Ex Parte Locklin et al

Patent Trial and Appeal Board

Aug 14, 2017

13147295 (P.T.A.B. Aug. 14, 2017)

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.
13/147,295 08/01/2011 Jason Locklin 222102-1680 I860
24504 7590 08/16/2017
THOMAS I HORSTEMEYER, LLP
3200 WINDY HILL ROAD, SE
SUITE 1600E
ATLANTA, GA 30339
EXAMINER
TATESURE, VINCENT
ART UNIT PAPER NUMBER
1786
NOTIFICATION DATE DELIVERY MODE
08/16/2017 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):
uspatents @ tkhr.com
ozzie. liggins @ tkhr.com
docketing @ thomashorstemeyer. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JASON LOCKLIN, IAN HARDIN,
SATYABRATA SAMANTA, and VIKRAM DHENDE1
Appeal 2016-008271
Application 13/147,295
Technology Center 1700
Before ADRIENE LEPIANE HANLON, LINDA M. GUADETTE, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
CASHION, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 2—10 and 20-29. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
1 The real party in interest is identified as the University of Georgia
Research Foundation, Inc., having a place of business at 809 Boyd GSRC,
200 D. W. Brooks Dr., Athens, GA 30672-7411. App. Br. 3.
Appeal 2016-008271
Application 13/147,295
Claims 20 is illustrative of the subject matter on appeal and is
reproduced below:
20. A structure, comprising:
a surface having a plurality of polymers, each polymer
individually covalently attached to the surface, wherein the
structure has an antimicrobial characteristic,
wherein each of the polymers covalently attached to the
surface is a linear or branched polyethylenimine polymer that
has been quatemized with a hydrophobic side chain moiety and
a single photo cross-linkable moiety.
Appellants (see Appeal Brief, generally) request review of the
following rejections from the Examiner’s Final Office Action2:
I. Claims 3—5, 9, 10, and 20-28 rejected under 35 U.S.C. § 103(a)
as unpatentable over Swan (US 5,714,360, issued February 3, 1998).
II. Claims 6, 7, and 21—24 rejected under 35 U.S.C. § 103(a) as
unpatentable over Swan and Murray (US 4,659,572, issued April 21, 1987).
III. Claims 2, 8, and 29 rejected under 35 U.S.C. § 103(a) as
unpatentable over Swan and Pontius (US 5,474,911, issued December 12,
1995).
For Rejection I, Appellants present arguments for independent claim
20 and dependent claims 21—24, 27, and 28. See generally Appeal Brief.
Appellants do not present separate arguments for claims 3—5, 9-11, 25, and
2 The Examiner withdrew the rejections under 35 U.S.C. § 112, first and
fourth paragraphs. Ans. 2—3.
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26. In addressing the separate rejections of claims 6 and 7 (Rejection II3)
and of claims 2, 8, and 29 (Rejection III), Appellants rely on the arguments
presented when discussing claim 20 and do not address or further distinguish
the additionally cited secondary reference based on the additional limitations
of the respectively rejected claims. Id. at 10—11. Accordingly, we select
claim 20 as representative of the subject matter before us on appeal. Claims
2—11, 25, 26, and 29 stand or fall with claim 20. Claims argued separately
will be addressed separately.
OPINION
The Prior Art Rejections
After review of the respective positions provided by Appellants and
the Examiner, we AFFIRM the Examiner’s rejection of representative
claim 20 for the reasons presented by the Examiner. We add the following
for emphasis.
Claim 20 is directed to a structure with a surface having a plurality of
polymers, each polymer individually covalently attached to the surface,
wherein each of the polymers in the plurality of polymers is quatemized
with a single photo cross-linkable moiety and with a hydrophobic side chain
moiety.
The Examiner finds Swan discloses a structure comprising a surface
having a plurality of polymers, where each polymer is individually
covalently attached to the surface. Final Act. 6; Swan Abstract. The
3 While Appellants present separate arguments for claims 21-24 as to
Rejection I, Appellants do not argue the patentability of claims 21-24 as to
Rejection II separately. Therefore, we limit our consideration of claims 21—
24 to the arguments presented in Rejection I.
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Examiner also finds Swan discloses each of the polymers covalently
attached to the surface is a linear or branched polyethylenimine polymer that
has been quatemized with a hydrophobic side chain moiety and a single
photo cross-linkable moiety. Final Act. 6—7; Swan col. 2,1. 25—col. 3,1. 19.
The Examiner further determines the prior art structure has an antimicrobial
characteristic because the material of Swan possesses the structure and
groups within the scope of the claims and would therefore possess the
antimicrobial properties as claimed. Final Act. 7.
Appellants argue Swan does not teach or suggest a surface having a
plurality of polymers, wherein each of the polymers has been quatemized
with a single photo cross-linkable moiety as required by claim 20. App. Br.
6—7. According to Appellants, Swan teaches preferred linking groups
include two or more photo cross-linkable groups. App. Br. 7; Swan
Abstract, col. 2,11. 19-43.
We are unpersuaded by these arguments and agree with the
Examiner’s determination of obviousness. Ans. 4—5. Moreover, it is well
settled that a reference may be relied upon for all that it discloses and not
merely the preferred embodiments as suggested by Appellants. See Merck
& Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (“all
disclosures of the prior art, including unpreferred embodiments, must be
considered” (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976))); In
re Fracalossi, 681 F.2d 792, 794 n.l (CCPA 1982) (explaining that a prior
art reference’s disclosure is not limited to its examples.).
As recognized by the Appellants, Swan teaches preferred linking
agents (polymers) to be attached to the disclosed stmcture include two or
more photo cross-linkable groups. App. Br. 7; Swan Abstract, col. 2,11. 19—
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43. Swan also suggests the use of a single photo cross-linkable group by
disclosing that “‘(/mjono, di, etc.)photo-(mono, di, etc.) charge’ shall be
used as a shorthand reference to refer to the total number of photoreactive
groups and the total number and type of charged groups in a linking agent of
this invention (emphasis added).” Swan col. 4,11. 4—7. Appellants direct us
to no portion of Swan that supports their assertion that the preference for
using linking agents including two or more photo cross-linkable groups
necessarily limits Swan’s broader disclosure noted above. Thus, Appellants
have not distinguished the claimed invention from the teachings of the cited
art.
Appellants argue Swan does not teach or suggest that each polymer
has been quatemized with a hydrophobic side chain moiety as required by
claim 20. App. Br. 7—8. According to Appellants, the Examiner is simply
picking and choosing specific words from Swan without considering the
teachings of Swan because the charged/radical alkyl groups that impart
water solubility are not inherently hydrophobic as suggested by the
Examiner. App. Br. 7.
We also find these arguments unavailing for the reasons presented by
the Examiner. Ans. 5—6. As explained by the Examiner, Swan discloses
hydrophobic side chains, such as alkyl side chains. Final Act. 10; Ans. 5;
Swan col. 3,11. 9-13. Moreover, Swan recognizes hydrophobicity as a
desirable property to be conferred to a surface in some instances. Swan col.
10,1. 61—col. 11,1. 65. Thus, Swan provides a reasonable basis for one
skilled in the art to provide polymer coating comprising hydrophobic side
chain moieties. Note that the property of hydrophobicity results once the
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polymer is set or cured and not while the polymer is in solution. Swan col.
3,11. 24—28; col. 4,11. 48-56.
With respect to claims 20-24, 27, 28, Appellants argue Swan does not
disclose the polymers provide antimicrobial properties to the structure. App.
Br. 9.
We are unpersuaded. The mere recitation of a property or
characteristic not disclosed by the prior art does not necessarily confer
patentability. Cf. In re Skoner, 517 F.2d 947, 950 (CCPA 1975). Where the
Examiner establishes a reasonable belief that the property or characteristic
recited in the claims would have been inherent to the product or process, the
burden of proof shifts to Appellants to show that this characteristic or
property is not possessed by the prior art. See In re Best, 562 F.2d 1252,
1255 (CCPA 1977); In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990).
As shown above, the Examiner established that the product of the
combined prior art and the product of the claimed invention are both
directed to structures comprising a surface having a plurality of polymers
individually covalently attached to the surface. Final Act. 6—7; Swan col. 2,
11. 19-43, col. 3,11. 24—28. Swan also discloses the polymers as having been
quatemized with a hydrophobic side chain moiety and a single photo cross-
linkable moiety. Final Act. 6—7, 10; Swan col. 2,1. 25—col. 3,11. 19. That is,
the Examiner has established that the product of the claimed invention
appears to be the same or substantially similar to the product of the prior art.
Thus, the Examiner has provided a reasonable basis for one skilled in the art
to expect the structures of the prior art and of the claimed invention to have
the same properties. Accordingly, the burden shifted to Appellants to
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Application 13/147,295
demonstrate that the antimicrobial properties of the claimed nutritional
emulsion was not possessed by the prior art. In re Best, 562 F.2d at 1255.
Appellants have not adequately explained or directed us to any evidence
showing why the structure from the prior art does not necessarily or
inherently possess the disputed property.
Based on Leo Pharm. Products, Ltd. v. Rea, 726 F.3d 1346, 1359
(Fed. Cir. 2013), Appellants additionally argue the Federal Circuit recently
emphasized that a long lapse of time of more than 10 years between the prior
art and the claimed invention supports nonobviousness of the claimed
invention. App. Br. 11. Appellants then argue the instant application was
filed more than 15 years after Swan and, thus, this long lapse of time
evidences nonobviousness of the claimed invention. Id.
We are unpersuaded by these arguments. The portion of Leo that
discusses the issue of elapsed time is quoted below:
The elapsed time between the prior art and the
’013 patent’s filing date evinces that the ’013
patent’s claimed invention was not obvious to try.
Indeed this considerable time lapse suggests
instead that the Board only traverses the obstacles
to this inventive enterprise with a resort to
hindsight. It took over a decade—after Dikstein’s
disclosure of the benefits of combining vitamin D
and corticosteroid treatments into one
formulation—for Dikstein’s formulations to be
tested for storage stability. And, until the
advancement made by the inventors of the ’013
patent, no one had proposed a new formulation
that would be storage stable. The problem was not
known, the possible approaches to solving the
problem were not known or finite, and the solution
was not predictable. Therefore, the claimed
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invention would not have been obvious to try to
one of ordinary skill in the art. Indeed ordinary
artisans would not have thought to try at all
because they would not have recognized the
problem (emphasis added).
Leo 726 F.3d at 1356-57.
Thus, Leo recognizes that elapsed time between the cited art and the
time the invention was made is a consideration if there is evidence of
hindsight, that problem was not known or the solution was not predictable.
Cf. In re Wright, 569 F.2d 1124, 1127 (CCPA 1977) (“The mere age of the
references is not persuasive of the unobviousness of the combination of their
teachings, absent evidence that, notwithstanding knowledge of the
references, the art tried and failed to solve the problem.”); Ex parte Meyer, 6
USPQ2d 1966 (Bd. Pat. App. & Inter. 1988) (length of time between the
issuance of prior art patents relied upon (1920 and 1976) was not persuasive
of unobviousness).
Appellants have provided no persuasive argument or evidence that the
Examiner relied on hindsight in applying the cited art. See generally Appeal
Brief. Appellants have also not adequately argued that the problem of
providing a surface with effective antimicrobial property was not known.
See Spec. 1—2. Finally, as noted above, the Examiner has provided a
reasonable basis for one skilled in the art to expect the structures of the prior
art and of the claimed invention to have the same properties. Therefore,
Appellants have not provided an adequate explanation or other evidence
supporting their assertion that a long lapse of time of more than 15 years
between the prior art and the claimed invention supports nonobviousness of
the claimed invention.
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Accordingly we affirm the Examiner’s prior art rejections of claims
2—10 and 20-29 under 35 U.S.C. § 103 (a) for the reasons presented by the
Examiner and given above.
ORDER
The Examiner’s prior art rejections of claims 2—10 and 20—29 under
35 U.S.C. § 103(a) are affirmed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED
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