Ex parte MANO et al.

Board of Patent Appeals and Interferences

May 29, 1998

08070434 (B.P.A.I. May. 29, 1998)

Application for patent filed June 2, 1993.1
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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte NARIYASU MANO,
YOSHIYA ODA,
TOSHINOBU MIWA,
NAOKI ASAKAWA,
YUTAKA YOSHIDA,
and TADASHI SATO
_____________
Appeal No.95-4448
Application 08/070,4341
______________
ON BRIEF
_______________
Before KIMLIN, WEIFFENBACH and WARREN, Administrative Patent Judges.
WEIFFENBACH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the decision of the examiner refusing to
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Application 08/070,434
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allow claims 1-5, the only claims remaining in the application. We affirm-in-part.
The Claimed Subject Matter
The claimed subject matter is directed to an optical isomer separating agent comprising conalbumin
bonded to a support. On page 2 of the brief, appellants state that all of the claims “stand or fall together.”
Accordingly, we will treat the claims as standing or falling with claims 1 and 3 which read as follows:
1. An optical isomer separating agent characterized by being composed of a
stationary phase comprising a support and conalbumin bonded thereto.
3. An optical isomer separating agent as set forth in Claim 1, wherein said
conalbumin is a chemically modified conalbumin.
The Prior Art References
The following prior art references are relied upon by the examiner in support of the rejections of
the claims for obviousness:
Hsu 4,980,065 Dec. 25, 1990
Miwa et al. (Miwa) 5,030,354 Jul. 9, 1991
Mikes’ Laboratory Handbook Of Chromatographic and Allied Methods (Mikes),
John Wiley and Sons, pages 402-203 (1979).
The Rejections
Claims 1-3 and 5 stand rejected under 35 U.S.C. § 103 as being unpatentable over Miwa in view
of Hsu.
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Claims 3 and 4 stand rejected under 35 U.S.C. § 103 as being unpatentable over Miwa in view
of Hsu and Mikes.
Opinion
We have carefully considered the entire record in light of the respective positions advanced by
appellants and by the examiner. In doing so, we will affirm the examiner’s rejection of claims 1-3 and 5
over Miwa and Hsu for obviousness and reverse the rejection of claims 3 and 4 for obviousness over
Miwa, Hsu and Mikes.
REJECTION OF CLAIMS 1-3 AND 5
The examiner rejected claims 1-3 and 5 under 35 U.S.C. § 103 as being unpatentable over Miwa
in view of Hsu. We will affirm this rejection. As pointed out by the examiner, Miwa discloses serum
albumin as a separating agent which is bonded to a silica gel or agarose support (col. 1, lines 57-60). Hsu
discloses that conalbumin and bovine serum albumin are known chiral resolving agents. From these
teachings we conclude that a person having ordinary skill in the art would have been motivated to substitute
conalbumin for bovine serum albumin with the reasonable expectation that the conalbumin on a silca gel or
agarose support would be an optical isomer separating agent as claimed.
The thrust of appellants’ arguments is that the combination of Miwa and Hsu is improper because
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Hsu is directed to an aqueous two phase system for separation and purification of biochemicals and optical
isomers while Miwa is directed to forming a solid phase system for
separating optical isomers. We do not find this argument persuasive because Hsu discloses that conalbumin
and bovine serum albumin have chiral resolving properties. A chemical compound and its properties are
inseparable. In re Papesch, 315 F.2d 381, 391, 137 USPQ 43, 51 (CCPA 1963). Therefore, a person
having ordinary skill in the art would have a reasonable expectation that conalbumin, like bovine serum
albumin, if bonded to a silica gel or agarose support will resolve optical isomers. Accordingly, we conclude
that the examiner has made out a prima facie case of obviousness over the combined teachings of Miwa
and Hsu, and that appellants have not presented sufficient argument or offered any objective evidence to
rebut the prima facie case.
REJECTION OF CLAIMS 3 AND 4
The examiner rejected claims 3 and 4 under 35 U.S.C. § 103 as being unpatentable over Miwa
in view of Hsu and Mikes. We will reverse this rejection because the examiner has not established a prima
facie showing that a chemically modified conalbumin would function as a separating agent. The examiner’s
reliance on Mikes is insufficient. While Mikes discloses that glutaraldehyde will cross-link its aldehyde
groups with a free amido group present in polyacrylamide and that certain polyacetals can bind proteins
through amino groups, claim 4 requires the chemically modified conalbumin to be linked with
glutaraldehyde. None of the references relied upon by the examiner shows a chemically modified
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conalbumin, let alone a chemically modified conalbumin which functions as a chiral resolving agent.
Moreover, the examiner has not explained why a person having ordinary
skill in the art would have been motivated by the teachings of the prior art to chemically modify conalbumin.
In addition, the examiner is relying on the prior art teachings of Miwa to equate conalbumin and bovine
serum albumin as equivalent chiral resolving agents on silica gel or agarose carriers. Since neither of these
carriers have been shown by the examiner to have free amido groups, it would appear that it would
impossible for glutaraldehyde to function as a cross-linking agent as taught by Mikes to bond a chemically
modified conalbumin to the carriers as suggested by the examiner. For these reasons, the examiner’s
rejection is reversed.
Other Issues
In the event of further prosecution of this application, the examiner should consider the following
issues under 35 U.S.C. § 112, second paragraph: whether the conalbumin as defined in claim 3 has
antecedent support in claim 1 and whether the chemically modified conalbumin has been properly defined
in claim 4.
1. On pages 2 and 3 of the specification and in claim 5, appellants define the optical isomer
separating agent as being “conalbumin or chemically modified conalbumin.” On page 4 of the specification,
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appellants define “chemically modified conalbumin” in the present invention as meaning a “conalbumin which
is partially chemically converted by cross-linkage with glutaraldehyde, conversion into diol, acylation or
modification with glutaraldehyde followed by reduction.” Appellants do not appear to consider conalbumin
as being generic and including chemically modified conalbumin, but a different compound prepared from
conalbumin. However, claim 3 states “wherein
said conalbumin [recited in claim 1] is a chemically modified conalbumin.” This would imply that the
chemically modified conalbumin is a specie of conalbumin which appellants’ disclosure would appear to
indicate otherwise.
2. Claim 4 specifies that “the chemically modified conalbumin is cross-linked with
glutaraldehyde, reduced and cross-linked with glutaraldehyde, converted into a diol, or aceylated.” This
recitation is inconsistent with the specification which states that conalbumin, and not the chemically modified
conalbumin, is modified by cross-linking with glutaraldehyde, converted into a diol, or aceylated. In
addition, the specification states that conalbumin is modified with glutaraldehyde followed by reduction as
opposed to the apparent claimed steps of reduction followed by cross-linking.
Conclusion
For the reasons given above, the rejection of claims 1-3 and 5 under 35 U.S.C. § 103 as being
unpatentable over Miwa and Hsu is affirmed while the rejection of claims 3 and 4 under 35 U.S.C. § 103
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Miwa, Hsu and Mikes is reversed. Accordingly, the decision of the examiner is affirmed-in-part.
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No time period for taking any subsequent action in connection with this appeal may be extended
under 37 CFR 1.136(a).
AFFIRMED-IN-PART
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CAMERON WEIFFENBACH ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
CHARLES F. WARREN )
Administrative Patent Judge )
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