11555975 (B.P.A.I. Mar. 27, 2012)

Ex Parte Halaka

Board of Patent Appeals and InterferencesMar 27, 2012

11555975 (B.P.A.I. Mar. 27, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/555,975 11/02/2006 Folim G. Halaka IVGN 530.4 CON 7879 7590 03/27/2012 Talivaldis Cepuritis Olson & Cepuritis, Ltd. 36th Floor 20 N. Wacker Drive Chicago, IL 60606 EXAMINER KURTZ, BENJAMIN M ART UNIT PAPER NUMBER 1778 MAIL DATE DELIVERY MODE 03/27/2012 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte FOLIM G. HALAKA ____________ Appeal 2011-005516 Application 11/555,975 Technology Center 1700 ____________ Before CATHERINE Q. TIMM, BEVERLY A. FRANKLIN, and RAE LYNN P. GUEST, Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134 from the Examiner's rejection of claims 18-37. We have jurisdiction under 35 U.S.C. § 6. An oral hearing was held on March 8, 2012. STATEMENT OF THE CASE Claims 18 is representative of the subject matter on appeal and is set forth below: Appeal 2011-005516 Application 11/555,975 2 18. A polymeric separation medium for recovery of a polyelectrolyte from a liquid, which separation medium contains pendant, pH-dependent groups wherein the polymeric separation medium exhibits a pKa value in the range of about 5 to about 7. The prior art relied upon by the Examiner in rejecting the claims on appeal is: Shaltiel 3,917,527 Nov. 4, 1975 Josephson 4,672,040 Jun. 9, 1987 Nagamatsu et al. (Nagamatsu) 5,032,281 Jul. 16, 1991 Henco et al. (Henco) 5,057,426 Oct. 15, 1991 Backus et al. (Backus) 5,582,988 Dec. 10, 1996 Burton et al. (Burton „348) 5,652,348 Jul. 29, 1997 Burton et al. (Burton „116) WO 96/09116 Mar. 28, 1996 THE REJECTIONS 1. Claims 18-37 are rejected under 35 U.S.C. §112, first paragraph, as failing to comply with the written description requirement. 2. Claims 18-23, 25-30, and 32-37 are rejected under 35 U.S.C. § 102(b) as being anticipated by Burton „348. 3. Claims 18-20, 23-27, 30-32, 34, and 35 are rejected under 35 U.S.C. §102(b) as anticipated by Backus. 4. Claims 18-23, 25-30, and 32-36 are rejected under 35 U.S.C. §102(b) as anticipated by Shaltiel. 5. Claims 18-23, 25-30, 32, and 34-37 are rejected under 35 U.S.C. §102(b) as anticipated by Nagamatsu. Appeal 2011-005516 Application 11/555,975 3 6. Claims 18-23, 25-30, and 32-37 are rejected under 35 U.S.C. §102(b) as anticipated by Burton „116 (same text as Burton „348). 7. Claims 21, 22, 28, 29, 36, and 37 are rejected under 35 U.S.C. §103(a) as unpatentable over in view of Burton, Shaltiel, Nagamatsu, and Burton „116 (same text as Burton „348). 8. Claims 24 and 31 are rejected under 35 U.S.C. §103(a) as unpatentable over Burton or Shaltiel or Nagamatsu or Burton „116 (same text as Burton „348) in view of Backus and Josephson. 9. Claim 33 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Backus or Nagamatsu in view of, Burton, Shaltiel, Burton „116 (same text as Burton „348), and Henco. 1 ANALYSIS As an initial matter, Appellant has not presented separate arguments for all of the rejected claims. Any claim not separately argued will stand or fall with its respective independent claim. See 37 C.F.R. § 41.37(c)(1)(vii). We have carefully reviewed the Brief and Reply Brief in making our determinations herein. 1 Appellant does not list this rejection in paragraph 6 on pages 2-3 of the Brief, and do not specifically argue this rejection. See generally Brief and Reply Brief. However, Appellant does indicate that claim 33 is on appeal. Br. 1. Hence, we treat Appellant‟s action as a waiver of the opportunity to contest Rejection 9 and summarily affirm Rejection 9. Appeal 2011-005516 Application 11/555,975 4 We adopt the Examiner‟s findings pertinent to the issues raised by Appellant for this rejection. We, therefore, incorporate the Examiner‟s position as set forth in the Answer. We add the following for emphasis. Rejection 1 Independent claims 18, 25, and 32 each recites the limitation of a polymeric separation medium or a porous support that “exhibits a pKa value in the range of about 5 to about 7.” We agree with the Examiner that the Specification discloses that it is the pendant groups that have a pKa in the range of about 5 to about 7, and that there is no disclosure of a separation medium or porous support having a pKa of about 5 to 7. See, e.g., Spec. 7:14-17. Ans. 4, 15, and 16. We thus affirm Rejection 1. Rejections 2 and 6 2 We agree with the Examiner‟s position as set forth on pages 5, 6, 16 and 17, and affirm Rejections 2 and 6 based upon the Examiner‟s position stated therein. We add that when a claimed product appears to be substantially identical to a product disclosed by the prior art, the burden is on the Appellant to prove that the product of the prior art does not necessarily or inherently possess characteristics or properties attributed to the claimed product. In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990); In re 2 Because Burton‟348 and Burton „116 have the same disclosures, we address Rejections 2 and 6 together. Our reference to “Burton” includes both of these Burton references. Appeal 2011-005516 Application 11/555,975 5 Best, 562 F.2d 1252, 1255 (CCPA 1977). Appellant has not met the burden of establishing that the substantially identical compositions taught by Burton have different properties than the claimed invention. We therefore affirm Rejections 2 and 6. Rejections 3-5 We agree with the Examiner‟s findings and conclusions that the subject matter of Appellant‟s claims is anticipated by each of Backus, Shaltiel, and Nagamatsu, for the reasons set forth in the Answer, which we incorporate herein by reference. Accordingly, we sustain each of the Examiner‟s anticipation rejections. In re Spada, 911 F.2d at 708; In re Best, 562 F.2d at 1255. Appellant has not met the burden for establishing that the substantially identical polymeric separation medium taught by each of the applied references has different properties than the claimed invention. Rejections 7 and 8 We sustain Rejections 7 and 8 based on the findings of fact, conclusions of law, and rebuttals to arguments expressed by the Examiner in the Answer. Ans., 12-14, and 20. Rejection 9 Appellant has not presented any arguments directed toward Rejection 9, and, therefore, Appellant has not identified an error in the Examiner‟s rejection. We therefore affirm Rejection 9. See footnote 1, supra. Appeal 2011-005516 Application 11/555,975 6 CONCLUSIONS OF LAW AND DECISION Each rejection is affirmed. TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). AFFIRMED cam