Ex Parte Ishaque et al

Patent Trial and Appeal Board

Jun 17, 2014

12438296 (P.T.A.B. Jun. 17, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/438,296 02/20/2009 Michael Ishaque 13156-00251-US 4415
30678 7590 06/18/2014
NOVAK DRUCE CONNOLLY BOVE + QUIGG LLP
(DC OFFICE)
1875 EYE STREET, N.W.
SUITE 1100
WASHINGTON, DC 20006
EXAMINER
TENTONI, LEO B
ART UNIT PAPER NUMBER
1742
MAIL DATE DELIVERY MODE
06/18/2014 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 MICHAEL ISHAQUE, MICHEL PEPERS,
WALTER HECKMANN, EVGUENI KLIMOV,
ANDREAS GREINER, JOACHIM H. WENDORFF,
and ALEKSANDAR STOILJKOVIC
____________________

Appeal 2012-012076
Application 12/438,296
Technology Center 1700
____________________

Before JEFFREY T. SMITH, JAMES C. HOUSEL,
and GEORGE C. BEST, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 19 through 25, 29 through 31 and 36 through 40.
We have jurisdiction under 35 U.S.C. § 6(b).
The claims are directed to a process of producing water insoluble
polymer fibers by electrospinning. App. Br. 3. Claim 19 illustrates the
subject matter on appeal and is reproduced below:
Appeal 2012-012076
Application 12/438,296

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19. A process for producing polymer fibers by electrospinning a
colloidal dispersion of

at least one essentially water-insoluble polymer, and

at least one water-soluble polymer having a solubility in water of at
least 0.1 % by weight, in an aqueous medium,

wherein the colloidal dispersion comprises at least one nonionic
surfactant, and

wherein the at least one water-soluble polymer is selected from the
group consisting of polyvinyl alcohol, polyalkylene oxides, poly N-
vinylpyrrolidone, hydroxymethylcelluloses, hydroxyethylcelluloses,
hydroxypropylcelluloses, carboxymethylcelluloses, maleic acids, alginates,
collagens, combinations formed from two or more monomer units which
form the aforementioned polymers, copolymers formed from two or more
monomer units which form the aforementioned polymers, graft copolymers
formed from two or more monomer units which form the aforementioned
polymers, star polymers formed from two or more monomer units which
form the aforementioned polymers, highly branched polymers formed from
two or more monomer units which form the aforementioned polymers, and
dendrimers formed from two or more monomer units which form the
aforementioned polymers, or a mixture thereof,

wherein the water-soluble polymer is removed after the production of
the polymer fibers, and after removal of the water-soluble polymer water-
insoluble polymer fibers are obtained without disintegration of the polymer
fibers.

The Examiner relied on the following references in rejecting the
appealed subject matter:
Seth US 2003/0100236 A1 May 29, 2003
Karles ’130 US 2006/0264130 A1 Nov. 23, 2006
Karles ’681 WO 2004/080681 A1 Sep. 23, 2004
Wu WO 2005/096744 A2 Oct. 20, 2005

Appeal 2012-012076
Application 12/438,296

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Appellants, Appeal Brief 6, request review of the following rejections
from the Examiner’s Final Office action:
I. Claims 19-25, 29, 30 and 36-39 rejected under 35 U.S.C.
§ 103(a) as unpatentable over Karles ’130 and Wu.
II. Claim 31 rejected under 35 U.S.C. § 103(a) as unpatentable
over Karles ‘130, Wu, and Karles ’681.
III. Claim 40 rejected under 35 U.S.C. § 103(a) as unpatentable
over Karles ’130, Wu, and Seth.
OPINION
The dispositive issue for this appeal is: Did the Examiner err in
determining that Karl ’130 would have led one skilled in the art to a method
of making a polymer fiber by electrospinning a colloidal dispersion of water
insoluble and water soluble polymers to make a water insoluble polymer
fiber as required by the limitations of independent claims 19 and 36?1, 2
We answer the question in the positive and REVERSE for the reasons
presented by Appellants.
The Examiner found that Karles ’130 discloses a process of making
water insoluble polymer fibers by electrospinning a dispersion of at least one
essentially water insoluble polymer and at least one claimed water-soluble
polymer in an aqueous medium, wherein the dispersion includes at least one
non-ionic surfactant. Ans. 5. The Examiner relied on paragraph 42 of

1 We limit our discussion to independent claim 19.
2 A discussion of Wu, relied upon by the Examiner in the principal rejection
under 35 U.S.C. § 103 (Ans. 5-6), and of Karles ’681 and Seth, relied upon
by the Examiner in the separate rejections of claims 31 and 40 under 35
U.S.C. § 103(a) (Ans. 6-8), is unnecessary for disposition of the present
appeal. The Examiner relied upon these references for features not related to
the dispositive issue.
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Application 12/438,296

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Karles ’130 to teach removal of the water-soluble polymer to form fibers of
water insoluble polymer. Ans. 5.
Appellants correctly argue that Karles ’130 discloses forming fast
dissolving fibers and not water-insoluble polymer fibers as claimed. App.
Br. 8. We agree. As noted by Appellants, Karles ’130 discloses a water
soluble fibrous structure that is disrupted or dissolved to release a flavorant.
App. Br. 8-9; Karles ’130 ¶ [0042]. There is no disclosure in ¶ [0042] of
Karles ’130 of producing polymer fibers by electrospinning a colloidal
dispersion of a water-soluble polymer and a water-insoluble polymer
wherein the water-soluble polymer is removed after the production of the
polymer fibers.
Accordingly, we reverse the Examiner’s prior art rejections of claims
19-25, 29-31, and 36-40 for the reasons presented by the Appellants and
given above.
ORDER
The Examiner’s prior art rejections of claims 19-25, 29-31, and 36-40
are reversed.
REVERSED

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