Ex Parte Kozlov et al

Patent Trial and Appeal Board

Apr 14, 2016

13339503 (P.T.A.B. Apr. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/339,503 12/29/2011 Mikhail Kozlov
42754 7590 04/14/2016
Nields, Lemack & Frame, LLC
176 E. Main Street
Suite #5
Westborough, MA 01581
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.
MCA-860-4 9751
EXAMINER
SMITH, DUANE
ART UNIT PAPER NUMBER
1776
MAILDATE DELIVERY MODE
04/14/2016 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 MIKHAIL KOZLOV, WILSON MOY A,
MICHAEL W. PHILLIPS, SENTHILKUMAR
RAMASWAMY, and BRIAN GAGNON
Appeal2014-006826
Application 13/339,503
Technology Center 1700
Before TERRY J. OWENS, LINDA M. GAUDETTE, and
N. WHITNEY WILSON, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1, 2, 4 and 5. We have jurisdiction under
35 U.S.C. § 6(b).
The Invention
The Appellants claim a method for making an adsorber membrane.
Claim 1 is illustrative:
1. A method of manufacturing an adsorber membrane,
comprising providing a substrate having a first external
side and a second external side, both sides being porous,
and a porous thickness between them; substantially covering
Appeal 2014-006826
Application 13/339,503
said substrate and said first and second external surfaces
with a sorptive material comprising a crosslinked polymer
having attached primary amine groups; heating the resulting
substrate to a temperature of from about 25°C to about
120°C; treating the resulting membrane with acid, and
subjecting the acid-treated membrane to gamma irradiation.
James
Hu
Waldmann
Thomas
DiLeo
Schlenoff
Smith
The References
us 3,462,429
us 5,151,189
us 6, 136,200
US 6,423,232 Bl
US 2005/0211615 Al
US 7,101,947 B2
US 2006/0289164 Al
The Rejections
Aug. 19, 1969
Sep.29, 1992
Oct. 24, 2000
July 23, 2002
Sep.29,2005
Sep. 5,2006
Dec. 28, 2006
The claims stand rejected under 35 U.S.C. § 103 as follows: claims 1,
2, 4 and 5 over DiLeo in view of Schlenoff, 1 Waldmann and either Hu or
Thomas, and claim 5 over DiLeo in view of Schlenoff, Waldmann, either Hu
or Thomas, and either Smith or James.
OPINION
We affirm the rejections.
The Appellants argue the claims as a group (Br. 4--9). Although
additional references are applied in the second rejection of claim 5, the
Appellants do not provide a substantive argument as to the separate
patentability of that claim (Br. 9). We therefore limit our discussion to one
claim, i.e., claim 1, which is the sole independent claim. Claims 2, 4 and 5
stand or fall with that claim. See 37 C.F.R. § 41.37(c)(l)(iv) (2012).
1 The Examiner's statement of the rejection (Ans. 2) erroneously includes
canceled claim 3 instead of claim 2.
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Application 13/339,503
DiLeo discloses "a media for chromatographic or adsorption
separations comprising a porous coated substrate, the substrate being a
porous (PSI) [sic, (PS 1) ], self-supporting structure and having one or more
porous polymeric coatings (PS2) on at least a portion of all surfaces of the
substrate" (i-f 27). Suitable coating materials include polyallylamines (i-f 65)
(which are among the Appellants' disclosed suitable polymers having
attached primary amine groups (Spec. 21) ).
Schlenoff discloses "a coating or membrane comprising positively and
negatively charged polymers, one or both of which comprises an optically
active chemical subunit, which permits the separation of chemicals having
different optical activities" (col. 5, 11. 25-29). "Examples of a positively-
charged polyelectrolyte include ... protonated polyamines such as
poly(allylaminehydrochloride) (P AH)" (col. 6, 11. 23-33) (which is one of
the Appellants' acid-treated polymeric primary amines (Spec. 21) ).
Schlenoff discloses that "polyamines and derivative[ s] thereof take on a
positive charge if the pH of the solution is below about 8. As such, and in
accordance with the present invention, the pH of a polyelectrolyte solution
may be adjusted by the addition of an acid and/or base in order to attain,
maintain, and/or adjust the electrical charge of a polyelectrolyte" (col. 8,
11. 10-16).
The Appellants argue that one of ordinary skill in the art would have
had no reason to modify DiLeo to include protonated polyamines because
the desirability of protonated polyamines for separating chemicals having
different optical activities is not of concern to DiLeo but, rather, is unique to
Schlenoff (Br. 6-7).
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Appeal 2014-006826
Application 13/339,503
Setting forth a prima facie case of obviousness requires establishing
that the applied prior art would have provided one of ordinary skill in the art
with an apparent reason to modify the prior art to arrive at the claimed
invention. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). The
Appellants' argument is deficient in that the Appellants are attacking the
references individually when the rejection is based on a combination of
references. See In re Keller, 642 F.2d 413, 426 (CCPA 1981); In re Young,
403 F.2d 754, 757-58 (CCPA 1968). An apparent reason for modifying
DiLeo which Schlenoff would have provided to one of ordinary skill in the
art is to enable separation of chemicals having different optical activities.
The Appellants assert that unexpected results are shown by their
statement that "[a] very surprising discovery made by the inventors was that
acid treatment significantly increases the strength of binding of membrane
sorber, from about 54-58 mS/cm to 78-82 mS/cm" (Spec. 31) and a
comparison of their Specification's Example 1 and Comparative Example 2
(Br. 7-8).
In Example 1 the BSA (bovine serum albumin) capacity is 90 mg/ml
and the strength of binding is 54 mS/cm, whereas in Comparative Example 2
wherein "[t]he modified membrane from Example 1 was further modified by
submerging in 0.5M solution of sulfamic acid in water for 10 minutes, rinsed
with deionized water and dried" (Spec. 35), the BSA capacity is 80 mg/ml
and the strength of binding is 80 mS/cm (Spec. 36)). Thus, acid treating the
membrane improved the strength of binding but made the BSA capacity
worse.
The Appellants assert that "[ t ]he change in binding capacity going
from Example 1 to Comparative Example 2 is only 11 % and could simply be
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Appeal 2014-006826
Application 13/339,503
a matter of experimental error, while the change in strength of binding is
48% and is clearly a measurable effect" (Br. 8).
That assertion is not well taken due to lack of evidence that an 11 %
binding capacity difference is within experimental error. The Appellants
provide mere attorney argument to that effect, and such arguments of
counsel cannot take the place of evidence. See In re De Blauwe, 736 F.2d
699, 705 (Fed. Cir. 1984); In re Payne, 606 F.2d 303, 315 (CCPA 1979); In
re Greenfield, 571F.2d1185, 1189 (CCPA 1978); In re Pearson, 494 F.2d
1399, 1405 (CCPA 1974). The Appellants, therefore, have not established
an unexpected difference in the results of Example 1 and Comparative
Example 2. See In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973); In re
Klosak, 455 F.2d 1077, 1080 (CCPA 1972). Moreover, the Appellants have
not established that the evidence in the relied-upon comparison is
commensurate in scope with the claims. See In re Grasselli, 713 F.2d 731,
743 (Fed. Cir. 1983); In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980).
The Appellants assert, based upon their Figure 2, that "a further
surprising benefit of the acid-treated membrane sorber is the fact that it
provides greater stability towards ionizing irradiation" (Br. 9).
The Appellants' "Figure 2 demonstrates BSA capacity of membrane
sorber samples (control, not treated with acid) and those converted into
ammonium sulfamates" (Spec. 32). In that figure, all "samples were
irradiated with 25 kGy of electron beam to simulate gamma sterilization
conditions" (id.).
The Appellants' Figure 2 is not effective for showing unexpected
results because the Appellants have not established that 1) the effect of the
electron beam irradiation is indicative of the effect of gamma sterilization,
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Application 13/339,503
2) the samples irradiated are porous supports covered with crosslinked
polymers having attached primary amine groups, or 3) the evidence is
commensurate in scope with the claims (see Grasselli, 713 F.2d at 743;
Clemens, 622 F.2d at 1035).
For the above reasons we are not persuaded of reversible error in the
rejections.
DECISION/ORDER
The rejections under 35 U.S.C. § 103 of claims 1, 2, 4 and 5 over
DiLeo in view of Schlenoff, Waldmann and either Hu or Thomas, and
claim 5 over DiLeo in view of Schlenoff, Waldmann, either Hu or Thomas,
and either Smith or James are affirmed.
It is ordered that the Examiner's decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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