Ex Parte KIM et alDownload PDFPatent Trial and Appeal BoardOct 2, 201814242036 (P.T.A.B. Oct. 2, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/242,036 04/01/2014 Chan KIM 23413 7590 10/04/2018 CANTOR COLBURN LLP 20 Church Street 22nd Floor Hartford, CT 06103 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. JLE0088USP 6807 EXAMINER GORDON II, BRADLEY R ART UNIT PAPER NUMBER 1773 NOTIFICATION DATE DELIVERY MODE 10/04/2018 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): usptopatentmail@cantorcolbum.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CHAN KIM, EU GENE CHO, SANG CHUL SUH, and IN YONG SEO Appeal 2018-000128 Application 14/242,036 Technology Center 1700 Before ROMULO H. DELMENDO, MONTE T. SQUIRE, and LILAN REN, Administrative Patent Judges. DELMENDO, Administrative Patent Judge. DECISION ON APPEAL The Applicants (hereinafter "Appellants") 1 appeal under 35 U.S.C. § 134(a) from the Primary Examiner's final decision to reject claims 1-8 and 10.2 We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 The Appellants are the Applicants, "AMOGREENTECH CO., LTD. and AMO MEDI CO., LTD.," which, according to the Brief, are the real parties in interest (Appeal Brief filed January 11, 2017 (hereinafter "Br.") 3; Application Data Sheet filed April 1, 2014 at 5---6). 2 Br. 10-15; Final Office Action entered (hereinafter "Final Act.") 4--7; Examiner's Answer entered July 27, 2017 (hereinafter "Ans.") 4--7. The Appellants list claim 9 as rejected (Br. 10). That is incorrect because claim 9 has been canceled (id. at 17). Appeal2018-000128 Application 14/242,036 I. BACKGROUND The subject matter on appeal relates to a method for manufacturing a composite membrane, which may be used in a technique known as "western blot analysis" for finding a particular protein from a mixture of several proteins extracted from cells or tissues (Specification filed April 1, 2014 (hereinafter "Spec.") 1, 11. 5-29). Representative claim 1 is reproduced from the Claims Appendix to the Appeal Brief (Br. 16), as follows: 1. A method of manufacturing a composite membrane for weste rn [sic] blotting, the method comprising the steps of: dissolving a polyvinilidenflouride [ sic, polyvinylidene fluoride] (PV dF [ sic, PVDF])-based polymer material in a solvent to prepare a spinning solution; electrospinning the spinning solution to obtain a nanofiber web; and combining the nanofiber web with a nonwoven fabric to obtain a composite membrane for western blotting, wherein, in the composite membrane, the nanofiber web has a first thickness in a range of 5 µm to 20 µm, the nonwoven fabric has a second thickness in a range of 50 µm to 200 µm, and a thickness ratio of the first thickness to the second thickness is in a range of 1/15 to 1/10. II. REJECTIONS ON APPEAL On appeal, the Examiner withdraws a rejection under AIA 35 U.S.C. § 112(b) entered against claims 1-8 and 10 but maintains two rejections under 35 U.S.C. § 103, as follows: A. Claims 1-6, 8, and 10 as unpatentable over Chu et al. 3 (hereinafter "Chu"); and B. Claims 5 and 7 as unpatentable over Chu in view of Kook et 3 US 2008/0149561 Al, published June 26, 2008. 2 Appeal2018-000128 Application 14/242,036 al. 4 and Dullaert et al. 5 (Ans. 3-7; Final Act. 2-7.) III. DISCUSSION The Appellants rely on the same arguments for both rejections on appeal (Br. 10-15). Therefore, pursuant to 37 C.F.R. § 4I.37(c)(l)(iv), we confine our discussion of Rejection A to claim 1, which we select as representative. As provided by this rule, all claims subject to Rejection A stand or fall with claim 1. Because the Appellants do not argue Rejection B separately from Rejection A, claims 5 and 7 also stand or fall with claim 1. The Examiner finds that Chu describes a composite membrane comprising an electrospun ( e-spun) fibrous support (i.e., a nano fiber web), which may be made from PVDF, and a non-woven substrate (i.e., fabric), wherein the thicknesses disclosed for the fibrous support and the non-woven substrate and their relative thickness ratios encompass or overlap the ranges recited in claim 1 (Ans. 4--5) (citing Chu's Figure 7 and ,r,r 70, 73, 91,108, 109). The Examiner concludes from these findings that "it would have been prima facie obvious to one skilled in the art ... to scale the thicknesses of Chu's fibrous support and nonwoven substrate to values within the as- claimed ranges ... since Chu teaches respective overlapping ranges of thicknesses for these items" (id. at 5). The Examiner finds further that although Chu does not explicitly teach "western blotting" as recited in claim 1, the prior art "composite membrane is considered to be functionally capable of being used for western blotting since it has the same structural features of the claimed composite membrane" (id.). 4 US 2011/0076197 Al, published March 31, 2011. 5 US 2012/0137885 Al, published June 7, 2012. 3 Appeal2018-000128 Application 14/242,036 The Appellants do not dispute the Examiner's findings concerning the disclosed thicknesses for the nanofiber web and the nonwoven fabric and their relative thickness ratios (Br. 10-15). Rather, the Appellants contend that the Examiner's rejection is flawed because Chu discloses a fibrous support for filtration (nanofiltration, ultrafiltration, or reverse osmosis) including a chitosan coating layer that must be removed in order to arrive at the claimed invention (Br. 10-12). According to the Appellants, "a combination of a 'nonporous' hydrophilic coating (Chitosan coating) and an electrospun nanofibrous support (PAN) cannot function as a western blot membrane" (id. at 12) (emphases omitted). The Appellants argue that if Chu's chitosan coating layer is removed, it would render Chu's structure inoperable for its original intended purpose (id.). Furthermore, the Appellants urge that "the claimed limitations are directed to 'obtain a composite membrane for western blotting,' as recited in [ c ]laim 1, not 'using the membrane for western blotting,' as stated" by the Examiner and that "'there does not appear to be any art of record which suggests that Chu's membrane can be used for western blotting"' (id. at 14; emphases omitted). We have fully considered the Appellants' arguments, but, for the reasons given by the Examiner and below, we find them insufficient to reveal any reversible error in the Examiner's rejection as entered against claim 1. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011). Chu describes articles comprising a fibrous support comprising nanofibers and an interfacially polymerized polymer layer disposed on the fibrous support by polymerizing, in situ, "partially within, or wholly within the top layer of the fibrous support" (Chu ,r,r 3, 76). Chu teaches that the nanofibers may be prepared from various polymers such as PVDF and that 4 Appeal2018-000128 Application 14/242,036 the interfacially polymerized polymer layer may be based on, e.g., crosslinked aromatic polyamides (id. ,r,r 7, 7 6). Chu further teaches an embodiment in which the fibrous support comprising nanofibers is disposed between the interfacially polymerized polymer layer and a non-woven fabric (id. ,r 91 ). According to Chu, the articles are useful not only as filtration membranes but also as other materials, e.g., biological substrates (id. ,r 92). When used as a filtration membrane, Chu teaches providing a chitosan coating layer on an electro spun nanofibrous polyacrylonitrile (PAN) support disposed on a nonwoven polyester substrate to enhance anti-fouling (id. Fig. 7 and ,r 105). Although Chu does not mention "western blotting," the structural similarities between the article manufactured according to Chu's disclosure and the composite membrane resulting from the claimed manufacturing method provide a reasonable basis upon which to shift the burden of production to the Appellants to show that Chu's article would not be suitable for "western blotting." The Appellants offer no objective evidence (such as sworn experimental data) in this regard. Cf In re Best, 562 F.2d 1252, 1255 ( CCP A 1977) ("Where ... the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product."). The Appellants assertion that an article containing a chitosan coating layer would render the article unsuitable for "western blotting" is not supported by the actual language used in claim 1, which recites a "method comprising the steps of' (Br. 16; emphasis added) or by any objective 5 Appeal2018-000128 Application 14/242,036 evidence or persuasive technical reasoning. Therefore, it is mere attorney argument. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997). Even if we assume that a chitosan coating layer does in fact render the resulting article unsuitable for "western blotting," Chu discloses the chitosan coating layer in the context of a filtration membrane (Chu ,r 105). As we found above, Chu's article has other uses (e.g., as a biological substrate) (id. ,r 92) and, therefore, a chitosan coating layer is not a layer that would be required for all applications. For these reasons, and those well-stated by the Examiner, we uphold the § 103 rejection as entered against claim 1. IV. SUMMARY Rejections A and Bare sustained. Therefore, the Examiner's final decision to reject claims 1-8 and 10 is affirmed. 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 6 Copy with citationCopy as parenthetical citation