14401340 - (D) (P.T.A.B. Feb. 20, 2020)

Darryl W. Brousmiche et al.

Patent Trials and Appeals BoardFeb 20, 2020

14401340 - (D) (P.T.A.B. Feb. 20, 2020)

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. 14/401,340 11/14/2014 Darryl W. Brousmiche 1470US.PCT1 (W-807-US2) 1722 13871 7590 02/20/2020 WOMBLE BOND DICKINSON (US) LLP / Waters ATTN: IP DOCKETING P.O. BOX 7037 ATLANTA, GA 30357-0037 EXAMINER PEO, KARA M ART UNIT PAPER NUMBER 1777 NOTIFICATION DATE DELIVERY MODE 02/20/2020 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): BostonDocket@wbd-us.com IPDocketing@wbd-us.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte DARRYL W. BROUSMICHE, KEVIN D. WYNDHAM, JACOB N. FAIRCHILD, PAMELA C. IRANETA, and JASON F. HILL1 ____________ Appeal 2018-009087 Application 14/401,340 Technology Center 1700 ____________ Before CATHERINE Q. TIMM, ROMULO H. DELMENDO, and CHRISTOPHER C. KENNEDY, Administrative Patent Judges. KENNEDY, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 81–92 and 94–101. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. BACKGROUND The subject matter on appeal relates to chromatographic materials and associated methods. E.g., Spec. ¶ 2; Claim 81. Claim 81 is reproduced below from pages 19–22 (Claims Appendix) of the Appeal Brief: 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Waters Technologies Corporation. App. Br. 2. Appeal 2018-009087 Application 14/401,340 2 81. A method for mitigating or preventing retention drift or change in normal phase chromatography, supercritical fluid chromatography, sub-critical fluid chromatography, or carbon dioxide based chromatography, comprising: chromatographically separating a sample using a chromatographic device comprising a chromatographic stationary phase represented by Formula 1: [X](W)a(Q)b(T)c Formula 1 wherein: X is a chromatographic core composition having a surface comprising a silica core material, metal oxide core material, an inorganic-organic hybrid material or a group of block copolymers thereof; W is absent or is a hydroxyl on the surface of X; Q is bound directly to X and is selected from: Appeal 2018-009087 Application 14/401,340 3 wherein Z comprises: a) a surface attachment group having the formula (B1)x(R5)y(R6)zSi-; x is an integer from 1-3; y is an integer from 0-2; z is an integer from 0-2; and x+y+z=3 each occurrence of R5 and R6 independently represents methyl, ethyl, n-butyl, iso-butyl, tert-butyl, iso-propyl, substituted or unsubstituted aryl, cyclic alkyl, branched alkyl, lower alkyl, a protected or deprotected alcohol, or a zwitterion group; and B1 represents a siloxane bond; b) an attachment to a surface organofunctional hybrid group selected from the group consisting of: a direct carbon-carbon bond, a heteroatom linkage, ester linkage, ether linkage, thioether linkage, amine linkage, amide linkage, imide linkage, Appeal 2018-009087 Application 14/401,340 4 urea linkage, carbonate linkage, carbamate linkage, heterocycle linkage, triazole linkage and urethane linkage; or c) an adsorbed surface group that is not covalently attached to the surface of the material; T is bound directly to X and is selected from: the ratio b/c is about 0.05-75; thereby mitigating or preventing retention drift or change. ANALYSIS Claims 81–92 and 94–101 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Komiya (US 4,835,058, issued May 30, 1989) in view of Hearn (US 8,748,582 B2, issued June 10, 2014). The Appellant argues the claims as a group. We select claim 81 as representative, and the remaining claims will stand or fall with claim 81. See 37 C.F.R. § 41.37(c)(1)(iv) (2017). After review of the cited evidence in the appeal record and the opposing positions of the Appellant and the Examiner, we determine that the Appellant has not identified reversible error in the Examiner’s rejection. Accordingly, we affirm the rejection for reasons set forth in the Final Action dated October 16, 2017 and in the Examiner’s Answer. We adopt the Appeal 2018-009087 Application 14/401,340 5 reasoning in the Examiner’s Answer as our own, and we add the following for emphasis. The Examiner finds, and the Appellant does not meaningfully dispute, that Komiya teaches each element of claim 81 except for a structure of Q that falls within the scope of claim 81. Ans. 3–4. The Examiner finds that Hearn teaches a structure that falls within the scope of structure Q. Id. at 4. The Examiner relies, inter alia, on the following structure of Hearn: Id. (citing Hearn at 40:5). The Examiner finds that the above structure falls within the scope of the following structure for Q listed in claim 81: where Z is “a heteroatom linkage,” as recited by claim 81, and the S-CH2- CH2-NH2 group of Hearn corresponds to Z. See id. at 4, 11–15. Of specific relevance to the issues raised by the Appellant in this appeal, the Examiner finds that Hearn’s S-CH2-CH2-NH2 group falls within the scope of the term “a heteroatom linkage” because it is a linkage that includes at least one heteroatom. Id. at 11–15. The Examiner finds that it would have been obvious to substitute Hearn’s Q ligand for the ligand of Komiya because both references concern chromatographic separation of similar substances, including proteins and polypeptides, and Hearn teaches that its ligands result in high recovery and increased purity. Id. at 4–5. Appeal 2018-009087 Application 14/401,340 6 The Appellant argues that the term “a heteroatom linkage” should be interpreted as “any atom that is not carbon or hydrogen,” that the term is limited to a single atom, and that Hearn’s S-CH2-CH2-NH2 group does not fall within the scope of the term “a heteroatom linkage” because it is not a single heteroatom. See generally Appeal Br.; Reply Br. We disagree for reasons stated by the Examiner. See Ans. 11–15. During prosecution, “the PTO must give claims their broadest reasonable construction consistent with the specification.” In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007); see also In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989) (“During patent examination the pending claims must be interpreted as broadly as their terms reasonably allow.”). The Appellant essentially asks us to interpret the term “a heteroatom linkage” as “a single heteroatom.” We decline to do so. The Appellant could have used that term instead of the term “a heteroatom linkage,” but the Appellant did not. The Appellant does not persuasively identify any portion of the Specification that would limit the term in the way that the Appellant proposes, and, therefore, it does not offend the broadest reasonable interpretation rule to construe “a heteroatom linkage” as any linkage that includes a heteroatom. “[The Federal Circuit] has repeatedly emphasized that an indefinite article ‘a’ or ‘an’ in patent parlance carries the meaning of ‘one or more’ in open-ended claims containing the transitional phrase ‘comprising.’” Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1342 (Fed. Cir. 2008) (internal quotation marks omitted). “That ‘a’ or ‘an’ can mean ‘one or more’ is best described as a rule, rather than merely as a presumption or even a convention.” Id. Consistent with that rule, and on the record before Appeal 2018-009087 Application 14/401,340 7 us, the broadest reasonable interpretation of the term “a heteroatom linkage” is “a linkage that includes one or more heteroatoms.” Cf. Zletz, 893 F.2d at 321 (“[D]uring patent prosecution when claims can be amended, ambiguities should be recognized, scope and breadth of language explored, and clarification imposed.”). Because the linkage at issue here, Hearn’s S-CH2- CH2-NH2 group, includes at least one heteroatom (i.e., S and N), it falls within the scope of the term. Additionally, we observe that claim 81 recites that element Z “comprises . . . b) an attachment to a surface organofunctional hybrid group selected from the group consisting of . . . a heteroatom linkage” (emphases added). Even were we to interpret the term “a heteroatom linkage” as a single heteroatom (which we do not), use of the term “comprises” permits additional elements to be present, as well. See Crystal Semiconductor Corp. v. TriTech Microelecs. Int’l, Inc., 246 F.3d 1336, 1348 (Fed. Cir. 2001) (“[T]he transition ‘comprising’ creates a presumption that the recited elements are only a part of the device, that the claim does not exclude additional, unrecited elements.”); see also Ans. 13. That is so notwithstanding the claim’s use of the term “group consisting of.” See Reply Br. 7–10.2 Use of the term “comprises” opens the claim to additional, 2 Cf. Amgen Inc. v. Amneal Pharm. LLC, 945 F.3d 1368, 1379 (Fed. Cir. 2020) (“In short, this case involves a claim that uses a ‘comprising’ transition phrase and one of the following limitations requires a component that ‘consists of’ items listed in a Markush group and that meets the limitation’s requirements for the component. Without more, such language is satisfied when an accused product contains a component that is from the Markush group and that meets the limitation’s requirements for the component. It does not forbid infringement of the claim if an additional Appeal 2018-009087 Application 14/401,340 8 unrecited elements. Cf. ICON Health, 496 F.3d at 1379 (broadest reasonable interpretation applies during prosecution); Zletz, 893 F.2d at 321 (ambiguities should be clarified during prosecution). Because Hearn’s S- CH2-CH2-NH2 group includes, e.g., an S atom, it “comprises” a single heteroatom, as well as additional elements. We affirm the Examiner’s rejection. CONCLUSION In summary: Claims Rejected 35 U.S.C. § References Affirmed Reversed 81–92, 94– 101 103(a) Komiya, Hearn 81–92, 94– 101 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 component is present functionally similar to the component identified in the Markush group limitation, unless there is a further basis in the claim language or other intrinsic evidence for precluding the presence of such additional components.” (emphasis added)).