Ex Parte Wang et al

Patent Trial and Appeal Board

Jun 29, 2016

12539324 (P.T.A.B. Jun. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/539,324 08/11/2009
22827 7590 06/30/2016
DORITY & MANNING, PA
POST OFFICE BOX 1449
GREENVILLE, SC 29602-1449
FIRST NAMED INVENTOR
Qian Wang
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.
USC-187 9088
EXAMINER
ZOU, NIANXIANG
ART UNIT PAPER NUMBER
1648
MAILDATE DELIVERY MODE
06/30/2016 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 PATENT TRIAL AND APPEAL BOARD
Ex parte QIAN WANG and TAO LI
Appeal2013-009455
Application 12/539,324
Technology Center 1600
Before DEMETRA J. MILLS, ERIC B. GRIMES, and JOHN G. NEW,
Administrative Patent Judges
MILLS, Administrative Patent Judge.
DECISION ON APPEAL
This Decision vacates and replaces our Decision dated April 14, 2016.
This is an appeal under 35 U.S.C. § 134. The Examiner has rejected
the claims as unpatentable under 35 U.S.C. § 103(a) as being obvious. We
have jurisdiction under 35 U.S.C. § 6(b).
We Affirm.
Appeal2013-009455
Application 12/539,324
STATEMENT OF CASE
The present Specification discloses core-shell bionanocomposites
which "can generally be described as having a polymeric core with
biomacromolecules attached about the outer surface of the core to form a
shell." Spec. 9. The Specification discloses a method of making
bionanocomposites "based on self-assembly along with polymerization
including emulsion and living polymerization." Spec. 10. The polymeric
core may be P4VP (poly( 4-vinylpyridine )) and the shell coating may be
CPMV (cowpea mosaic virus). Spec. 12-14.
The following claims are representative.
1. A bionanocomposite comprising
a core comprising a polymer having pyridine functional
groups, wherein the core defines an outer surface having a
surface area; and
a shell comprising a plurality of biomacromolecules,
\"/herein the shell is positioned about the outer surface of the
core such that the shell covers at least about 50% of the surface
area of the polymeric core;
wherein the polymer having pyridine functional groups
non-covalently interacts with the biomacromolecules to form
the bionanocomposite.
11. A method of forming a bionanocomposite defining a shell
and a core, the method comprising
non-covalently attaching biomacromolecules about a
polymeric core, wherein the polymeric core comprises a
polymer having pyridine functional groups and defines an outer
surface having a surface area, and wherein the
biomacromolecules cover at least about at least about 50% of
the surface area of the polymeric core to form a shell.
2
Appeal2013-009455
Application 12/539,324
Cited References
Justin T. Russell et al., Self-Assembly and Cross-Linking of Bionanoparticles
at Liquid-Liquid Interfaces, 44 ANGEW. CHEM. INT. ED., 2420-2426 (2005).
Syuji Fujii et al., Stimulus-Responsive Particulate Emulsifiers Based on
Lightly Cross-Linked Poly(4-vinylpyridine)--Silica Nanocomposite
Microgels, 22 LANGMUIR, 6818-6825 (2006).
Additional Reference
Rembaum 1 et al.
Grounds of Rejection
us 4,259,223 Mar. 3 1, 19 81
Claims 1-3, 6-8, 10-16, 19, and 20 were rejected under 35 U.S.C.
§ 103 (a) as being unpatentable over Russell and Fujii.
FINDINGS OF FACT
The Examiner's findings of fact are set forth in the 1A~nsv'l1er at pages
3-8. The following facts are highlighted.
1. Russell teaches a bionanocomposite comprising a core of
perfluorodecalin droplets and a shell of CPMV particles segregated at
1 According to the Examiner, "Rembaum teaches that a microsphere made
of polyvinyl pyridine binds to RNA, DNA, virus, and bacteria. This teaching
further strengthens the ground of rejection based on Russell and Fujii." Ans.
6. We do not include Rembaum as part of the basis for the rejection because
it is not cited by the Examiner in the statement of rejection. "Where a
reference is relied on to support a rejection, ... there would appear to be no
excuse for not positively including the reference in the statement of
rejection." In re Hoch, 428 F.2d 1341, 1342 n.3 (CCPA 1970).
3
Appeal2013-009455
Application 12/539,324
the perfluorodecalin-water interface, thus, stabilizing the dispersion of
the oil droplets; see e.g., P. 2420, right col., para. 2.
2. Russell discloses a bionanocomposite of colloidal and nanoscopic
particles, such as cow pea mosaic virus (CPMV). P. 2420, right col.
3. Russell discloses that
Wild-type CPMV (wt-CPMV) was labeled covalently with the
fluorescent dye Oregon Green 488 or N,N,N',N' -tetramethyl-
rhodamine (Scheme 1)... Perfluorodecalin droplets with
diameters of 10-100 µm were obtained by dispersing
perfluorodecalin in an aqueous buffer solution of fluorescently
labeled CPMV particles. The CPMV particles segregated at the
perfluorodecalin-water interface, thus stabilizing the dispersion of
the oil droplets. P. 2420, right col.
4. Russell also teaches a method of forming the bionanocomposite,
comprising non-covalently attaching biomacromolecules about a
polymeric core by combining an organic solution containing the
perfluorodecalin \"1ith an aqueous solution containing the CP!vfV to
form an emulsion; mixing the emulsion; and removing the organic
solvent by evaporating; see e.g., left col., p. 2421, right col.- 2422,
right col., 1. 4-5.
5. Russell does not teach that: (1) the core is made of "a polymer having
pyridine functional groups", specifically poly( 4-vinylpyridine ); and
"the shell covers at least about 50% of the surface area of the
polymeric core" (Claims 1, 8, and 11 ). Ans. 3--4.
6. Fujii teaches a silica nanocomposite microgel particle (P4VP-Si02),
wherein poly( 4-vinylpyridine) is the polymer core, and the shell
covers at least about 50% of the surface area of the polymeric core;
4
Appeal2013-009455
Application 12/539,324
see e.g., the bridging para. between left and right col. p. 6819, and
para. 2, left col. p. 6821.
7. Fujii discloses pH responsive, stable, nanoparticles made of poly(4-
vinylpyridine ). p. 6821, left col., para. 1 and 2.
8. Fujii, page 6818, first col., discloses that
The use of colloidal particles to prepare and stabilize
emulsions (so-called "Pickering emulsions") has been
recognized for over a century .... Most of the literature is
concerned with various types of inorganic particles such as
silica, barium sulfate, calcium carbonate, or carbon black,
although recently there have been several interesting examples
of organic particles used as particulate emulsifiers.
Emphasis added.
9. Fujii, page 6818, second col., discloses that
Russell et al. used ultrafine CdSe sols and 30 nm cowpea
mosaic virus particles ... as nano scale particulate emulsifiers to
stabilize either oil-in-water and/or water-in-oil emulsions. It
was demonstrated that these nanoparticles assembled at the
droplet interface and could be subsequently cross-linked so as
to stabilize these superstructures. (Reference citations omitted.)
10. Both Russell and Fujii disclose non-cross-linked
nanocomposite particles. See page 2424, right col., last para in
Russell, ("[I]t has been shown that CPMV nanoparticles self-
assemble as a monolayer at perfluorodecalin-water
interfaces."); and page 6820, left col., para 1 in Fujii, ("Non-
cross-linked nanocomposite particles were also synthesized in
the absence of any cross-linking monomer using the protocol
described by Percy et al."). See also, Ans. 6.
5
Appeal2013-009455
Application 12/539,324
PRINCIPLES OF LAW
In making our determination, we apply the preponderance of the
evidence standard. See, e.g., Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427
(Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings
before the Office).
"In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness. Only if that
burden is met, does the burden of coming forward with evidence or
argument shift to the applicant." In re Rijckaert, 9 F.3d 1531, 1532 (Fed.
Cir. 1993).
Obviousness - Russell in view of Fujii
We find that the Examiner has provided evidence to support a prima
facie case of obviousness. We provide the following additional comment to
the Examiner's argument set forth in the Final Action and Answer.
Appellants only provide argument for independent claims 1 and 11 as a
group in the Brief (p. 3-7).
The Examiner concludes from the listed findings of fact, herein, that
It would have been prima facie obvious to one of
ordinary skill in the art at the time the invention was made to
substitute the perfluorodecalin droplets of Russell's for the
polymer of poly( 4-vinylpyridine) of Fujii's in order to make a
... bionanocomposite. One skilled in the art would have been
motivated to generate the claimed invention with a reasonable
expectation of success, given the success of the prior art that
CPMV particles can be assembled at the droplet interface,
resulting a in [sic] bionanocomposite, as illustrated by Russell,
and also given that poly( 4-vinylpyridine) can be polymer core
of a nanoparticle, and act as pH-responsive emulsifier of a
nanoparticle, as taught by Fujii. Therefore, the invention as a
6
Appeal2013-009455
Application 12/539,324
whole was clearly prima facie obvious to one of ordinary skill
in the art at the time the invention was made.
Ans. 4-5.
Appellants contend that
In making the rejection, the Examiner apparently
assumes that the interaction between poly( 4-vinylpyridine) and
biomacromolecules (as taught by Russell) would perform the
same as the interaction between poly( 4-vinylpyridine) and silica
particles (as taught by Fujii). This assumption is completely
unfounded, and finds no support in the references. Instead, one
of ordinary skill in the art would have readily recognized that
the interaction between poly( 4-vinylpyridine) and
biomacromolecules (e.g., CPMV) would not be the same as the
interaction between poly( 4-vinylpyridine) and silica particles.
Br. 4-5. Appellants further argue that
The Examiner refers to the Fijii's [sic] introductory
paragraphs, which discusses others' works, and states that this
discussion bridges the divide betv"1een inorganic particles and
organic particles. This discussion, however, expressly
distinguishes various inorganic particles and organic particles in
its second sentence. There is simply no support in the teachings
of either cited reference for the Examiner's statement that
"silica particles are just an example used as emulsifier in the
study on poly( 4-vinylpyridine) nanocomposite." (Final Office
Action, page 6).
Br. 5. Finally, Appellants argue that Russell teaches that crosslinking is
required or essential to the formation of stable particles. Br. 6.
We conclude that the Examiner has established a prima facie case of
obviousness on the evidence before us which has not been rebutted by
Appellants. Both Russell and Fujii disclose the formation of Pickering
7
Appeal2013-009455
Application 12/539,324
emulsions. Russell, page 2420, col. 2, 1. 2; Fujii, page 6818, col. 1. Russell
discloses a Pickering emulsion comprised of a perfluorodecalin
droplet/particle coated with an organic CPMV. Russell, p. 2421, right col.
Fujii discloses a Pickering emulsion comprised ofpoly(4-vinylpyridine)
particles with an inorganic Si02 coating. Fig. 1. Fujii discloses that other
particulate polymers may also be used in Pickering emulsions, including
poly(2-( dimethylamino )ethyl methacrylate )-based diblock copolymer and
polystyrene/poly[2-( dimethylamino )ethyl methacrylate-stat-ethylene glycol
dimethacrylate. P. 6819, col. 1. Both Russell and Fujii disclose non-cross-
linked nanocomposite particles. See page 2424, right col., last para in
Russell, ("[I]t has been shown that CPMV nanoparticles self-assemble as a
monolayer at perfluorodecalin-water interfaces."); and page 6820, left col.,
para 1 in Fujii, ("Non-cross-linked nanocomposite particles were also
synthesized in the absence of any cross-linking monomer using the protocol
described by Percy et al."). See also, Ans. 6.
Thus, it would have been obvious to one of ordinary skill in the art at
the time of the invention that numerous types of Pickering emulsions could
have been prepared using various particles and coating materials, including
organic and inorganic coating materials known in the art as disclosed in Fujii
and Russell.
After the burden of making a prima facie case is met, the burden of
coming forward with evidence or argument to rebut the Examiner's prima
facie case shifts to the applicant. In re Rijckaert, 9 F.3d 1531, 1532 (Fed.
Cir. 1993). Appellants have not established with evidence or argument that
one of ordinary skill in the art would not have expected that the substitution
of one oil droplet/particle or polymer for another in a Pickering emulsion
8
Appeal2013-009455
Application 12/539,324
would not form a bionanocomposite, as claimed. Appellants argue that one
of ordinary skill in the art would have readily recognized that the interaction
between poly(4-vinylpyridine) and biomacromolecules (e.g., CPMV) would
not be the same as the interaction between poly( 4-vinylpyridine) and silica
particles. However, Appellants adduce no evidence of record in support of
this contention and their arguments are therefore only attorney argument and
do not constitute evidence that one of ordinary skill in the art would not have
expected poly( 4-vinylpyridine) and CPMV to form bionanoparticles based
on the disclosures of the cited references. See In re Pearson, 494 F.2d 1399,
1405 (CCPA 1974) ("Attorney's argument in a brief cannot take the place of
evidence.").
As to Appellants' arguments that both Russell and Fujii require cross-
linking between the particle and coating (App. Br. 6-7) and teach away from
non-crosslinked particle/coating interactions, we are not persuaded. Russell
studied force-deformation measurements on droplets with particle
assemblies that were both non-cross-linked and cross-linked using
glutaraldehyde. Russell, p. 2424, col. 2, emphasis added. Thus, Russell
discloses the preparation of non-crosslinked droplet/particle assemblies.
Likewise, Fujii describes that, "Non-cross-linked nanocomposite particles
were ... synthesized in the absence of any cross-linking monomer using the
protocol described by Percy et al." P. 6820, col. 1. Therefore, while the
cited references disclose that cross-linked droplet/particle assemblies were
preferred for use in a low pH environment (not required by claims 1 and 11 ),
each of the cited references discloses that the preparation of non-crosslinked
coated droplet or polymer assemblies was known at the time of the
9
Appeal2013-009455
Application 12/539,324
invention. Appellants have failed to address or explain the non-crosslinked
disclosure in either Russell or Fujii.
A preponderance of the evidence does not support patentability and
the obviousness rejection is affirmed for the reasons of record.
CONCLUSION OF LAW
The cited references support the Examiner's obviousness rejection,
which is affirmed for the reasons of record, and herein.
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. § l.136(a).
AFFIRMED
10