Ex Parte Ballard et al

Patent Trials and Appeals BoardFeb 26, 2019

14175016 - (D) (P.T.A.B. Feb. 26, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/175,016 02/07/2014 26158 7590 02/28/2019 WOMBLE BOND DICKINSON (US) LLP ATTN: IP DOCKETING P.O. BOX 7037 ATLANTA, GA 30357-0037 FIRST NAMED INVENTOR Robert L. Ballard 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. Z013 1040US.Cl 9842 EXAMINER COHEN, MICHAEL P ART UNIT PAPER NUMBER 1612 NOTIFICATION DATE DELIVERY MODE 02/28/2019 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): IPDocketing@wbd-us.com BostonPatents@wbd-us.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ROBERT L. BALLARD, BRUCE L. ANNEAUX, and JOSHUA L. MANASCO Appeal 2017-009961 1 Application 14/175,016 Technology Center 1600 Before DONALD E. ADAMS, FRANCISCO C. PRATS, and RYAN H. FLAX, Administrative Patent Judges. PRATS, Administrative Patent Judge. DECISION ON APPEAL This appeal under 35 U.S.C. Â§ 134(a) involves claims to a material composed of non-woven polytetrafluoroethylene nanofibers with an embedded antimicrobial agent. The Examiner rejected the claims for obviousness. We have jurisdiction under 35 U.S.C. Â§ 6(b)(l). We affirm. 1 Appellants state that the real party in interest is Zeus Industrial Products, Inc. Appeal Br. 1. Appeal2017-009961 Application 14/175,016 STATEMENT OF THE CASE The following rejections are before us for review: (1) Claims 22-24, 26-30, and 37, under 35 U.S.C. Â§ I03(a) for obviousness over Botes, 2 Ishaque, 3 and Wikol4 (Ans. 2-4); (2) Claim 28, under 35 U.S.C. Â§ I03(a) for obviousness over Botes, Ishaque, Wikol, and Lee5 (id. at 5); (3) Claims 22 and 36, under 35 U.S.C. Â§ I03(a) for obviousness over Botes, Ishaque, Wikol, and Kim 6 (id. at 6-7); and ( 4) Claim 22, under the judicially created doctrine of obviousness- type double patenting over claims 14 and 31 of U.S. Patent No. 9,034,031 B2 (id. at 7). Claim 22, the sole independent claim on appeal, is representative and reads as follows: 22. A material comprising non-woven polytetrafluoroethylene nanofibers with at least one embedded antimicrobial agent. Appeal Br. 15. OBVIOUSNESS-BOTES, ISHAQUE, AND WIKOL In rejecting claims 22-24, 26-30, and 37 over Botes, Ishaque, and Wikol, the Examiner cited Botes as describing materials composed of 2 Botes et al., The potential of nanofibers and nanobiocides in water purification, 36 CRITICAL REVIEWS IN MICROBIOLOGY 68-81 (2010). 3 US 2010/0013126 Al (published Jan. 21, 2010). 4 Michael Wikol et al., EXPANDED POLYTETRAFLUOROETHYLENE MEMBRANES AND THEIR APPLICATIONS 619---640 (CHAPTER23) (Maik W. Jomitz and Theodore H. Meltzer eds., 2007). 5 US 2008/0217807 Al (published Sept. 11, 2008). 6 US 2009/0324950 Al (published Dec. 31, 2009). 2 Appeal2017-009961 Application 14/175,016 nanofibers having antimicrobial compounds embedded therein, the nanofibers being formed by electrospinning polymers such as polyvinyl alcohol or polyoxyethylene. Ans. 2-3. The Examiner found that the materials described by Botes differed from the materials recited in the rejected claims in that Botes did not disclose using polytetrafluoroethylene (PTFE) as the polymer forming the nanofiber. See id. at 3 ("Botes does not teach the limitation of claim 22 that polytetrafluoroethylene [i]s the filter material."). As evidence that, despite that difference, the materials recited in the rejected claims would have been obvious, the Examiner cited Ishaque as disclosing that it was known in the art to prepare materials composed of PTFE nanofibers by electrospinning. Id. The Examiner cited Wikol as teaching that PTFE was known in the art to be a desirable material for use in filters in the pharmaceutical industry. Id. at 4. Based on the references' combined teachings, the Examiner reasoned that an ordinary artisan would have considered it obvious to form the materials taught by Botes from PTFE because "Ishaque teaches that nanometer sized fibers of polytetrafluoroethylene can be made by electrospinning and Wikol teaches that nanometer sized fibers of polytetrafluoroethylene are valuable as air-filter media due to their non- reactive nature coupled with high flow rates and filtration efficiency." Id. As stated in In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992): [T]he examiner bears the initial burden ... of presenting a prima facie case of unpatentability .... After evidence or argument is submitted by the applicant in response, patentability is determined on the totality of the 3 Appeal2017-009961 Application 14/175,016 record, by a preponderance of evidence with due consideration to persuasiveness of argument. Having carefully considered the arguments and evidence advanced by Appellants and the Examiner, Appellants do not persuade us that the Examiner's conclusion of obviousness is not supported by a preponderance of the evidence. As the Supreme Court has explained, "when a patent claims a structure already known in the prior art that is altered by mere substitution of one element for another known in the field, the combination must do more than yield a predictable result." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). In the present case, Appellants' claim 22 recites a material containing two components: (1) non-woven PTFE nanofibers, and (2) at least one embedded antimicrobial agent embedded in the nano fibers. Appeal Br. 15. As explained in Botes, electrospinning is a method "for the fabrication of non-woven fibrous articles (nanofibers) with diameters lower than 100 nm." Botes 68 ( citation omitted). Botes explains that non-woven nanofibers with embedded antibacterial particles are useful in drinking water filtration, as follows: Electrospun nanofibers and nanobiocides show potential in the improvement of water filtration membranes. Biofouling of membranes caused by the bacterial load in water reduces the quality of drinking water and has become a major problem. Several studies showed inhibition of these bacteria after exposure to nanofibers with functionalized surfaces. Nanobiocides such as metal nanoparticles and engineered nanomaterials are successfully incorporated into nanofibers showing high antimicrobial activity and stability in water. Id. (abstract). 4 Appeal2017-009961 Application 14/175,016 Botes discloses that non-woven nanofibers "with embedded nanobiocides are currently being used in medical treatments and air filters. Different polymers such as poly(vinyl pyrrolidone) (PVP), PV A [polyvinyl alcohol], and PEO [polyethylene oxide] have been used as a template to load nanoparticles such as metal oxides by electrospinning and in polymer matrixes or films." Id. at 72 ( emphasis added); see also id. ( describing use of electrospinning to incorporate silver nanoparticles into nanofibers composed of polycaprolactone (PCL) and polyacrylonitrile (PAN)). The non-woven filter materials taught by Botes thus differ from the material recited in Appellants' claim 22 only in that Botes' materials do not use PTFE as the polymer constituting the nanofiber. As the Examiner found, however, Wikol discloses that the "unique properties of expanded polytetrafluoroethylene ( ePTFE) membrane make it a good choice for a number of pharmaceutical applications. Currently, ePTFE constructions are used for sterile filtration of fermentation feed air, process gases, and tank venting." Wikol 619; see also id. at 639 (disclosing that "PTFE is inherently inert, thermally resistant, and extremely hydrophobic"). As the Examiner also found, Ishaque teaches that electrospinning can be used to form nanofibers from PTFE. See Ishaque, abstract ( disclosing a process "for producing polymer fibers, especially nano- and mesofibers, by the electrospinning process, in which a colloidal dispersion of at least one essentially water-insoluble polymer and of at least one nonionic surfactant, if appropriate further comprising at least one water-soluble polymer, is electrospun in an aqueous medium"); see also id. ,r 35 ("In a preferred embodiment of the present invention, a colloidal aqueous dispersion of a 5 Appeal2017-009961 Application 14/175,016 water-insoluble polymer selected from the group consisting of ... polytetrafluoroethylene ... is used in the process according to the invention."). Given Wikol's teachings regarding the desirable properties of PTFE in relation to its use in pharmaceutical and filtering applications, and given Ishaque' s disclosure that PTFE can be used as the polymer component in non-woven materials produced by electrospinning, we agree with the Examiner that an ordinary artisan would have had good reason for, and a reasonable expectation of success in, using PTFE as the polymer component in Botes' antimicrobial agent-containing electrospun non-woven materials for use in medical and filtering applications. We, therefore, also agree with the Examiner that the material recited in Appellants' claim 22 would have been obvious to the ordinary artisan. Appellants' arguments do not persuade us to the contrary. Because the Examiner's rejection of claim 22 is based only on the teachings in the cited references, Appellants do not persuade us (see Appeal Br. 4, 10) that the Examiner improperly relied on hindsight in concluding that the material recited in claim 22 would have been obvious. Appellants also do not persuade us that an ordinary artisan lacked a reasonable expectation of success in using electrospinning to embed particles of an antimicrobial agent in non-woven PTFE materials. See Appeal Br. 5-10; Reply Br. 3--4, 6-9. As our reviewing court has explained, "[ o ]bviousness does not require absolute predictability of success .... For obviousness underÂ§ 103, all that is required is a reasonable expectation of success." In re Kubin, 561 F.3d 6 Appeal2017-009961 Application 14/175,016 1351, 1360 (Fed. Cir. 2009) (quoting In re O'Farrell, 853 F.2d 894, 903---04 (Fed. Cir. 1988) (emphasis removed). Here, as noted above, Botes discloses that electrospinning may be used to embed antimicrobial agents in non-woven materials composed of at least five different polymers. See Botes 72 ("Different polymers such as ... PVP ... , PV A, and PEO have been used as a template to load nanoparticles such as metal oxides by electrospinning and in polymer matrixes or films."); see also id. ( describing use of electrospinning to incorporate silver nanoparticles into nano fibers composed of PCL and PAN). Given Botes' disclosure that electrospinning was useful for embedding antimicrobial agents in non-woven materials composed of a variety of different polymers, Appellants do not persuade us that an ordinary artisan, motivated by Wikol's teachings of the advantageous properties of PTFE in relation to medical and sterile filtering applications, lacked a reasonable expectation in using the PTFE electrospinning technique taught in Ishaque to prepare a material composed of non-woven PTFE nanofibers, with an antimicrobial agent embedded therein, as recited in Appellants' claim 22. We acknowledge, as Appellants contend (Appeal Br. 5-6; Reply Br. 6), that Botes discloses certain specifics as to how the antimicrobial nanoparticles are included in the polymer solution that is electrospun to produce the polymer nanofibers with the embedded antimicrobial agent, and that certain polymers and antimicrobial agents interact advantageously: Silver nanoparticles can interact with the carbonyl oxygen atoms of PCL, resulting in the even distribution of small Ag particles. PCL-PU nanofiber mats containing Ag nanoparticles may exhibit good mechanical properties with 7 Appeal2017-009961 Application 14/175,016 antimicrobial activity and no waste disposal problems. Jeong and coworkers (2008) prepared PCL-PU fibers with different concentrations of AgN03 DMF/THF (7/3 w/w) for the applications of an antimicrobial nanofilter. The inclusion of AgN03 increased the tensile strength, tensile modulus, and decreased elongation of the PCL-PU nanofiber mats. Silverbromide (AgBr) nanoparticles and PVP were hybridized by electrospinning. Bromide ions reacted with silver ions of AgN03 in the PVP solution to form AgBr nanopartides by a sol-gel technique. The AgBr/PVP viscous composite solutions were electrospun into PVP nanofibers containing AgBr nanoparticles. A fine dispersion of nanoparticles was observed by field-emission scanning electron microscopy .... Botes 72-73 (citations omitted). The cited portions of Botes, however, simply do not disclose that a surfactant-containing dispersion, such as that taught in Ishaque, would be unsuitable for, or incapable of, preparing a material composed of non-woven PTFE nanofibers with an antimicrobial agent embedded therein by electrospinning. Thus, the fact that Botes describes certain techniques and combinations of antimicrobial agents and polymers as being particularly advantageous does not persuade us that a skilled artisan lacked a reasonable expectation that a material composed of non-woven PTFE nano fibers with an antimicrobial agent embedded therein, as recited in Appellants' claim 22, would be produced by including particles of an antimicrobial agent in the PTFE-containing electrospun aqueous dispersion taught in Ishaque. While Appellants contend that Ishaque's surfactant-containing dispersion is significantly different from the electrospun solutions described in Botes as yielding nanofibers with embedded antimicrobial agents (Appeal Br. 6-9), Appellants identify no specific credible evidence in the record, as opposed to unsupported attorney argument, explaining why any alleged 8 Appeal2017-009961 Application 14/175,016 differences between Ishaque's electrospinning medium and Botes' electrospinning solutions would have led an ordinary artisan to conclude that there was no reasonable expectation in using Ishaque's electrospinning technique to prepare a material composed of non-woven PTFE nanofibers with an antimicrobial agent embedded therein, as recited in Appellants' claim 22. We note again that "[ o ]bviousness does not require absolute predictability of success." Kubin, 561 F.3d at 1360. We acknowledge, but are unpersuaded by, Appellants' contention that Ishaque's step of sintering its nanofibers after electrospinning (i.e., heating to 1 lOQC or 130QC for 15 to 60 minutes; see Ishaque ,r,r 104--110) would be incompatible with the antibacterial agents taught by Botes as being suitable for embedding into non-woven nanofiber materials. See Appeal Br. 9--10; Reply Br. 4. As noted above, Botes discloses incorporation of antibacterial agents consisting of silver nanoparticles into non-woven nanofiber materials (Botes 72), and Appellants identify no specific credible evidence of record suggesting that the antibacterial agents disclosed Botes would be unable to withstand the heating temperatures disclosed in Ishaque. In their Reply Brief, Appellants submit new arguments contending (1) that Ishaque does not enable the preparation of a PTFE non-woven material by electrospinning, (2) that it is unexpected that Appellants were able to prepare PTFE non-woven material, and (3) that the parameters disclosed in Ishaque, including the heating/sintering temperatures, would not yield a product encompassed by Appellants' claims. Reply Br. 4--6. We will not consider Appellants' new arguments. Appellants' new arguments in the Reply Brief could have been presented in the Appeal Brief, but were not. As explained in 3 7 C.F .R. 9 Appeal2017-009961 Application 14/175,016 Â§ 4I.37(c)(l)(iv), except in certain circumstances not applicable here, "any arguments or authorities not included in the appeal brief will be refused consideration by the Board for purposes of the present appeal." We are not persuaded, therefore, that Appellants' new arguments are properly presented for the first time in the Reply Brief, such that we should consider them. See also 37 CPRÂ§ 4I.41(b)(2) ("Any argument raised in the reply brief which was not raised in the appeal brief, or is not responsive to an argument raised in the examiner's answer, including any designated new ground of rejection, will not be considered by the Board for purposes of the present appeal, unless good cause is shown."); Ex parte Borden, 93 USPQ2d 14 73, 14 77 (BP AI 2010) (The reply brief is not "an opportunity to make arguments that could have been made in the principal brief on appeal to rebut the Examiner's rejections, but were not.") ("Informative"). In any event, even if we were to consider Appellants' new arguments to be properly submitted in their Reply Brief, Appellants do not identify any specific credible evidence, as opposed to unsupported attorney argument, substantiating their assertion that a skilled artisan, following the teachings in Ishaque as combined by the Examiner with Botes, would have been unable to prepare a material composed of non-woven PTFE nanofibers with an antimicrobial agent embedded therein, as recited in Appellants' claim 22. Nor do Appellants identify any evidence, comparative or otherwise, demonstrating that a material encompassed by claim 22 has unexpected properties. It is well settled that attorney argument is no substitute for such evidence of unexpectedness. See In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997). 10 Appeal2017-009961 Application 14/175,016 In sum, for the reasons discussed, Appellants do not persuade us that the preponderance of the evidence fails to support the Examiner's conclusion of obviousness as to claim 22. We, therefore, affirm the Examiner's rejection of claim 22 over Botes, Ishaque, and Wikol. Because they were not argued separately, claims 23, 24, 26-30, and 37 fall with claim 22. OBVIOUSNESS- BOTES, ISHAQUE, WIKOL, AND LEE In rejecting claim 28 over Botes, Ishaque, Wikol, and Lee, the Examiner cited Botes, Ishaque, and Wikol for the teachings discussed above, and cited Lee as evidence that it would have been obvious to form the filter materials suggested by the Botes/Ishaque/Wikol combination into the shape of a cylinder or tube, as recited in Appellants' claim 28. Ans. 5. In traversing the Examiner's rejection of claim 28, Appellants rely entirely on their arguments discussed above as to the Botes/Ishaque/Wikol combination, and contend only that Lee fails to remedy the alleged deficiencies discussed above as to claim 22, from which claim 28 depends. Appeal Br. 10-11; Reply Br. 9. As discussed above, we do not find Appellants' arguments persuasive. We, therefore, affirm the Examiner's rejection of claim 28 over Botes, Ishaque, Wikol, and Lee. OBVIOUSNESS- BOTES, ISHAQUE, WIKOL, AND KIM In rejecting claims 22 and 36 over Botes, Ishaque, Wikol, and Kim, the Examiner cited Botes, Ishaque, and Wikol for the teachings discussed above in relation to claim 22, and cited Kim as evidence that it would have 11 Appeal2017-009961 Application 14/175,016 been obvious to form the non-woven PTFE filter materials suggested by the Botes/Ishaque/Wikol combination from a continuous nanofiber, as recited Appellants' claim 36. Ans. 6-7. In traversing the Examiner's rejection of claims 22 and 36, Appellants rely on their arguments discussed above as to the Botes/Ishaque/Wikol combination, and contend that Kim fails to remedy the alleged deficiencies discussed above as to claim 22, from which claim 36 depends. Appeal Br. 12-13; Reply Br. 9. As discussed above, we do not find Appellants' arguments persuasive as to claim 22. We, therefore, affirm the Examiner's rejection of claim 22 over Botes, Ishaque, Wikol, and Kim. Claim 36 falls with claim 22, because it was not separately argued. DOUBLE PATENTING Appellants do not present argument traversing the Examiner's double patenting rejection of claim 22. We, therefore, summarily affirm that rejection. See MPEP Â§ 1205.02 ("If a ground of rejection stated by the examiner is not addressed in the appellant's brief, appellant has waived any challenge to that ground of rejection and the Board may summarily sustain it, unless the examiner subsequently withdrew the rejection in the examiner's answer."). SUMMARY For the reasons discussed, we affirm each of the Examiner's rejections. 12 Appeal2017-009961 Application 14/175,016 No time period for taking any subsequent action in connection with this appeal may be extended under 3 7 C.F.R. Â§ 1.13 6( a )(1 ). See 3 7 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 13