Ex Parte KIM et al

Patent Trial and Appeal Board

Oct 2, 2018

14242036 (P.T.A.B. Oct. 2, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/242,036 04/01/2014 Chan KIM
23413 7590 10/04/2018
CANTOR COLBURN LLP
20 Church Street
22nd Floor
Hartford, CT 06103
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.
JLE0088USP 6807
EXAMINER
GORDON II, BRADLEY R
ART UNIT PAPER NUMBER
1773
NOTIFICATION DATE DELIVERY MODE
10/04/2018 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):
usptopatentmail@cantorcolbum.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHAN KIM, EU GENE CHO, SANG CHUL SUH,
and IN YONG SEO
Appeal 2018-000128
Application 14/242,036
Technology Center 1700
Before ROMULO H. DELMENDO, MONTE T. SQUIRE, and
LILAN REN, Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
The Applicants (hereinafter "Appellants") 1 appeal under 35 U.S.C.
§ 134(a) from the Primary Examiner's final decision to reject claims 1-8 and
10.2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The Appellants are the Applicants, "AMOGREENTECH CO., LTD. and
AMO MEDI CO., LTD.," which, according to the Brief, are the real parties
in interest (Appeal Brief filed January 11, 2017 (hereinafter "Br.") 3;
Application Data Sheet filed April 1, 2014 at 5---6).
2 Br. 10-15; Final Office Action entered (hereinafter "Final Act.") 4--7;
Examiner's Answer entered July 27, 2017 (hereinafter "Ans.") 4--7. The
Appellants list claim 9 as rejected (Br. 10). That is incorrect because claim
9 has been canceled (id. at 17).
Appeal2018-000128
Application 14/242,036
I. BACKGROUND
The subject matter on appeal relates to a method for manufacturing a
composite membrane, which may be used in a technique known as "western
blot analysis" for finding a particular protein from a mixture of several
proteins extracted from cells or tissues (Specification filed April 1, 2014
(hereinafter "Spec.") 1, 11. 5-29). Representative claim 1 is reproduced from
the Claims Appendix to the Appeal Brief (Br. 16), as follows:
1. A method of manufacturing a composite membrane
for weste rn [sic] blotting, the method comprising the steps of:
dissolving a polyvinilidenflouride [ sic, polyvinylidene
fluoride] (PV dF [ sic, PVDF])-based polymer material in a
solvent to prepare a spinning solution;
electrospinning the spinning solution to obtain a nanofiber
web; and
combining the nanofiber web with a nonwoven fabric to
obtain a composite membrane for western blotting,
wherein, in the composite membrane, the nanofiber web
has a first thickness in a range of 5 µm to 20 µm, the nonwoven
fabric has a second thickness in a range of 50 µm to 200 µm, and
a thickness ratio of the first thickness to the second thickness is
in a range of 1/15 to 1/10.
II. REJECTIONS ON APPEAL
On appeal, the Examiner withdraws a rejection under AIA 35 U.S.C.
§ 112(b) entered against claims 1-8 and 10 but maintains two rejections
under 35 U.S.C. § 103, as follows:
A. Claims 1-6, 8, and 10 as unpatentable over Chu et al. 3
(hereinafter "Chu"); and
B. Claims 5 and 7 as unpatentable over Chu in view of Kook et
3 US 2008/0149561 Al, published June 26, 2008.
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Application 14/242,036
al. 4 and Dullaert et al. 5
(Ans. 3-7; Final Act. 2-7.)
III. DISCUSSION
The Appellants rely on the same arguments for both rejections on
appeal (Br. 10-15). Therefore, pursuant to 37 C.F.R. § 4I.37(c)(l)(iv), we
confine our discussion of Rejection A to claim 1, which we select as
representative. As provided by this rule, all claims subject to Rejection A
stand or fall with claim 1. Because the Appellants do not argue Rejection B
separately from Rejection A, claims 5 and 7 also stand or fall with claim 1.
The Examiner finds that Chu describes a composite membrane
comprising an electrospun ( e-spun) fibrous support (i.e., a nano fiber web),
which may be made from PVDF, and a non-woven substrate (i.e., fabric),
wherein the thicknesses disclosed for the fibrous support and the non-woven
substrate and their relative thickness ratios encompass or overlap the ranges
recited in claim 1 (Ans. 4--5) (citing Chu's Figure 7 and ,r,r 70, 73, 91,108,
109). The Examiner concludes from these findings that "it would have been
prima facie obvious to one skilled in the art ... to scale the thicknesses of
Chu's fibrous support and nonwoven substrate to values within the as-
claimed ranges ... since Chu teaches respective overlapping ranges of
thicknesses for these items" (id. at 5). The Examiner finds further that
although Chu does not explicitly teach "western blotting" as recited in claim
1, the prior art "composite membrane is considered to be functionally
capable of being used for western blotting since it has the same structural
features of the claimed composite membrane" (id.).
4 US 2011/0076197 Al, published March 31, 2011.
5 US 2012/0137885 Al, published June 7, 2012.
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Application 14/242,036
The Appellants do not dispute the Examiner's findings concerning the
disclosed thicknesses for the nanofiber web and the nonwoven fabric and
their relative thickness ratios (Br. 10-15). Rather, the Appellants contend
that the Examiner's rejection is flawed because Chu discloses a fibrous
support for filtration (nanofiltration, ultrafiltration, or reverse osmosis)
including a chitosan coating layer that must be removed in order to arrive at
the claimed invention (Br. 10-12). According to the Appellants, "a
combination of a 'nonporous' hydrophilic coating (Chitosan coating) and an
electrospun nanofibrous support (PAN) cannot function as a western blot
membrane" (id. at 12) (emphases omitted). The Appellants argue that if
Chu's chitosan coating layer is removed, it would render Chu's structure
inoperable for its original intended purpose (id.). Furthermore, the
Appellants urge that "the claimed limitations are directed to 'obtain a
composite membrane for western blotting,' as recited in [ c ]laim 1, not 'using
the membrane for western blotting,' as stated" by the Examiner and that
"'there does not appear to be any art of record which suggests that Chu's
membrane can be used for western blotting"' (id. at 14; emphases omitted).
We have fully considered the Appellants' arguments, but, for the
reasons given by the Examiner and below, we find them insufficient to
reveal any reversible error in the Examiner's rejection as entered against
claim 1. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
Chu describes articles comprising a fibrous support comprising
nanofibers and an interfacially polymerized polymer layer disposed on the
fibrous support by polymerizing, in situ, "partially within, or wholly within
the top layer of the fibrous support" (Chu ,r,r 3, 76). Chu teaches that the
nanofibers may be prepared from various polymers such as PVDF and that
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Application 14/242,036
the interfacially polymerized polymer layer may be based on, e.g.,
crosslinked aromatic polyamides (id. ,r,r 7, 7 6). Chu further teaches an
embodiment in which the fibrous support comprising nanofibers is disposed
between the interfacially polymerized polymer layer and a non-woven fabric
(id. ,r 91 ). According to Chu, the articles are useful not only as filtration
membranes but also as other materials, e.g., biological substrates (id. ,r 92).
When used as a filtration membrane, Chu teaches providing a chitosan
coating layer on an electro spun nanofibrous polyacrylonitrile (PAN) support
disposed on a nonwoven polyester substrate to enhance anti-fouling (id. Fig.
7 and ,r 105).
Although Chu does not mention "western blotting," the structural
similarities between the article manufactured according to Chu's disclosure
and the composite membrane resulting from the claimed manufacturing
method provide a reasonable basis upon which to shift the burden of
production to the Appellants to show that Chu's article would not be suitable
for "western blotting." The Appellants offer no objective evidence (such as
sworn experimental data) in this regard. Cf In re Best, 562 F.2d 1252, 1255
( CCP A 1977) ("Where ... the claimed and prior art products are identical or
substantially identical, or are produced by identical or substantially identical
processes, the PTO can require an applicant to prove that the prior art
products do not necessarily or inherently possess the characteristics of his
claimed product.").
The Appellants assertion that an article containing a chitosan coating
layer would render the article unsuitable for "western blotting" is not
supported by the actual language used in claim 1, which recites a "method
comprising the steps of' (Br. 16; emphasis added) or by any objective
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Application 14/242,036
evidence or persuasive technical reasoning. Therefore, it is mere attorney
argument. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997).
Even if we assume that a chitosan coating layer does in fact render the
resulting article unsuitable for "western blotting," Chu discloses the chitosan
coating layer in the context of a filtration membrane (Chu ,r 105). As we
found above, Chu's article has other uses (e.g., as a biological substrate) (id.
,r 92) and, therefore, a chitosan coating layer is not a layer that would be
required for all applications.
For these reasons, and those well-stated by the Examiner, we uphold
the § 103 rejection as entered against claim 1.
IV. SUMMARY
Rejections A and Bare sustained. Therefore, the Examiner's final
decision to reject claims 1-8 and 10 is affirmed.
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
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