Ex Parte Boehm

Board of Patent Appeals and Interferences

Jun 27, 2011

12026567 (B.P.A.I. Jun. 27, 2011)

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.
12/026,567 02/06/2008 Andreas Boehm WAS 0939 PUS 3326
22045 7590 06/27/2011
BROOKS KUSHMAN P.C.
1000 TOWN CENTER
TWENTY-SECOND FLOOR
SOUTHFIELD, MI 48075
EXAMINER
KATAKAM, SUDHAKAR
ART UNIT PAPER NUMBER
1621
MAIL DATE DELIVERY MODE
06/27/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ANDREAS BOEHM
____________

Appeal 2011-006154
Application 12/026,567
Technology Center 1600
____________

Before DONALD E. ADAMS, DEMETRA J. MILLS, and ERIC GRIMES,
Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims 1, 2, and 4-8, the
only claims pending in this application. We have jurisdiction under 35
U.S.C. § 6(b).
STATEMENT OF THE CASE
The claims are directed to a process for purifying an L-cysteine-
containing fermenter broth. Claim 1 is representative and is reproduced in
the “CLAIMS APPENDIX” of Appellant’s Brief.
Appeal 2011-006154
Application 12/026,567

2
Claims 1, 2, and 4-8 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Takagi
1
and Dardel.
2

We reverse.

ISSUE
Is Dardel available as prior art against Appellant’s claimed invention?

FACTUAL FINDINGS
FF 1. “The difference between Takagi et al and the instant claims is that
Takagi et al [is] silent on pH conditions and eluent for the isolation of L-
cysteine from the ion exchanger” (Ans. 5-6).
FF 2. The Examiner relies on Dardel to make up for the deficiency in
Takagi (id. at 6).
FF 3. The filing date of Appellant’s claimed invention is Feburary 6, 2008.
FF 4. Dardel has a 2009 publication date (see Dardel; see also Ans. 5).

ANALYSIS
Appellant contends that Dardel is not available as prior art because its
“publication date is after Appellant’s priority date” (App. Br. 7). We agree.
The Examiner does not dispute Appellant’s contention, and in fact
acknowledges that Dardel is not prior art to the claims (Office Action mailed
Feb. 25, 2010, page 3). Although the Examiner alleges that Dardel’s
disclosure was known in the art “for more than one decade” (id.), the

1
Takagi et al., EP 1 298 200 A2, published April 2, 2003.
2
François Dardel et al., Ion Exchangers in Ullmann’s Encyclopedia of
Industrial Chemistry (John Wiley & Sons, Inc. 2009).
Appeal 2011-006154
Application 12/026,567

3
Examiner fails to identify a proper evidentiary basis that makes up for
Takagi’s deficiency.
CONCLUSION OF LAW
Dardel is not available as prior art against Appellant’s claimed
invention. The rejection of claims 1, 2, and 4-8 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Takagi and Dardel is reversed.

REVERSED

cdc