Ex Parte GRAALFS

Patent Trial and Appeal Board

Sep 6, 2018

14143378 (P.T.A.B. Sep. 6, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/143,378 12/30/2013
23599 7590 09/10/2018
MILLEN, WHITE, ZELANO & BRANIGAN, P.C.
2200 CLARENDON BL VD.
SUITE 1400
ARLINGTON, VA 22201
Heiner GRAALFS
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.
MERCK-3653-COl 5735
EXAMINER
LEBRON, BENJAMIN L
ART UNIT PAPER NUMBER
1777
NOTIFICATION DATE DELIVERY MODE
09/10/2018 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):
docketing@mwzb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HEINER GRAALFS
Appeal2017-011079
Application 14/143,378
Technology Center 1700
Before JAMES C. HOUSEL, DONNA M. PRAISS, and
KRISTINA M. KALAN, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL 1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner's decision finally rejecting claims 1, 3-7, and 18-21. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Our decision refers to the Specification (Spec.) filed December 30, 2013,
the Examiner's Final Office Action (Final) dated October 4, 2016,
Appellant's Appeal Brief (Appeal Br.) filed May 4, 2017, the Examiner's
Answer (Ans.) dated June 26, 2017, and Appellant's Reply Brief (Reply Br.)
filed August 28, 2017.
2 Appellant is the Applicant, Merck Patent GmbH, which is identified in the
Appeal Brief as the real party in interest (Appeal Br. 1 ).
Appeal 2017-011079
Application 14/143,378
STATEMENT OF THE CASE
The invention relates to a separating material for ion exchange
chromatography prepared by derivatisation of the surface of a hydroxyl-
containing organic support material by covalently bonded graft copolymers,
where the copolymers are built up from at least two different monomer units,
at least one of which having a negative charge and at least one of which
contains a hydrophobic group (Spec. 5:23-30).
1. Claim 1, reproduced below from the Claims Appendix to
the Appeal Brief, is illustrative of the subject matter on appeal.
Separating materials for ion exchange chromatography based
on hydroxyl-containing organic base supports, to the surfaces of
which chains of graft copolymers are covalently bonded,
wherein
a) the base support is an organic material which contains
aliphatic hydroxyl groups,
b) the covalently bonded copolymers are bonded to the
support via a terminal monomer unit,
c) the copolymers comprise at least two different
monomer units
d) the copolymers have monomer units which are linked
in a linear manner,
e) the copolymers comprise at least one monomer unit
which carries a negative charge in the form of a sulfonic acid or
carboxylic acid which monomer is of the following formula ( 1)
or formula (2):
in which
R 1, R2 and Y, independently of one another, denote H or
R3 denotes R4-S03M or R4-COOM,
R4 denotes straight-chain or branched alkylene having 2
to 4 C atoms and
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M denotes H, Na, K or NH4,
in which
R7 and R8, independently of one another, denote Hor
CH3, or
R7 denotes COOM ifZ=M and R8=H,
Z denotes either M, R4-COOM or R4-S03M, where
R4 denotes straight-chain or branched alkylene having 2
to 4 C atoms, and
M denotes H, Na, K or NH4,
f) the copolymer further comprises at least one monomer
unit which carries, as hydrophobic group, a straight-chain or
branched alkyl having 4 to 18 C atoms or aryl groups and
contains ester or amide groups, wherein the monomer is:
of the above formula ( 1) but in which:
R 1 denotes Hor COOM,
R2 denotes H or CH3, and
Y and R3 each denote straight-chain or branched
alkyl having 1 to 18 C atoms, in which Y and R3 together
carry at least 6 C atoms,
or
Y denotes Hand R3 denotes straight-chain or
branched alkyl having 6 to 18 C atoms,
or
Y denotes Hand R3 denotes aryl or R6-aryl,
or
Y denotes Hor CH3 and R3 denotes R4-CONHX,
where X denotes straight-chain or branched alkyl having
6 to 18 C atoms, aryl or R6-aryl, R4 denotes straight-chain
or branched alkylene having 2 to 4 C atoms, R 6 denotes a
straight-chain or branched alkylene having 1 to 4 C
atoms, in which a methylene group may be replaced by 0
and may be substituted by COOM and M denotes H, Na,
KorNH4
or of the above formula (2) but in which:
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R7 denotes H,
R8 denotes Hor CH3,
Z denotes straight-chain or branched alkyl having 4 to 18
C atoms, aryl, R6-aryl or R4-CONHX,
X denotes straight-chain or branched alkyl having 6 to 8
C atoms, aryl, or R6-aryl,
and
R6 denotes a straight-chain or branched alkylene having 1
to 4 C atoms,
g) the copolymer of the monomer units having a negative
charge, monomer e ), and the monomer units containing a hydrophobic
group, monomer f), is a graft copolymer chain and the ratio of the
monomer units having a negative charge, monomer e ), to the
monomer units containing a hydrophobic group, monomer f), is in a
range between 99: 1 to 10:90, and
h) the copolymers are capable of interacting and bonding to
charged and hydrophobic groups ofbiopolymers.
REJECTIONS
The Examiner maintains, and Appellant requests our review of, the
following grounds of rejection under 35 U.S.C § I03(a):
1. Claims 1, 3-5, and 18-20 as unpatentable over Muller3 in view
of Lee4 and Rasmussen; 5
2. Claims 6 and 7 as unpatentable over Muller in view of Lee and
Rasmussen, and further in view of Ueda; 6 and
3. Claim 21 as unpatentable over Muller in view of Lee and
Rasmussen, and further in view of Kopf. 7
3 Muller et al., US 5,453,186, issued September 26, 1995 ("Muller").
4 Lee et al., US 2007/0205156 Al, published September 6, 2007 ("Lee").
5 Rasmussen et al., US 2006/0070950 Al, published April 6, 2006
("Rasmussen").
6 Ueda et al., US 2003/0004479 Al, published January 2, 2003 ("Ueda").
7 Kopf, US 2003/0201230 Al, published October 30, 2003.
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ANALYSIS
Appellant argues each of Rejections 1-3 separately and, with regard
to Rejection 1, further argues claims 19 and 20 as a group separately from
claims 1, 3-5, and 18 as a group. For purposes of this appeal, to the extent
that the claims on appeal are separately argued, we will address them
separately consistent with 37 C.F.R. § 4I.37(c)(l)(iv).
After review of the opposing positions articulated by Appellant and
the Examiner, the applied prior art, and Appellant's claims and Specification
disclosures, we determine that Appellant's arguments are insufficient to
identify reversible error in the Examiner's obviousness rejections. In re
Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011). Accordingly, we affirm the
stated obviousness rejections for substantially the fact findings and the
reasons set forth by the Examiner in the Examiner's Answer. We offer the
following for emphasis only.
Rejection 1: claim 1
The Examiner finds Muller discloses separating materials for ion
exchange chromatography comprising a primary or secondary hydroxyl
group containing organic support coated with at least one polymer
covalently bonded to the support via a terminal monomer unit, wherein the
polymer includes chains of graft copolymer of at least two different
monomer units linked in a linear manner (Ans. 3-5). The Examiner further
finds Muller discloses that at least one monomer unit carries a negative
charge in the form of a sulfonic acid or carboxylic acid of formulae (1) or (2)
(id. at 5-8). The Examiner finds that Muller teaches this monomer unit may
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be 2-acrylamido-2-methylpropanesulfonic acid which differs from that of
formula 2 of claim 1 in the presence of 2-methylpropyl in place of ethyl, but
also teaches that sulfonylethyl may be used instead of sulfonyl-2-
methylpropyl, thereby suggesting the monomer unit carrying a negative
charge as claimed (id. at 8-9).
The Examiner further finds Muller discloses the copolymer may also
include at least one monomer unit which carries, as hydrophobic groups,
straight-chain or branched alkyl or aryl groups and contains ester or amide
groups such as benzlacrylamide as recited in claim 1 (Ans. 9-10). However,
the Examiner acknowledges Muller is silent as to the specific inclusion in
the graft copolymer of both monomers carrying a negative charge and
monomers containing hydrophobic groups, wherein the ratio of these
monomers is in the range between 99: 1 to 10: 90 ( id. at 10-11). For this
feature, the Examiner finds Lee teaches ion exchange resins including at
least one ion exchange function group and at least one hydrophobic
component in a ratio between 1 :500 and 100: 1, wherein the resins exhibit
superior wetting and ion exchange performance (id. at 11 ). The Examiner
also finds Rasmussen discloses that acrylates are hydrophilic monomers and
that hydrophobic monomers are formed as hydrophobic groups on acrylate
amides (id.). The Examiner concludes that it would have been obvious to
provide Muller's copolymer as a graft copolymer chain of monomer units
having a negative charge and monomer units containing hydrophobic groups
in the ratio recited in claim 1 in order to achieve superior ion exchange
performance as taught by Lee and Rasmussen (id.).
Appellant argues that 1) there is insufficient reasoning for why the
ordinary artisan would have combined the teachings of Muller, Lee, and
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Rasmussen; 2) the references are directed to non-analogous art; 3) the
references fail to provide direction to select the particular combination of a
separating material having both a monomer unit carrying a negative charge
in the form of a sulfonic acid or carboxylic acid of the specific formula
recited in the claims and a monomer unit carrying a particular hydrophobic
group of the specific formula recited in the claims; 4) the Examiner's
proposed combination of references relies on impermissible hindsight
reconstruction; and 5) the combination does not result in the claimed
invention because Lee and Rasmussen teach cross-linked or networked
chains of copolymers rather than copolymers having monomer units linked
in a linear manner (Appeal Br. 6). Appellant urges that a key provision of
the invention is the use of multiple different specific types of independent
graft copolymer chains extending from the support so they can bond to many
different types of functional groups, including charged and hydrophobic
groups ofbiopolymers (id.). Appellant contends that, though Muller teaches
that its copolymers can have "identical or different recurring units," Muller
fails to provide any guidance with regard to what different recurring units
could be combined (id. at 7-8; see also Reply Br. 4).
Appellant's arguments are not persuasive of reversible error. As
Appellant acknowledges, Muller suggests that combinations of different
recurring monomer units may be used to build the graft copolymers onto the
support (Muller 1: 13, 2:38, 7:22-25, 12: 14--15). Further, contrary to
Appellant's contention, Muller provides an example containing different
recurring units (id. at 10:23-28, Example 11 using acrolein and N-
methylacrylamide as different monomer units). Moreover, the Examiner
finds, without dispute, that Muller teaches at least one monomer unit, 2-
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acrylamido-2-methylpropanesulfonic acid, which carries a negative charge
and falls within the scope of claim 1 (Ans. 8). The Examiner also finds,
without dispute, that Muller teaches that monomer unit may include a
sulfonylethyl instead of a sulfonyl-2-methylpropyl (id.). As another
monomer unit that may be used in the graft copolymer, the Examiner finds,
again without dispute, that Muller's formula includes benzylacrylamide,
which contains a hydrophobic group (id. at 10). Thus, Muller teaches
monomer units meeting both types recited in claim 1 and suggests that
different monomer units may be combined when forming the graft
copolymers.
While Appellant is correct that Muller fails to provide specific
guidance to include a monomer unit carrying a negative charge and a
monomer unit carrying a hydrophobic group, such a combination is
nonetheless within the scope of Muller's teaching in regards to the use of
different recurring monomer units. Merck & Co. v. Biocraft Labs., Inc., 874
F.2d 804, 807 (Fed. Cir. 1989) ("That the '813 patent discloses a multitude
of effective combinations does not render any particular formulation less
obvious. This is especially true because the claimed composition is used for
the identical purpose."); In re Susi, 440 F.2d 442,445 (CCPA 1971)
( obviousness rejection affirmed where the disclosure of the prior art was
"huge, but it undeniably include[ d] at least some of the compounds recited in
appellant's generic claims and [was] of a class of chemicals to be used for
the same purpose as appellant's additives"); In re Kubin, 561 F.3d 1351,
1359 (Fed. Cir. 2009) ("Where a skilled artisan merely pursues 'known
options' from a 'finite number of identified, predictable solutions,'
obviousness under§ 103 arises." (quoting KSR Int 'l. Co. v. Teleflex Inc., 550
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U.S. 398, 421 (2007)). Absent more, the separating material of claim 1
would have been obvious to one of ordinary skill in the art relying only on
the disclosure of Muller.
Still, the Examiner further supports the specific selection of a
monomer unit carrying a negative charge and a monomer unit carrying a
hydrophobic group in Muller's separating material by reference to the
teachings of Lee and Rasmussen. However, Appellant contends that,
because Lee and Rasmussen require that their polymers are cross-linked, (1)
the ordinary artisan would have no reason to look to either reference for a
teaching to modify Muller's polymer chains and (2) using Lee's or
Rasmussen's structure in Muller would not result in the claimed invention
with graft copolymer chains bonded to an organic support material with
monomer units linked in a linear manner some of which having a negative
charge and others having hydrophobic groups, each with the structure of
formulae (1) or (2) (Appeal Br. 9--12; see also Reply Br. 2).
These arguments are not persuasive of reversible error. "It is well
established that a determination of obviousness based on teachings from
multiple references does not require an actual, physical substitution of
elements." In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (citing In re
Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en bane));; see also In re Keller,
642 F.2d 413, 425 (CCP A 1981) ("The test for obviousness is not whether
the features of a secondary reference may be bodily incorporated into the
structure of the primary reference ... Rather, the test is what the combined
teachings of those references would have suggested to those of ordinary skill
in the art."); In re Nievelt, 482 F.2d 965, 968 (CCPA 1973) ("Combining the
teachings of references does not involve an ability to combine their specific
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structures."). Moreover, each reference cited by the Examiner must be read,
not in isolation, but for what it fairly teaches in combination with the prior
art as a whole. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed.
Cir. 1986).
Here, the Examiner finds Muller already teaches graft copolymer
chains bonded to an organic support, wherein the monomer units may be
different and may include monomer units carrying a negative charge,
including 2-acrylamido-2-methylpropanesulfonic acid and 2-
acrylamidoethanesulfonic acid, which carry a negative charge, and monomer
units having hydrophobic groups, including benzylacrylamide (see supra).
However, as the Examiner acknowledges, Muller does not specifically teach
that both these monomer types be included in the graft copolymer chains in a
ratio of 99: 1 to 10:90. The Examiner finds Lee teaches a separating material
for ion exchange chromatography that requires copolymers including both
monomer types in a ratio of 1: 500 to 100: 1, which exhibits superior wetting
and ion exchange performance. In addition, the Examiner finds Rasmussen
teaches that acrylate amides, such as those of Muller, have hydrophobic
groups. Based on these teachings, the Examiner concludes that the ordinary
artisan would have combined the two different monomer types in a ratio
within the range recited in claim 1 in order to achieve a separating material
exhibiting superior wetting and ion exchange performance.
Our reviewing court has stated that:
Two separate tests define the scope of analogous prior art:
(1) whether the art is from the same field of endeavor,
regardless of the problem addressed and, (2) if the reference is
not within the field of the inventor's endeavor, whether the
reference still is reasonably pertinent to the particular problem
with which the inventor is involved.
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In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (citations and internal
quotes omitted).
While these two criteria are helpful in many instances, we must not
lose sight of the key question at hand: what is "prior art" as that term is used
in 35 U.S.C. § 103(a)? References that are "too remote to be treated as
'prior art"' are excluded from the obviousness analysis. In re Sovish, 769
F.2d 738,741,226 (Fed. Cir. 1985). The non-analogous art test provides
helpful insight on the underlying question of what is "prior art" within the
meaning of the statute; we should not, however, be blind to the reality of the
circumstances of the case before us. See In re Wood, 599 F.2d 1032, 1036
(CCPA 1979) ("[W]e attempt to more closely approximate the reality of the
circumstances surrounding the making of an invention by only presuming
knowledge by the inventor of prior art in the field of his endeavor and in
analogous arts."). Nor should we adhere to rigid and mandatory formulas
that overly limit the inquiry. KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398,
419 (2007).
Applying these principles, we are not persuaded that the fact that
Lee's and Rasmussen's copolymers are cross-linked negates Lee's
suggestion that both monomer types should be used, nor are we persuaded
that this requires that Muller's graft copolymers must be cross-linked. Such
arguments depend on the position that Lee's and Rasmussen's teachings
must be bodily incorporated into Muller, rather than following Lee's
suggestion to include both monomer types in Muller's graft copolymer
chains. In addition, we find Lee and Rasmussen are analogous prior art in
that both are directed to the same field of endeavor as both Muller and
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Appellant, namely, copolymeric separating materials for ion exchange
chromatography. Lee and Rasmussen are also directed to the same problem
as both Muller and Appellant, namely, improving separation and capture of
analytes including proteins.
Appellant next urges nonobviousness "based on comparative data of
record showing significant and unexpected advantages of the claimed
invention over the closest prior art" (Appeal Br. 15). In particular, Appellant
directs our attention to the comparative examples set forth in Specification
Tables 2 and 3, which compare the claimed invention to Muller's Examples
1 and 5 (id. at 16; Spec. 60-61 ). Appellant contends that the base support is
the same for all comparisons in Table 2 such that the distinction is shown
based on the difference in the grafted copolymer chains (Appeal Br. 16).
For those examples in Table 2 including hydrophobically modified monomer
units specifically of the formula recited in claim 1, Appellant contends the
binding capacity at high salt concentrations are significantly higher than
comparative polymers representative of Muller containing only negatively
charged groups (id. at 17).
In this regard, Appellant argues that although it may be known that
hydrophobic materials bind to polymers and hydrophobic groups per se may
be disclosed in Muller, none of Muller, Lee, and Rasmussen address the
dependence of binding capacity on the salt concentration, especially at
concentrations usually present in cell culture supematants (Appeal Br. 17).
Further, Appellant contends that such high protein binding capacities could
not have been expected from Lee and Rasmussen because these references
require cross-linking of the monomer chains thereby eliminating the ability
of the polymer chains to interact flexibly with the protein to be separated
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with different groups of the chain (id. at 17-18). With regard to Table 3,
Appellant contends that the dynamic binding capacity (DB) of the claimed
materials is much higher at 5.5 pH compared to Muller, i.e., comparative
graft copolymers having no hydrophobic moieties (Appeal Br. 18).
Appellant further contends that the Examiner fails to refute this evidence
(Reply Br. 1 ).
The burden of establishing that unexpected results support a
conclusion of nonobviousness rests with Appellant. In re Huang, 100 F.3d
135, 139 (Fed. Cir. 1996). "[W]hen unexpected results are used as evidence
of nonobviousness, the results must be shown to be unexpected compared
with the closest prior art." In re Baxter Travenol Labs., 952 F.2d 388, 392
(Fed. Cir. 1991 ). "[I]t is not enough to show that results are obtained which
differ from those obtained in the prior art: that difference must be shown to
be an unexpected difference." See In re Klosak, 455 F.2d 1077, 1080
(CCP A 1972) ( emphasis in original). Additionally, the relied-upon results
must be commensurate in scope with the claims. See In re Peterson, 315
F.3d 1325, 1329-31 (Fed. Cir. 2003). "Establishing that one (or a small
number of) species gives unexpected results is inadequate proof, for 'it is the
view of [ the CCP A] that objective evidence of non-obviousness must be
commensurate in scope with the claims which the evidence is offered to
support."' See In re Greenfield, 571 F.2d 1185, 1189 (CCPA 1978) (quoting
In re Tiffin, 448 F.2d 791, 792 (CCPA 1971)). Finally, "it is well settled that
unexpected results must be established by factual evidence. 'Mere argument
or conclusory statements in the specification does not suffice."' See In re
Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoting In re De Blauwe,
736 F.2d 699, 705 (Fed. Cir. 1994)); see also In re Pearson, 494 F.2d 1399,
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1405 (CCPA 1974) ("Attorney's argument in a brief cannot take the place of
evidence.").
Here, Appellant fails to establish that the results set forth in the
Specification Tables 2 and 3 would have been surprising or unexpected to
one of ordinary skill in this art. The only indication that these results are
unexpected is presented by way of attorney argument in the brief. Geisler,
116 F.3d at 1470. We note that the Specification does indicate that
admixing aromatic monomers with the reaction mixture during preparation
of salt-tolerant ion exchangers has proven to be surprisingly advantageous
(Spec. 31:35-37). This disclosure is, however, insufficient to establish the
specific results of Tables 2 and 3 would have been unexpected to one of
ordinary skill in the art, because this teaching does not refer specifically to
these results, nor otherwise identify the advantages of such admixture of
aromatic monomers.
Moreover, as the Examiner indicates (Ans. 23), claim 1 includes
numerous monomers for each of the negative and hydrophobic monomers in
a ratio range that excludes few possibilities, resulting in a vast number of
possible graft copolymers. Table 2, on the other hand, is limited to just
thirteen examples of graft copolymers within the scope of claim 1
comprising 2-acrylamido-2-methylpropanesulfonic acid and acrylic acid as
the negative charge carrying monomer and eleven different components as
the hydrophobic group carrying monomers (id.). Similarly, Table 3 is
limited to just six examples of graft copolymers comprising either or both 2-
acrylamido-2-methylpropanesulfonic acid and acrylic acid as the negative
charge carrying monomer and benzylamine as the hydrophobic carrying
monomer (id.). Appellant fails to establish that these limited examples are
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reasonably commensurate in scope with the claims. Peterson, 315 F.3d at
1329--31. In addition, although Appellant argues that these results would not
have been expected from the teachings of Lee and Rasmussen because both
of these references require that the monomers are cross-linked, we note
Appellant presents no data demonstrating any improvement of linear graft
copolymer chains as compared to cross-linked graft polymer chains of the
same monomer composition.
Appellant does not argue dependent claims 3-5 and 18 separately
from claim 1. For these reasons and those set forth in the Examiner's
Answer, we sustain the Examiner's§ 103 rejection of claims 1, 3-5, and 18.
Rejection 1: Claims 19 and 20
Claim 19 depends from claim 1 and further requires that the
copolymers be capable of adsorbing biopolymers in dissolved form from a
liquid having an electrolytic conductivity higher than 6 mS/cm and a pH
greater than 4. Claim 20 depends from claim 1 and further requires that the
copolymers be capable of adsorbing antibodies from an aqueous liquid
having a pH of 5.5 and an electrolytic conductivity higher than 6 mS/cm.
Appellant argues that the Examiner fails to explain how Muller's
separating materials would have been expected to be capable of performing
the adsorption function as recited in these claims (Appeal Br. 19). In
addition, Appellant contends that because claims 19 and 20 are dependent
claims that further limit claim 1, not all embodiments within claim 1 would
necessarily and inevitably have the capabilities recited in claims 19 and 20
and there is no inherency (id. at 20). Appellant further argues that a finding
of inherency is possible only when a reference teaches the identical species
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claimed and only proper in anticipation, rather than obviousness, rejections
(id. at 20-21 ).
These arguments are not persuasive of reversible error. Contrary to
Appellant's position, our reviewing court has recognized that "inherency
may supply a missing claim limitation in an obviousness analysis," where
"the limitation at issue necessarily must be present, or the natural result of
the combination of elements explicitly disclosed by the prior art." Par
Pharm., Inc. v. Twi Pharm., Inc., 773 F.3d 1186, 1194--96 (Fed. Cir. 2014).
Here, as set forth above, Muller not only teaches a graft copolymer attached
to an organic support for the separation ofbiopolymers including proteins
and antibodies (Ans. 13), Muller also teaches monomers of both types
required by claim 1 and a suggestion that different monomers may be used
in each copolymer chain. In addition, each of Lee and Rasmussen suggest
copolymers for separating materials having different monomer types
including monomers carrying a negative charge and monomers carrying a
hydrophobic group. Thus, the Examiner finds that Muller's separating
materials, as modified in view of Lee and Rasmussen, meet all the structural
limitations of claim 1 (id. at 27). Appellant has not identified any
characteristic or combination of characteristics of the monomers within the
scope of claim 1 that enable the capabilities of claims 19 and 20 such that
the scope of monomers or monomer combinations covered by claims 19 and
20 is narrower than that of claim 1. The only structural requirements for a
separating material meeting the capabilities of claims 19 and 20 appears to
be as set forth in claim 1. Thus, it is reasonable to conclude that the
separating material of Muller, as modified in view of Lee and Rasmussen,
would possess the capabilities recited in claims 19 and 20. In other words,
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these capabilities are the natural result of the combination of elements
explicitly disclosed by the Muller, Lee, and Rasmussen.
Moreover, where patentability rests upon a property of the claimed
material not disclosed within the art, the PTO has no reasonable method of
determining whether there is, in fact, a patentable difference between the
prior art materials and the claimed material. In re Best, 562 F.2d 1252, 1255
(CCPA 1977). Therefore, where, as here, the claimed and prior art products
are identical or substantially identical, or are produced by identical or
substantially identical processes, the PTO can require an applicant to prove
that the prior art products do not necessarily possess the characteristics of his
claimed product. Id. Appellant has not done so in this case.
For these reasons and those set forth in the Examiner's Answer, we
sustain the Examiner's§ 103 rejection of claims 19 and 20.
Rejection 2: claims 6 and 7
The Examiner rejects claims 6 and 7 under 35 U.S.C. § 103(a) as
unpatentable over Muller in view of Lee and Rasmussen, and further in view
of Ueda.
Claim 6 depends from claim 1 and further requires that the copolymer
comprise acrylic acid and/or methacrylic acid as the monomer carrying the
negative charge, and that the monomer ratio ranges between 95:5 to 70:30.
Claim 7 depends from claim 1 and further requires that the copolymer
comprises a monomer selected from 2-acrylamido-2-methylpropanesulfonic
acid and 2-acrylamidoethanesulfonic acid as the monomer carrying the
negative charge, and a monomer selected from acrylic acid and methacrylic
acid, and the monomer ration ranges between 95:5 to 30:70.
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Appellant argues that the arguments made with regard to claim 1
apply analogously against this rejection (Appeal Br. 21 ). In addition,
Appellant argues that there are not sufficient reasons on record to support
the combination ofUeda's teaching with Muller (id.). Appellant contends
that Ueda does not relate to copolymer chains provided on an organic
support for separation of biomolecules, as both Muller and Appellant's
claimed invention do (id. at 21-22). Appellant also contends that Ueda,
similarly to Lee and Rasmussen, provides cross-linked materials and, "to the
extent Ueda discloses the use of different functional groups, it discloses the
use of a combination of different materials each with a single function
group" (id. at 22-23). As such, Appellant urges that the ordinary artisan
would have no reason to look to Ueda for a teaching to modify Muller's
polymer chains (id. at 21-23).
These arguments are not persuasive of reversible error. As the
Examiner states, this rejection does not require that Ueda's materials and
teaching be bodily incorporated into Muller, but that Ueda's teaching that a
separating material having copolymers can further include an acrylic acid
monomer unit (Ans. 14, 28). Moreover, as the Examiner finds, the ordinary
artisan would consider Ueda's teaching reasonably pertinent to separating
materials known in the art of chromatography (id. at 28). As set forth above,
this fact is not negated merely because Ueda, like Lee and Rasmussen,
cross-links the monomers, because Muller already teaches the linear graft
copolymer chains attached to an organic support.
For these reasons and those set forth in the Examiner's Answer, we
sustain the Examiner's § 103 rejection of claims 6 and 7.
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Appeal 2017-011079
Application 14/143,378
Rejection 3: Claim 21
The Examiner rejects claim 21 under 35 U.S.C. § 103(a) as
unpatentable over Muller in view of Lee and Rasmussen, and further in view
of Kopf.
Claim 21 depends from claim 1 and further requires that the
copolymers are provided as flexible tentacles independently extending from
the support surface. The Examiner acknowledges that Muller does not
explicitly teach that the linear graft copolymers attached to the support are
flexible tentacles (Ans. 15-16). Appellant argues that Kopf does not
disclose or suggest a material which provides a specific combination of
different non-crosslinked graft copolymer chains (Appeal Br. 23).
Moreover, Appellant contends that "while Kopf indicates that chains with
different functional groups can be provided, it does not disclose or suggest a
material which has two different functional groups (particularly one of
negative charge and one being hydrophobic) on a single material" (id. at 24).
According to Appellant, Kopf only fairly suggests using a single specific
functionality for any specific material (id.).
These arguments are not persuasive of reversible error because they
misapprehend the rejection. The Examiner was not relying on Kopf to teach
the graft copolymer chains of claim 1, but, instead, relied on Kopf for
teaching that graft copolymers attached to an organic support such as in
Muller may be flexible tentacles independently extending from the support.
Appellant does not dispute that Kopf teaches this feature, nor does Appellant
challenge the Examiner's conclusion of obviousness in reliance thereon.
Thus, for these reasons and those set forth in the Examiner's Answer, we
sustain the Examiner's § 103 rejection of claim 21.
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Appeal 2017-011079
Application 14/143,378
DECISION
Upon consideration of the record, and for the reasons given above and
in the Examiner's Answer, the decision of the Examiner rejecting claims 1,
3-7, and 18-21 under 35 U.S.C. § 103(a) is affirmed.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
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