Ex Parte Giuseppin et al

Patent Trial and Appeal Board

Nov 30, 2018

14413058 (P.T.A.B. Nov. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/413,058 01/06/2015 Marco Luigi Federico Giuseppin
23869 7590 11/30/2018
Hoffmann & Baron LLP
6900 Jericho Turnpike
Syosset, NY 11791
UNITED ST A TES OF AMERICA
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
294-465 PCT/US/RCE 7622
EXAMINER
GWARTNEY, ELIZABETH A
ART UNIT PAPER NUMBER
1791
MAIL DATE DELIVERY MODE
11/30/2018 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 PATENT TRIAL AND APPEAL BOARD
Ex parte MARCO LUIGI FEDERICO GIUSEPPIN,
MARC CHRISTIAAN LAUS, and JAN SCHIPPER
Appeal2018-002933
Application 14/413,058
Technology Center 1700
Before JEFFREY B. ROBERTSON, WESLEY B. DERRICK, and
AVEL YN M. ROSS, Administrative Patent Judges.
ROBERTSON, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-12. (Appeal Br. 2-3.) We have jurisdiction
pursuant to 35 U.S.C. § 6(b ).
We AFFIRM.
1 This Decision includes citations to the following documents:
Specification filed January 6, 2015 ("Spec."); Final Office Action dated
January 24, 2017 ("Final Act."); Appeal Brief filed August 16, 2017
("Appeal Br."); Examiner's Answer dated November 27, 2017 ("Ans."); and
Reply Brief filed January 29, 2018 ("Reply Br.").
2 Appellant/ Applicant is Cooperatie A VEBE, U.A., which is identified as
the real party in interest. (Appeal Br. 3.)
Appeal2018-002933
Application 14/413,058
THE INVENTION
Appellant states that the invention relates to a method for the isolation
of a native potato protein fraction. (Spec. 3, 11. 11-12.)
Claim 1, the only independent claim on appeal, is reproduced below
from the Claims Appendix, and recites:
1. A process for the isolation of a native potato protein
fraction from potato juice, comprising the steps of
a) adjusting the pH of the potato juice to 4.0-6.5;
b) contacting the potato juice with a functionalised
support carrier having pores wherein at least 90 % of the pores
have a pore diameter between 10 and 200 nm, and wherein the
carrier is functionalised with a hydrophobic, mixed-mode
ligand having a pKa of 2.5 - 5 which ligand is coupled to the
carrier through an S- or 0-atom;
c) desorbing the potato protein fraction from the
functionalised support carrier by elution; and
d) optionally concentrating and/or drying the potato
protein fraction.
(Appeal Br. 16, Claims Appendix.)
REJECTIONS
The Examiner rejected claim 12 under 35 U.S.C. § 101 as being
directed to a judicial exception (i.e., a law of nature, a natural phenomenon,
or an abstract idea) without significantly more. (Final Act. 2.)
Appellant does not set forth any substantive argument with respect to
this rejection, and proposes to cancel claim 12. 3 (Appeal Br. 3, 6.)
3 Appellant proposed to cancel claim 12 in an Amendment filed March 24,
201 7, which was denied entry by the Examiner in the Advisory Action dated
April 10, 2017.
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Appellant's bare traversal does not apprise us of error. Accordingly, we
summarily affirm the Examiner's rejection of claim 12. See 37 C.F.R.
§ 4I.37(c)(iv) ("The arguments shall explain why the examiner erred as to
each ground of rejection contested by appellant."); cf In re Lovin, 652 F.3d
1349, 1356-57 (Fed. Cir. 2011) ("[A] mere recitation of the claim elements
and a naked assertion that the corresponding elements were not found in the
prior art" waives any argument with respect to those claim elements).
The Examiner rejected claims 1-12 under 35 U.S.C. § 103 as obvious
over Giuseppin et al. (WO 2008/069650 Al, published June 12, 2008,
"Giuseppin"), Hansen et al. (US 2007/0092960 Al, published Apr. 26, 2007,
U.S. Equivalent to WO 2004/082397 Al, published Sept. 30, 2004,
incorporated by reference into Giuseppin, "Hansen"), and Lihme et al. (WO
98/08603, published Mar. 5, 1998, incorporated by reference into Hansen,
"Lihme"). (Ans. 3-5; Final Act. 3-5.)
Appellant presents arguments for claim 1 on appeal. (See Appeal Br.
10.) Accordingly, we select claim 1 as representative, and decide the appeal
on claim 1 alone. 37 C.F.R. § 4I.37(c)(l)(iv).
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)
cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
("[I]t has long been the Board's practice to require an applicant to identify
the alleged error in the examiner's rejections.")).
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Application 14/413,058
ISSUE
The Examiner found that Giuseppin discloses a method of isolating
native potato protein fractions including the use of expanded bed adsorption
chromatography, where the column materials include mixed-mode
adsorbents and ion exchange adsorbents. (Ans. 3--4.) The Examiner found
that Hansen discloses adsorbents that carry a ligand to increase adsorption
strength. (Ans. 4.) The Examiner found that Lihme discloses that the ligand
is attached to the adsorbent through a spacer that links through an oxygen or
sulfur atom. (Ans. 4, citing Lihme, 16:21-17: 12.)
Appellant argues that the claimed invention cannot be obvious
because the prior art does not teach the claimed method and results thereof
are necessarily present. (Appeal Br. 10.) Appellant argues that the claimed
combination provides a significant improvement over other combinations,
which would not have been obvious to one of ordinary skill in the art.
(Appeal Br. 10-11.) Appellant argues that Giuseppin requires a multi-step
process and that the presently claimed method is much less cumbersome,
less expensive, and much quicker. (Appeal Br. 11.) Appellant contends that
Lihme does not disclose coupling of a ligand to a carrier through a sulfur
atom, and that Lihme does not disclose that coupling of a ligand to a support
carrier through a sulfur atom or an oxygen atom leads to higher resistance to
fouling. (Appeal Br. 11-13.) Appellant argues that the coupling of a ligand
through sulfur and oxygen atoms has surprisingly led to unexpected benefits
with respect to fouling and efficient isolation of potato protein. (Appeal Br.
13-14.) Appellant argues that Lihme is directed to isolation of
immunoglobulins, such that one of ordinary skill in the art would not look to
Lihme for techniques for the isolation of potato protein. (Appeal Br. 14.)
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Appellant argues that Hansen cannot be combined with Lihme or Giuseppin,
because Hansen discloses that the process disclosed therein should be
operated at 50°C, and that lower temperatures lead to lower productivity,
where it is well known that at least some fraction of potato protein can be
thermally labile and may degrade at 50°C. (Appeal Br. 14--15.)
The dispositive issue is:
Has Appellant identified reversible error in the Examiner's
determination that the method recited in claim 1 would have been obvious
over the combination of Giuseppin, Hansen, and Lihme?
DISCUSSION
We are not persuaded by Appellant's argument regarding the multi-
step process disclosed in Giuseppin. As the Examiner correctly points out,
claim 1 is directed to a process "comprising" a series of steps. (Ans. 6.)
Thus, claim 1 does not exclude any additional steps that may be disclosed in
Giuseppin beyond the steps recited in claim 1.
As to Appellant's argument that Lihme does not disclose a ligand that
is coupled to the carrier through a sulfur atom as recited in claim 1, we are
not persuaded. We observe that the Specification states that such an
arrangement "means the ligand is coupled to the carrier through a coupling
group containing an Sor O atom in the backbone." (Spec. 14, 11. 21-24.)
The Examiner found that Lihme discloses ligands attached through a spacer
to the adsorbent where the spacer is a short chain aliphatic biradical or thiol.
(Ans. 4, citing Lihme, p. 16, 1. 21-p. 17, 1. 12.) Appellant contends that
Lihme's disclosure of spacer groups containing thiols is only to allow the
thiol group to interact through hydrogen bonding, electrostatic bonding or
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repulsion, charge transfer or the like, such that one of ordinary skill in the art
would have understood that the spacers of Lihme are not coupled through a
sulfur atom. (Appeal Br. 11-13.)
We do not agree with Appellant's interpretation of Lihme. Lihme
discloses (p. 16, 11. 30-34, emphasis added)
spacer SP 1 is an integral part of the functional group
effecting the binding characteristics, i.e., the ligand, and this
will be especially significant if the spacer SP 1 comprises
functionally active sites or substituents such as thiols, ...
sulfone groups, ... or other groups able to interact through
hydrogen bonding, electrostatic bonding or repulsion, charge
transfer or the like.
Thus, Lihme discloses that the spacer is an "integral part" of the
functional group and makes clear that sulfur containing thiol group may be a
"functionally active site" within the spacer group, or may be a "substituent."
In addition, Lihme discloses examples of several spacer groups with oxygen
heteroatoms as aliphatic biradicals in the backbone (p. 17, 11. 9-12), which
provide evidence that one of ordinary skill in the art would have understood
that ligands may be coupled to the carrier through a sulfur atom or an
oxygen atom as recited in claim 1. Therefore, we agree with the Examiner
that Appellant's narrow reading of Lihme is not supported by Lihme's
disclosure. (See Ans. 6-7.) For similar reasons, we disagree with
Appellant's assertion that Lihme's disclosure of coupling through an S-atom
is "buried in one paragraph of an 80 page document." (Appeal Br. 12.) In
this regard, we observe that Lihme also discloses the use of divinyl sulfone,
which provides an included sulfur in the backbone of the spacer. (Lihme, p.
16, 11. 3, 10, 18, p. 17, 1. 5.)
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As to Appellant's arguments related to higher resistance to fouling as
a result of the use of sulfur or oxygen in coupling the ligand to the support
carrier, we first observe that the claims are silent as to any resistance of the
ligand to fouling. The Examiner found that because the combination of prior
art disclosed ligands coupled to the support carrier, "intrinsically the ligands
would be capable of resisting some degree of fouling by potato juice." (Ans.
5.) Thus, we are not persuaded that the Examiner has not articulated any
rationale as to why the antifouling properties argued by Appellant would
have been met by the prior art. (Appeal Br. 10; Reply Br. 1-2.)
Regarding the alleged unexpected and surprising benefits with respect
to resistance to fouling, again, the claims do not recite any anti-fouling
properties or relative improvement thereof. While Appellant points to Table
5 to show higher resistance to fouling using oxygen-coupled or sulfur-
coupled groups over nitrogen-containing groups (Appeal Br. 13-14), we
have not been directed to sufficient evidence of record that such
improvements would have been surprising or unexpected. It is not clear
from the Specification why the comparisons to nitrogen ligands are
sufficient to show unexpected results in view of the disclosure in the prior
art, which as discussed above, also discloses the presence of sulfur and
oxygen atoms in coupling ligands to adsorbents. "[W]hen unexpected
results are used as evidence of nonobviousness, the results must be shown to
be unexpected compared with the closest prior art." In re Baxter Travenol
Labs., 952 F.2d 388, 392 (Fed. Cir. 1991).
In this regard, we emphasize that attorney argument does not take the
place of evidence. Our reviewing court has emphasized repeatedly that "[i]t
is well settled that unexpected results must be established by factual
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evidence. Mere argument or conclusory statements in the specification does
not suffice." In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984), quoted
with approval in In re Soni, 54 F.3d 746, 750 (Fed. Cir. 1995).
We are not persuaded by Appellant's arguments that one of ordinary
skill in the art would not have turned to Hansen and Lihme, because Lihme
is directed to separation and purification of immunoglobulins, which is non-
analogous art, and Hansen discloses process temperatures, which may result
in degradation of potato protein. (Appeal Br. 12, 14--15.)
As to Hansen, as the Examiner correctly explains, Giuseppin
acknowledges the difference in process temperatures between those
disclosed in Hansen and those used for potato protein isolation and indicates
that the process temperatures may be adjusted appropriately for stability
reasons. (Ans. 8-9; Giuseppin, p. 6, 11. 11-14.) Thus, Appellant's argument
is not persuasive.
Regarding Lihme, we are not persuaded that Lihme is non-analogous
art. Lihme is expressly referenced in Hansen for expansion bed technology
and for derivatization and specific ligands. (Hansen ,r,r 53, 98.) Giuseppin,
which expressly discloses potato protein isolation, specifically incorporates
Hansen by reference for expanded bed adsorption chromatography.
(Giuseppin, p. 1, 11. 3-5, p. 6, 11. 9-11.) Thus, because, like Giuseppin, the
present claims are also directed to potato protein isolation, we are of the
view that the disclosure of Lihme would have been considered to be
reasonably pertinent to the problem with which the inventor was involved.
See In re ICON Health and Fitness, 496 F.3d 1374, 1379-80 (Fed Cir. 2007)
(quoting In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992)) ("'A reference is
reasonably pertinent if, even though it may be in a different field from that
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of the inventor's endeavor, it is one which, because of the matter with which
it deals, logically would have commended itself to an inventor's attention in
considering his problem."').
Accordingly, we affirm the Examiner's rejection of claim 1, as well as
the Examiner's rejection of claims 2-12, which depend from claim 1.
DECISION
We affirm the Examiner's decision rejecting claims 1-12.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l ).
AFFIRMED
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