Ex Parte Kjellin

Patent Trial and Appeal Board

Oct 25, 2017

12744773 (P.T.A.B. Oct. 25, 2017)

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.
12/744,773 05/26/2010 Per Kjellin 9737-4/2204.04 5100
20792 7590 10/25/2017
MYERS BIGEL, P.A.
PO BOX 37428
RALEIGH, NC 27627
EXAMINER
SHAH, SAMIR
ART UNIT PAPER NUMBER
1787
MAIL DATE DELIVERY MODE
10/25/2017 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PER KJELLIN
____________

Appeal 2016-008375
Application 12/744,7731
Technology Center 1700
____________

Before ADRIENE LEPIANE HANLON, DONNA M. PRAISS, and
BRIAN D. RANGE, Administrative Patent Judges.

PRAISS, Administrative Patent Judge.

DECISION ON APPEAL2
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s decision rejecting claims 10–21. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
We REVERSE.

1 Appellant identifies the real party in interest as Promimic AB. App. Br. 2.
2 In this Decision we reference the Specification filed May 26, 2010
(“Spec.”), the Non-Final Office Action dated June 30, 2015 (“Non-Final
Act.”), the Appeal Brief filed Feb. 9, 2016 (“App. Br.”), Declaration Under
37 C.F.R. § 1.132 of Per Kjellin, Ph.D. dated May 28, 2013 (“Kjellin
Decl.”), the Examiner’s Answer dated July 13, 2016 (“Ans.”), and the Reply
Brief filed Sept. 12, 2016 (“Reply Br.”).
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STATEMENT OF THE CASE
Claims 10 and 21 are illustrative of the subject matter on appeal and
are copied below from the Claims Appendix to the Appeal Brief
(paragraphing added and disputed limitations italicized):
10. A calcium phosphate particle comprising
a water-soluble amino acid, said water-soluble amino acid
comprising at least two functional groups comprising a
negatively charged group and a positively charged group,
wherein
said negatively charged group of said water-soluble amino
acid is attached to said calcium phosphate particle, thereby
providing a coated calcium phosphate particle, and
said positively charged group of said water-soluble amino
acid is attached to a solid support comprising an oxide
surface or a polymer surface so that said water-soluble
amino acid is simultaneously attached to said solid
support and said calcium phosphate particle,
thereby providing said coated calcium phosphate particle
in the form of a coating on said solid support.
21. A calcium phosphate particle comprising a water-soluble
amino acid,
wherein said water-soluble amino acid is monomeric and
comprises at least two functional groups comprising a negatively
charged group and a positively charged group,
wherein said negatively charged group of said water-soluble
amino acid is attached to said calcium phosphate particle, thereby
providing a coated calcium phosphate particle, and
wherein said positively charged group of said water-soluble
amino acid is attached to a solid support comprising an oxide
surface or a polymer surface, thereby providing said coated
calcium phosphate particle in the form of a coating on said solid
support.
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THE REJECTIONS3

1. Claims 10–21 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement; and
2. Claims 10–20 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Furedi-Milhofer.4
ANALYSIS
Written Description
The Examiner finds that “said water soluble amino acid is
simultaneously attached to said solid support and said calcium phosphate
particle” recited in claim 10 is not supported by the Specification. Non-
Final Act. 2–3. The Examiner further finds that “water soluble amino acid is
monomeric . . .” recited in claim 21 is not supported by the Specification.
Id. at 3.
Appellant contends that the Examiner’s written description rejections
are in error because the two attachments to the amino acid are stated in
original claim 10 itself and are described in the Specification to “reasonably
convey[] that the water-soluble amino acid is simultaneously attached to
both the solid support and the calcium phosphate particle.” App. Br. 3–4
(citing Spec. 5:4–19, 9:22–34, claim 10 as originally filed). Appellant also
asserts that the disclosure in the Specification of amino acids such as neutral
amino acids, basic amino acids, and acidic amino acids that may be organic

3 The rejection of claim 21 under 35 U.S.C. § 102(b) stands withdrawn.
Ans. 2.
4 Furedi-Milhofer et al., US 2006/0216494 A1, pub. Sept. 28, 2006 (“Furedi-
Milhofer”).
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compounds having a positively charged group and a negatively charged
group, in addition to the exemplified amino acids lysine and aspartic acid
which are monomeric, “clearly conveys that the amino acid can be
monomeric.” Id. at 5 (citing Spec. 9:10–14, 9:22–29).
The Examiner responds that there is no support for claim 10’s
recitation “said water soluble amino acid is simultaneously attached to said
solid support and said calcium phosphate particle” because “simultaneously”
requires attachment of both the positively charged group and the negatively
charged group at the same time. Ans. 3. According to the Examiner, the
Specification only requires that the charged groups attach and the charged
groups could have attached one following the other rather than at the same
time. Id. Regarding “monomeric” recited in claim 21, the Examiner finds
that the Specification broadly discloses amino acid, so the amino acid can be
polymeric or monomeric. Id.
In the Reply Brief, Appellant argues that the recited “simultaneously”
does not add a method step to the claim, but, rather, is preceded by “so that”
and thereafter reiterates the prior recitations regarding the amino acid being
attached to both the solid support and the calcium phosphate particle. Reply
Br. 4. Regarding “monomeric,” Appellant asserts that an amino acid is a
monomer that can undergo polymerization to form a polyamino acid or
peptide, and what remains after water is removed from the combination of
amino acids is called an amino-acid residue. Id. at 2 (citing Exhibit A
(International Union of Pure and Applied Chemistry (USPACC),
http://goldbook.iupac.org/A00279.html, last accessed Sept. 16, 2014)).
Appellant also points out that the Examiner concurs that an amino acid can
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be monomeric and that it is not disputed that lysine and aspartic acid are
monomers. Id. (citing Spec. 9:10–14).
“Adequate written description means that the applicant, in the
specification, must ‘convey with reasonable clarity to those skilled in the art
that, as of the filing date sought, he or she was in possession of the [claimed]
invention.’” Agilent Techs., Inc. v. Affymetrix, Inc., 567 F.3d 1366, 1379
(Fed. Cir. 2009) (citation omitted). The pertinent inquiry is not whether the
Specification provides a reason to have made the invention which is now
claimed, but whether the invention, with all its claimed limitations, is
described in it. See Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572
(Fed. Cir. 1997).
We agree with Appellant that the Specification sufficiently supports
the dual attachment of the amino acid to both the solid support and the
calcium phosphate particle. The Examiner does not find otherwise in this
regard. Ans. 2–3. We also agree with Appellant that the context of claim 10
itself reflects that the recited “simultaneously” is not a product-by-process
limitation modifying the timing of the initial attachments, as the Examiner
concludes, but, rather, describes the structure of the final product subsequent
to the two separate attachments recited earlier in the claim. The resulting
structure with both attachments existing simultaneously “provide[s] said
coated calcium phosphate particle in the form of a coating on said solid
support” as subsequently recited in claim 10. Therefore, the broadest
reasonable interpretation of claim 10 is that the recited attachments are
present simultaneously in the claimed calcium phosphate particle and this
interpretation is supported by the Specification. Accordingly, we reverse the
Examiner’s rejection of claims 10–20 on this basis.
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Regarding “monomeric” recited in claim 21 to describe the amino
acid, we agree with Appellant that the Specification discloses both the genus
of amino acids (neutral amino acids, basic amino acids, and acidic amino
acids) as well as two specific species of amino acids (lysine and aspartic
acid). Spec. 9:10–14. There is no dispute that the species lysine and
aspartic acid are monomers. The Examiner’s finding that amino acids are
broadly understood to be polymeric or monomeric (Ans. 3) is consistent
with the Specification’s broad disclosure of all forms of “amino acids” as
well as Appellant’s position that “the [S]pecification clearly conveys that the
amino acid can be monomeric” (App. Br. 5) (emphasis added).
Appellant’s subsequent assertion in the Reply Brief that a skilled
artisan would “recognize an amino acid is a monomer and this monomer can
undergo polymerization to form a polyamino acid or peptide” (Reply Br. 2)
is not directly supported by the definition of “amino acid residue” submitted
by Appellant as Exhibit A. Appellant infers from the “amino acid residue”
definition, i.e., “[w]hen two or more amino acids combine to form a peptide
. . . ”, that (1) amino acids cease to be amino acids upon polymerization to
form a polyamino acid or (2) amino acids are monomers because they are
building blocks of polyamino acids. Reply Br. 2. Based on the cited record
in this appeal, we are not persuaded that amino acids are categorically
monomeric. Amino acid is defined in at least one source as “any of a class
of organic compounds that contains at least one amino group, –NH 2 , and
one carboxyl group, –COOH: the alpha-amino acids, RCH(NH 2)COOH, are
the building blocks from which proteins are constructed.” See
Dictionary.com, http://www.dictionary.com/browse/amino-acid?s=t, last
visited Oct. 12, 2017. Nevertheless, it is not disputed that amino acids can
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be monomers and that two monomeric amino acids are exemplified in the
Specification.
Whether the exemplified monomeric amino acids named in the
Specification among the broader disclosure of neutral, acidic, or basic amino
acids generally, which can be monomeric or polymeric, is adequate to
convey with reasonable clarity that Appellant was in possession of the
claimed monomeric amino acid is the question before us. We answer this
question in the affirmative. Appellant’s disclosure is clearly directed to
amino acids of the type claimed, i.e., monomeric amino acids, given the
specific examples of a basic amino acid and an acidic amino acid that are
both monomeric. That the full scope of Appellant’s disclosure of amino
acids in the Specification encompasses amino acids that can be polymeric
does not negate Appellant’s possession of monomeric amino acids,
particularly in view of the examples provided being all monomeric amino
acids. “It is for the inventor to decide what bounds of protection he will
seek.” In re Johnson, 558 F.2d 1008, 1018 (CCPA 1977) (limited genus
claimed found to be supported generically and by specific examples).
Therefore, we are persuaded that the Specification provides ample basis for
Appellant to claim the limited genus of monomeric amino acids and reverse
the rejection of claim 21.
In sum, we reverse the rejection of claims 10–21 under 35 U.S.C.
§ 112, first paragraph.
Anticipation
We need to address only independent claim 10 because each of claims
11–20 depends directly or indirectly from claim 10.
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The Examiner finds that Furedi-Milhofer discloses coated calcium
phosphate particles in the form of a coating on a polymer surface where the
amino acid is polyaspartic acid and finds that polyaspartic acid is water
soluble, has a positively charged amine group, and has a negatively charged
–COOH group. Non-Final Act. 3–4. The Examiner further finds that given
aspartic acid is the same as disclosed in the Specification, it would
inherently function as claimed. Id. at 4.
Appellant contends that polyaspartic acid is a polymer rather
than an amino acid, it has a distinctly different structure than an amino
acid, and that it can have distinctly different properties than an amino
acid due to the side chains of each residue (-CH2COOH). App. Br. 7–
8. Appellant asserts that the Examiner failed to establish that the
polyaspartic acid of Furedi-Milhofer would necessarily be arranged as
claimed, i.e., with a negatively charged group attached to a calcium
phosphate particle and a positively charged group attached to a solid
support, because it is significantly larger and has significantly more
charged groups compared to an amino acid. Id. at 8. Appellant
further argues that the multi-layer structure of Furedi-Milhofer means
that the first layer is attached to the substrate surface via a positively
charged group of the polyelectrolyte and it is likely that the first layer
would not be simultaneously attached to the amorphous calcium
phosphate particles due to the multiple layers between the substrate
surface and the particles. Id. at 9–10 (citing Kjellin Decl. ¶¶ 6–7).
Appellant also argues that polyelectrolytes including polyaspartic acid
of Furedi-Milhofer are unsuitable for binding both to a surface and a
calcium phosphate particle because it is strongly negative and is used
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as a scale inhibitor to prevent deposits or precipitation of calcium
phosphate particles on a surface. Id. at 10–11 (citing Kjellin Decl.
¶ 11).
The Examiner responds that nothing in the claim excludes
polyaspartic acid as the claimed amino acid given that it is made of
the amino acid aspartic acid, has CH2COOH groups to attach to the
calcium carbonate as claimed, and is also water soluble. Ans. 4. The
Examiner also finds that there is nothing in the claim that excludes the
structure of polyaspartic acid or its molecular weight. Id. Regarding
Appellant’s strongly negatively charged polyaspartic acid argument,
the Examiner finds that the Kjellin Declaration is conclusory and
based on the position that Furedi-Milhofer requires multiple layers of
electrolytes when the reference states “at least one” reflecting a single
polyelectrolyte film is also disclosed. Id. at 5. The Examiner further
finds that because polyaspartic acid is identical to the amino acid
claimed, the claimed amino acid also would have a strong negative
charge. Id. at 6.
The Examiner acknowledges that Furedi-Milhofer does not
explicitly disclose that the negatively charged group of the amino acid
attaches to the calcium phosphate particle and the positively charged
group of the amino acid attaches to the support, but finds that it would
inherently function as claimed because the same water-soluble amino
acid is used. Id. The Examiner further finds that the claim only
requires one positively charged group and one negatively charged
group and that the negatively charged layer would necessarily attach
to calcium phosphate and the positively charged layer attach to the
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support because it is the same amino acid as claimed. Id. at 7.
Regarding the suitability of polyaspartic acid to coat calcium
phosphate particles, the Examiner finds that the reference itself
discloses “depositing calcium phosphate on polyelectrolyte layer.” Id.
In the Reply Brief, Appellant argues that a polyamino acid is
not an amino acid, but rather a peptide or a polymer formed from two
or more amino acids. Reply Br. 3. Appellant further argues that the
negatively charged group of the water-soluble amino acid attached to
the calcium phosphate particle and the positively charged group
attached to the support as claimed would not necessarily occur in a
polyamino acid for at least the reason that at least one end of each
amino acid residue in the polyamino acid would be joined to another
amino acid residue by a covalent, peptide bond. Id.
Based on the cited record on appeal, we are persuaded of
reversible error in the rejection of claim 10 as anticipated by Furedi-
Milhofer. The Examiner acknowledges that Furedi-Milhofer does not
disclose attachment of the negatively charged group of the amino acid
to the calcium phosphate particle and the positively charged group to
the support. Ans. 6. The Examiner does not adequately explain,
however, why the polyamino acid form of aspartic acid disclosed by
Furedi-Milhofer would inherently function to produce the claimed
structure. Although the Examiner finds that Furedi-Milhofer discloses
a single polyelectrolyte film comprising polyaspartic acid deposited
on a surface (Non-Final Act. 3–4; Ans. 5–6; Furedi-Milhofer Abstr.,
¶¶ 11, 13, claim 16) in addition to calcium phosphate particles in the
form of a coating (Non-Final Act. 3; Furedi-Milhofer Abstr., ¶ 11),
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the structure defined by the claim of the amino acid being attached at
the negatively-charged group to the calcium phosphate particle while
the positively-charged group is attached to the support is not
necessarily formed by Furedi-Milhofer’s coating.
Appellant contends that Furedi-Milhofer’s structure would be
influenced by the strongly negative charge of polyaspartic acid
making it unsuitable for both binding to a surface and a calcium
phosphate particle. App. Br. 10–11 (citing Kjellin Decl. ¶ 11). We
find Appellant’s evidence that Furedi-Milhofer’s polyamino acid
would be strongly positively or negatively charged persuasive of a
structural difference between the cited prior art calcium phosphate
particle and the claimed calcium phosphate particle. Indeed, Furedi-
Milhofer describes the coating layers being prepared by adsorption or
embedding amorphous calcium phosphate particles into the
polyamino acid film (Non-Final Act. 4; Furedi-Milhofer Abstr., ¶¶ 11,
33) which does not suggest the particular attachment structure
claimed. We agree with Appellant (App. Br. 10) that claim 10 does
not encompass attachment of a polyelectrolyte (polyamino acid) film
to a substrate and to a calcium phosphate particle as taught by Furedi-
Milhofer (where no single molecule is attached to both the substrate
and to the calcium phosphate), but, rather, requires that a single
polyelectrolyte (polyamino acid) be attached to both the particle and
the support. The latter has not been sufficiently shown by the
Examiner to support the rejection of claim 10 as anticipated by
Furedi-Milhofer.
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Appellant has, therefore, persuasively argued the Examiner’s
finding that Furedi-Milhofer discloses a polyelectrolyte coating that
inherently functions as required by claim 10 is not supported by the
record. Because we determine the facts and reasons relied on by the
Examiner are insufficient to support anticipation of claim 10 by
Furedi-Milhofer, we reverse the rejection of claim 10, as well as
claims 11–20 which depend from claim 10 either directly or
indirectly.
DECISION
Each rejection is reversed.
ORDER
REVERSED