Ex Parte Polizu et al

Patent Trial and Appeal Board

Nov 14, 2016

12233336 (P.T.A.B. Nov. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/233,336 09/18/2008
32425 7590 11/16/2016
NORTON ROSE FULBRIGHT US LLP
98 SAN JACINTO BOULEVARD
SUITE 1100
AUSTIN, TX 78701-4255
FIRST NAMED INVENTOR
Stefania Polizu
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.
BENO.P0004US/11411347 1947
EXAMINER
SINGH, RANDEEP
ART UNIT PAPER NUMBER
1615
NOTIFICATION DATE DELIVERY MODE
11/16/2016 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):
aoipdocket@nortonrosefulbright.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEP ANIA POLIZU, PHILIPPE POULIN,
OUMAROU SA V ADOGO and L'HOCINE YAHIA
Appeal2015-005532
Application 12/233,336 1
Technology Center 1600
Before ULRIKE W. JENKS, RICHARD J. SMITH and DAVID COTT A,
Administrative Patent Judges.
COTTA, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a
biocompatible carbon nanotube-based fiber. The Examiner rejected the
claims on appeal as obvious under 35 U.S.C. § 103(a).
We affirm.
1 According to Appellants, the real parties in interest are the inventors,
Stefania Polizu, Philippe Poulin, Oumarou Savadogo, and L'Hocine Yahia.
App. Br. 1.
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Application 12/233,336
STATEMENT OF THE CASE
Claims 1-8 are on appeal. Claim 1 is illustrative and reads as follows:
1. A biocompatible carbon nanotube-based fiber
compnsmg:
a) at least one carbon nanotube;
b) a nanoparticle of a biodegradable copolymer; and
c) a coagulating polymer matrix,
wherein the at least one carbon nanotube and the
nanoparticle of a biodegradable copolymer comprise a binary
colloidal mixture dispersed within said matrix and wherein the
surface of said fiber is capable of stimulating and sustaining
cell proliferation.
The Examiner rejected the claims under 35 U.S.C. § 103(a) as
unpatentable over the combination of Polizu, 2 Smalley, 3 Ameer, 4 and Liu. 5
FINDINGS OF FACT
1. Polizu discloses: "In our preliminary work we synthesized
CNTs [carbon nanotubes] based fibers for medical applications. This new
hybrid system combines polyvinyl alcohol (PV A) with CNTs and polylactic-
co-glycolic acid (PLGA), a biodegradable copolymer. The surface properties
of this material are investigated in order to guarantee a biocompatible
2 Polizu et al., Nanoscale Surface of Carbon Nanotube Fibers for Medical
Applications: Structure and Chemistry Revealed by TOF-SIMS Analysis, 252
APPLIED SURFACE SCIENCE 6750-53 (2006) ("Polizu").
3 Smalley et al., US Patent Publication No. 2004/0040834 Al, published
Mar. 4, 2004 ("Smalley").
4 Ameer et al., US Patent Publication No. 2007/0071790 Al, published Mar.
29, 2007 ("Ameer").
5 Liu, Modifications of Carbon Nanotubes with Polymers, 41 EUROPEAN
POLYMER JOURNAL 2693---03 (2005) ("Liu").
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Application 12/233,336
response." Polizu Abstract.
2. Polizu discloses: "It is noteworthy that the effectiveness of
CNT in hybrid materials strongly depends on the ability to disperse the
nanotubes homogenously through the matrix while maintaining their integrity
and ensure bonding between components." Id. at 6750.
3. Ameer discloses: "[A] composition comprising a biodegradable
elastomeric polymeric component and a biodegradable polymeric nano-
structure .... Preferably, the biodegradable polymer is fabricated into a
nanostructure such as a nanofiber, a nanoparticle, or the like." Ameer i-f 10.
4. Ameer discloses: "[ n ]anocomposites were fabricated with either
5% (w/w) or 10% (w/w) PLGA nanoparticles." Id. at i-f 93. Ameer further
discloses "[ n ]anoparticles added to the PDC matrix act as additional crosslink
points and increase the strength and stiffness (Young's modulus) while
decreasing the elongation at break. ... A statistically significant difference
was found when comparing the PDC control without nanoparticles to the
PDC-PLGA nanocomposites, indicating that the strength and stiffness could
be increased by incorporating nanoparticles." Id. at i-f 94.
5. Ameer discloses: "The PLGA in solvent mixture was added
dropwise to the PV A in water solution .. . "Id. at i-f 79.
6. Smalley discloses:
In one embodiment, the single-wall carbon nanotubes are
first dispersed in a fluid, such as an aqueous system containing
a molecule, compound or polymer capable of wrapping,
encapsulating or otherwise isolating the nanotubes from each
other. With vigorous agitation and mixing, the nanotubes are
dispersed in the aqueous system as individual carbon nanotubes
and protected from reaggregation with a coating or wrapping
that does not perturb the electronic properties of the nanotubes.
Smalley i-f 57.
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Application 12/233,336
7. Smalley discloses "non-perturbing coatings that could be used
include polymers, such as ... polyvinyl alcohol ... The polymers can wrap
around the nanotubes and render the nanotubes soluble in water and other
compatible solvents. Moreover, the polymer wrapping or coating can be
removed without affecting the carbon nanotube structure." Id. at i-f 60.
8. Liu discloses:
The chemical functionalizations of carbon nanotubes
(CNTs) could enhance their chemical compatibility and
dissolution properties, which enable both a more extensive
characterization and subsequent chemical reactivity. The
modifications with polymers could not only improve CNTs'
solubility and dispersibility but also the interfacial interaction to
polymeric matrices in its composites. The main methods for the
modification of CNTs with polymers are noncovalent
attachment (polymer wrapping and absorption) and covalent
attachment ("grafting to" and "grafting from").
Liu Abstract.
9. Liu discloses "[i]n many applications it is necessary to tailor the
chemical nature of the nanotube' s walls in order to take advantage of their
unique properties." Id. at 2693.
10. Liu discloses:
Carbon nanotubes functionalized with biological
molecules (such as protein peptides and nucleic acids) show
great potential for application in bioengineering and
nanotechnology. DNA molecules may be encapsulated inside or
wrap around CNT owing to van der Waals attraction between
DNAandCNT.
Id. at 2694.
11. Liu discloses:
Tang and Xu reported the soluble multi-walled carbon
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Id.
nanotubes (iviw1~Ts )-contammg soluble photoconductive
poly(phenylacetylenes) (NT /PP As) are prepared by in situ
polymerizations of phenylacetylene catalyzed by WC16-Ph4Sn
and [Rh(nbd)Clh (nbd = 2,5-norbomadiene) in the presence of
the nanotubes. They demonstrate that the nanotubes in the
NT/PP A solutions can be easily aligned by mechanical shear
and that the NT/PP A solutions effectively limit intense 532-nm
laser pulses.
ANALYSIS
With respect to claims 1, 2, and 4--7 the Examiner found that Polizu
taught "methods of making carbon nanotube-based fibers comprising mixed
single wall carbon nanotubes, a biodegradable polymer (PLGA), and a
coagulating polymer (PVA) in aqueous solution." Final Act. 3. While
PLGA is a biodegradable polymer, the Examiner found that the PLGA
disclosed in Polizu was present in aqueous solution, not as a nanoparticle.
Ans. 4. Accordingly, the Examiner concluded that Polizu did not disclose a
"carbon nanotube-based fiber comprising a nanoparticle of a biodegradable
polymer." Final Act. 3.
The Examiner found that Ameer taught that "the use of biodegradable
polymers to fabricate nanostructures such as nanofibers." Id. In Ameer,
"PLGA nanoparticles" are added "dropwise to PVA." Id. The Examiner
found that Ameer taught that "nanoparticles of a biodegradable polymer
such as PGLA act as additional crosslink points during the fabrication of
nanocomposites and increase the strength and stiffness (Young's modulus)
while decreasing the elongation at break of the nanocomposites." Id. at 4.
Based on the combined teachings of Polizu and Ameer, the Examiner
concluded that "A skilled artisan would have had a reasonable expectation
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Application 12/233,336
. . . that adding a solution of PLGA nanoparticles to a solution compnsmg a
coagulating polymer (PVA) and nanostructures would lead to the production
of nanocomposites such as nano fibers with enhanced mechanical
properties." Id.
While Polizu and Ameer do not expressly recite a "binary colloidal
mixture" as recited in claim 1, the Examiner found that this property would
be inherent in their combined composition. As evidence of inherency, the
Examiner relied upon Smalley's teaching that "when single-wall carbon
nanotubes are dispersed in an aqueous system containing a polymer capable
of isolating, wrapping, or encapsulating the nanotubes from each other, the
nanotubes can be dispersed within the polymer as individual carbon
nanotubes and protected from reaggregation." Id. at 5. The Examiner
explained:
Based on the teachings of Smalley et al., a skilled artisan at the
time of the invention would have appreciated that a hybrid
material system obtained by blending a single wall carbon
nanotube dispersion, PLGA and PV A in aqueous solution, as
taught in Polizu et al., would inevitably result in a binary
colloidal mixture in which carbon nanotubes are dispersed
within a suspension of PLGA nanoparticles (as taught by
Ameer et al.), forming a binary colloidal mixture within a PV A
matrix."
Id. at 5.
Appellants disagree with the Examiner's finding that the combined
composition of Polizu and Ameer would result in a binary colloidal mixture.
Appellants argue that because PGLA nanoparticles act as crosslink points,
"adding a solution of PLGA nanoparticles to a solution comprising a
coagulation polymer (PVA) and nanostructures, such [as] carbon nanotubes
dispersed in water with sodium dodecyl sulfate, as suggested by the
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Examiner would result in flocculation of the PV A coated PLGA
nanoparticles from the solution." App. Br. 6-7. We are not persuaded.
Smalley teaches that carbon nanotubes can be protected from
reaggregation when they are placed in "an aqueous system containing a
molecule, compound, or polymer capable of wrapping, encapsulating or
otherwise isolating the nanotubes from each other." FF6. Among the
molecules that Smalley teaches are capable of "wrapping, encapsulating or
otherwise isolating" nanotubes is PV A. FF7. Both the Polizu and Ameer
use PV A as a coagulating polymer in conjunction with their nanostructures.
See FFl and FF5. Accordingly, it is reasonable to assume that the PVA in
the combined composition of Polizu and Ameer would behave as taught in
Smalley to wrap, encapsulate or otherwise isolate the nanotubes from each
other, thus producing a "binary colloidal mixture."
Appellants argue that "[ t ]here is no evidence proffered by the
Examiner to support the formation of a binary colloidal mixture of carbon
nanotubes and PLGA particles in the resulting fiber, much less evidence that
would support the high 'necessarily present' standard to support the
Examiner's inherency theory." Reply Br. 9. We disagree. As discussed
above, Smalley provides substantial evidence to support the Examiner's
position that the combination of Polizu and Ameer would inherently produce
a binary colloidal mixture. To the extent Appellants contend that the
combination of Polizu and Ameer would not produce a binary colloidal
mixture, it was incumbent upon Appellants to provide persuasive evidence
to demonstrate the absence of inherency. See In re Best, 562 F.2d 1252,
1255 (CCPA 1977).
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Application 12/233,336
Polizu's nanofibers are prepared using sodium dodecyl sulfate
("SDS"), which appellants identify as a "well known surfactant/detergent
that is capable of lysing cells." App. Br. 10. Appellants contend that "the
presence of SDS on the surface of Polizu's fibers would render said surface
incapable of stimulating and sustaining cell proliferation. Rather, it would
likely have the opposite effect by lysing cells." We disagree.
Polizu expressly states "[i]n our new approach, PLGA copolymers,
with two different molecular weights, were added in order to obtain a new
biocompatible biomaterial." Polizu 6751. Polizu further states: "the surface
properties of this material are investigated in order to guarantee a
biocompatible response." Id. Abstract. We find it unlikely that a material
described as "biocompatible" would lyse cells. Accordingly, we find that a
preponderance of the evidence supports the Examiner's finding that "a
biocompatible biomaterial such as one taught by Polizu would be capable of
stimulating and sustaining cell proliferation ... "Ans. 8.
We affirm the Examiner's rejection of claim 1 as obvious over the
combination of Polizu, Ameer, and Smalley. Appellants argue that claims 2
and 4--7 are patentable for the same reasons that claim 1 is patentable. App.
Br. 12. Accordingly, we affirm the Examiner's rejection of claims 2 and 4--
7 for the reasons discussed above with respect to claim 1.
With respect to claims 3 and 8 Appellants argue that claims 3 and 8
are independently patentable. Both claims 3 and claim 8 depend from
claim 1. Claim 3 adds the limitation "wherein said carbon nanotube
comprises a multi-wall carbon nanotube." Claim 8 adds the limitation
"further comprising additives selected from the group consisting of
antibodies, chemical entities, collagen, drugs, growth factors, laminine,
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oligonucleotides, peptides, peptide derivatives, siRt'-iA, and mixtures
thereof." Appellants argue that "It would not have been obvious to include
multi-walled carbon nanotubes or include different additive[s] such as
oligonucleotide and peptide, as taught by Liu, in the biocompatible
nanotube-based fibers of Polizu et al. to achieve fibers [capable] of
stimulating and sustaining cell proliferation." App. Br. at 14. Appellants
argue that the methods taught by Liu contradict those taught by Polizu
because Polizu's method does not involve nanotubes modified by covalent
functionalization or nanotubes dispersed with biomolecules. Id. We are not
persuaded.
Liu teaches that properties of carbon nanotubes such as solubility,
dispersability and compatibility can be improved by modifying the
nanotubes with polymers. FF8. Liu also teaches multi-walled carbon-
nanotubes, FFl 1, and states that "[i]n many applications it is necessary to
tailor the chemical nature of the nanotube' s walls in order to take advantage
of their unique properties." FF9. Finally Liu teaches that "[ c ]arbon
nanotubes functionalized with biological molecules (such as protein peptides
and nucleic acids) show great potential for application in bioengineering and
nanotechnology." FFlO. Appellants have not provided persuasive evidence
that these teaching contradict or are otherwise incompatible with Polizu's
methods. Accordingly, we affirm the Examiner's rejection of claims 3 and 8
as obvious over the combination of Polizu, Ameer, and Smalley.
SUMMARY
For these reasons and those set forth in the Examiner's Answer, the
Examiner's final decision to reject claims 1-8 is affirmed.
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No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a) (1).
AFFIRMED
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