Ex Parte Deorkar et al

Patent Trial and Appeal Board

Aug 29, 2013

11813434 (P.T.A.B. Aug. 29, 2013)

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.
11/813,434 07/06/2007 Nandu Deorkar 2198-18 PCT/US/RCE II 2411
23869 7590 08/29/2013
Hoffmann & Baron LLP
6900 Jericho Turnpike
Syosset, NY 11791
EXAMINER
ZALASKY, KATHERINE M
ART UNIT PAPER NUMBER
1777
MAIL DATE DELIVERY MODE
08/29/2013 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 NANDU DEORKAR, ROBERT C. BUSS,
JOSEPH M. MLADOSICH, and PAUL A. BOUIS
____________

Appeal 2012-006357
Application 11/813,434
Technology Center 1700
____________

Before CHUNG K. PAK, MICHAEL P. COLAIANNI, and
GEORGE C. BEST, Administrative Patent Judges.

PAK, Administrative Patent Judge

DECISION ON APPEAL
The named inventors (hereinafter “Appellants”)1 appeal under
35 U.S.C. § 134 from the Examiner’s final rejection of claims 6 through 8,
10 through 12, 15, 16, 19, and 20, all of the claims pending in the above-
identified application.2 We have jurisdiction pursuant to 35 U.S.C. § 6(b).

1 Appellants identify the real party in interest as Avantor Performance
Materials, Inc. owned by Avantor Performance Materials Holdings S.A., a
Luxembourg Company. (See Appeal Brief filed September 20, 2011 (“App.
Br.”) at 2.)
2 (See id.; Final Office action mailed April 18, 2011(“FR”) at 1.)
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STATEMENT OF THE CASE
The subject matter on appeal is directed to “chromatographic media,
preferably mixed anion exchangers, mixed anion-cation exchangers and
hydrophobic exchangers.” (Spec. 1, ll. 8-10.) The chromatographic media
is “prepared using polymeric particles derivatized3 with polyethyleneimine,
and preferably such polyethyleneimine derivatized polymeric particles
further functionalized with appropriate reactants.” (Id. at 5, ll. 14-17.) This
polymeric particle-based chromatographic media is said to minimize or
avoid the stability problem associated with conventional silica particle-based
chromatographic media at high pH. (Id. at 3, ll. 5-14.) The polymeric
particle-based chromatographic media, like the conventional silica particle-
based chromatographic media, is used for separating proteins (id. at 1-2.)
Details of the appealed subject matter are recited in representative
claim 64 reproduced below:
6. Chromatographic media comprising epoxidized
polymeric resin particles derivatized by reaction with
polyethyleneimine on the surface of the polymer and wherein
the epoxidized polymeric particles are epoxidized polyacrylates
or polymethacrylates, wherein the polymeric resin particles
derivatized with polyethyleneimine on the surface of the
polymer are functionalized by reaction of a functionalization
reagent with terminal amino groups of the polyethyleneimine
on the surface of the polymeric resin, and wherein the
functionalization reagent is selected from the group consisting

3 The term “derivatized” recited in the claims on appeal includes
polyethyleneimine reacted or bound to the surface of epoxidized
polyacrylate or polymethacrylate particles, but excludes polyethyleneimine
cross-linked to epoxidized polyacrylate or polymethacrylate particles.
(Spec. 3, ll. 17-18.)
4 For purposes of this appeal, we limit our discussion to argued claim 6
consistent with 37 C.F.R. § 41.37(c)(1)(vii).
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Application 11/813,434
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of: acid anhydrides, sulfonation agents, alkyl chlorides, and
alkyl chlorides containing quaternary ammonium functionality,
and mixtures thereof.
(App. Br. 13 (Claims App’x)).
Appellants seek review of the Examiner’s rejection of claims 6
through 8, 10 through 12, 15, 16, 19, and 20 under 35 U.S.C. § 103(a) as
unpatentable over either Muranaka ‘7295 or ‘8206 in view of Ramsden7
maintained in the Examiner’s Answer mailed December 8, 2011 (“Ans.”).
(See App. Br. 5.)

DISCUSSION
Appellants do not dispute the Examiner’s finding that either
Muranaka ‘729 or ‘820 discloses chromatographic media comprising
epoxidized polymeric particles, such as epoxidized polyacrylate or
polymethacrylate particles, derivatized with polyethyleneimine. (Compare
Ans. 4-5 and 6 with App. Br. 6-12.) Nor do Appellants dispute the
Examiner’s finding that either Muranaka ‘729 or ‘820 teaches employing
such derivatized polymeric particles in chromatography for separating
proteins.8 (Compare Ans. 4-5 and 6 with App. Br. 6-12.)

5 U.S. Patent Application Publication No. 2002/0134729 A1 published in the
name of Muranaka et al. on September 26, 2002 (“Muranaka ‘729”).
6 U.S. Patent No. 6,689,820 B2 issued to Muranaka et al. on February 10,
2004 (“Muranaka ‘820”).
7 U.S. Patent No. 4,551,245 issued to Ramsden et al. on November 5, 1985
(“Ramsden”).
8 Indeed, Muranaka ‘729 or ‘820 teaches that polyethyleneimine introduced
onto the fine particles surface exhibits an enhanced ion exchanging capacity
and an enhanced adsorption capacity for protein. (Muranaka ‘729, 4,
¶¶ [0039] and [0061]; Muranaka ‘820, col. 8, ll. 4-18.)
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Rather, Appellants contend that one of ordinary skill in the art, armed
with the knowledge reflected in the collective teachings of either Muranaka
‘729 or ‘820, and Ramsden, would not have been led to functionalize
polyethyleneimine reacted or bound to the surface of epoxidized
polyacrylate or polymethacrylate particles, with a reasonable expectation of
successfully using them in chromatography for separating proteins. (App.
Br. 7-8.) In support of this contention, Appellants assert that Ramsden does
not teach functionalizing polyethyleneimine on the surface of epoxidized
polyacrylate or polymethacrylate particles for the purpose of solving the
stability problem associated with using silica particles at high pH. (Id. at 7.)
According to Appellants, Ramsden is directed to functionalizing
polyethyleneimine bound to the surface of silica particles, rather than to
functionalizing polyethyleneimine bound to the surface of the epoxidized
polymeric particles. (Id.)
Appellants also contend that the claimed subject matter imparts
unexpected results relative to the closest prior art, thereby overcoming any
inference of obviousness reflected in the collective teachings of either
Muranaka ‘729 or ‘820, and Ramsden. (Id. at 8-12.) In support of this
contention, Appellants refer to Examples 33, 34, and 37 and Figures 1, 2,
and 3 in the instant application and to a declaration executed by one of the
inventors, Nandu Deorkar, on August 4, 2010 (“Deorkar Declaration”). (Id.)
Thus, the dispositive questions raised are:
(1) Did the Examiner err in finding that one of ordinary skill in the
art, armed with the knowledge reflected in the collective teachings of either
Muranaka ‘729 or ‘820, and Ramsden, would have been led to functionalize
polyethyleneimine reacted or bound to the surface of epoxidized
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polyacrylate or polymethacrylate particles, with a reasonable expectation of
successfully using them in chromatography for separating proteins?
(2) Did the Examiner err in determining that Appellants have not
demonstrated that the showing in the Declaration and the Specification is
sufficient to outweigh the evidence of obviousness reflected in the collective
teachings of either Muranaka ‘729 or ‘820, and Ramsden?
On this record, we answer these questions in the negative substantially
for the reasons set forth by the Examiner in the Answer. We add the
following for emphasis and completeness.
As found by the Examiner at page 7 of the Answer, Ramsden teaches
that polyethyleneimine (PEI) bound to the surface of silica particles, like the
polyethyleneimine bound to the surface of epoxidized polyacrylate or
polymethacrylate particles taught by Muranaka ‘729 or ‘820, are useful as
packing materials in chromatography columns for separating proteins. (See
Ramsden, col. 1, l. 45 to col. 2, l. 31; see also Appellants’ admission at page
2 of the Specification regarding “‘Polyethyleneimine Bound
Chromatographic Packing,’” such as PEI derivatized or covalently bound
silica particles.) Ramsden also teaches that functionalized
polyethyleneimine, like non-functionalized polyethyleneimine, can be bound
to the surface of silica particles for use in chromatography for separating
proteins. (See Ans. 4-7 and Ramsden, col. 1, ll. 5-24 and col. 4, ll. 31-51.)
In particular, Ramsden teaches that functionalizing polyethyleneimine bound
to silica particles with an acylating agent, such as acetic anhydride or butyryl
chloride, provides “marked advantages in separating proteins” with a good
hydrolytic stability. (See Ans. 4-8 and Ramsden, col. 4, ll. 45-56, col. 5, l.
48 to col. 6, l. 7.) In other words, the collective teachings of Muranaka ‘729
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or ‘820 and Ramsden indicate that silica particles and polymeric particles,
such as epoxidized polyacrylate or polymethacrylate particles, can be
interchangeably used with polyethyleneimine (PEI) or functionalized
polyethyleneimine (PEI) in chromatography for the protein separation
purposes, with the use of the functionalized polyethyleneimine imparting a
superior protein separation result relative to the use of the non-
functionalized polyethyleneimine.
Given the above teachings, we find no reversible error in the
Examiner’s determination that one of ordinary skill in the art would have
had an apparent reason to employ a functionalized PEI (PEI functionalized
with an acylating agent, such as acetic anhydride or butyryl chloride) bound
to the surface of either silica particles or polymeric particles, such as
epoxidized polyacrylate or polymethacrylate particles, with a reasonable
expectation of successfully using them as packing materials in
chromatography for separating proteins.
In reaching this determination, we have noted the reason or
motivation provided by the collective teachings of either Muranaka ‘729 or
‘820 and Ramsden to arrive at the epoxidized polymeric particles having the
bound functionalized PEI recited in the claims on appeal is not identical to
the problem solving or reason stated by Appellants in the Specification.
However, such reason or motivation need not be identical to that
contemplated by Appellants so long as it would have led one of ordinary
skill in the art to the claimed subject matter.9 In re Kemps, 97 F.3d 1427,

9 It is understandable that Muranaka ‘729 or ‘820 is not concerned with the
problem solving contemplated by Appellants. Muranaka ‘729 and ‘820 are
directed to PEI bound to the surface of epoxidized polymeric particles, such
as epoxidized polyacrylate or polymethacrylate particles, which, according
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1430 (Fed. Cir. 1996) (“Although the motivation to combine here differs
from that of the applicant, the motivation in the prior art to combine the
references does not have to be identical to that of the applicant to establish
obviousness.”)
Appellants rely on Examples 33, 34, and 37 and Figures 1, 2, and 3 in
the instant application and on the Deorkar Declaration to demonstrate that
the claimed subject matter as a whole shows unexpected results relative to
the closest prior art. The examples and figures in the instant application
relied upon by Appellants show protein separation comparisons between
chromatographic columns packed with silica media sold as “J T Baker
product no. 7285” or “PEI silica media” sold as J T Baker “Product Number
7264, lot N 16084” and chromatographic columns packed with 70 grams or
60 grams PEI functionalized polymer particles prepared according to
Example 1 which are further reacted with 56. 3 grams of butyric anhydride
and 36 grams of triethylamine or 49 grams of 3(dimethylamino) propyl
chloride at specific reaction conditions for specific reaction periods.
According to Example 1, the polymer particles having bound PEI are
prepared as follows:
12 g epoxy bearing methacrylate polymer with average
particle size of 35 micron diameter and 200 ml dioxane are
placed in a 1L round bottom flask equipped with a funnel,
agitator, reflux condenser and positive nitrogen pressure inlet
and stirred for 30 min to allow the resin to swell. 20 g
polyethyleneimine (PEI, average molecular weight 600
Daltons) is added and the funnel rinsed with an additional 150
ml dioxane. The stirred mixture is refluxed overnight. After
allowing the mixture to cool, the mixture is transferred to a

to Appellants, does not suffer from any instability problem at high pH,
unlike PEI bound to silica particles.
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filter flask, drained, washed once with dioxane, three times with
methanol and dried under vacuum at 60oC.

(Spec. 8-9.) The Specification indicates the criticality of employing a
particular solvent to eliminate the presence of water. (Id. at 10, ll. 11-15.)
Appellants do not refer to any part of the Specification to provide the details
of silica media sold as “J T Baker product no. 7285” or “PEI silica media”
sold as J T Baker “Product Number 7264, lot N 16084.”
The Deorkar Declaration relied upon by Appellants also states that
“epoxidized resin particles derivatized with PEI, but without the
functionalization groups as disclosed in Muranaka” were compared with
“such epoxidized resin particles derivatized with PEI, but functionalized
with the functionalization groups (succinic anhydride) to provide both weak
anion and weak cation exchange in accordance with our claimed invention.”
According to page 2 of the Deorkar Declaration, “[t]he non-functionalized
PEI derivatized epoxidized resin particles media of Muranaka could not
separate the mixture of proteins whereas the functionalized PEI derivatized
epoxidized resin particles media of this invention clearly separated such
proteins. . . .” However, the Deorkar Declaration does not indicate what
epoxidized resin particles and PEI were used and what reaction conditions
and solvents were used to derivatize such unknown epoxidized resin
particles with an unknown amount of a PEI having an unknown number
average molecular weight in its test. The Deorkar Declaration’s stated
results contradict Appellants’ own statement in the Specification that the
chromatographic media “prepared using polymeric particles derivatized with
polyethyleneimine” is useful for separating proteins as discussed supra.
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As correctly found by the Examiner at page 9 of the Answer,
Muranaka ‘729 and ‘820 are the closest prior art inasmuch as they are
directed to PEI bound to the surface of epoxidized polyacrylate or
polymethacrylate particles useful as chromatography packing materials in
separating proteins. Notwithstanding the statements based on certain
ambiguous experiments in the Deorkar Declaration to the contrary,
Muranaka ‘729 actually showed “a large adsorption capacity for protein and
a high separation performance” when anion exchangers prepared from 50
grams of epoxidized porous hydrophilic acrylate polymer particles having an
average particle diameter of 10 µm reacted with 15 grams of
polyethyleneimine having a number average molecular weight of 70,000
were used as chromatography packing materials in separating proteins. (See,
e.g., Muranaka ‘729, 4, ¶¶ [0039] and [0061], Example 1.) Nowhere do
Examples 33, 34 and 37 and Figures 1, 2, and 3 in the instant application
indicate that the closest prior art, namely Example 1 of Muranaka ‘729, was
compared with the claimed subject matter. Nor can it be ascertained from
the ambiguous showing in the Deorkar Declaration whether the claimed
subject matter was compared with the closest prior art, Example 1 of
Muranaka ‘729. On this record, Appellants have not demonstrated that the
showing relied upon is based on a comparison between the claimed subject
matter and the closest prior art. In re Baxter Travenol Labs., 952 F.2d 388,
392 (Fed. Cir. 1991); In re Chapman, 357 F.2d 418, 422 (CCPA 1966).
Moreover, as correctly found by the Examiner at page 10 of the
Answer, Appellants have not demonstrated that the showing in the
Specification and the Deorkar Declaration is reasonably commensurate in
scope with the degree of protection sought by the claims on appeal. While
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the showing is limited to employing cation or anion exchangers prepared
from 12 g epoxy bearing methacrylate polymer particles having an average
particle size of 35 micron diameter with 20 g, 60 g, or 70 g
polyethyleneimine having an average molecular weight of 600 Daltons in a
specific solvent and two or three specific functionalizing agents for
functionalizing polyethyleneimine bound to the epoxy bearing methacrylate
polymer particles, the claims on appeal are not so limited. On this record,
Appellants have not shown that the unexpected results allegedly achieved
with a very few specific anion and cation exchanges are also applicable to all
of the chromatographic media covered by the claims on appeal. See, e.g., In
re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005) (“Even assuming that the
results were unexpected, Harris needed to show results covering the scope of
the claimed range. Alternatively Harris needed to narrow the claims.”); In
re Greenfield, 571 F.2d 1185, 1189 (CCPA 1978)(“Establishing that one (or
a small number of) species gives unexpected results is inadequate proof, for
‘it is the view of this court that objective evidence of non-obviousness must
be commensurate in scope with the claims which the evidence is offered to
support.’” (quoting In re Tiffin, 448 F.2d 791, 792 (CCPA 1971)).
Accordingly, based on the totality of evidence of record, including
due consideration of Appellants’ arguments and evidence anew in light of
the evidence proffered by the Examiner, we determine that the
preponderance of evidence weighs most heavily in favor of obviousness
within the meaning of 35 U.S.C. § 103(a).

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ORDER
Upon consideration of the record, and for the reasons given above and
in the Answer, it is
ORDERED that the Examiner’s decision rejecting the claims on
appeal under 35 U.S.C. § 103(a) is AFFIRMED; and
FURTHER ORDERED that no time period for taking any subsequent
action in connection with this appeal may be extended under 37 C.F.R.
§ 1.136(a) (2010).

AFFIRMED
bar