Von Andrian, Ulrich H. et al.

Patent Trials and Appeals Board

Jan 14, 2020

12681814 - (D) (P.T.A.B. Jan. 14, 2020)

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.
12/681,814 04/28/2010 Ulrich H. Von Andrian MIT 12788 7480
154836 7590 01/14/2020
MIT C/O Pabst Patent Group LLP
1545 PEACHTREE STREET NE
SUITE 320
ATLANTA, GA 30309
EXAMINER
EPPS -SMITH, JANET L
ART UNIT PAPER NUMBER
1633
MAIL DATE DELIVERY MODE
01/14/2020 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 ULRICH H. VON ANDRIAN, OMID C. FAROKHZAD,
ROBERT S. LANGER, TOBIAS JUNT, ELLIOT ASHLEY MOSEMAN,
LIANGFANG ZHANG, PAMELA BASTO, MATTEO IANNACONE, and
FRANK ALEXIS
Appeal 2019-000531
Application 12/681,814
Technology Center 1600
BEFORE JEFFREY N. FREDMAN, DEBORAH KATZ, and
JOHN E. SCHNEIDER, Administrative Patent Judges.
SCHNEIDER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 411, and 418–434. We have
jurisdiction under 35 U.S.C. § 6(b).

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real parties in interest as Massachusetts
Institute of Technology, The Brigham and Women's Hospital, Inc., President
and Fellows of Harvard Colleges, and The Children's Medical Center
Corporation, and the licensee, Selecta Biosciences, Inc. Appeal Br. 3.
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We REVERSE.
CLAIMED SUBJECT MATTER
The claims are directed to methods for making synthetic nanocarriers
for modulating the immune system. Spec. ¶ 6. Claim 411, reproduced
below, is illustrative of the claimed subject matter:
411. A method of making nanoparticles comprising
mixing in a defined ratio a first amphiphilic polymer
having a hydrophobic end and a hydrophilic end with a second
polymer, wherein at least some of the first amphiphilic polymer
or the second polymer, or both the first amphiphilic polymer and
second polymer, have antigen and/or an immunomodulatory
agent bound thereto,
under conditions wherein nanoparticles form with the
hydrophobic end of the first amphiphilic polymer oriented within
the nanoparticle to form a hydrophobic interior, and the
hydrophilic end of the first amphiphilic polymer is oriented to
the outside of the nanoparticle, so that the antigen and/or an
immunomodulatory agent is present on the surface,
wherein the nanoparticles have a diameter between 50 nm
and 500 nm.
REFERENCES
The prior art relied upon by the Examiner is:
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Application 12/681,814
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Name Reference Date
Iannacone et al. US 8,277,812 B2 Oct. 2, 2012
Gu et al. US 8,323,698 B2 Dec. 4, 2012
Shi et al. US 8,343,497 B2 Jan. 1, 2013
Alexis et al. US 8,343,498 B2 Jan. 1, 2013
Gu et al. US 8,367,113 B2 Feb. 5, 2013
Shi et al. US 8,562,998 B2 Oct. 22, 2013
von Andrian et al. US 8,591,905 B2 Nov. 26, 2013
Alexis et al. US 8,637,028 B2 Jan. 28, 2014
Cheng et al. US 8,802,153 B2 Aug. 12, 2014
Iannacone et al. US 8,906,381 B2 Dec. 9, 2014
Iannacone et al. US 8,932,595 B2 Jan. 13, 2015
von Andrian et al. US 9,474,717 B2 Oct. 25, 2016
von Andrian et al. US 9,526,702 B2 Dec. 27, 2016
von Andrian et al. US 9,539,210 B2 Jan. 10, 2017

REJECTIONS
The Examiner has rejection the pending claims on the following
grounds:
1. All of the pending claims have been rejected for non-statutory
obviousness-type double patenting over claims 1–12 of US 8,277,812.
2. All of the pending claims have been rejected for non-statutory
obviousness-type double patenting over claims 1–20 of US 8,323,698.
3. All of the pending claims have been rejected for non-statutory
obviousness-type double patenting over claims 1–26 of US 8,343,497.
4. All of the pending claims have been rejected for non-statutory
obviousness-type double patenting over claims 1–32 of US 8,343,498.
5. All of the pending claims have been rejected for non-statutory
obviousness-type double patenting over claims 1–29 of US 8,367,113.
6. All of the pending claims have been rejected for non-statutory
obviousness-type double patenting over claims 1–32 of US 8,562,998.
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7. All of the pending claims have been rejected for non-statutory
obviousness-type double patenting over claims 1–25 of US 8,591,905.
8. All of the pending claims have been rejected for non-statutory
obviousness-type double patenting over claims 1–34 of US 8,637,028.
9. All of the pending claims have been rejected for non-statutory
obviousness-type double patenting over claims 1–16 of US 8,802,153.
10. All of the pending claims have been rejected for non-statutory
obviousness-type double patenting over claims 1–21 of US 8,906,381.
11. All of the pending claims have been rejected for non-statutory
obviousness-type double patenting over claims 1–31 of US 8,932,595.
12. All of the pending claims have been rejected for non-statutory
obviousness-type double patenting over claims 1–12 of US 9,474,717.
13. All of the pending claims have been rejected for non-statutory
obviousness-type double patenting over claims 1–17 of US 9,539,210.
14. All of the pending claims have been rejected for non-statutory
obviousness-type double patenting over claims 1–21 of US 9,526,702.
OPINION
The issue before us is whether the Examiner properly determined that
the invention recited in the present claims are patently indistinct from the
invention recited in the claims of the patents cited by the Examiner.
We begin by noting that original claim 411 was subject to a restriction
requirement which was not withdrawn until June 2, 2016. Non-Final Act.
mailed June 2, 2016, 2.
With respect to rejections 1–9, the Examiner contends that while
original claim 411 was subject to a restriction requirement, the scope of
claims 411 was altered by amendments rendering the restriction requirement
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moot. Ans. 5–6. As to the remaining rejections, the Examiner finds that the
applications which lead to those patents were filed as continuations and not
divisionals and the protections of 35 U.S.C. 121 do not apply. Ans. 7. The
Examiner contends that since the nanoparticles claimed in each of the cited
patents were produced by the process recited in the instant claims and that
the method is essential for producing the nanoparticles, they are part of the
same invention and are not patently distinct. Ans. 5–7.
Appellant contends that while the claims were amended during
prosecution, they are still directed to an invention that was found to be
patently distinct from the invention recited in the patents cited by the
Examiner. App. Br. 38. Appellant points out that this distinction was
maintained during more than five years of prosecution. Id. at 39.
Appellant contends that the original claim 411 was more closely similar to
the product claims recited in the cited patents and that the Office did not find
a technical relationship between original claim 411 and the product claims.
Id. at 40. Appellant argues that the Examiner has improperly used hindsight
on making the present rejection. Id. at 41.
We have considered the arguments presented by the Examiner and
Appellant and conclude that Appellant has the better argument.
As noted above, the Examiner did not permit rejoinder of the method
claims until June 2016. The patents listed in rejections 1–9 all issued before
June 2016. Therefore, Appellant could not have presented the method
claims in those application and remain consistent with the restriction
requirement imposed by the Examiner.
With respect to the remaining rejection, we find that in the interest of
fairness, those rejections should be reversed. As Appellant points out, the
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Office maintained the position that the method claims were separately
patentable for over five years and throughout the prosecution of eleven
applications. Appeal Br. 39. While rejoinder of process claims is permitted
(see MPEP § 821.04) we find that the delay in rejoining the process claims
for over 5 years and after eleven sets of product claims were allowed and
issued to be patently unfair.
The Examiner argues that the restriction requirement was made by a
different Examiner. Ans. 8. We do not find this sufficient grounds to
excuse the delay in rejoining the process claims (see MPEP § 706.04 “Full
faith and credit should be given to the search and action of a previous
examiner.”).
The Examiner also contends that the amendments to claim 411 were
such that the scope of the claim is significantly different from the claim that
was restricted. Ans. 8. We are not persuaded by this argument. As
Appellant points out, present claim 411 would have been subject to the same
restriction requirement as original claim 411. The original restriction
requirement classified the nanoparticles and the processes for making them
as distinct inventions. We find nothing in the present claim 411 would alter
the original restriction requirement. The amendment to the claims do not
negate the unfairness that would result from the change in theory by the
Office after prolonged examination of the invention.
CONCLUSION
The Examiner’s rejections are reversed

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DECISION SUMMARY
In summary:
Claims
Rejected
Reference(s)/Basis Affirmed Reversed
411and 418–434 Non-statutory
Obviousness-type
Double Patenting
411 and 481–434

REVERSED