Ex Parte Lihme

Board of Patent Appeals and Interferences

Dec 8, 2011

10465993 (B.P.A.I. Dec. 8, 2011)

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.
10/465,993 10/17/2003 Allan Otto Fog Lihme 036179-0110 9547
22428 7590 12/08/2011
FOLEY AND LARDNER LLP
SUITE 500
3000 K STREET NW
WASHINGTON, DC 20007
EXAMINER
DEAK, LESLIE R
ART UNIT PAPER NUMBER
3761
MAIL DATE DELIVERY MODE
12/08/2011 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 ALLAN OTTO FOG LIHME
________________

Appeal 2010-001316
Application 10/465,993
Technology Center 3700
________________

Before STEVEN D.A. McCARTHY, WILLIAM V. SAINDON and
MICHAEL L. HOELTER, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-001316
Application 10/465,993

2
STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134(a), from a final
rejection of claims 33-40, 42, 43, 46-67, 72 and 100-104. Claims 1-32, 41,
44, 45, 68-71 and 73-99 have been canceled. We have jurisdiction under
35 U.S.C. § 6(b). We REVERSE.

The Claimed Subject Matter
The claimed subject matter is directed to an upward-flowing stabilized
fluidized bed having adsorbent particles of different sizes and densities
wherein the larger or most dense particles are closer to the bottom of the bed
while the smaller or less dense particles are closer to the top of the bed.
Independent claim 33 is illustrative of the claims on appeal and is
reproduced below:
33. A method for extracorporeal capturing of specific bio-
macromolecular entities from extracellular body fluids, said method
comprising the steps of:
(a) providing the extracellular body fluid which has been
obtained from a mammal;
(b) contacting the obtained extracellular body fluid with a
stabilized fluidized bed of adsorption particles characterized by
having a specific affinity for the specific bio-macromolecular entities;
and
(c) optionally reducing the effect of an anticoagulant, added to
the extracellular body fluid, before the treated extracellular body
fluids are in condition to be reinfused into the mammal,
wherein steps (a) to (c) are performed in a continuous process
and wherein the larger or most dense adsorbent particles of the
stabilized fluidized bed are closer to the bottom of the bed and the
smaller or less dense adsorbent particles of the stabilized fluidized bed
are closer to the top of the bed in an upward-flow system.

Appeal 2010-001316
Application 10/465,993

3
References Relied on by the Examiner
Freed US 4,846,786 Jul. 11, 1989
Carlsson US 5,522,993 Jun. 4, 1996
Schwartz US 5,759,793 Jun. 2, 1998
Gawryl US 5,808,011 Sep. 15, 1998
Flickinger US 6,036,861 Mar. 14, 2000
Bot US 6,630,169 B1 Oct. 7, 2003
Kopf US 6,946,075 B2 Sep. 20, 2005
Library 4 Science, Chromatography section, http://www.chromatography-
online.org/topcs/theoretical/plates.html; printed 12 May 2006 (the
“LIBRARY 4 SCIENCE disclosure”).

The Rejections on Appeal
1. Claims 33, 34, 36-40, 48, 49, 51-53, 55-59, 67, 72, 100, 101, 103, and
104 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Freed
and Carlsson (Ans. 3).
2. Claims 35, 43, 50, and 102 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over1 Freed, Carlsson and Flickinger (Ans. 6).
3. Claims 46 and 47 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Freed, Carlsson and Schwartz (Ans. 7).
4. Claim 42 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Freed, Carlsson and the Library 4 Science disclosure (Ans. 8).
5. Claims 54, 62, 63, and 66 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Freed, Carlsson and Kopf (Ans. 8).

1 The Examiner employs the term “anticipated by” in this rejection but
in view of the reference to § 103(a) and the numerous citations listed, we
understand this to be a typographical error and that the Examiner really
meant “unpatentable over” which we have employed instead. Appellant
understands this rejection in the same manner as we do (App. Br. 4). This
typographical error by the Examiner also occurs in all the remaining
rejections by the Examiner (i.e., the following rejections 3-7).
Appeal 2010-001316
Application 10/465,993

4
6. Claims 60 and 61 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Freed, Carlsson and Bot (Ans. 9).
7. Claims 64 and 65 are rejected under 35 U.S.C. § 103(a) as being
anticipated by Freed, Carlsson and Gawryl (Ans. 10).

ISSUES
[1] Has the Examiner provided sufficient evidence and technical
reasoning to show that the combination of Freed and Carlsson teaches a
stabilized fluidized bed as this claim term is defined and [2] would this
combination change the principal of operation of Freed?

ANALYSIS
The rejections of claims 33, 34, 36-40, 48, 49, 51-53, 55-59, 67, 72,
100, 101, 103, and 104 over Freed and Carlsson
Each of the three independent claims on appeal (i.e., claims 33, 36 and
67) require an upflow “stabilized fluidized bed” where the more dense
particles are closer to the bottom of the bed and the less dense particles are
closer to the top of the bed.
Appellant’s Specification distinguishes between a “fluidized bed” and
a “stabilized fluidized bed” by separately defining both terms (Spec. 9:15-17
and 9:30-37.) A “stabilized fluidized bed” is “a fluidized bed in which there
is a low degree of back-mixing of the absorbent particles as a consequence
of the movement of each particle being restricted to move within a limited
volume of the total bed volume. This means that each particle is [sic] has a
low extent of axial dispersion and…the absence of back-mixing precludes
mixing of mutually heterogenous zones of the bed” (Spec. 9:30-37, see also
16:27-31 where this definition is repeated and also 30:12-35 “the lack of
Appeal 2010-001316
Application 10/465,993

5
visual channeling and back mixing was taken as an indication of the bed
stability” and “no back-mixing and channeling was observed anywhere in
the entire stabilized fluidized bed” and further “the use of a magnifying
glass made it possible to ascertain the bed height as well as the absence of
channeling in the bed.”) According to the above, we understand the claim
term “a stabilized fluidized bed” to be a fluidized bed having a low degree
of (e.g., no apparent or visible) particle back-mixing or channeling.
The Examiner states that “Freed discloses the method as claimed
by applicant” but that “Freed fails to disclose that the larger or densest
absorbent particles are close to the bottom of the bed while the smaller or
less dense particles are near the top of the bed in an upward flow system”
(Ans. 3-4). The Examiner states that “creation of stabilized fluidized beds
with such a density distribution is widely-known in the art of fluidized bed
separation, as taught by Carlsson” (Ans. 4). “Taken together,” the Examiner
continues, “the references reasonably suggest to one having ordinary skill
in the art at the time of invention the advantages of taking affinity particle
density into account when creating a fluidized bed in order to create a
stabilized fluidized bed that limits back-mixing, as taught by Carlsson”
(Ans. 4).
Appellant contends that it would not have been obvious “to modify
Freed to employ a ‘stabilized fluidized bed,’ as recited” and more
specifically that “Freed not only teaches ‘back-mixing’ in its reactor but also
indicated ‘back-mixing’ to be a necessary result from the ‘general theory for
operating [Freed’s] reactor” (App. Br. 6, Reply Br. 2 citing Freed 3:40-45).
Appellant also contends that the combination of Freed and Carlsson “would
alter Freed’s principle of operation” (App. Br. 6, 8-9).
Appeal 2010-001316
Application 10/465,993

6
The Examiner states that “Applicant does not disclose or claim,
however, any structural apparatus that limits” the movement of the particles
in the fluidized bed (Ans. 11). As discussed supra, the limitation of particle
movement is found in the definition of “a stabilized fluidized bed” which is
in contrast to a fluidized bed that is not stabilized, such as that taught by
Freed (Freed 2:45-53, see also Reply Br. 3). The Examiner acknowledges
that Freed discloses back-mixing and that Freed’s “particles form counter-
rotating flow cells within the chamber” (see Freed’s Fig. 1C and flow cells
26) but the Examiner states that Freed “does not disclose or suggest large-
degree back-mixing” or “significant axial dispersion” (Ans. 11) (emphasis
added). The Examiner further states that Freed’s counter-rotating flow cells
“suggest that the particles are contained within their individual flow cells,
limiting their movement within the chamber to a small area” (Ans. 11).
We are not persuaded by the Examiner’s statements regarding Freed’s
lack of a large degree or a significant amount of particle movement, instead,
what matters for the purpose of our analysis is the fact that particle
movement and flow cells clearly and readily occur in Freed, and, more
importantly, that Freed specifically teaches, encourages and promotes such
particle movement and the creation of flow cells throughout the chamber by
oscillating the chamber (Freed 2:45-53, 3:40-45, 4:9-15). Appellant has
defined the claim term “a stabilized fluidized bed” as being a bed that has
negligible, if any, back-mixing or axial dispersion of the particles and as
such, Freed does not teach a “stabilized fluidized bed” as this term is
defined. Consequently, the Examiner’s combination of Freed with
Carlsson’s particle density distribution would not alter Freed’s creation of
counter-rotating flow cells (see Freed 4:9-15 “This torsional oscillation
Appeal 2010-001316
Application 10/465,993

7
produces counterrotating secondary flow cells 26 which keep the particles
18 evenly suspended within the reactor chamber 10, preventing them
from…settling to the bottom via gravity” (emphasis added)).
Furthermore, if the combination of Carlsson’s particle distribution
were to eliminate Freed’s counter-rotating flow cells in an effort to make
Freed’s bed a stabilized fluidized bed, then the operation of Freed would be
significantly altered because the creation of these flow cells is the “general
theory” behind why Freed’s chamber is oscillated (see Freed 3:40-45, “The
general theory for operating the reactor is to shake the mixture of particles
within the solution, while passing the solution through the reactor chamber,
in such a manner as to form pairs of counterrotating flow cells within the
chamber, thereby maintaining the particles in a suspended state,” see also
Reply Br. 2). Our reviewing court has held that if a proposed modification
or combination of the prior art would change the principle of operation of
the prior art invention being modified, then the teachings of the references
likely are not sufficient to render the claims prima facie obvious (see In re
Ratti, 270 F.2d 810 (CCPA 1959)).
Accordingly, we are not persuaded by the Examiner’s position that
it would have been obvious for the combination of Freed and Carlsson “to
create a stabilized fluidized bed that limits back-mixing” and we agree with
Appellant that the combination of Freed and Carlsson “would alter Freed’s
principle of operation” (Ans. 4; App. Br. 8-9). In view of the record
presented, we reverse the Examiner’s rejection of claims 33, 34, 36-40, 48,
49, 51-53, 55-59, 67, 72, 100, 101, 103, and 104.
Appeal 2010-001316
Application 10/465,993

8
The rejections of claims 35, 42, 43, 46, 47, 50, 54, 60-66 and 102 over
Freed and Carlsson in separate combination with each of Flickinger,
Schwartz, the Library 4 Science disclosure, Kopf, Bot and Gawryl
Appellant does not object to the Examiner’s reliance upon each of
these further references in addition to the primary combination of Freed and
Carlsson (App. Br. 10-13). Instead, in each rejection, Appellant states that
the “secondary reference relied upon does nothing to remedy these
deficiencies and is not intended to” (App. Br. 10-13). The deficiencies
referred to by Appellant are the deficiencies of the combination of Freed and
Carlsson discussed above. Each of these additional references were cited by
the Examiner to address the further limitations set forth in these dependent
claims and were not cited by the Examiner to overcome the deficiencies of
the combination of Freed and Carlsson. Accordingly, for the reasons set
forth above, we reverse the Examiner’s rejection of claims 35, 42, 43, 46,
47, 50, 54, 60-66 and 102.

CONCLUSIONS OF LAW
The Examiner has not provided sufficient evidence and technical
reasoning to show that the combination of Freed and Carlsson teaches a
stabilized fluidized bed as this claim term is defined and this combination
would change the principal of operation of Freed.

DECISION
The Examiner’s rejection of claims 33-40, 42, 43, 46-67, 72 and 100-
104 is reversed.

REVERSED
Appeal 2010-001316
Application 10/465,993

9

JRG