Ex Parte Sutton et al

Board of Patent Appeals and Interferences

Jul 1, 2011

11731421 (B.P.A.I. Jul. 1, 2011)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/731,421 03/30/2007 Mark Sutton IL-11602 7399
24981 7590 07/05/2011
Lawrence Livermore National Security, LLC
LAWRENCE LIVERMORE NATIONAL LABORATORY
PO BOX 808, L-703
LIVERMORE, CA 94551-0808
EXAMINER
THOMAS, TIMOTHY P
ART UNIT PAPER NUMBER
1628
MAIL DATE DELIVERY MODE
07/05/2011 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 MARK SUTTON, STEPHEN R. BURASTERO,
JULIE PERKINS, MARINA L. CHIARAPPA-ZUCCA,
and BRIAN D. ANDRESEN
__________

Appeal 2010-011633
Application 11/731,421
Technology Center 1600
__________

Before DONALD E. ADAMS, DEMETRA J. MILLS, and MELANIE L.
McCOLLUM, Administrative Patent Judges.

McCOLLUM, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a
beryllium remediation method. The Examiner has rejected the claims as
obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
Appeal 2010-011633
Application 11/731,421

2
STATEMENT OF THE CASE
Claims 1-4 and 7-12 are on appeal and are set forth in the CLAIMS
APPENDIX to the APPELLANTS’ BRIEF (App. Br. 3 & 24-25).1
Claims 1-4 and 7-12 stand rejected under 35 U.S.C. § 103(a) as
obvious over Sharma2 in view of Conrad,3 Alderighi,4 James,5 Chiarappa-
Zucca,6 and Kolanz7 (Ans. 4-5).
The Examiner relies on Sharma for teaching that “the efficacy of
Tiron and calcium disodium EDTA in the treatment of experimental
beryllium intoxication was investigated in rats” (id. at 5). The Examiner
finds that Sharma discloses that “beryllium causes chronic beryllium
disease” (id.). The Examiner also finds that “the chelating agents were
dosed intraperitoneally” (id. at 6). In addition, the Examiner finds that “both

1 Claims 5, 6, and 13-28 are also pending but have been withdrawn from
consideration (App. Br. 3).
2 Sharma et al., Beryllium-induced Toxicity and its Prevention by Treatment
with Chelating Agents, 20 J. APPL. TOXICOL. 313-318 (2000).
3 Conrad et al., US 4,022,606, May 10, 1977.
4 Alderighi et al., Interaction of beryllium(II) in aqueous solution with
bidentate ligands containing phosphonate groups, 285 INORGANICA
CHIMICA ACTA 39-48 (1999).
5 James et al., Bronchopulmonary Lavage (BAL) A Window of the Lungs, 9
SARCOIDOSIS 3-14 (1992).
6 Chiarappa-Zucca et al., Measurement of Beryllium in Biological Samples
by Accelerator Mass Spectrometry: Applications for Studying Chronic
Beryllium Disease, 17 CHEM. RES. TOXICOL. 1614-1620 (2004).
7 Kolanz et al., A Comparison and Critique of Historical and Current
Exposure Assessment Methods for Beryllium: Implications for Evaluating
Risk of Chronic Beryllium Disease, 16 APPL. OCCUP. ENVIRON. HYG. 593-
614 (2001).
Appeal 2010-011633
Application 11/731,421

3
chelating agents reduced the levels of beryllium concentrations in the liver,
kidney and lungs, but Tiron was more effective than EDTA” (id.).
The Examiner relies on Conrad for teaching that “phosphonic acids
serve as complex forming or sequestering agents, which form complexes
with divalent metals,” and that these compounds “include the compound of
formula (II), which is the instantly claimed compound, when R4 and R5 are
hydrogen and R6 is phenyl” (id.). The Examiner finds that, in Conrad, “the
instantly claimed compound is . . . named (1-amino-phenylmethane-
1,1-diphosphonic acid . . . )” (id.).
The Examiner relies on Alderighi for disclosing that “complexes
formed by beryllium (II) (a divalent metal ion) with ligands derived from
methylenediphosphonic acid (H4mdp) have been investigated” and for
establishing “that H4mdp would be an excellent sequestering agent for
binding to beryllium under internal pH conditions of an animal or patient”
(id. at 6-7). The Examiner concludes that “the similarity of the structure to
the claimed compound and recognition that the phosphonate groups displace
water molecules coordinated to the Be atom would lead to a similar
expectation of effective binding of the claimed compound for sequestering
Be” (id. at 7).
The Examiner relies on James for teaching that “bronchopulmonary
lavage is useful to analyze cells in the diagnosis and serially for the
management of chronic beryllium disease” and that “chronic beryllium
Disease (CBD) is a hypersensitivity disorder in which beryllium is the
specific class 11-restricted antigen” (id. at 8).
Appeal 2010-011633
Application 11/731,421

4
The Examiner relies on Chiarappa-Zucca for teaching the
“measurement of beryllium in biological samples,” that “inhalation exposure
to Be from manufacturing process can cause numerous health problems,
including the granulomatous condition chronic beryllium disease, a
debilitating, progressive and potentially fatal disease that predominantly
affects the lungs,” and that “Be samples measured include Be levels in
urine” (id.).
The Examiner relies on Kolanz for teaching that “beryllium exposure
can be by routes of inhalation, dermal uptake and ingestion” (id.).
The Examiner concludes:
It would have been obvious to one of ordinary skill in the art at
the time of the invention to administer the claimed compound
in place of one of the chelators taught by Sharma to a mouse or
a human patient with beryllium exposure and/or suffering from
Chronic Beryllium Disease, with the expectation that the
compound would chelate beryllium and excrete the beryllium
chelate, which would result in the reduction of beryllium
concentration in the mouse or patient tissues; it would also have
been obvious to use alternate administration routes of
subcutaneous, lung-lavage, or ingestion, as suggested in the art
and which are recognized routes of Be exposure, for
administration of the chelating compound. It would have been
obvious to additionally monitor the beryllium chelate in the
excretion of the patient, including in the patient’s urine, giving
the methods of the instant claims.
(Id. at 9.)
FINDINGS OF FACT
We rely on the Examiner’s fact finding as set forth in the Examiner’s
Answer. However, we set forth the following findings of fact (FF) to aid in
the understanding of our analysis:
Appeal 2010-011633
Application 11/731,421

5
1. Sharma describes an investigation of the “efficacy of Tiron and
calcium disodium EDTA in the treatment of experimental beryllium
intoxication . . . in rats” (Sharma, Abstract).
2. Sharma discloses that “Tiron was found to be significantly
more effective that CaNa2EDTA in reducing the beryllium concentration in
the liver, kidney and lungs” (id.).
3. Sharma also discloses that the chelating agents, CaNa2EDTA
and Tiron, were administered to groups 2 and 3, respectively, by i.p. (id. at
313-314).
4. In addition, Sharma discloses that “[b]eryllium causes chronic
beryllium disease (CBD)” (id. at 313).
PRINCIPLES OF LAW
“Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references. . . . [The reference] must be read, not in
isolation, but for what it fairly teaches in combination with the prior art as a
whole.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
ANALYSIS
Appellants argue that claim limitations are not taught or suggested by
Sharma (Reply Br. 4-8). However, Sharma does disclose treating beryllium
intoxication in an animal by intraperitoneal administration of a chelator, that
the treatment reduces the beryllium concentration in the lungs, and that
“[b]eryllium causes chronic beryllium disease” (FF 1-4). Moreover,
Appellants have not stated with particularity any feature(s) of claims 1-4 and
7-12 that are not taught or suggested by the combination, nor do we find any
Appeal 2010-011633
Application 11/731,421

6
claim limitations that are not suggested by the combination. Thus, we
cannot agree with Appellants’ conclusions that “there can be no combination
of the references that would show Appellants’ invention” and that “[s]ince
these claim limitations are missing from the references there could be no
combination of the references that would have [a] reasonable expectation of
success of providing Appellants’ invention” (App. Br. 21-22).
Appellants also argue that the Examiner “does not provide an
explanation of how or why the six references would or could be combined to
produce the missing claim limitations” (App. Br. 22). However, the
Examiner has provided an explanation of how and why the six references are
being combined (Ans. 5-11; see also 2/5/10 Rej. 3-9). Appellants have not
pointed to and we do not detect an error in the Examiner’s explanation.
CONCLUSION
The evidence of record supports the Examiner’s conclusion of
obviousness. We therefore affirm the obviousness rejection of claims 1-4
and 7-12.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

dm