Ex Parte Ikeda

Board of Patent Appeals and Interferences

Sep 17, 2002

08951502 (B.P.A.I. Sep. 17, 2002)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.
Paper No. 28
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex Parte HIROKAZU IKEDA
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Appeal No. 2001-0163
Application 08/951,502
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ON BRIEF
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Before GARRIS, OWENS and JEFFREY T. SMITH, Administrative Patent Judge.
JEFFREY T. SMITH, Administrative Patent Judge.
Decision on appeal under 35 U.S.C. § 134
Applicant appeals the decision of the Primary Examiner’s refusal to allow
claims 11 to 21, all of the pending claims in the application. We have jurisdiction
under 35 U.S.C. § 134.
Appeal No. 2001-0163
Application No. 08/951,502
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THE INVENTION
The Appellant’s claimed invention relates to a method of separating optical
isomers in a simulated moving bed chromatography system which utilizes a packing
material for the optical resolution of an optical isomer mixture. The packing material
used is composed of particles of a polysaccharide derivative unsupported by silica gel.
According to the Appellant, the unsupported polysaccharide derivative provides an
excellent ability to resolve and separate optical isomers in a high pressure
environment. (Brief, p. 2). Claim 11 which is representative of the invention is
reproduced below:
11. A method of separation of optical isomers using a simulated moving
bed chromatographic apparatus which comprises:
forming a circulation circuit comprising a plurality of columns each
provided with an inlet port and an outlet port and packed with particles
of polysaccharide derivatives, said columns being serially and endlessly
connected so as to achieve serial and unidirectional fluid flow through
said columns, wherein the particles of polysaccharide derivatives are not
supported on a silica gel carrier;
introducing an optical isomer mixture to be separated into one of the
columns via the inlet port thereof in order to cause adsorbable or
strongly adsorbable substances to become adsorbed on the particles of
polysaccharide derivatives in the column and several columns that
follow;
Appeal No. 2001-0163
Application No. 08/951,502
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drawing out a solution rich in the other substances being non-adsorbable
or poorly adsorbable on the particles of polysaccharide derivatives via
the outlet port of another one of the columns;
introducing an eluent into still another one of the columns via the inlet
port thereof;
drawing out a solution rich in the adsorbable or strongly adsorbable
substances via the outlet port of further another one of the columns; and
passing the remaining solution and the eluent through the circuit and
recirculating them,
wherein the position for introducing the eluent, the position for drawing
out the solution containing the adsorbable or strongly adsorbable
substances, the position for introducing the optical isomer mixture and
the position for drawing out the solution containing the non-adsorbable
or weakly adsorbable substances are arranged in the circulation in this
order along the direction of the fluid flow, and the positions are
successively moved in the direction of the fluid flow in the circuit
intermittently.
Appeal No. 2001-0163
Application No. 08/951,502
1 In rebuttal to the Examiner’s rejections, the Appellant cites the following references:
Okamoto et al. (Okamoto) 4,861,872 Aug. 29, 1989
Negawa et al., “Optical Resolution by Simulated Moving-Bed Absorption Technology”, J.
Chromatography 590:113-117 (1992).
Nagamatsu et al., “Optical resolution of pharmaceutical intermediate by Simulated Moving Bed”
Chiral Europe ‘96 (1996).
2 We will rely on the translation of the this document which has been filed in the record.
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CITED REFERENCES1
As evidence of unpatentability, the Examiner relies on the following
references:
Yamashita et al. (Yamashita) 5,126,055 Jun. 30, 1992
Ikeda (Ikeda ‘852) 5,354,852 Oct. 11, 1994
Ikeda2 (Ikeda ‘635) WO 92/15635 Sep. 17, 1992
(Published PCT Application)
The Examiner rejected claims 11 to 21 under 35 U.S.C. § 102(b) as anticipated
by or in the alternative, under 35 U.S.C. § 103 as obvious over Yamashita. The
Examiner also rejected claims 11 to 21 under 35 U.S.C. § 103 as obvious over the
combination of Yamashita, Ikeda ‘852 and Ikeda ‘635. (Answer, pp. 3-4).
Appeal No. 2001-0163
Application No. 08/951,502
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OPINION
We reverse the aforementioned rejections. We need to address only the
independent claims, i.e., claims 11 and 21.
In order for a claimed invention to be anticipated under 35 U.S.C. § 102, all of
the elements of the claim must be found in one reference. See Scripps Clinic &
Research Found. v. Genentech Inc., 927 F.2d 1565, 1576, 18 USPQ2d 1001, 1010
(Fed. Cir. 1991); In re Schreiber, 44 USPQ2d 1429, 1433 (Fed. Cir. 1997), (“To
anticipated a claim, a prior art reference must disclose every limitation of the claimed
invention, either explicitly or inherently.”)
In rejecting claims 11 and 21 the Examiner states that “[t]he claims are
considered to read on Yamashita. (Answer, p. 3). The Examiner also states that “if a
difference exists between the claims and Yamashita ... it would have been obvious to
optimize the steps of Yamashita to enhance separation. (Answer, p. 3).
We cannot uphold the Examiner’s rejection. Appellant’s claims 11 and 21 both
require particles of polysaccharide derivatives which are not supported on a silica gel
carrier. The Examiner has not adequately explained where Yamashita discloses the
use of a packing material which is not supported on silica gel. The Examiner also has
not explained how optimizing the steps of Yamashita would have motivated a person
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Application No. 08/951,502
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of ordinary skill in the art to employ a packing material which is not supported on
silica gel. The mere fact that the prior art could be modified as proposed by the
examiner is not sufficient to establish a prima facie case of obviousness. See In re
Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783 (Fed. Cir. 1992). Consequently,
the Examiner’s rejection of claims 11 to 21 over Yamashita is reversed.
The Examiner also rejected claims 11 to 21 under 35 U.S.C. § 103 as obvious
over the combination of Yamashita, Ikeda ‘852 and Ikeda ‘635.
Appellant’s claims 11 and 21 both are directed to a method of separation of
optical isomers using a simulated moving bed chromatographic apparatus. The
claimed invention requires the use of particles of polysaccharide derivatives which are
not supported on a silica gel carrier.
The Examiner asserts Yamashita differs from the claimed invention in the
recitation of the specific adsorbent packing material. To remedy this deficiency the
Examiner relies on Ikeda ‘852 and Ikeda ‘635. According to the Examiner Ikeda ‘635
and ‘852 disclose that Ikeda’s carbamate of a polysaccharide has a larger separation
factor than Yamashita and is suitable for use in preparative liquid chromatography.
(Answer, p. 4).
Appeal No. 2001-0163
Application No. 08/951,502
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Yamashita describes a process of separating an optical isomer. The process
employs a simulated moving bed system. The packed bed of the simulated moving
bed system contains a silica gel having carried thereon an optically active high-
molecular compound or a low-molecular compound. (Col. 2, ll. 20-33).
Both Ikeda ‘852 and Ikeda ‘635 disclose preparative liquid chromatography
which contains polysaccharide derivatives in the stationary phase. The polysaccharide
derivatives are disclosed to have a separation coefficient greater than that of
polysaccharide derivatives supported on silica gel. (Ikeda ‘635, p. 2; and Ikeda ‘852,
cols. 1 and 3).
Appellant argue, Brief, pages 11-12, that there is a significant pressure
difference between a simulated moving bed multicolumn chromatography and a single
column (stationary phase) liquid chromatography. In support of their position,
Appellant cite the Okamoto, Negawa and Nagamatsu references. Thus, the Appellant
assert that a person of ordinary skill in the art would not look to references that
describe single column (stationary phase) liquid chromatography (low pressure
system), i.e., Ikeda ‘852 and Ikeda ‘635, to determine suitable packing materials for a
simulated moving bed multicolumn chromatography process (high pressure system).
(Brief, p. 13).
Appeal No. 2001-0163
Application No. 08/951,502
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We agree with Appellant. The Examiner has not explained, or cited evidence
that explained, that the advantages achieved with unsupported polysaccharide
derivatives in a single column (stationary phase) liquid chromatography process
would also have been expected to have been be achieved in a simulated moving bed
multicolumn chromatography process. The record indicates that the motivation relied
upon by the Examiner for using unsupported polysaccharide derivatives in a
simulated moving bed multicolumn chromatography process comes from the
Appellant’s description of their invention in the specification rather than coming from
the applied prior art and that, therefore, the Examiner used impermissible hindsight in
rejecting the claims. See W.L. Gore & Associates v. Garlock, Inc., 721 F.2d 1540,
1553, 220 USPQ 303, 312-13 (Fed. Cir. 1983); In re Rothermel, 276 F.2d 393, 396,
125 USPQ 328, 331 (CCPA 1960). Consequently, the Examiner’s rejection is
reversed.
CONCLUSION
The rejection of claims 11 to 21 under 35 U.S.C. §§ 102 and 103 over
Yamashita is reversed. The rejection of claims 11 to 21 under 35 U.S.C. § 103 as
obvious over the combination of Yamashita, Ikeda ‘852 and Ikeda ‘635 is reversed.
Appeal No. 2001-0163
Application No. 08/951,502
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REVERSED
)
BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
TERRY J. OWENS ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JEFFREY T. SMITH )
Administrative Patent Judge )
Appeal No. 2001-0163
Application No. 08/951,502
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