Craig Aurand et al.

Patent Trials and Appeals Board

Oct 14, 2020

12019445 - (D) (P.T.A.B. Oct. 14, 2020)

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.
12/019,445 01/24/2008 Craig Aurand SUP066NP 9999
104659 7590 10/14/2020
Sigma-Aldrich Co. LLC
C/O EMD Millipore Corporation
Patents Department
400 Summit Drive
Burlington, MA 01803
EXAMINER
FRITCHMAN, REBECCA M
ART UNIT PAPER NUMBER
1797
NOTIFICATION DATE DELIVERY MODE
10/14/2020 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):
MerckKGaA_PAIR@firsttofile.com
milliporesigma.patents@milliporesigma.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CRAIG AURAND, CHARLES MI, PAUL ROSS, AN TRINH,
HILLEL BRANDES, and MICHAEL YE
Appeal 2020-000120
Application 12/019,445
Technology Center 1700
Before JEFFREY B. ROBERTSON, BRIAN D. RANGE, and
JANE E. INGLESE, Administrative Patent Judges.
ROBERTSON, Administrative Patent Judge.
DECISION ON APPEAL1

1 This Decision includes citations to the following documents: Specification
filed January 24, 2008 (“Spec.”); Final Office Action mailed May 30, 2018
(“Final Act.”); Appeal Brief filed April 1, 2019 (“Appeal Br.”); Examiner’s
Answer mailed July 25, 2019 (“Ans.”); and Reply Brief filed September 25,
2019 (“Reply Br.”).
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Application 12/019,445

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STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–8 and 10–13.3 Appeal Br. 15. We
have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
CLAIMED SUBJECT MATTER
Appellant states the invention relates to a solid phase extraction
particle and solid phase extraction techniques of sample preparation for
removal of proteins and phosphate-containing compounds. Spec. ¶ 2. Claim
1, reproduced below, is illustrative of the claimed subject matter (Appeal
Br., Claims Appendix 24):
1. A solid phase extraction (SPE) media for the selective
removal of phosphate-containing compounds from a
biological composition prior to bioanalytical analysis, the
SPE media consisting of:
a. silica substrate particles; and,
b. a transition metal oxide selected from the group consisting
of zirconia and titania bonded onto the substrate particles;
wherein the transition metal is bonded onto the substrate
through a direct bridging bond with the silica substrate particles,
and wherein the SPE media bonds to the phosphate-containing
compounds using a Lewis-acid interaction.

2 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies SIGMA-ALDRICH CO. LLC as the
real party in interest. Appeal Br. 3.
3 Claims 9 and 14–71 have been cancelled. See Appeal Br. 7.
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Application 12/019,445

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Independent claim 10 also stands rejected, and is similarly directed to
a solid phase extraction media. Id. at 25.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Liu et al.
hereinafter “Liu”
US 7,402,243 B2 July 22, 2008
Luca US 2004/0026324 A1 February 12, 2004
Wilson et al.
hereinafter “Wilson”
US 2009/0062234 A1 March 5, 2009
Hatton et al.
hereinafter “Hatton”
US 2009/0130412 A1 May 21, 2009
REJECTIONS
1. The Examiner rejected claims 1 and 2 under 35 U.S.C. § 103(a)
(pre-AIA) as unpatentable over Wilson, Hatton, and Luca. Final
Act. 2–5.
2. The Examiner rejected claims 3–8 and 10–13 under 35 U.S.C.
§ 103(a) (pre-AIA) as unpatentable over Wilson, Hatton, Luca, and
Liu. Final Act. 5–6.

OPINION
Rejection 1
We limit our discussion to claim 1, which is sufficient to dispose of
this rejection.

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The Examiner’s Rejection
In rejecting claim 1 as unpatentable over Wilson, Hatton, and Luca,
the Examiner found Wilson discloses compounds that can be used for solid
phase extraction (SPE). Final Act. 2. The Examiner found Wilson discloses
binding a transition metal oxide to silica support through bridging bond,
which is an oxo-metal bridging system. Id. The Examiner found Wilson
does not disclose attachment/bridging of particulate zirconia or titania. Id. at
3. The Examiner found Hatton discloses chemically transforming bridging
organic groups in metal oxide materials containing bridging organic groups,
as well as transition metals having direct bridging bonds with silica
substrates forming a continuous layer of particles aggregated into a layer.
Id. The Examiner determined it would have been obvious to use bridging
bonding of particulate groups as disclosed in Hatton in the composition of
Wilson to produce silica materials with controlled porosity, biological
sensing, drug delivery, and nanocomposite design. Id.
The Examiner found Luca discloses forming a film of a transitional
metal mesophase on a silica substrate by dip-coating or by grafting, which is
the same method used by Appellant. Id. at 4. The Examiner determined it
would have been obvious to graft transitional metal mesophase films onto
the substrate surface as disclosed in Luca in the method of Hatton and
Wilson in order to improve the processes for preparation of transition metal
oxide mesophase compositions. Id.; Ans. 15.

Appellant’s contentions
Appellant argues, inter alia, that the prior art does not teach or suggest
solid phase extraction media consisting of silica substrate particles and a
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transitional metal oxide. Appeal Br. 12. Appellant contends Wilson
discloses organopolysiloxanes including organic groups. Id. at 12–14.
Likewise, Appellant argues Hatton discloses an organic group as an integral
and essential component, where Hatton discloses transforming bridging
organic groups to terminal groups. Id. at 14–16. Appellant argues that the
transitional phrase “consisting of” excludes the organic groups that are
necessarily present in Wilson and Hatton. Reply Br. 2–4. Appellant argues
Luca does not overcome the deficiencies of Wilson and Hatton and Luca
does not disclose the conditions necessary to produce a transition metal
bonded onto a silica substrate through a direct bridging bond. Id. at 4–5;
Appeal Br. 18–20.

Discussion
We are persuaded by Appellant’s arguments. The Examiner’s
position is that there is nothing compositionally different between the claims
and the combined prior art. See Ans. 9–11, 14. However, claim 1 expressly
recites “the SPE media consisting of . . . silica substrate particles; and . . . a
transition metal oxide selected from the group consisting of zirconia and
titania bonded onto the substrate particles” (emphasis added). Thus,
although claim 1 additionally recites “the transition metal is bonded onto the
substrate through a direct bridging bond with the silica substrate particles,”
claim 1 is closed to the presence of additional organic substituent
groups. In re Gray, 53 F.2d 520, 521 (CCPA 1931) (holding that “consists”
limits a claim to recited elements “without other elements”);
MPEP § 2111.03.
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Wilson expressly discloses organopolysiloxanes, which include at
least one organic group. Wilson ¶¶ 1, 12–13. That is, Wilson discloses
Formula I including structural unit “B”, which is “always present” and
includes a “Q” group bonded to a silicon atom through an ethylene group
where “Q is selected from CXYR1 and RC(Z).” Id. at ¶¶ 12–13. Thus,
although the Examiner relies on the “known oxo metal bridging systems
where the metal is zirconium” in Wilson for the zirconia recited in claim 1
(see Final Act. 2; Ans. 3–4;4 Wilson ¶ 13), which Wilson discloses saturate
“free valences of the silicate oxygen atoms” in the organopolysiloxanes
disclosed therein (Wilson ¶¶ 12, 13), the Examiner does not sufficiently
explain how or why the organopolysiloxanes in Wilson would be modified
to omit the required organic group as would be necessary in order to satisfy
the transitional phrase “consisting of” recited in claim 1.
In this regard, although Hatton discloses chemically transforming
bridging organic groups to bridging oxide groups, the method disclosed in
Hatton results in the presence of terminal organic groups. Hatton ¶¶ 75, 79.
Thus, to the extent the Examiner relies on Hatton for transforming bridging
organic groups (see Ans. 11), the Examiner does not sufficiently explain
how such a method would be used in conjunction with Wilson such that the
resulting material would be devoid of organic groups.
Regarding Luca, although the Examiner states that Luca is the “best
reference used” (Ans. 14), the Examiner’s statement is in the context of
forming transitional metal oxide bonds to substrates (Ans. 14–16), and does

4 Although the Examiner refers to paragraph 12 of Wilson, the language the
Examiner refers to actually appears in paragraph 13 of Wilson.
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not account for the organic groups present in Wilson, or Wilson in view of
Hatton.
As a result, we reverse the Examiner’s rejection of claims 1 and 2.

Rejection 2
As to Rejection 2, the Examiner relies on similar findings and
rationale with respect to Wilson, Hatton, and Luca as discussed above,
additionally citing Liu for particular particle sizes recited in claims 3–8 and
10–13. Final Act. 5–6.
Accordingly, we reverse the Examiner’s rejection of claims 3–8 and
10–13 for similar reasons as discussed above with respect to Rejection 1.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 2 103(a) Wilson, Hatton,
Luca
1, 2
3–8, 10–13 103(a) Wilson, Hatton,
Luca, Liu
3–8, 10–13
Overall
Outcome
1–8, 10–13

REVERSED