Ex Parte Holmquist et alDownload PDFPatent Trial and Appeal BoardMay 30, 201812964710 (P.T.A.B. May. 30, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. 12/964,710 109855 7590 Quest Diagnostics 1311 Calle Batido FILING DATE 12/09/2010 06/01/2018 San Clemente, CA 92673 FIRST NAMED INVENTOR Brett Holmquist 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. 034827-1051 5251 EXAMINER GAKH, YELENA G ART UNIT PAPER NUMBER 1797 NOTIFICATION DATE DELIVERY MODE 06/01/2018 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): ipdocketing@foley.com joshua.e.kim@questdiagnostics.com joel.s.white@questdiagnostics.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BRETT HOLMQUIST and NIGEL CLARK Appeal2017-004076 Application 12/964,710 Technology Center 1700 Before GEORGE C. BEST, N. WHITNEY WILSON, and JANEE. INGLESE, Administrative Patent Judges. WILSON, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's May 4, 2015 decision finally rejecting claims 1-5, 8-13, 15-21, 24--29, 31--40, 42--45, 47, and 48 ("Final Act."). We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We affirm. 1 Appellants identify the real party in interest as Quest Diagnostics Investments Inc. (Br. 1). Appeal2017-004076 Application 12/964,710 CLAIMED SUBJECT MATTER Appellants' disclosure is directed to a method for detecting underivatized, non-metabolized vitamin D by mass spectrometry (Abstract). Details of the claimed invention may be found in representative claim 1, which is reproduced below from the Claims Appendix: 1. A method for determining an amount of underivatized vitamin D2 in a biological sample by tandem mass spectrometry, the method comprising the steps of: (i) subjecting the biological sample to [a] turbulent flow liquid chromatography (TFLC) column; (ii) ionizing the biological sample under conditions suitable to generate one or more precursor ions detectable by mass spectrometry selected from the group consisting of ions with a mass to charge ratio (m/z) of 397.2 ± 0.5 or 379.2 ± 0.5; (iii) fragmenting at least one of said precursor ions to generate one or more fragment ions detectable by mass spectrometry; (iv) determining an amount of one or more of the ions generated in steps (ii) and (iii) by the tandem mass spectrometry; and (v) determining the amount of vitamin D2 in the biological sample by relating the amount of the ions determined in step (iv) to the amount of vitamin D2 in the biological sample wherein if the fragmented precursor ions comprise an ion with m/z of 397 .2 ± 0.5, the fragment ions comprise one or more ions selected from the group consisting of ions with m/z of 159.0 ± 0.5, 146.9 ± 0.5, 13 3 .1±0.5, and 121. 0 ± 0. 5, and if the fragmented precursor ions comprise an ion with m/z of 379.2 ± 0.5, the fragment ions comprise one or more ions selected from the group consisting of ions with m/z of 283.2 ± 0.5, 187.3 ± 0.5, 175.2 ± 0.5, and 159.0 ± 0.5. 2 Appeal2017-004076 Application 12/964,710 REJECTIONS Claims 1-5, 8-13, 15-21, 24--29, 31--40, 42--45, 47, and 48 are rejected under 35 U.S.C. § 103(a) as unpatentable over Capote2 in view of Zimmer3 or Bunch. 4 The Examiner withdrew the rejections set forth in the Final Action under 35 U.S.C. § 112, first and second paragraphs (Ans. 4). Thus, the§ 112 rejections are not before us. DISCUSSION Appellants do not advance separate arguments in support of the patentability of any of the dependent claims (see, Appeal Br. 10-11 ). Accordingly, we focus our analysis on the rejection of claim 1 over Capote in view of Zimmer or Bunch. The Examiner finds that Capote discloses each element of claim 1, except that Capote does not teach the use of turbulent flow liquid chromatography as the first step before performing the LC-MS analysis of steps (ii)-(v) (Final Act. 7-8). However, the Examiner finds that Capote teaches that most of the known methods for simultaneous determination of 2 Feliciano Priego Capote et al., Identification and determination of fat- soluble vitamins and metabolites in human serum by liquid chromatography/triple quadrupole mass spectrometry with multiple reaction monitoring, 21 Rapid Commun. Mass. Spectrom. 17 45-17 54 (2007). 3 Dieter Zimmer et al., Comparison of turbulent-flow chromatography with automated solid-phase extraction in 96-well plates and liquid-liquid extraction used as plasma sample preparation techniques for liquid chromatography-tandem mass spectrometry, 854 J. Chromatogr. A, 23-35 (1999). 4 Dustin R. Bunch et al., Development and validation of a liquid chromatography-tandem mass spectrometry assay for serum 25- hydroxyvitamin D2/D3 using a turbulent flow online extraction technology, 47 Clin. Chem. Lab. Med. 1565-1572 (2009). 3 Appeal2017-004076 Application 12/964,710 fat-soluble vitamins (like vitamins D2 and D3) have "an extraction step prior to [the] liquid chromatographic analysis," and that Capote teaches liquid- liquid extraction as a preconcentration step (Final Act. 8). The Examiner further finds that both Zimmer and Bunch teach that turbulent flow liquid chromatography can be used in place of solid-phase extraction or in advance of liquid chromatography-tandem mass spectroscopy assay for serum 25- hydroxyvitamin D2/D3 (id.). The Examiner determines that it would have been obvious to apply the advanced turbulent flow online extraction techniques taught by Zimmer or Bunch in Capote's method because the secondary references specifically recite advantages of substituting turbulent flow on-line extraction for liquid- liquid or solid-phase extraction steps for purifying biological samples (id.). Appellants argue that Capote teaches using reverse phase liquid chromatography followed by mass spectrometry, while Bunch discloses replacing high performance liquid chromatography with turbulent flow liquid chromatography (Br. 11 ). Appellants further argue that neither Bunch nor Capote nor Zimmer suggest that reverse phase liquid chromatography should be replaced with turbulent flow liquid chromatography (id.). This argument is not persuasive. The Examiner finds that Capote teaches liquid-liquid extraction as a preconcentration and cleanup step of the sample comprising D2 and D3 vitamins before performing the LC-MS analysis (Ans. 4, citing Capote 1746, right column), and both Zimmer and Bunch teach advantages of turbulent flow liquid chromatography compared to liquid-liquid extraction. Appellants do not persuasively demonstrate error in these findings. Moreover, the Examiner has explained why a person of 4 Appeal2017-004076 Application 12/964,710 skill in the art would have combined turbulent flow liquid chromatography from Zimmer or Bunch into Capote's method (Final Act. 8). Finally, Appellants argue that neither Zimmer nor Bunch teach that turbulent flow liquid chromatography can be used in connection with underivatized nutritional vitamin D quantitation (Br. 11 ). However, this argument is based on the individual teachings of the references, not their combined teachings. Attacking references individually where, as here, the rejections are based on a combination of references is ineffectual in arguing against an obviousness rejection. In re Keller, 642 F.2d 413, 426 (CCPA 1981 ). Accordingly, Appellants have not demonstrated reversible error in the obviousness rejection. CONCLUSION We AFFIRM the rejection of claims 1-5, 8-13, 15-21, 24--29, 31--40, 42--45, 47, and 48 under 35 U.S.C. § 103(a) as unpatentable over Capote in view of Zimmer or Bunch. 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 5 Copy with citationCopy as parenthetical citation