Ex Parte Zink et al

Patent Trial and Appeal Board

Aug 29, 2016

12812359 (P.T.A.B. Aug. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/812,359 07/09/2010
22434 7590 08/31/2016
Weaver Austin Villeneuve & Sampson LLP
P.O. BOX 70250
OAKLAND, CA 94612-0250
FIRST NAMED INVENTOR
Jeffrey I. Zink
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.
UCLAP159US/2008-232-2 6507
EXAMINER
WESTERBERG, NISSA M
ART UNIT PAPER NUMBER
1618
NOTIFICATION DATE DELIVERY MODE
08/31/2016 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):
USPTO@wavsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEFFREY I. ZINK, FUYUHIKO TAMANOI,
EUNSHIL CHOI, SARAH ANGELOS, SANAZ KABEHIE,
ANDRE NEL, and JIE LU1
Appeal2015-000991
Application 12/812,359
Technology Center 1600
Before DEMETRA J. MILLS, JOHN G. NEW, and
RACHEL H. TOWNSEND, Administrative Patent Judges.
NEW, Administrative Patent Judge.
DECISION ON APPEAL
Appellants file this appeal under 35 U.S.C. § 134(a) from the
Examiner's Final Rejection of claims 1-29. Specifically, claims 1-10, 18-
24, 27, and 28 stand rejected as unpatentable under 35 U.S.C. § 103(a) as
being obvious over the combination of Cheng-Yu Lai et al., A Mesoporous
Silica Nanosphere-Based Carrier System with Chemically Removable CdS
Nanoparticle Caps for Stimuli-Responsive Controlled Release of
Neurotransmitters and Drug Molecules, 125 J. AM. CHEM. Soc. 4451-59
1 Appellants state the real party-in-interest is The Regents of the University
of California. App. Br. 3.
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Application 12/812,359
(2003) ("Lai") and CNSI 2005 Annual Research Report, Powered Artificial
Nano-Machines: Molecular Valves and Impellers, 51 Interdisciplinary
Collaborative Research (2005) ("CNSI").
Claims 11-14, 25, and 26 stand rejected as unpatentable under
35 U.S.C. § 103(a) as being obvious over the combination of Lai, CNSI, and
Swadeshmukul Santra et al., Folate Conjugated Fluorescent Silica
Nanoparticles for Labeling Neoplastic Cells, 5(6) J. NANOSCI. & NANOTECH.
899-904 (2005) ("Santra").
Claim 17 stands rejected as unpatentable under 35 U.S.C. § 103(a) as
being obvious over the combination of Lai, CNSI, Zoltan K6nya et al.,
Synthetic Insertion of Gold Nanoparticles into Mesoporous Silica, 15 Chem.
Mater. 1242--48 (2003) ("K6nya"), and Giulio Paciotti et al., Colloidal Gold
Nanoparticles: A Novel Nanoparticle Platform for Developing
Multifunctional Tumor-Targeted Drug Delivery Vectors, 67 DRUG DEV. RES.
4 7-54 (2006) ("Paciotti").
Claims 15 and 16 stand rejected as unpatentable under 35 U.S.C.
§ 103(a) as being obvious over the combination of Lai, CNSI, K6nya,
Paciotti, and Zhang et al. (US 2006/0216239 Al, September 28, 2006)
("Zhang").
Claims 28 and 29 stand rejected as unpatentable under 35 U.S.C.
§ 103(a) as being obvious over the combination of Lai, CNSI, and Thomas
Schiestel et al., Controlled Surface Functionalization of Silica Nanospheres
by Covalent Conjugation Reactions and Preparation of High Density
2
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Streptavidin Nanoparticles, 4(5) J. NANOSCI. & NANOTECH. 504--11 (2004)
("Schiestel"). 2
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
NATURE OF THE CLAIMED INVENTION
Appellants' invention is directed to a nanodevice having a
containment vessel defining a storage chamber therein and defining at least
one port to provide transfer of molecules to or from the storage chamber,
and a plurality of impellers attached to the containment vessel. The plurality
of impellers are of a structure and are arranged to substantially block
molecules from entering and exiting the storage chamber of the containment
vessel when the impellers are static and are operable to impart motion to the
molecules to cause the molecules to at least one of enter into or exit from the
storage chamber of the containment vessel. Abstract.
REPRESENTATIVE CLAIM
Claim 1 is representative and recites:
1. A nanodevice, comprising:
a containment vessel defining a storage chamber therein
and defining at least one port to provide transfer of molecules to
or from said storage chamber; and
2 Claims 28 and 29 were also rejected by the Examiner as unpatentable
under 35 U.S.C. § 112, first and/or second paragraphs, as indefinite. Final
Act. 2-3. The Examiner has withdrawn this rejection. See Advisory Act.,
January 9, 2014.
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an impeller attached to said containment vessel,
wherein said impeller is operable for at least one of
loading, unloading, or containing molecules within said
containment vessel, and
wherein said nanodevice has a maximum dimension of
less than about 400 nm and greater than about 50 nm.
App. Br. 24.
ISSUES AND ANALYSES
We agree with, and adopt, the Examiner's findings and conclusion
that the appealed claims are prima facie obvious over the cited prior art
references. We address the arguments raised by Appellants below.
A. Claims 1-10, 18-24, 27, and 28
Issue
Appellants argues the Examiner erred because a person of ordinary
skill in the art would not have had a reasonable expectation of success in
combining the teachings of Lai and CNSI to arrive at Appellants' claimed
invention. App. Br. 10.
Analysis
Appellants argue the function of the claimed nanodevices is sensitive
to several factors, including the relative sizes of the storage chambers,
impellers, and molecules within the containment vessel, and the nature and
location of the attachment of the impeller to the containment vessel. App.
Br. 10. According to Appellants, the Specification explains that in an
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embodiment, "particular molecules to be used as the impellers 204 are
chosen taking into consideration the size of the storage chamber 202 and the
size of the molecules that will be stored in the storage chamber 202." Id.
(quoting Spec. i-f 25).
Appellants argue Lai teaches only mesoporous silica nanospheres with
an average pore diameter of 2.3 nm; a single species of linker, and CdS
nanoparticles as caps. Lai does not, Appellants argue, teach other sizes of
these components. App. Br. 10.
Furthermore, Appellants contend, CNSI does not address the issue of
relative sizes of the storage chambers, impellers, and molecules within the
containment vessel, nor does it teach the nature of the attachment of
impellers to the containment vessel. Id. Rather, argue Appellants, CNSI
teaches only that "molecules are attached to the interiors of 2-nm pores in
silica." Appellants argue CNSI does not contemplate different sizes of
impellers, nor molecules to be stored within storage chambers. Id. Rather,
Appellants assert, CNSI teaches a single, schematic illustration showing
impellers that fit within pores and molecules within pores. Id. However,
Appellants argue, the single schematic illustration of CNSI fails to direct the
reader to the importance of the relative sizes of these components in either
preparation or operation of nanodevices. Id.
Appellants further contend the Specification reveals the importance of
relative sizes, disclosing: "[T]o evenly derivatize the interiors of the
mesopores," azobenzene is coupled to a linker molecule, which is then
added to a silica sol during synthesis, in a co-condensation method. App.
Br. 11. (quoting Spec i-f 4 7 (emphasis added by Appellants)). However,
Appellants contend, large azobenzenes such as AzoG 1: "cannot penetrate
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deep inside the pores" and are attached instead after the silica particles are
already prepared; a post-synthesis modification method. Id. Therefore,
different synthetic routes are necessary to attach different sizes of impellers
to mesoporous silica. Id. Appellants assert CNSI does not describe any
synthetic route for producing mesoporous silica with impellers attached, and
provides no indication that different methods of synthesis may be required
for different impellers. Id.
Nor does CNSI teach, Appellants argue, the optimal concentration and
size of impellers, as disclosed by Appellants' Specification. App. Br. 11
(citing Spec. i-fi-153, 26). Finally, Appellants argue, CNSI does not teach or
suggest the concentration/ quantity of impellers that would be required to
create an operable device. Id.
The Examiner responds that, with respect to Appellants' argument
that the references fail to teach or suggest certain features of the claimed
invention, a number of the features upon which Appellants rely (e.g., relative
size of various components, derivatization inside the pores, and a non-leaky
system) are not recited in the claims on appeal and may not be imported as
limitations into the claims from Appellants' Specification. Ans. 11 (citing In
re Van Geuns, 988 F.2d 1181, 1185 (Fed. Cir. 1993).
The Examiner also finds knowledge that would be known to a person
of ordinary skill need not be explicitly taught by the applied art, because the
obviousness analysis looks to both the teachings of the prior art and the
knowledge of a person of ordinary skill in that art. Ans. 11. The Examiner
finds that such a person would know that the cap of a pore should correlate
with the size of the opening to be capped and that too large or too small of a
"cap" would not adequately close the opening in the containment vessel. Id.
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The Examiner also finds that, as there are multiple pores in the nanodevice,
each pore must be capped; a person of ordinary skill would understand the
amount of impellers or cap must necessarily be varied. Id. The Examiner
further finds a person of ordinary skill in the art would realize that a drug
that is larger than the container storage device would not fit inside the
container and such a drug would have to be placed inside a larger container.
Id.
Finally, the Examiner finds that a person of ordinary skill in the art
would also understand that the functional group available for attachment of
groups to silica surfaces, and the reactions that such functional groups can
undergo, and would be able to use such knowledge to attach the reversible
azobenzene impellers taught by CNSI even though explicit methodology for
attachment is not taught by the cited prior art. Ans. 11.
We think the Examiner has the better position. As an initial matter,
we disagree with Appellants' characterization of CNSI. CNSI explicitly
teaches: "The operation of the valve is powered by chemical or light energy.
In the simplest operation, oxidation of the moving part causes the ring to
block the pore and reduction of the moving part reverses the action and
opens the pore." CNSI 51. CNSI also teaches:
The impeller uses light-powered derivatized azobenzene
molecules as its moving parts. The molecules are attached to the
interiors of 2-nm pores in silica. When irradiated with
appropriate wavelengths of light, the molecules "wag" back and
forth. Molecules that are not attached to the pore walls are free
to move through the pores and are impelled by the moving
azobenzenes.
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Id. CNSI thus explicitly teaches that the moving impellers can block the
pore and, when activated, can permit an active agent, stored in the storage
portion of the nanodevice, to exit the nanodevice through the pores.
We agree with the Examiner that relative size of various components
are not recited in the claims on appeal, and that the claims do not recite a
manner of attaching impellers to the "containment vessel" (i.e. derivatization
inside the pores or otherwise), or the concentration of impellers attached to
the containment vessel such that a non-leaky system is created; we also
agree with the Examiner that it would not be appropriate to import such
limitations from the Appellants' Specification into the claims under the
broadest reasonable interpretation applied during examination proceedings.
See Van Geuns, 988 F.2d at 1185 (Fed. Cir. 1993); see also Electro Med.
Sys. S.A. v. Cooper Life Sci., Inc., 34 F.3d 1048, 1054 (Fed. Cir. 1994)
("[P]articular embodiments appearing in a specification will not be read into
the claims when the claim language is broader than such embodiments")
(citation omitted)).
Furthermore, we agree with, and adopt, the Examiner's finding that
the obviousness analysis includes not just the cited references, but also the
knowledge of a person of ordinary skill in the art. See KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007):
Often, it will be necessary for a court to look to interrelated
teachings of multiple patents; the effects of demands known to
the design community or present in the marketplace; and the
background knowledge possessed by a person having ordinary
skill in the art, all in order to determine whether there was an
apparent reason to combine the known elements in the fashion
claimed by the patent at issue.
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We agree with the Examiner that the level of skill in the science of
nanotechnology development is high; the majority of the authors of the cited
references are academics holding, or pursuing, advanced degrees in
chemistry, the biomedical sciences, or materials science. We further agree
with the Examiner that a person of ordinary skill in this field would
understand upon reading the disclosures of Lai and CNSI, contrary to
Appellants' arguments, that, e.g., impellers must be of an appropriate size to
work with the pores of the nanodevice, that the number of impellers should
be appropriate to the numbers of pores, that a drug molecule should be able
to fit into the storage device of the nanodevice, how to attach the impeller to
the nanodevice, etc. See App. Br. 10.
In particular, Lai discloses that the capping of the openings of the
mesoporous channels of the nanosphere drug delivery system, is performed
by size-defined CdS nanoparticles selected to physically block the
drugs/neurotransmitters of certain sizes from leaching out. Therefore the
size of the capping molecules is a result effective variable based on both the
size of the pores of the nanosphere and the nature of the drugs/neuro-
transmitters contained therein. We agree with the Examiner that
determining such results-effective variables would be within the skills of an
ordinary artisan in the field of nanotechnology. See In re Boesch, 617 F .2d
272, 276 (C.C.P.A. 1980) ("[D]iscovery of an optimum value of a result
effective variable ... is ordinarily within the skill of the art") (citations
omitted)). Moreover, because this knowledge would be well within the
scope of knowledge of a person of ordinary skill in the art, we agree with the
Examiner that a person of ordinary skill would have a reasonable
expectation of success in combining the references. See KSR Int 'l Co. v.
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Teleflex Inc., 550 U.S. 398, 418 (2007) (the obviousness analysis relies upon
the teachings of the prior art and the knowledge of a person of ordinary skill
in the art).
Finally, we observe with respect to Appellants' arguments concerning
the relative size of the pores, impellers, and active agents within the storage
area, our reviewing court has held that, where the only difference between
the prior art and the claims was a recitation of relative dimensions of the
claimed device and a device having the claimed relative dimensions would
not perform differently than the prior art device, the claimed device was not
patentably distinct from the prior art device. In Gardner v. TEC Systems,
Inc., 725 F.2d 1338, 1346 (Fed. Cir. 1984). We consequently affirm the
Examiner's rejection of claims 1-10, 18-24, 27, and 28.
B. Claim 18
Issue
Appellants argue the Examiner erred in finding the limitation of claim
18 reciting: "said plurality of impellers are of a structure and are arranged to
substantially block molecules from entering and exiting said storage
chamber of said containment vessel when said impellers are static." App.
Br. 12.
Analysis
Appellants point to their Specification, which discloses: "attach[ing]
larger azobenzene derivatives at the pore orifices such that the machines can
gate the pore openings in the dark" and that "[i]n this gatekeeping approach,
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the size of the machine selected is an important factor ... the azobenzene
derivative must be sufficiently large such that it can block the nanopore
entrances when it is static, and mobile enough when irradiated to provide
openings through which molecules can escape." App. Br. 12 (quoting Spec.
ii 54).
Appellants point out that Lai teaches CdS nanocrystals that function
as irreversibly removable caps, i.e., they do not allow for partial release.
App. Br. 13 (citing Lai 4451-52, Fig. 1). Appellants also argue that CNSI
does not suggest a configuration where larger impellers are attached at pore
orifices to control the flow of molecules, i.e., prevent movement while static,
but which can be selectively operated to allow molecules to enter or exit. Id.
The Examiner responds that, without attachment of the impeller at the
ends of the channels, the structure (Lai as modified by CNSI) will not
function as the controlled release delivery device described by Lai. Ans. 12.
The Examiner also finds that the features upon which applicant relies (e.g.,
partial release of molecules) are, again, not recited in the rejected claims, but
are being improperly imported into the claims from Appellants'
Specification. Id. (citing Van Geuns, 988 F.2d at 1185). The Examiner
finds that the caps of Lai are irreversible, whereas the impellers of CNSI,
which are valves controlling whether particles are trapped or released from a
containment area, are reversible by irradiation with light, which speaks
directly to the motivation to replace the CdS caps of Lai, which are located
at the ends of the containment pore, with the azobenzene impellers of CNSI.
Id.; see also Non-Final Office Action, dated Feb. 14, 2013, 6-7.
We are not persuaded by Appellants' arguments. Lai explicitly
teaches a "nanosphere-based (MSN) controlled-release delivery system ...
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characterized [by] using surface-derivatized cadmium sulfide (CdS)
nanocrystals as chemically removable caps." Lai Abstr. Furthermore the
CdS caps are "size-defined CdS nanoparticles to physically block the drugs/
neurotransmitters of certain sizes from leaching out." Id. (emphasis added).
We agree with the Examiner that a person of ordinary skill in the art, seeking
to substitute the irreversibly-removable CdS caps taught by Lai with the
reversibly-closable azobenzene impellers taught by CNSI, would choose
pore and impeller sizes such that the pores could be reversibly opened or
occluded by the size of the impeller, and that optimizing the size of the pores
and impellers would be within the skill of that artisan. We consequently
affirm the Examiner's rejection of claim 18.
C. Claims 19-26
Issue
Appellants argue the Examiner erred in finding the combined cited
prior art teaches or suggests the limitation of independent claim 19 reciting:
"wherein said plurality of nanoparticles are operable to cause said guest
material contained within said storage chambers to be released." App. Br.
14.
Analysis
Appellants contend Lai describes a chemically cleavable CdS
nanocrystal cap, but does not describe a system where nanocrystals are
operable to cause guest material contained within storage chambers to be
released upon a transfer of energy to a plurality of nanoparticles from a
source of energy external to the nanoparticles. App. Br. 14. Appellants
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argue that, although CNSI teaches "molecules that are not attached to the
pore walls are free to move through the pores," it does not explicitly state
that a nanoparticle is "operable to cause a guest material contained within
storage chambers to be released." Id.
The Examiner responds that the rejection of the claims is not based
upon the teachings of Lai alone, but, rather, upon the combined teachings of
Lai and CNSI. Ans. 13. The Examiner finds the azobenzene impellers of
CNSI operate when the energy contained in light alters the azobenzene
molecule configuration, changing from an "open" to a "closed" state. The
Examiner finds that a person of ordinary skill would understand that when
the impellers are in the open position, molecules not attached to the walls
will freely move through the pores and out of the device, resulting in release
of the guest material contained within the storage chamber.
We agree with the Examiner. In an obviousness analysis, the proper
test is not whether "the claimed invention must be expressly suggested in
any one or all of the references. Rather, the test 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 (C.C.P.A. 1981). Lai teaches
"capping the openings of the mesoporous channels [of its nanospheres] with
size-defined CdS nanoparticles to physically block the drugs/
neurotransmitters of certain sizes from leaching out" and that:
The resulting disulfide linkages between the [nano spheres] and
the CdS nanoparticles are chemically labile in nature and can be
cleaved with various disulfide-reducing agents, such as
dithiothreitol (DTT) and mercaptoethanol (ME). Hence, the
release of the CdS nanoparticle caps from the
drug/neurotransmitter-loaded MSNs can be regulated by
introducing various amounts of release triggers.
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Lai Abstr.; 4452.
Lai thus teaches the capped pores prevent the active agent from
leaving the storage area of the nanosphere until the disulfide linkages
between the caps and the surface of the nanosphere are cleaved, at which
point the active agent is released. See also Lai, Fig. 1. Moreover, whether
CNSI "explicitly state[s] that a nanoparticle is 'operable to cause a guest
material contained within storage chambers to be released, as Appellants
argue," is not important. It is clear from the teachings of CNSI, as the
Examiner found, that molecular change in the azobenzene is the cause of
release of the guest material trapped in the channel._The Examiner
concludes, and we agree, that it would be obvious to a person of ordinary
skill in the art to substitute the impellers of CNSI for the caps of Lai, so that,
upon being exposed to an appropriate energy source, the impellers, which
would be part of the nanoparticle defining a storage chamber, would allow
the agent contained within the storage area to be released. In other words,
the impeller would be "operable to cause said guest material contained
within said storage chambers to be released." We consequently affirm the
Examiner's rejection of claims 19-26.
D. Claim 27
Issue
Appellants contend the Examiner erred in finding the combined cited
prior art teaches or suggests the limitation of claim 27 reciting: "illuminating
said nanoparticles of said administered composition with light to cause said
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at least one of said substances to be released from said nanoparticles." App.
Br. 15.
Analysis
Appellants assert that neither Lai nor CNSI teaches illuminating
nanoparticles with light to cause at least one of the substances to be released
from the nanoparticles. App. Br. 15. Appellants argue Lai's CdS
nanoparticle caps are chemically controlled (e.g., by cleavage of a
chemically labile bond) but no light-activated release of the caps is
described. Id. Appellants admit that CNSI describes light-powered
impellers, but contend it does not describe "administering a composition to
at least one of a person, an animal, a plant, or an organism, said composition
comprising nanoparticles," as recited in claim 27. Id. (citing CNSI col. 2).
Appellants argue further that although CNSI teaches that "molecules that are
not attached to the pore walls are free to move through the pores," it does
not explicitly teach that those molecules are at least one of a biologically
active substance, a therapeutic substance, a neutraceutical substance, a
cosmetic substance or a diagnostic substance, as required by the claims. Id.
at 14-16. Appellants assert CNSI also does not teach that illumination will
"cause said at least one of said substances to be released," rather, Appellants
maintain, it states only that unattached molecules "are free to move through
the pores." Id. at 16 (quoting CNSI).
The Examiner responds that Appellants cannot attack the references
individually when the rejection has been made over a combination of
references. Ans. 14 (citing Keller, 642 F.2d at 426).
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The Examiner finds that to achieve the release of the drug carrier in
vivo, a plurality of nanodevices loaded with the desired cargo must be
administered to the subject and then the cargo is released. Ans. 14. The
Examiner finds the application of light to the reversible azobenzene
cap/impeller will cause the impellers to open the pores and release the active
agent or drug. Id.
We agree with the Examiner. Lai is directed to the release of a
drug/active agent from a nanosphere as a method of applying a drug in vivo:
[D]eveloping new mesoporous silica-based carrier systems for
controlled-release delivery of drugs, biocides, genes, or even
proteins in vitro or in vivo is of keen interest . . . . Herein, we
report the synthesis of a novel MCM-41 type mesoporous silica-
based controlled-release delivery system that is stimuli-
responsive and chemically inert to the matrix-entrapped
compounds.
Lai 4451 (internal citations omitted). CNSI teaches:
The impeller uses light=po\'l/ered derivatized azobenzene
molecules as its moving parts. The molecules are attached to the
interiors of 2-nm pores in silica. When irradiated with
appropriate wavelengths of light, the molecules "wag" back and
forth. Molecules that are not attached to the pore walls are free
to move through the pores and are impelled by the moving
azobenzenes.
CNSI 51.
As we have explained supra, we conclude it would have been obvious
to a person of ordinary skill in the art to substitute the light-activated
impellers taught by CNSI for the CdS caps taught by Lai to provide a
reversible, light-activated mechanism for controlling the release of a drug or
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other active agent from the storage portion of a nanodevice. We
consequent! y affirm the Examiner's rejection of claim 2 7.
E. Claims 11-17, 25, 26, 28, and 29
Appellants argue these claims separately, but rely on their arguments
presented supra in defense of the patentability of these claims. App. Br. 20-
22. For the reasons we have related supra, we affirm the Examiner's
rejection of claims 11-17, 25, 26, 28, and 29.
F. Appellants' response to the Examiner's "Arguments"
Appellants respond to the Examiner's statement that Appellants "have
not ... analyzed the Wands factors to indicate why the person of ordinary
skill would not have a reasonable expectation of success in being able to
attach the azobenzene molecul[ e] suggested by CNSI as controlled release
mechanism in the drug delivery devices of Lai et al." App. Br. 16. (quoting
Final Act. 5 (citing In re Wands, 858 F.2d 731 (Fed. Cir. 1988)). Appellants
admit an analysis under 35 U.S.C. § 112, first paragraph, compares the
claimed subject matter to the disclosures of Appellants' Specification,
whereas an analysis under § 103 compares the claimed subject matter to the
contents of the cited prior art references. App. Br. 17. Nevertheless,
Appellants argue, at some length, the applicability of the relevant Wands
factors to the claims on appeal. App. Br. 18-20.
We fail to see the relevance of the Examiner's statement or of
Appellants' arguments. As Appellants admit, analysis of the various Wands
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factors applies to whether a claim is enabled under 35 U.S.C. § 112, first
paragraph. See Wands, 858 F.2d at 737. The claims on appeal were rejected
as unpatentable under 35 U.S.C. § 103(a) as being obvious over the
combined cited prior art, and not for lack of enablement in Appellants'
Specification. The predecessor to our reviewing court has established the
proper analysis in an obviousness context; it is:
not whether the features of a secondary reference may be bodily
incorporated into the structure of the primary reference; nor is it
that the claimed invention must be expressly suggested in any
one or all of the references. Rather, the test is what the combined
teachings of the references would have suggested to those of
ordinary skill in the art.
Keller, 642 F.2d at 425. We have set forth supra our reasoning as to why we
conclude the claims on appeal are obvious over the combined cited prior art
under the standard established in Keller. Furthermore, we have also set forth
our reasoning explaining that a person of ordinary skill in the art of materials
science would possess the knowledge to combine the references with a
reasonable expectation of success. We consequently affirm the Examiner's
rejection of the claims under that standard.
DECISION
The Examiner's rejection of claims 1-29 as unpatentable under
35 U.S.C. § 103(a) is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R.
§ 1.136(a)(l )(iv).
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AFFIRMED
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