Brian Benicewicz et al.

Patent Trials and Appeals Board

Dec 20, 2019

14677328 - (D) (P.T.A.B. Dec. 20, 2019)

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.
14/677,328 04/02/2015 Brian Benicewicz USC-405 (1089) 3925
22827 7590 12/20/2019
DORITY & MANNING, P.A.
POST OFFICE BOX 1449
GREENVILLE, SC 29602-1449
EXAMINER
SHIAO, YIH-HORNG
ART UNIT PAPER NUMBER
1623
NOTIFICATION DATE DELIVERY MODE
12/20/2019 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):
USDOCKETING@DORITY-MANNING.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRIAN BENICEWICZ, ALAN DECHO, LEI WANG, and
KRISTEN MILLER
Appeal 2019-004426
Application 14/677,328
Technology Center 1600
Before JOHN E. SCHNEIDER, RACHEL H. TOWNSEND, and
CYNTHIA M. HARDMAN, Administrative Patent Judges.
HARDMAN, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–9, 21–25, 29, and 30. See Final
Act. 3. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as University of South
Carolina. Appeal Br. 3.
Appeal 2019-004426
Application 14/677,328

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CLAIMED SUBJECT MATTER
Claims 1–9, 21–25, 29, and 30 are directed to a method comprising
attaching a plurality of polymer chains onto a surface of a nanoparticle to
form a polymer brush, and attaching a plurality of cyclic saccharides to each
of the polymer chains. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A method, comprising:

attaching a plurality of polymer chains onto a surface of a
nanoparticle to form a polymer brush on the nanoparticle surface,
each polymer comprising a plurality of methacrylate groups; and

attaching a plurality of cyclic saccharides to each of the
polymer chains, each cyclic saccharide being attached via
reaction of a methacrylate group with the cyclic saccharide.
Appeal Br. 18 (Claims Appendix).
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Benicewicz US 2013/0041112 A1 Feb. 14, 2013
Bowen US 5,792,821 Aug. 11, 1998
REJECTION
Claims 1–9, 21–25, 29, and 30 stand rejected under 35 U.S.C. § 103
as being unpatentable over Benicewicz and Bowen.2 Final Act. 3.

2 In the Final Rejection, the Examiner refers to Bowen as “Brown ’821.”
See Final Act. 3.
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OPINION
The Examiner found that Benicewicz discloses attaching a plurality of
polymer chains onto a surface of a nanoparticle, wherein each polymer
comprises methacrylate groups. See Final Act. 3–5. The Examiner found
that Bowen teaches polymerizable methacrylated cyclodextrin monomers,
which can form “inclusion complexes” by encapsulating other molecules.
Final Act. 6. The Examiner asserted that it would have been obvious to one
of ordinary skill in the art to substitute Benicewicz’s methacrylate or
methylmethacrylate monomers with Bowen’s methacrylated cyclodextrin
monomers, because the latter can form inclusion complexes, and because it
would have been a simple substitution of one known element for another to
obtain predictable results. Final Act. 6–7.
Appellant admits that “Benicewicz clearly teaches the first step of the
method of claim 1,” i.e., “Benicewicz teaches a method that includes
attaching a plurality of polymer chains onto a surface of a nanoparticle to
form a polymer brush on the nanoparticle surface, each polymer comprising
a plurality of methacrylate groups.” Appeal Br. 10. Appellant argues,
however, that “[n]either Benicewicz nor Bowen teach attaching a cyclic
saccharide such as a cyclodextrin to a polymer of a polymer brush via a
methacrylate group of the polymer.” Appeal Br. 13. Appellant further
argues that the proposed combination of Benicewicz and Bowen is based on
impermissible hindsight, including because the suggested modification
would result in a crosslinked network, whereas the intended function in
Benicewicz is a polymer brush with functionality along the individual
strands of the brush. Appeal Br. 14–15; Reply Br. 3. Appellant additionally
argues that even if one of skill in the art were to make the Examiner’s
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proposed substitution, the resulting method would not reach the limitations
of the pending claims because it would result in a cyclodextrin monomer as
a component of a polymer backbone, as opposed to a cyclodextrin monomer
attached to a polymer backbone per claim 1. Appeal Br. 12–13.
“[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting a prima facie case of unpatentability.” In
re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). We determine that the
Examiner has not carried the burden of presenting a prima facie case of
unpatentability.
The method of claim 1 requires two distinct steps (which can be
carried out in either order): (1) attaching polymer chains onto a nanoparticle
to form a polymer brush, where the polymer comprises methacrylate groups;
and (2) “attaching a plurality of cyclic saccharides to each of the polymer
chains, each cyclic saccharide being attached via reaction of a methacrylate
group with the cyclic saccharide.” Appeal Br. 18 (Claims Appendix). We
agree with Appellant that “[i]n order to reach the claimed methods, the prior
art must teach or suggest [] attachment of [a] polymer that has methacrylate
groups to a nanoparticle to form a polymer brush and must teach reaction of
a [cyclic saccharide] with that polymer.” Appeal Br. 16.
While claims are to be accorded their broadest reasonable
interpretation, the broadest reasonable interpretation does not mean the
broadest possible interpretation. Rather, the broadest reasonable
interpretation is one that is “consistent with the specification.” See, e.g., In
re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000). Per claim 1, the step of
attaching the cyclic saccharide (e.g., cyclodextrin) to the polymer must occur
via reaction of a methacrylate group with the cyclic saccharide. Based on
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the structure of the claim, we conclude that the methacrylate group that is
involved in this reaction must be located on the polymer, not the cyclic
saccharide, in order to result in attachment of the cyclic saccharides to “the
polymer chains” that form the polymer brush on the nanoparticles. That is
the invention described in the Specification. See e.g., Spec. 6 (“In particular,
methods are generally provided to attach cyclic arrangements of saccharides
(e.g., cyclodextrin) onto the surface of nanoparticles.”); 8 (“Each chain
[attached to the surface of the nanoparticle] contains hundreds of cyclic
saccharides which allow each nanoparticle to capture a large amount of
bacterial communication molecules.”). A conclusion that step (2) (noted
above) instead requires the cyclic saccharides bear the methacrylate group,
would not result in the required “attaching a plurality of cyclic saccharides
to each of the polymer chains,” but rather would result in simply each cyclic
saccharide being attached to each other via reaction of a methacrylate group,
with these attached cyclic saccharides somehow then being attached to the
polymer chains that also have methacrylate groups and are attached to
nanoparticles. The Specification does not describe such an invention.
The Examiner does not propose attaching cyclodextrin to the
polymers taught in Benicewicz via reaction with a methacrylate group of the
polymer. Rather, the Examiner proposes forming a polymer by substituting
at least some of the methyl methacrylate monomers of Benicewicz with the
methacrylated cyclodextrin monomers taught by Bowen. See Final Act. 6;
Ans. 5–6. In the method proposed by the Examiner, methacrylate groups are
attached to cyclodextrin monomers prior to polymerization and then the
methacrylate cyclodextrin is “substituted” into the methacrylated polymer
via some kind of substitution of the methacrylates. Beside the fact that the
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Examiner does not explain, and we do not understand from the Examiner’s
rejection, how the methacrylated cyclodextrin would be substituted into the
methacrylated polymer so as to attach the methacrylated cyclodextrin to the
polymer, the Examiner’s proposed methodology is different from the
method of claim 1. As discussed above, the claimed method requires
formation of polymer chains having methacrylate groups, and subsequent
attachment of the cyclic saccharides to the polymer chains via reaction of the
polymer’s methacrylate groups with the cyclic saccharides.
Because the Examiner’s proposed combination does not meet all of
the limitations of the claims, we determine that the Examiner has not
established a prima facie case of obviousness.
CONCLUSION
We reverse the Examiner’s rejection of claims 1–9, 21–25, 29, and 30
under 35 U.S.C. § 103 as being unpatentable over Benicewicz and Bowen.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–9, 21–25,
29, 30
103 Benicewicz, Bowen 1–9, 21–
25, 29, 30
REVERSED