Ex Parte Wang

Board of Patent Appeals and Interferences

Jan 30, 2012

11132604 (B.P.A.I. Jan. 30, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/132,604 05/19/2005 Wei Wang 83580.0255 7911
90773 7590 01/30/2012
Steptoe & Johnson LLP
2121 Avenue of the Stars, Suite 2800
Los Angeles, CA 90067
EXAMINER
HEINCER, LIAM J
ART UNIT PAPER NUMBER
1767
MAIL DATE DELIVERY MODE
01/30/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte WEI WANG
____________

Appeal 2011-002139
Application 11/132,604
Technology Center 1700
____________

Before HUBERT C. LORIN, JEFFREY T. SMITH, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-002139
Application 11/132,604

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STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 1 through 20. We have jurisdiction under 35 U.S.C. § 6.
Appellant’s invention is directed to an injectable hydrogel and a
process for its preparation. Claims 1 and 18 are illustrative of the subject
matter on appeal and are reproduced below:
1. A process for the preparation of an injectable
hydrogel, the process comprising the steps of crosslinking one
or more polymers to form a gel, washing the gel, purifying the
gel, and homogenizing the gel to produce the hydrogel, wherein
the process is carried out in a single reaction vessel as a
continuous process.
18. An injectable hydrogel produced by the process as
claimed in claim 1.
The Examiner relied on the following references in rejecting the
appealed subject matter:
Mälson et al. US 4,716,154 Dec. 29, 1987
Piron et al. US 2003/0148995 A1 Aug. 7, 2003
van Buitenen et al. EP 1306127 A1 Feb. 5, 2003

Appellant, App. Br. 4-5, requests review of the following rejections
from the Examiner’s final office action:
1. Claims 18-20 stand rejected under 35 U.S.C. § 102(b) as anticipated
by Piron.
2. Claims 1-11 and 14-17 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Piron and van Buitenen.
3. Claims 12 and 13 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Piron, van Buitenen, and Mälson.
Appeal 2011-002139
Application 11/132,604

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OPINION
Rejection of Claims 18-20 over Piron
The dispositive issue on appeal for this rejection is: Did the Examiner
err in determining that Piron describes the Appellant’s injectable hydrogel as
required by the subject matter of claims 18-20? 1
After thorough review of the respective positions provided by
Appellant and the Examiner, we answer this question in the negative and
AFFIRM.
The Examiner found that Piron discloses an injectable hydrogel made
by the process comprising crosslinking a polymer to produce a gel that
differs from the process of independent claim 1 in the number of reaction
vessels utilized in the production of the hydrogel. Specifically, the
Examiner found that Piron’s Example 1 discloses an injectable hydrogel
made by the process comprising crosslinking a polymer to produce a gel,
washing the gel, purifying the gel and homogenizing the gel. Ans. 4.
Appellant argues that Piron does not disclose all of the process
limitations of claim 1. Specifically Appellant argues that Piron does not
teach the processes occurring in a single reaction vessel. Accordingly,
Appellant submits that Piron does not anticipate the subject matter recited in
claims 18-20. App. Br. 8.
We are unpersuaded by Appellant’s arguments and agree with the
Examiner’s reasoning. It is a well-known proposition that process steps in a
product claim are limiting to the extent they further define the structure of
the product. In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985). When a

1 Appellant has not presented separate arguments for claims 19 and 20.
Consequently, for this rejection, we limit our discussion to claim 18.
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claimed product reasonably appears to be substantially the same as a product
disclosed by the prior art, the burden is on the applicant to prove that the
prior art product does not necessarily or inherently possess characteristics
attributed to the claimed product. In re Spada, 911 F.2d 705, 708 (Fed. Cir.
1990). The Examiner correctly noted that Example 1 of Piron teaches an
injectable hydrogel meeting the Appellant’s injectable hydrogel as described
by the subject matter of independent claim 18. Ans. 5.
Appellant relies on Table 6 of the Specification to present a
comparison between the claimed invention and two commercially available
products to establish the distinction between the claimed invention and that
of Piron. (App. Br. 9).
We agree with the Examiner that the Appellant has not provided any
evidence comparing the claimed product to the product of Piron. Ans. 9.
The data of Table 6 does not compare the instant product to the product of
Piron, but rather to the two commercially available injectable gels. The
Appellant cannot show a difference between Piron and the instant invention
without providing data directed towards the Piron reference. Appellant has
not explained why the two commercially available products are
representative of Piron’s injectable hydrogel.
Accordingly, we sustain the Examiner’s rejection of claims 18-20
under 35 U.S.C. § 102(b) as anticipated by Piron.
Appeal 2011-002139
Application 11/132,604

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Rejection of Claims 1-17 under 35 U.S.C. § 103(a)2
The Examiner found that Piron discloses an injectable hydrogel made
by the process comprising crosslinking a polymer to produce a gel that
differs from the process of independent claim 1 in the number of reaction
vessels utilized in the production of the hydrogel. Specifically, the
Examiner found that Piron’s Example 1 discloses an injectable hydrogel
made by the process comprising crosslinking a polymer to produce a gel,
washing the gel, purifying the gel and homogenizing the gel. The Examiner
recognized that Piron’s Example 1 did not teach the processes occurring in a
single reaction vessel. The Examiner found that van Buitenen teaches
producing and purifying a hydrogel in a single closed loop apparatus/vessel.
The Examiner found that van Buitenen teaches a closed loop for producing a
hydrogel (0020) (including crosslinking the hydrogel (0018) and purifying
the hydrogel (0014)). (Ans. 4-5, and 9-10). The Examiner concluded that it
would have been obvious to a person having ordinary skill in the art to use a
single reactor to form the hydrogel of Piron.
Appellant does not dispute that Piron describes a process of forming
an injectable hydrogel comprising crosslinking a polymer to produce a gel,
washing the gel, purifying the gel and homogenizing the gel. (App. Br. 10).
Appellant argues that van Buitenen (0017) does not teach at least the recited
crosslinking, washing and homogenizing to produce a hydrogel in a single
reaction vessel as a continuous process as is required by independent claim

2 Although additional references are applied in the rejections of claims 12
and 13, the Appellant does not provide a substantive argument as to the
separate patentability of those claims but, rather, relies on the arguments
presented for patentability of claim 1. (App. Br. 11). Accordingly, we limit
our discussion to claim 1.
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1. Appellant argues that van Buitenen only teaches filtrating in a single
filtration unit. Id. Appellant further argues that van Buitenen teaches an
approach involving a plurality of processing units arranged in cascade.
Appellant’s argument that van Buitenen does not teach a single vessel
for producing and purifying the hydrogel is not persuasive for the reasons set
forth by the Examiner. Appellant’s argument does not address the
Examiner’s position that it would have been obvious to use a single reactor
to form the hydrogel of Piron. The Examiner correctly found that van
Buitenen teaches a closed loop for producing a similar hydrogel utilizing
various reaction sections connected to one another. It is recognized that the
Examiner relies upon Example 1 of Piron as describing the process for the
formation of the injectable hydrogel. However, it is recognized that Piron’s
description of the invention does not specify a specific reaction vessel that
must be utilized for formation of the hydrogel. A person of ordinary skill in
the art would have reasonably expected that Piron’s process for producing an
injectable hydrogel could have taken place in an appropriate reactor system
for producing an injectable hydrogel including a single closed loop reaction
vessel. See, e.g., KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 405 (2007); In
re Siebentritt, 372 F.2d 566, 567-68 (CCPA 1967) (express suggestion to
interchange methods which achieve the same or similar results is not
necessary to establish obviousness); see also In re Kahn, 441 F.3d 977, 985-
88 (Fed. Cir. 2006); In re O’Farrell, 853 F.2d 894, 903-04 (Fed. Cir. 1988)
(“For obviousness under § 103, all that is required is a reasonable
expectation of success.” (citations omitted)); In re Keller, 642 F.2d 413, 425
(CCPA 1981) (“ [T]he test [for obviousness] is what the combined teachings
of the references would have suggested to those of ordinary skill in the
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art.”); 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); In re Bozek, 416 F.2d 1385, 1390
(CCPA 1969) (“Having established that this knowledge was in the art, the
examiner could then properly rely, as put forth by the solicitor, on a
conclusion of obviousness ‘from common knowledge and common sense of
the person of ordinary skill in the art without any specific hint or suggestion
in a particular reference.’”). Appellant has not affirmatively stated that the
utilization of a single reaction vessel for producing injectable hydrogel was
previously unknown to a person of ordinary skill in the art.
ORDER
The rejection of claims 18-20 under 35 U.S.C. § 102(b) as anticipated
by Piron is affirmed.
The rejections of claims 1-11 and 14-17 under 35 U.S.C. § 103(a) as
being unpatentable over Piron and van Buitenen; and claims 12 and 13 over
Piron, van Buitenen, and Mälson are affirmed.

TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).

AFFIRMED

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