Ex Parte Yang et al

Patent Trial and Appeal Board

Oct 23, 2012

11745283 (P.T.A.B. Oct. 23, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
11/745,283 05/07/2007 Shang-Tian Yang OSUZ 200025US01 1512
27885 7590 10/23/2012
FAY SHARPE LLP
1228 Euclid Avenue, 5th Floor
The Halle Building
Cleveland, OH 44115
EXAMINER
YANG, NELSON C
ART UNIT PAPER NUMBER
1641
MAIL DATE DELIVERY MODE
10/23/2012 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 SHANG-TIAN YANG and YUNLING BAI
__________

Appeal 2011-013068
Application 11/745,283
Technology Center 1600
__________

Before DONALD E. ADAMS, FRANCISCO C. PRATS, 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 aminating the surface of a polymeric
substrate. The Patent Examiner rejected the claims for anticipation and
obviousness. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-
part.
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STATEMENT OF THE CASE
Claims 1, 2, 4-16, 25-27, and 29-32 are on appeal. Claim 1 is
representative and reads as follows:
1. A method for aminating the surface of a polymeric substrate,
comprising:
providing a polymeric substrate having a surface; and
contacting the surface with an amine solution comprising an amine-
bearing polymer, the polymer having a reactive nitrogen atom in either the
backbone or a pendant group, to obtain the substrate with an aminated
surface;
wherein the amine solution has a pH of from about 9 to about 13.

The Examiner rejected the claims as follows:
 claims 1, 2, 5-8, 12-16, and 29-32 under 35 U.S.C. § 102(b) as
anticipated by Fixe;1
 claim 4 under 35 U.S.C. § 103(a) as unpatentable over Fixe and
Gebhard;2
 claims 9-11 under 35 U.S.C. § 103(a) as unpatentable over Fixe and
Tabbani;3 and
 claims 25-27 under 35 U.S.C. § 103(a) as unpatentable over Fixe,
Gebhard, and Tang.4

1 F. Fixe et al., Functionalization of poly(methyl methacrylate) (PMMA) as a
substrate for DNA microarrays, 32 NUCLEIC ACIDS RES. No. 1 e9 (2004).
2 Matthew Stewart Gebhard et al., US 2005/0009954 A1, published Jan. 13,
2005.
3 Yacoob Tabani et al., US 2002/011743 A1, published Aug. 22, 2002.
4 Zhongliang Tang et al., US 2006/0160243 A1, filed Jan. 18, 2005,
published July 20, 2006.
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ANTICIPATION
The Issue
Appellants contend that Fixe did not describe the claimed method
because, rather than using a polymer to aminate its substrate, Fixe used
hexamethylene diamine (HMD). (App. Br. 6.) The Examiner argues that
HMD is a polymer. (Ans. 9-10.) According to Appellants, the Examiner’s
definition of a polymer is too broad to be reasonable. (Reply Br. 2-4).
The issue is whether a person of ordinary skill in the art would
consider hexamethylene diamine (HMD) to be a polymer.
Findings of Fact
1. Fixe described a chemical procedure to functionalize poly(methyl
methacrylate) (PMMA) substrates in which a PMMA substrate “is
reacted with hexamethylene diamine to yield an aminated surface for
immobilizing DNA in microarrays.” (Fixe, Abstract.)
2. Fixe’s Figure 1 included reaction scheme A, reproduced here:

Figure 1 (A) diagrams a reaction scheme in which “[t]he available
methyl esters of the PMMA, under basic pH conditions, are reacted
with an electron donor (N) present on the hexamethylenediamine,
yielding primary amines on the surface.” (Fixe 2, Figure 1 legend.)

3. Fixe taught that “the plastic surface is incubated with a solution of
10% hexamethylene diamine in 100 mM borate buffer pH 11.5, for 2
h.” (Fixe 2, “Chemical modification of PMMA substrates”.)
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4. A chemical dictionary provides this definition for polymer:
A macromolecule formed by the chemical union of five or more
identical combining units called monomers. In most cases the number
of monomers is quite large (3500 for pure cellulose) and often is not
precisely known.

(HAWLEY’S CONDENSED CHEMICAL DICTIONARY, 14th ed. Copyright
©2002 by John Wiley & Sons, Inc.)
Principles of Law
“To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either explicitly or inherently.” In
re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (citations
omitted).
“During examination, ‘claims … are to be given their broadest
reasonable interpretation consistent with the specification, and …
claim language should be read in light of the specification as it would
be interpreted by one of ordinary skill in the art.’” In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
Analysis
The meaning of “polymer” is the only issue in dispute. Neither
Appellants nor the Examiner provided a definition for “polymer.” We find
that the ordinary meaning of polymer is a large molecule formed by
monomer combining units. (FF 4.) Consistent with that meaning, and for
the reasons explained in Appellants’ Brief and Reply Brief, we conclude that
a person of ordinary skill in the art would not think that HMD is a polymer.
That is, a person of ordinary skill in the art would not agree that Fixe
described a method using a polymer to aminate a substrate. The rejection is
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reversed because Fixe did not describe every limitation of the claimed
method.

OBVIOUSNESS
A. Claims 4 and 25-27
Claim 4 recites: “The method of claim 1, wherein the amine-bearing
polymer is poly(ethylene imine) or poly(allylamine hydrochloride).”
Claim 25 defines a surface aminating method that includes
“contacting the surface with an amine solution comprising
poly(ethyleneimine).”
The Issue
The Examiner’s position is that the substitution of polyethylene imine
(PEI) for hexamethylene diamine (HMD) in Fixe’s method would have been
obvious because Gebhard evidenced that the two were “equivalent in the art
for reacting with functional groups on a first and second particle.” (Ans. 6
(rejection of claim 4); Ans. 8 (rejection of claims 25-27).)
Appellants contend that “Gebhard does not teach that hexamethylene
diamine and poly(ethylene imine) are equivalent for all purposes,” and argue
that Gebhard’s teaching is limited to equivalent crosslinking agents for
polymer particles in water-based paints, not a surface. (App. Br. 7.)
Appellants also contend that “the present specification provides evidence
that poly(ethylene imine) and hexamethylene diamine are not equivalent.
See paragraphs [0095], [00971, and [0115].” (Id.) According to Appellants,
the evidence shows that “surfaces modified with the poly(ethylene imine)
treatment exhibited a higher binding efficiency to an antibody than surfaces
modified with hexamethylene diamine,” and therefore “hexamethylene
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diamine and poly(ethylene imine) cannot be considered as equivalents in the
present application.” (Id.)
The issues with respect to this rejection are:
whether Gebhard disclosed that, prima facie, HMD and PEI are
equivalents for the purpose of aminating a polymeric surface; and, if so,
whether Appellants’ evidence demonstrates HMD and PEI are not
equivalents for the purpose of aminating a surface.
Further Findings of Fact
5. Gebhard taught that for crosslinking polymer particles, “[s]uitable
crosslinking agents include, for example, multifunctional amine
compounds, oligomers, and polymers that have at least two amine
groups such as hexamethylene diamine, ethylenediamine, 1,2-
diaminopropane, 2-methyl-1,5-pentane diamine, 1,4-diaminobutane,
1,12-diaminododecane, 1,2-diaminocylcohexane, 1,2-phenyldiamine,
diaminotoluene, polyethylene imine, . . . .” (Gebhard 14, [0110].)
6. The Specification states:
The effects of the first antibody concentration and different
surface treatments on the reaction rate, expressed as RFU/sec, are
shown in FIGURE 5. . . . for different surfaces, the reaction rates
were very different even though the same amount of the first antibody
was applied, indicating that the binding efficiency for the first
antibody on these different surfaces was quite different. The pristine
surface yielded the least active antibody at all initial first antibody
concentrations studied. For the HMD modified PMMA surface, the
fluorescence signal was comparable to that of the pristine surface at
low first antibody concentrations, but increased substantially as the
first antibody concentration increased to 10 mg/L. For the PEI
modified PMMA surface, the fluorescence signal was the highest at
all initial first antibody concentrations studied. It was about 10 times
higher at 1 mg/L of the first antibody concentration as compared to
those from the HMD modified and pristine surfaces.
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(Spec. 17, [0095].)
7. The Specification states:
FIGURES 6 and 7 show the effects of the different surface
treatment methods on streptavidin binding. FIGURE 6 shows the
signal given from each modified surface. Here, 10 mg/L of
streptavidin and 20 mg/L of biotin-HRP were used. Compared to the
HMD modified and pristine surfaces, the PEI treated surface gave -
10 times higher signal regardless of the level of the background
noise, which was zero when the concentrations of streptavidin and
biotin-HRP were low but increased significantly with increasing
concentrations in the assay. FIGURE 7 compares the signal and
signal-to-noise ratio (S/N ratio) of the PEI-treated and HMD-treated
surfaces. Here, 200 mg/L of streptavidin and 200 mg/L of biotin-
HRP were used. The S/N ratio from the PEI treated microchannel
was ~2 times that from the HMO treated microchannel. It is thus
clear that the PEI treated surface can give the highest fluorescence
signal at a faster rate and a better S/N ratio. Both are critical to
ELISA’s sensitivity and detection limit.

(Spec. 18, [0097].)
8. The Specification states:
The interaction between the first antibody and the different
PMMA surfaces can be attributed to the spacer effect. FIGURE 8
shows the effect of the different amine molecules PEI, PAH, HMD,
and DAP on the enzyme reaction rate. In these experiments, 1 mg/L
first antibody, 1 mg/L antigen, and 10 mg/L second antibody were
used. The PMMA surfaces treated with the two polymers bound ~10
times more active antibodies than those treated with the two small
diamine molecules. Clearly, the two amine-bearing polymers were
better than the small diamine molecules for antibody binding because
the spacer function of polymers can preserve most of the biological
activity of the bound protein molecules. The spacer effect allowed the
proteins of the antibody to stay away from the PMMA surface, thus
preserving more activity than those bound closer to the surface.

(Id., [0098].)
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Analysis
Claims 4 and 25 define methods for aminating the surface of a
polymeric substrate. In Fixe, the polymeric surface is on a slide or sheet,
and in Gebhard the polymeric surface is on a particle. Gebhard evidences
that HMD and PEI are both diamines. (FF 5.) In Fixe, one of the two amine
groups on HMD reacts with PMMA, to leave the second amine group
exposed, thus aminating the surface. (FF 2.) In Gebhard, one of the two
amine groups on HMD attaches to the surface of a particle, thus aminating
that surface in the same sense that Fixe aminates a surface, and the second
amine group attaches to the surface of another particle, thus crosslinking the
particles. According to Gebhard, HMD and PEI may be used equivalently
for the purpose. This evidence of chemical equivalence is prima facie
sufficient to show that PEI would have been expected to aminate a PMMA
surface in the same manner that HMD does. On the first issue, we agree
with the Examiner.
Appellants contend that the Specification evidences the non-
equivalence of HMD and PEI for aminating a substrate. The Specification
evidences that when an aminated surface is used as a substrate for
immobilizing an antibody or for streptavidin, the immobilized antibody or
streptavidin will behave differently depending on the length of the
crosslinker. (FF 6, 7.) The Specification explains that antibody binding
efficiency is higher on the PEI treated surface. (FF 6.) It is said that PEI,
being longer than HMD, provides a beneficial spacer effect. (FF 8.)
This evidence does not show a difference in the amination result
whether HMD or PEI is used, and on the evidence presented, HMD and PEI
function equivalently to produce an aminated surface. As in Fixe’s method
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using only HMD, the surface becomes aminated. There is no explanation
showing that the differential antibody fluorescence results obtained are due
to non-equivalent amination by HMD or PEI. Instead, the comparative
evidence concerns results obtained when the aminated surfaces are used in
subsequent steps including binding an antibody or streptavidin to a surface,
and measuring fluorescence. That is, the evidence concerns differences
resulting when different products (HMD and PEI aminated surfaces) are
used in a method of binding an antibody or streptavidin (but not DNA as in
the prior art). The claims are not directed to the products or the methods
discussed in the comparative examples, and the examples do not concern
differences in the effectiveness of HMD or PEI for aminating a surface. The
argument that the Specification’s evidence demonstrates non-equivalence of
HMD and PEI for purposes of aminating a surface is not persuasive because
the evidence doesn’t show any differences in surface amination.
Claims 26 and 27 have not been argued separately and therefore fall
with claim 25. 37 C.F.R. § 41.37(c)(1)(vii).

B. Claims 9-11
The obviousness rejection of claims 9-11 is premised on the finding,
set out in the anticipation rejection, that Fixe described using a polymer to
aminate a substrate. That finding is not supported by the evidence. See
“ANTICIPATION,” above. The obviousness rejection must be reversed
because it did not properly account for the “polymer” limitation.

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SUMMARY
We reverse the rejection of claims 1, 2, 5-8, 12-16, and 29-32 under
35 U.S.C. § 102(b) as anticipated by Fixe.
We affirm the rejection of claim 4 under 35 U.S.C. § 103(a) as
unpatentable over Fixe and Gebhard.
We reverse the rejection of claims 9-11 under 35 U.S.C. § 103(a) as
unpatentable over Fixe and Tabbani.
We affirm the rejection of claims 25-27 under 35 U.S.C. § 103(a) as
unpatentable over Fixe, Gebhard, and Tang.
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-IN-PART

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