Ex Parte Zank et al

Patent Trial and Appeal Board

Aug 8, 2016

12934286 (P.T.A.B. Aug. 8, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/934,286 09/24/2010
27384 7590 08/08/2016
Briscoe, Kurt G,
Norris McLaughlin & Marcus, PA
875 Third Avenue, 8th Floor
New York, NY 10022
FIRST NAMED INVENTOR
Jesko Zank
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.
100717-813 KGB 6418
EXAMINER
OSWECKI, JANE C
ART UNIT PAPER NUMBER
1616
MAILDATE DELIVERY MODE
08/08/2016 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 JESKO ZANK, MARTIN STEINBECK, GUIDO BECKER,
and UDO VAN STIPHOUT. 1
Appeal2014-008359
Application 12/934,286
Technology Center 1600
Before FRANCISCO C. PRATS, JEFFREYN. FREDMAN, and
JOHN E. SCHNEIDER, Administrative Patent Judges.
SCHNEIDER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to
powder formulations with reduced hygroscopicity which have been rejected
as obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
The invention relates to formulations comprising hygroscopic solids
with a lipophilic outer layer. Spec. 1. The lipophilic layer is bound to the
core by ionic interaction. Spec. 2.
1 Appellants identify the Real Party in Interest as Bayer Intellectual Property
Gmbh. App. Br. 1.
Appeal2014-008359
Application 12/934,286
Claims 1, 3-11, and 13 are on appeal. Claim 1 is illustrative and
reads as follows:
1. Powder formulation of at least one solid substance that is
hygroscopic under normal conditions, comprising:
a) a core, comprising the at least one hygroscopic solid
substance; and
b) a lipophilic shell surrounding the core,
where the core and the shell are bound together by ionic
interaction; the powder has an average particle size of 0.1 to 20
µm; and the at least one hygroscopic solid substance is an
active substance selected from the group consisting of
pharmaceutically active substances and crop protection active
substances, wherein the crop protection active substances are
selected from the group consisting of herbicides, fungicides,
insecticides, acaricides, nematicides, bird repellants and soil
structure improving agents.
The claims stand rejected as follows:
Claims 1, 3-11, and 13 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Baran, Jr. et al, US 8,062,670 B2 (issued Nov. 22, 2011)
("Baran") in view of Lipid~ Thesaurasize [online], [retrieved July 7, 2013]
Retrieved from the Internet at http://thesaurasize.com/lipid ("Lipid") in view
of Goldshtein, US 2003/0129239 Al; published July 10, 2003
("Go ldshtein"). 2
2In the Final Office Action mailed July 9, 2013, the Examiner rejects the
pending claims over Baran in view of Lipid and Goldshtein. Final Act. 3.
This is repeated in the Restatement of Grounds of Rejection in the
Examiner's Answer. Ans. 2. Confusingly, in the Advisory Action mailed
the Examiner indicates that the rejection based on Goldshtein has been
overcome. Advisory Act. 2. In the Examiner's Answer, the Examiner states
that the rejection based on Goldshtein has been withdrawn. Ans. 9. We
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Application 12/934,286
DISCUSSION
Issue
In rejecting the pending claims, the Examiner finds that Baran teaches
"powder compositions with improved flow properties wherein the
compositions contain surface-modified nanoparticles." Final Act. 4. The
Examiner finds that the surface of the nanoparticles can be modified to
include electrostatic attraction between the core and nanoparticles such that
the interaction between the core and nanoparticles is maintained for
sufficient time for the nanoparticles to achieve their intended utility. Final
Act. 6. The Examiner finds that the nanoparticles can be either hydrophilic
or hydrophobic depending on the nature of the core material such that the
resulting mixture is free-flowing. Ans. 7. The Examiner finds that Lipid
teaches that lipids are included in the class of hydrophobic materials. Final
Act. 8. The Examiner concludes that
[a] skilled artisan at the time the invention was made would
have been motivated to . . . optimize the teachings of Baran,
and expand its utility to the fields of agriculture, food additives
and cosmetics. Therefore, in the absence of evidence to the
contrary, the claimed invention as a whole would have been
prima facie obvious to one of ordinary skill in the art at the time
the invention was made, because every element of the invention
has been fairly suggested by the cited references.
Final Act. 10.
Appellants contend that Baran does not teach the limitation that the
shell and core are bound together by ionic interaction. App. Br. 7.
treat the rejection stated in the Final Office Action Mailed July 9, 2013 as
the rejection that has been appealed.
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Application 12/934,286
Appellants argue that Baran's teaching of "electrostatic attraction" does not
necessarily mean ionic bonds as electrostatic attraction can also embrace van
der Waals forces. App. Br. 8. Appellants go on to argue that Baran does not
inherently teach ionic bonding; therefore, the Examiner has not established a
prima facie case of obviousness. App. Br. 9.
The issue with respect to this rejection is whether the Examiner has
established by a preponderance of the evidence that the pending claims
would have been obvious over Baran combined with Lipid as defined by
35 U.S.C. § 103(a).
Findings of Fact
FF 1. Baran teaches powders with improved flow properties
containing surface modified nanoparticles. Baran, Abstract. Baran teaches
that suitable powder flow properties are important in pharmaceutical, food,
plastic, and battery production applications. Baran, col. 1, 11. 34-36.
FF2. The nanoparticles of Baran comprise a core material and a
surface that is different or modified from the core material. Baran, col. 5, 11.
6-31.
FF3. The core material can comprise metal oxides. Baran, col. 5, 11.
27-40.
FF4. Baran teaches that the surface modifying agents can include
organic acids. Baran, col. 6, 11. 55-58; col. 7, 11. 9-11.
FF5. Baran teaches that the modification can be made to the core
material or to a permanent or temporary shell. Baran, col. 6, 11. 15-19.
FF6. Baran teaches that the modification can include electrostatic
attraction. Baran, col. 6, 11. 19-24.
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Application 12/934,286
FF7. The nanoparticle of Baran can be hydrophobic. Baran, col. 8, 11.
22-30.
FF8. Lipids are hydrophobic. Lipids.
Principles of Law
"[N]ot unlike a determination of infringement, a determination of
anticipation, as well as obviousness, involves two steps. First is construing
the claim, ... followed by, in the case of anticipation or obviousness, a
comparison of the construed claim to the prior art." Key Pharms. v. Hereon
Labs. Corp., 161 F.3d 709, 714 (Fed. Cir. 1998).
"[D]uring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification." In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000).
Analysis
Claim 1 is representative of the rejected claims and is directed to a
powder composition comprising a substance having a hydroscopic core and
a lipophilic shell surrounding the core. We agree with the Examiner that the
subject matter of claim 1 would have been obvious to one of ordinary skill in
the art at the time the invention was made. Baran teaches surface-modified
nanoparticles which comprise a core material and a surface that is different
or modified from the core material. FF2. Suitable core materials include
metal oxides. FF3. Baran teaches that the surface of the nanoparticle can be
modified to include electrostatic attraction between the core and the shell.
FF6. The shell can be hydrophobic in nature. FF7. We agree with the
Examiner that
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Appeal2014-008359
Application 12/934,286
[a] skilled artisan at the time the invention was made would
have been motivated to . . . optimize the teachings of Baran,
and expand its utility to the fields of agriculture, food additives
and cosmetics. . .. [T]he claimed invention as a whole would
have been prima facie obvious to one of ordinary skill in the art
at the time the invention was made, because every element of
the invention has been fairly suggested by the cited references."
Ans. 9; FFl.
Appellants contend that Baran does not teach or suggest the limitation
that the shell and the core are "bound together by ionic interaction." App.
Br. 7. Specifically Appellants argue that the teaching of Baran of
electrostatic attraction does not necessarily mean ionic interaction in that it
may also refer to van der Waals forces as well. App. Br. 7-8. We are
unpersuaded. We agree with the Examiner that, given the broadest
reasonable interpretation, the term ionic interaction in Appellants' claim 1
encompasses Baran' s term electrostatic attraction. Ans. 11-13. As the
Examiner pointed out, Baran uses both the terms interaction and attraction
suggesting to one skilled in the art that the two are the same. Ans. 12; see
also Baran, col. 6, 11. 19-24. Baran also teaches that the core may be a metal
oxide and the shell an organic acid indicating a ionic bond between the shell
and the core. FF3 and 4; see also Spec. 4 (oxides and/or hydroxides of
alkaline-earth metals are Appellants' especially preferred core materials;
organic acids are preferred lipophilic shell materials).
Similarly, as the examiner has noted, the terms ionic and electrostatic
are interrelated. Ans. 11-12. As the Examiner points out, Hawley's
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Application 12/934,286
Chemical Dictionary3 equates the word "ionic" with the word
"electrostatic." Ans. 12. We also note that Baran lists London Forces (van
der Waals forces) separately from electrostatic forces, indicating that Baran
did not include van der Waals forces in the term electrostatic attraction.
Baran, col. 6, 11. 15-29. Therefore, we agree with the Examiner that the
ionic interaction between the shell and the core recited in the present claims
is clearly taught or suggested by Baran.
In their Reply Brief, Appellants raise for the first time an argument
that Baran does not teach a lipophilic shell. Reply Br. 4-5. While we need
not consider arguments raised for the first time in a Reply Brief, 37 C.F.R.
§ 41.41 (b )(2 ), for the sake of completeness, we will address that argument
here.
We agree with the Examiner that Baran suggests a lipophilic shell.
Ans. 6-7. As the Examiner points out, Baran specifically teaches using a
hydrophobic shell which embraces use of a lipophilic shell. Id.; FF7-8
While, as Appellants point out, Baran specifically teaches using
fluorocarbons as a possible hydrophobic material, Reply Br. 2, Baran also
teaches that the hydrophilic material is selected "based upon the nature of
the processing solvents and bulk materials used and the properties desired of
the resultant combination." Baran, col. 8, 11. 31-34. This would lead one
skilled in the art to consider using a lipophilic outer shell. Indeed, as the
Examiner found (Ans. 5), Baran teaches including a number lipophilic acid-
containing surfactants on the surface of its particles, including octanoic acid,
3 HAWLEY'S CHEMICAL DICTIONARY 459 (121hed. 1993).
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Application 12/934,286
dodecanoic (lauric) acid, stearic acid, and oleic acid (Baran, col. 7, 11. 65-
66), which are among the preferred organic acids identified in Appellants'
Specification (see Spec. 5). We note also that Baran describes embodiments
that include metal oxides and lipohilic fatty acids. Baran, col. 7, 1. 66
through col. 8, 1. 6 (iron oxide nanoparticles modified with stearic acid;
zirconia (zirconium dioxide) modified with oleic acid).
Conclusion of Law
We conclude that the Examiner has established by a preponderance of
the evidence that claim 1 would have been obvious in view of Baran
combined with Lipid as defined by 35 U.S.C. § 103(a).
Claims 3-11 and 13 have not been argued separately and, therefore,
fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
SUMMARY
We affirm the rejection of claims 1, 3-11, and 13.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § l.136(a)(l)(iv).
AFFIRMED
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