Ex Parte Rasmussen et al

Patent Trial and Appeal Board

Feb 13, 2017

13848257 (P.T.A.B. Feb. 13, 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.
13/848,257 03/21/2013 Jerald K. Rasmussen 66252US010 1709
32692 7590 02/15/2017
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
EXAMINER
REYNOLDS, FRED H
ART UNIT PAPER NUMBER
1675
NOTIFICATION DATE DELIVERY MODE
02/15/2017 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):
LegalUSDocketing@mmm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JERALD K. RASMUSSEN, KANNAN SESHADRI,
ROBERT T. FITZSIMONS Jr., JAMES I. HEMBRE,
CATHERINE A. BOTHOF, ERIN A. SATTERWHITE,
GEORGE W. GRIESGRABER, YI HE, and LOUIS C. HADDAD1
Appeal 2015-007280
Application 13/848,257
Technology Center 1600
Before TAWEN CHANG, RYAN H. FLAX, and
DEVON ZASTROW NEWMAN Administrative Patent Judges.
FLAX, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) involving
claims directed to an article comprising an organic polymeric porous
substrate having a water soluble/dispersible aminopolymer coating. Claims
1, 2, 4, 5, 7, 10-12, 15—17, and 19-22 are on appeal as rejected under
35 U.S.C. § 103(a). We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 We understand the Real Party in Interest to be 3M Company. App. Br. 3.
Appeal 2015-007280
Application 13/848,257
STATEMENT OF THE CASE
The Specification states, “[t]he present disclosure relates to ligand-
functionalized polymers, and methods for preparing the same. The
functionalized polymers are useful in selectively binding and removing
biological materials, such as viruses, from biological samples.” Spec. 1:9-
11. The Specification further states,
ligand-functionalized polymers are provided which have
enhanced affinity, especially in high ionic strength media, for
neutral or negatively charged biological materials .... The
affinity . . . allows positively charged materials, such as
antibodies, to be purified, as they are not bound to the ligand
functional groups.
Spec. 4:17—22.
The appealed claims can be found in the Claims Appendix of the
Appeal Brief. Claim 1 is the sole independent claim, is representative, and
reads as follows:
1. An article comprising:
an organic polymeric porous substrate having a coating on a
surface thereof of a water soluble or water dispersible
aminopolymer functionalized with guanidinyl groups, wherein
the amino polymer is selected from the group consisting of
polyethylenimine, polylysine, polyaminoamides,
polyallylamine, polyvinylamine, polydimethylamine-
epichlorohydrinethylenediamine, polyaminosiloxanes and
dendrimers formed from polyamidoamine (PAMAM) and
polypropylenimine.
App. Br. 21 (Claims App’x).
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Appeal 2015-007280
Application 13/848,257
The following rejection is on appeal:
Claims 1, 2, 4, 5, 7, 10—12, 15—17, and 19-22 stand rejected under 35
U.S.C. § 103(a) overPopuri,2 Pohl,3 Smith,4 Zeng,5 Marked,6 and
Shokubai.7 Final Act. 2.
DISCUSSION
The Examiner concisely summarizes the rationale for the rejection as
follows:
it would be obvious to substitute the chitosan of Popuri et al with
the polymers of Smith et al, to provide materials with different
selectivity for different ions, which, as described by Pohl et al, is
desirable. As the polymers of Smith et al are shown to have the
desired properties by Smith et al, an artisan in this field would
attempt this substitution with a reasonable expectation of
success.
Furthermore, it would be obvious to use a microporous
membrane as described by Zeng et al rather than the PVC beads
2 Srinivasa R. Popuri et al., Adsorptive Removal of Copper and Nickel ions
from Water Using Chitosan Coated PVC Beads, 100 Bioresource Tech.
194—99 (2009) (hereinafter “Popuri”).
3 Christopher A. Pohl et al., Factors Controlling Ion-exchange Selectivity in
Suppressed ion Chromatography, 789 J. Chromatography 29-41 (1997)
(hereinafter “Pohl”).
4 U.S. Patent No. 5,766,478 (issued June 16, 1998 to Barbara F. Smith et al.)
(hereinafter “Smith”).
5 Xianfang Zeng, Membrane Chromatography: Preparation and
Applications to Protein Separation, 15 Biotechnol. Prog. 1003—19 (1999)
(hereinafter “Zeng”).
6 U.S. Patent No. 5,328,758 (issued July 12, 1994 to Craig G. Marked et al.)
(hereinafter “Marked”).
7 Nippon Shokubai, Polyethyleneimine: EPOMIN, accessible at
https://www.shokubai.co.jp/en/products/fimctionadty/epominl.html, visited
Mar. 29, 2014 (hereinafter “Shokubai”).
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Appeal 2015-007280
Application 13/848,257
of Popuri et al for the improved and more rapid performance as
described by Zeng et al. As membrane chromatography has been
subject to a great deal of experimentation, described by Zeng et
al, an artisan in this field would make this substitution with a
reasonable expectation of success. . . .
Popuri et al discuss coating of porous beads with a polymer as an
ion exchange resin. Smith et al describe polyethyleneimine
substituted with guanidinyl groups as a resin that will bind to
selected ions. Zeng et al discuss microporous membranes as the
base substrate. Thus, the combination of references meets the
limitations of claims 1,2, and 4.
Final Act. 5.
Likewise, Appellants concisely summarize their arguments as follows
1) As Pohl et al. teach the complexity of ion-exchange processes,
the many factors to be considered, and the selectivity of the
resultant ion-exchange media, Pohl et al. cannot be relied upon
to justify the willy-nilly substitution proposed by the Examiner.
2) The proposed substitution would eliminate two essential
features of Popuri et al; the chitosan and the porosity thereof.
3) The proposed substitution would yield a water-soluble
aminopolymer coating (from Smith 478) on the PVC beads of
Popuri et al., which would not be durable.
4) The guanidine functional Polymer P of Smith ’478 is shown
to be useful in binding metal oxyanions (negatively charged
metal species), while Popuri et al. is directed to positively
charged metal ions. The proposed substitution defeats another
essential element of Popuri et al.: binding metal cations.
5) Claims 10—12, 15, and 16 are directed to complexes formed
between the instant article and neutral or negatively charged
biomolecules. The proposed combination are all directed to
binding metals. There is no teaching or suggestion in the
combination of binding biomolecules, nor any reasonable
expectation of success.
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Application 13/848,257
Reply Br. 2.8 Of Appellants’ several arguments identified above, we are
persuaded by the second, but particularly, the third.
A claimed invention is not obvious over the prior art where the
“suggested combination of references would require a substantial
reconstruction and redesign of the elements shown in [the primary reference]
as well as a change in the basic principle under which the [primary
reference] construction was designed to operate.” In re Ratti, 270 F.2d 810,
813 (CCPA 1959) (a “resilient” invention not obvious over prior art required
to be “rigid” for operation). Here, the Popuri reference would require
similarly drastic modifications.
The Examiner cites Popuri as the foundation of the prior art
combination, but then proceeds to change, essentially, everything about the
reference other than its core concept of filtering using a coated substrate.
Ans. 5. Appellants argue that chitosan is an essential feature of Popuri. See,
e.g., Reply Br. 2. Whether the chitosan coating should be considered
“essential” is not clear, but it is clear that chitosan is the only coating
disclosed by the reference, which is entirely directed to the attributes of a
chitosan coating, and that the coating is not an aminopolymer as recited by
the claims at issue. See generally Popuri. For such an aminopolymer, the
Examiner turned to Smith, which disclosed filtering metals from solution
using polyethyleneimine with guanidium groups. See, e.g., Smith 10:41—56.
However, the aminopolymer of Smith is not a coating, it is a solution.
8 Appellants’ Reply Brief is not paginated; therefore, we cited thereto with
reference to pages identified by counting.
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Every embodiment disclosed by Smith utilizes a water-soluble
polymer in solution, i.e., as a “reaction solution.” Smith 1:64—2:36. The
Examiner essentially acknowledges this point when conceding, “[i]t is
agreed that just mixing the beads of Popuri with the polymers of Smith et al
will not work, as the polymers would leach off’ because they are water-
soluble and intended to be in solution. Ans. 6. The Examiner then looks to
Zeng (at 1004), which discloses cross-linking certain polymers to prevent
polymer leaching, but Zeng does not disclose this cross-linking in relation to
the water-soluble aminopolymers of the claims or of Smith, e.g.,
polyethyleneimine.
Zeng indicates that polymers, such as polyethyleneimine, were used
as coatings, but “such methods could not provide durable and stable coating
layers, because the coating could be subsequently leached off, thus adversely
affecting the product quality.” Zeng 1004. As a remedy for the problem of
polymer leaching, besides its primary disclosure directed to switching the
coating material entirely to a chitosan coating, Zeng stated that,
a membrane [of] [poly(vinylidene fluoride),
poly(tetrafluoroethylene), poly(ether sulfone), nylon, or
polycarbonate membrane] [was employed] with a mixture
containing a functional monomer (hydroxyalkyl acrylate or
methacrylate), a polymerization initiator (ammonium persulfate
or potassium persulfate), and a cross-linking agent (difimctional
acrylates, methacrylates, or acrylamides, such as tetraethylene
glycol diacrylate, glycidyl acrylate, or methylene bisacrylamide)
in attempts to overcome the obstacle. Id. The Examiner cites this disclosure
as support for the proposed simple application of cross-linking to the
polymer of Smith to produce a reliable coating for a substrate to be used in a
system of Popuri; however, the above-quoted passage does not provide such
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support. Instead, it suggests that in attempting to use certain polymers as a
coating (e.g., PVDF), one may benefit from such cross-linking, and several
additional chemical modifications.9 Zeng does not teach or suggest that the
water-soluble aminopolymers recited by the claims would benefit from such
processes; aminopolymers are not mentioned.
A prior art reference must be considered in its entirety, i.e., as
a whole, including portions that would lead away from the claimed
invention. W.L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 220
USPQ 303 (Fed. Cir. 1983), cert, denied, 469 U.S. 851 (1984). Here, Smith
and Zeng lead away from the invention. Zeng does not support the
Examiner’s rejection, but supports Appellants’ arguments and suggests that
it would not have been obvious to combine Smith’s polymer(s) with
structures/systems of Popuri.
SUMMARY
The rejection of claims 1, 2, 4, 5, 7, 10—12, 15—17, and 19-22 under
35 U.S.C. § 103(a) over Popuri, Pohl, Smith, Zeng, Marked, and Shokubai is
reversed.
REVERSED
9 See Zeng 1004, suggesting preparation of PVDF membrane as above,
“followed by radical polymerization under heating and ultraviolet or y
radiation[]. For instance, a 0.2 /im hydrophobic PVDF membrane was wet
with methanol, rinsed with water, and then placed in a mixture containing
5.25 g of 2-hydroxyprop-l-yl acrylate, 1.75 g of l-hydroxyprop-2-yl
acrylate, 1 g of tetraethyleneglycol diacrylate, 1 g of ammonium persulfate,
and 91 g of water for 10 min.”
7