Ex Parte LihmeDownload PDFBoard of Patent Appeals and InterferencesDec 8, 201110465993 (B.P.A.I. Dec. 8, 2011) Copy Citation 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 Copy with citationCopy as parenthetical citation