Ex Parte Qiu et al

Patent Trials and Appeals Board

Nov 16, 2012

10891407 - (D) (P.T.A.B. Nov. 16, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte YONGXING QIU and JOHN MARTIN LALLY
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Appeal 2011-013236
Application 10/891,407
Technology Center 1600
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Before DEMETRA J. MILLS, JEFFREY N. FREDMAN, and
STEPHEN WALSH, Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the rejection of
claims directed to a method for making an antimicrobial device. The Patent
Examiner rejected the claims for obviousness. We have jurisdiction under
35 U.S.C. § 6(b). We reverse.
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Application 10/891,407

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STATEMENT OF THE CASE
Claims 1-13 and 44-47 are on appeal. Claim 1 is representative and
reads1 as follows (emphasis added):
1. A method for making an antimicrobial medical device, comprising the
steps of:
obtaining a polymerizable fluid composition comprising a siloxane-
containing macromer and a vinylic monomer capable of reducing silver
cations;
adding a desired amount of a soluble silver salt into the fluid
composition to form a polymerizable dispersion comprising silver
nanoparticles and said silver nanoparticles having a stability of at least about
60 minutes, wherein the silver nanoparticles are formed by reducing the
silver cations in the soluble silver salt with the vinylic monomer ;
introducing an amount of the polymerizable dispersion in a mold for
making a medical device; and
polymerizing the polymerizable dispersion in the mold to form the
antimicrobial medical device containing silver nanoparticles.

The Examiner rejected the claims as follows:
I. claims 1-3, 5-8, and 10-12 under 35 U.S.C. § 103(a) as unpatentable
over Vanderlaan and Gibbins;
 claim 4 under 35 U.S.C. § 103(a) as unpatentable over Vanderlaan,
Gibbins, and Nicolson;
 claims 9 and 13 under 35 U.S.C. § 103(a) as unpatentable over
Vanderlaan, Gibbins, and Ogle;
 claims 44 and 45 under 35 U.S.C. § 103(a) as unpatentable over
Vanderlaan, Gibbins, and Hu;
 claims 46 and 47 under 35 U.S.C. § 103(a) as unpatentable over
Vanderlaan, Gibbins, Ogle, and Holdstock;

1 Reformatted by the Board in the form recommended by 37 C.F.R.
§ 1.75(i).
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II. claims 1-3, 5-8, and 10-12 under 35 U.S.C. § 103(a) as unpatentable
over Vanderlaan and Terry;
 claim 4 under 35 U.S.C. § 103(a) as unpatentable over Vanderlaan,
Terry, and Nicolson;
 claims 9 and 13 under 35 U.S.C. § 103(a) as unpatentable over
Vanderlaan, Terry, and Ogle;
 claims 44 and 45 under 35 U.S.C. § 103(a) as unpatentable over
Vanderlaan, Terry, and Hu; and
 claims 46 and 47 under 35 U.S.C. § 103(a) as unpatentable over
Vanderlaan, Terry, Ogle, and Holdstock.

OBVIOUSNESS
The rejections are presented as two series, numbered I and II above,
each series separately reaching all the claims. Each series begins with a
rejection of claim 1 (and others) over a base pair of references. Four
additional rejections in each series rely on the base combination plus an
added reference, or references, said to render certain dependent claims
obvious. The first series is based on the combined teachings of Vanderlaan
and Gibbins, the second on the combined teachings of Vanderlaan and
Terry.
The Issue
Appellants contend that neither of the base pairs of references
suggested claim 1’s step in which “the silver nanoparticles are formed by
reducing the silver cations in the soluble silver salt with the vinylic
monomer.” (See App. Br. 4, addressing Vanderlaan and Gibbins, and 9,
addressing Vanderlaan and Terry.) This same argument is relied on for the
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proposition that none of the additional rejections is well founded, as none of
the additional references remedy the alleged deficiency in the base pair.
(See App. Br. 7-8.)
The issue for series I and II is the same:
whether the base pair of references relied on in each series of
rejections suggested a step in which “the silver nanoparticles are formed by
reducing the silver cations in the soluble silver salt with the vinylic
monomer.”

Findings of Fact
1. The Examiner’s findings and conclusions regarding the obviousness
of claim 1 over Vanderlaan and Gibbins are set out at Ans. 6-7.
2. The Examiner’s findings and conclusions regarding the obviousness
of claim 1 over Vanderlaan and Terry are set out at Ans. 10-11.

Principles of Law
When determining whether a claim is obvious, an Examiner must
make “a searching comparison of the claimed invention – including all its
limitations – with the teachings of the prior art.” In re Ochiai, 71 F.3d 1565,
1572 (Fed. Cir. 1995). “It is impermissible within the framework of section
103 to pick and choose from any one reference only so much of it as will
support a given position, to the exclusion of other parts necessary to the full
appreciation of what such reference fairly suggests to one of ordinary skill in
the art.” In re Wesslau, 353 F.2d 238, 241 (CCPA 1965).

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Analysis
I. Vanderlaan and Gibbins
Appellants contend that Vanderlaan and Gibbins do not disclose or
suggest a step in which silver nanoparticles are formed by reducing silver
cations with a vinylic monomer. (App. Br. 4.) Appellants agree that
Vanderlaan disclosed a lens having antimicrobial properties comprising
more than about 0.01 weight percent activated silver, but contend
Vanderlaan taught adding metallic silver to the lens forming material and
activating the silver by oxidation. (Id. at 4-5.) Vanderlaan’s silver to be
oxidized admittedly could be formed by reduction of ionic silver in the
polymer matrix. (Id. at 5.) Appellants emphasize however that claim 1
requires the reduction of the silver salt occur before a matrix is formed. (Id.)
Thus, Appellants contend that “Vanderlaan et al teaches exactly the opposite
to what the present invention provides as inventive solution. Forming silver
nanoparticles by reducing a silver salt prior to polymerization cannot
reasonably be considered as obvious alternative to Vanderlaan et al.” (Id. at
6.) In Appellants’ view, Gibbins taught away from the invention by
teaching to stabilize silver in a non-antimicrobial form such as silver
chloride. (Id. at 6-7.)
We conclude that Appellants have the better position. Although
Vanderlaan taught that reduction of ionic silver in the matrix could provide
the metallic silver for oxidation, the rejection did not establish that the
reduction could have been by vinylic monomers, as the matrix would
already have formed. The rejection over Vanderlaan and Gibbins is
reversed. As the additional rejections in series I did not resolve this
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difference between claim 1 and the combined teachings of Vanderlaan and
Gibbins, they are also reversed.

II. Vanderlaan and Terry
Appellants contend that Terry taught “varying release kinetics for the
active ions in the compositions due to the different water solubilities of the
metal salt, allowing antimicrobial release profiles to be tailored for a given
application and providing for sustained antimicrobial activity over time.
However, Terry . . . clearly and unambiguously do not teach to reduce those
ions.” (App. Br. 9, emphasis deleted.) According to Appellants, neither
Vanderlaan nor Terry “suggest the step of reducing the silver cations in the
soluble silver salt with the vinylic monomer.” (Id., emphasis deleted.)
We conclude that Appellants have the better position. Although
Vanderlaan taught that reduction of ionic silver in the matrix could provide
the metallic silver for oxidation, the rejection did not establish that the
reduction could have been by vinylic monomers, as the polymeric matrix
would already have formed. The rejection over Vanderlaan and Terry is
reversed. As the additional rejections in series II did not resolve this
difference between claim 1 and the combined teachings of Vanderlaan and
Terry, they are also reversed.

SUMMARY
We reverse the rejection of claims 1-3, 5-8, and 10-12 under
35 U.S.C. § 103(a) as unpatentable over Vanderlaan and Gibbins.
We reverse the rejection of claim 4 under 35 U.S.C. § 103(a) as
unpatentable over Vanderlaan, Gibbins, and Nicolson.
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We reverse the rejection of claims 9 and 13 under 35 U.S.C. § 103(a)
as unpatentable over Vanderlaan, Gibbins, and Ogle.
We reverse the rejection of claims 44 and 45 under 35 U.S.C. § 103(a)
as unpatentable over Vanderlaan, Gibbins, and Hu.
We reverse the rejection of claims 46 and 47 under 35 U.S.C. § 103(a)
as unpatentable over Vanderlaan, Gibbins, Ogle, and Holdstock.
We reverse the rejection of claims 1-3, 5-8, and 10-12 under
35 U.S.C. § 103(a) as unpatentable over Vanderlaan and Terry.
We reverse the rejection of claim 4 under 35 U.S.C. § 103(a) as
unpatentable over Vanderlaan, Terry, and Nicolson.
We reverse the rejection of claims 9 and 13 under 35 U.S.C. § 103(a)
as unpatentable over Vanderlaan, Terry, and Ogle.
We reverse the rejection of claims 44 and 45 under 35 U.S.C. § 103(a)
as unpatentable over Vanderlaan, Terry, and Hu.
We reverse the rejection of claims 46 and 47 under 35 U.S.C. § 103(a)
as unpatentable over Vanderlaan, Terry, Ogle, and Holdstock.

REVERSED

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