches and/or
suggests that the hydrophilic block Q can be crosslinked (Ans. 26—27, citing
4 Appellants concede that some of the possible R” groups could be used to
form crosslinks, but only after the linear (i.e. non-crosslinked) polymers are
formed, but note that Scales does not discuss the desirability of post­
polymerization crosslinking, nor the required additional conditions and
components necessary to carry out the reaction (Appeal Br. 11). Thus,
Scales does not disclose or suggest a crosslinked block Q.
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Application 13/840,919
Scales 135, 148, 150). However, as explained by Appellants, the sections
relied on by the Examiner as teaching that the hydrophilic components can
act as crosslinking agents actually refers to hydrophilic components which
are not used in preparing the hydrophilic block Q, but instead are used in a
reaction mixture with the hydrophilic polymers containing block Q after
their formation (Reply Br. 2, citing Scales 1108).
Thus, the preponderance of the evidence of record, including the
distinctions made over Scales in the Specification, does not support the
Examiner’s findings which support the anticipation and obviousness
rejections over Scales. Therefore, we reverse these rejections.
Rejection III. Appellants argue that claims 13 and 14 of US
Application No. 13/100,473 (now US Patent No. 9,522,980) do not teach or
suggest an amphiphilic nanogel material and one or more cross-linked
copolymers, which pending claim 11, from which pending claims 33 and 34
depends, recites. Claims 13 and 14 of the ’473 Application appear to have
been amended prior to issuance as the ’980 Patent. Accordingly, we will not
reach the merits of the obviousness-type double patenting rejection. The
Examiner should reconsider the obviousness-type double patenting rejection
in view of the claims as issued.
CONCLUSION
We REVERSE the rejection of claims 1—27, 33, 34, and 81—90 under
35 U.S.C. § 103(a) as unpatentable over Scales.
We REVERSE the rejection of claims 1, 2, 11—17, 33, and 34 are rejected
under 35 U.S.C. § 102(a) as anticipated by Scales.
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Application 13/840,919
We do not reach the merits of the provisional rejection of claims 33
and 34 on the grounds of nonstatutory double patenting over claims 13 and
14 of Application No. 13/100,473.
REVERSED
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