Waters Technologies Corporation

Patent Trials and Appeals Board

Dec 17, 2020

2020000865 (P.T.A.B. Dec. 17, 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.
14/840,393 08/31/2015 Kevin D. Wyndham 8185.0197D 5335
160377 7590 12/17/2020
Kacvinsky Daisak Bluni PLLC (8185)
2601 Weston Parkway
Suite 103
Cary, NC 27513
EXAMINER
PEO, KARA M
ART UNIT PAPER NUMBER
1777
NOTIFICATION DATE DELIVERY MODE
12/17/2020 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):
docketing@kdbfirm.com
ehysesani@kdbfirm.com
mbotnaru@kdbfirm.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte KEVIN D. WYNDHAM, JOHN E. O’GARA, and
NICOLE L. LAWRENCE
____________________

Appeal 2020-000865
Application 14/840,393
Technology Center 1700
____________________

Before JOSEPH L. DIXON, BEVERLY A. FRANKLIN, and
DONNA M. PRAISS, Administrative Patent Judges.

PRAISS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 4, 6, 14–17, 20, 22, 26, 30, 32, 35, 39–41, 51–54, 56–63, 70, 73, 78–
80, 161–163, and 173–178. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The claims are directed to a porous inorganic/organic hybrid particle
for use as packing material for liquid chromatography (LC), such as High
Performance Liquid Chromatography (HPLC), which typically uses silica

1 We use the word “Appellant” to refer to “applicant(s)” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Waters
Technologies Corporation. Appeal Br. 3.
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(SiO2). Spec. 1:6–17. According to the Specification, the silica commonly
employed has been surface-derivatized with an organic functional group
such as octadecyl (C18), octyl (C8), phenyl, amino, and cyano. Id. at 1:17–19.
The Specification discloses that incomplete derivatization of the silica leaves
patches of bare silica surface which can be readily dissolved under alkaline
condition leading to the collapse of the chromatographic bed. Id. at 1:29–31.
The Specification also discloses the use of hybrid materials where an alkyl
functionality is coupled into both the skeleton structure and the surface of
the silica to overcome the problem of residual silanol group activity and
hydrolytic instability, but describe these prior art approaches as having
inhomogeneous particle morphology and micropores that contribute to
undesirable chromatographic properties. Id. at 2:3–4:2.
Independent claim 4, reproduced below, is illustrative of the subject
matter on appeal.
4. A porous inorganic/organic hybrid particle, wherein
the inorganic portion of said porous inorganic/organic hybrid
particle comprises SiO2 in an amount ranging from about 0
molar % to not more than about 25 molar %, wherein the pores
of the porous inorganic/organic hybrid particle are substantially
disordered, and wherein the porous inorganic/organic hybrid
particle has formula II or III:
formula II
(SiO2)d/[(R)p(R1)qSiOt] (II)
wherein,
R and R1 are each independently C1–C18 alkoxy, C1-C18
alkyl, C2-C18 alkenyl, C2-C18 alkynyl, C1-C18 cycloalkyl, C1-C18
heterocycloalkyl, C2-C18 aryl, C2-C18 aryloxy, or C1-C18
heteroaryl;
d is 0 to about 0.9;
t is 0.5, 1.0, or 1.5;
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and wherein, p+q=l when t=l.5; p+q=2 when t=l; or
p+q=3 when t=0.5;
formula III:
(SiO2)d/[R2((R1)rSiOt)m] (III)
wherein,
R1 is C1–C18 alkoxy, C1-C18 alkyl, C2-C18 alkenyl, C2-C18
alkynyl, C1-C18 cycloalkyl, C1-C18 heterocycloalkyl, C2-C18
aryl, C2-C18 aryloxy, or C1-C18 heteroaryl;
R2 is C1-C18 alkyl, C2-C18 alkenyl, C2-C18 alkynyl, C1-C18
cycloalkyl, C1-C18 heterocycloalkyl, C2-C18 aryl, or C1-C18
heteroaryl, wherein each R2 is attached to two or more silicon
atoms;
d is 0 to about 0.9;
r is 0 or 1;
and wherein, provided that when r=0 then t=1.5; or when
r=1then t=1; and
m is an integer from l-20; and
wherein the porous inorganic/organic hybrid particle is
formed by a process that comprises (i) hydrolytically
condensing one or more monomers selected from the group
consisting of organoalkoxysilanes and 0-49 molar %
tetraalkoxysilanes, to produce a polyorganoalkoxysiloxane and
(ii) condensing an aqueous emulsion of a
polyorganoalkoxysiloxane to form a spherical porous particle.

Appeal Br. 13–14 (Claims Appendix). Independent claim 178 is
similar to claim 4, but requires that d is 0. Id. at 19–20.

REFERENCE
The prior art relied upon by the Examiner in rejecting the claims on
appeal is O’Gara (US 2004/0048067 A1, published Mar. 11, 2004).

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REJECTIONS
The Examiner maintains the following rejections:2
Claim(s) 35 U.S.C. § Reference
4, 6, 14–17, 20, 22, 26, 30, 32, 35,
39–41, 51–54, 56–63, 70, 73, 78–
80, 161–163, 173–178
112, 2nd paragraph
4, 6, 14–17, 20, 22, 26, 30, 32, 35,
39–41, 51–54, 56–63, 70, 73, 78–
80, 161–163, 173–178
103(a) O’Gara

ANALYSIS
Indefiniteness Rejection: Independent Claims 4 and 178
The Examiner determines that the limitations “SiO2 in an amount
ranging from about 0 molar % to not more than about 25 molar %” and
“substantially disordered” which appear in independent claims 4 and 178 are
indefinite because it is not clear how a particle is inorganic/organic when
there is no SiO2 present and because it is not clear what additional
parameters are required for ascertaining the requisite degree of disordered
pores. Final Act. 2–3.
We are persuaded that the Examiner reversibly erred in determining
these claims are indefinite for the reasons provided in the Appeal Brief and
Reply Brief. We add the following for emphasis.
The definiteness of a claim depends on whether one skilled in the art
would understand the bounds of the claim when read in light of the
specification. Howmedica Osteonics Corp. v. Tranquil Prospects, Ltd., 401
F.3d 1367, 1371 (Fed. Cir. 2005). The Examiner’s position is based on an

2 The Examiner’s obviousness type double patenting rejection of all of the
claims has been withdrawn following Appellant’s filing a terminal
disclaimer. Ans. 14; Appeal Br. 11.
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interpretation of “inorganic/organic hybrid particle” as requiring an
inorganic portion to be present on the left side of the slash in formula II or
III. Ans. 16. However, the Examiner’s interpretation is not supported by the
Specification, which explicitly defines the “inorganic portion” of a hybrid as
all of the siloxane groups of an organosiloxane. Spec. 9:18–26. Therefore,
the record supports Appellant’s position (Appeal Br. 8; Reply Br. 6–7) that
even when there is no SiO2 present, the particle still contains an inorganic
portion, namely, the siloxane groups on the right side of the slash in
formulas II and III. Because formulas II and III both include a silicon
dioxide component separate from the other siloxane groups, a person having
ordinary skill in the art would understand the bounds of claims 4 and 178
regarding the molar percent SiO2 in the claimed hybrid organic/inorganic
particle when read in light of the Specification.
Similarly, the Specification explicitly defines the term “substantially
disordered” as “the lack of a peak at a diffraction angle that corresponds to a
d value (d-spacing) of at least 1 nm in an x-ray diffraction pattern” and
provides examples with additional details for determining the x-ray powder
diffraction analysis. Spec. 10:9–12, 43:27–45:2; Appeal Br. 9; Reply Br. 8–
9. The Examiner’s determination that “it is not clear what additional
parameters are required” to determine “substantially disordered” as defined
by the Specification does not adequately explain what additional parameters
a person having ordinary skill in the art would need to perform the analysis.
Based on this record, we agree with Appellant that a person having ordinary
skill in the art would understand the bounds of claims 4 and 178 regarding
“substantially disordered” pores of the porous inorganic/organic hybrid
particle.
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Indefiniteness Rejection: Dependent Claim 51
The Examiner determines that claim 51, which depends from claim 4,
is indefinite because the variable R2 is not defined. Final Act. 3. Even
though the variable R2 is defined in claim 4, from which claim 51 depends,
the Examiner states R2 in claim 51 is not the same R2 in claim 4 because “R2
in claim 4 relates to Formula III and does not relate to monomers used to
form the particle.” Ans. 17. The Examiner provides no additional
explanation why a variable present in a particle would not also be present in
a monomer from which the particle is formed.
We are persuaded that the Examiner reversibly erred in determining
claim 51 is indefinite for the reasons provided in the Appeal Brief and Reply
Brief. We add the following for emphasis.
Claim 51 includes monomers from which to form the particle of claim
4 and recites the same definition for variable R1 which appears in claim 4.
Because claim 51 depends from claim 4, claim 51 includes all of the
limitations recited in claim 4, which includes the definition of variable R2.
Based on the record in this Appeal, a person having ordinary skill in the art
would understand the bounds of claim 51 regarding variable R2 because the
term is defined by the independent claim and there is no reason to expect the
variable of the monomers to differ from the variables in the particle formed
from the monomers.
In sum, we are persuaded by Appellant’s arguments that the Examiner
reversibly erred in rejecting claim 51 as indefinite. Accordingly, we reverse
the Examiner’s rejection of claim 51 under 35 U.S.C. § 112, 2nd paragraph.

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Obviousness Rejection
Appellant separately argues claims 4 and 178. Appeal Br. 10–11. In
accordance with 37 C.F.R. § 41.37(c)(1)(iv), claims 6, 14–17, 20, 22, 26, 30,
32, 35, 39–41, 51–54, 56–63, 70, 73, 78–80, 161–163, and 173–177 will
stand or fall together with independent claim 4 from which they depend. We
address claims 4 and 178 below.
Independent Claim 4
Appellant contends the Examiner erred in rejecting claim 4 over
O’Gara because O’Gara uses tetraalkoxysilane in higher amounts than 0–49
molar% as recited in the claim. Appeal Br. 10. Appellant directs us to
O’Gara’s paragraph 69 and Example 1, which disclosures Appellant asserts
correspond to an amount ranging from 67–83 molar % tetraalkoxysilane. Id.
Appellant’s arguments do not persuade us of error in the Examiner’s
rejection for the reasons provided by the Examiner in the Final Office
Action. Final Act. 3–6. As Appellant appreciates (Reply Br. 11–12), claim 4
is directed to the statutory category of a composition, therefore, the method
of making the porous inorganic/organic hybrid particle is not given
patentable weight if the product is the same or obvious over a prior art
product made by a different process. Thus, even if the Examiner’s
calculation regarding O’Gara’s use of tetraalkoxysilane is incorrect (Ans.
19; Reply Br. 13–14), Appellant’s assertion that the process will affect the
relative amount of SiO2 in the product because the tetraalkoxysilanes is the
source of the SiO2 and the organoalkoxysilanes is the source of the
remaining inorganic components does not adequately distinguish the claim
4’s product over O’Gara’s product.
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Appellant’s assertion in the Reply Brief (Reply Br. 13) that the
claimed range achieves unexpected results relative to the prior art range and
the claimed produce exhibits unexpected advantages was not presented in
the Appeal Brief, and Appellant has not proffered a showing of good cause
explaining why the argument could not have been presented in the Appeal
Brief. Therefore, we will not consider this new and untimely argument in
our assessment of the Examiner’s § 103 rejection. 37 C.F.R. §§ 41.37, 41.41.
Even if we were to consider Appellant’s newly presented unexpected
results argument, it is not persuasive of error because Appellant provides no
data to support these assertions relative to O’Gara’s product. The burden of
establishing that unexpected results support a conclusion of nonobviousness
rests with Appellant. In re Huang, 100 F.3d 135, 139 (Fed. Cir. 1996).
“[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). “[I]t is not
enough to show that results are obtained which differ from those obtained in
the prior art; that difference must be shown to be an unexpected difference.”
See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972) (emphasis in original).
Additionally, the relied-upon results must be commensurate in scope with
the claims. See In re Peterson, 315 F.3d 1325, 1329–31 (Fed. Cir. 2003).
“Establishing that one (or a small number of) species gives unexpected
results is inadequate proof, for ‘it is the view of [the CCPA] that objective
evidence of non-obviousness must be commensurate in scope with the
claims which the evidence is offered to support.’” See In re Greenfield, 571
F.2d 1185, 1189 (CCPA 1978) (quoting In re Tiffin, 448 F.2d 791, 792
(CCPA 1971)). Finally, “it is well settled that unexpected results must be
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established by factual evidence. ‘Mere argument or conclusory statements in
the specification does not suffice.’” See In re Geisler, 116 F.3d 1465, 1470
(Fed. Cir. 1997) (quoting In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir.
1994)); see also In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974)
(“Attorney’s argument in a brief cannot take the place of evidence.”).
For the above reasons and those provided in the Final Office Action
and the Answer, we sustain the Examiner’s § 103(a) rejection of
independent claim 4. We also sustain the Examiner’s § 103(a) rejection of
dependent claims 6, 14–17, 20, 22, 26, 30, 32, 35, 39–41, 51–54, 56–63, 70,
73, 78–80, 161–163, and 173–177, argued for their dependency from
independent claim 4. Appeal Br. 11.

Independent Claim 178
Appellant additionally argues that the Examiner erred in finding that
O’Gara discloses a porous inorganic/organic hybrid particle having formula
II or III where there is 0% SiO2 (d=0) as required by claim 178. Appeal Br.
10–11. In the Reply Brief, Appellant acknowledges that O’Gara discloses
alternatives to silica, such as alumina, titanium or zinc oxides, or ceramic
material, and therefore discloses a particle that includes no SiO2 (d=0) as
required by claim 178. Reply Br. 14–15. Appellant argues that “when d is 0,
Formulas II and III of Claim 178 contain[] none of these.” Id. at 15.
Appellant’s argument is not persuasive of error because Appellant
does not dispute the Examiner’s finding (Ans. 20) that O’Gara discloses an
inorganic/organic hybrid particle having 0% SiO2 (d=0) as required by claim
178. Appellant’s assertion that formulas II and III in claim 178 do not
include O’Gara’s alternatives to silica does not adequately distinguish the
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claimed particle over the teachings of O’Gara. Thus, Appellant has not
shown error in the Examiner’s rejection of claim 178.
For the above reasons and those provided in the Final Office Action
and the Answer, we sustain the Examiner’s § 103(a) rejection of claim 178.

CONCLUSION
The Examiner did not err in rejecting claims 4, 6, 14–17, 20, 22, 26,
30, 32, 35, 39–41, 51–54, 56–63, 70, 73, 78–80, 161–163, and 173–178.
DECISION
In summary:
Claims
Rejected
35 U.S.C.
§  Reference Affirmed Reversed
4, 6, 14–17, 20,
22, 26, 30, 32, 35,
39–41, 51–54, 56–
63, 70, 73, 78–80,
161–163, 173–178
112, 2nd
paragraph 
4, 6, 14–17, 20,
22, 26, 30, 32,
35, 39–41, 51–
54, 56–63, 70,
73, 78–80, 161–
163, 173–178
4, 6, 14–17, 20,
22, 26, 30, 32, 35,
39–41, 51–54, 56–
63, 70, 73, 78–80,
161–163, 173–178
103(a) O’Gara
4, 6, 14–17, 20,
22, 26, 30, 32,
35, 39–41, 51–
54, 56–63, 70,
73, 78–80, 161–
163, 173–178

Overall Outcome
4, 6, 14–17, 20,
22, 26, 30, 32,
35, 39–41, 51–
54, 56–63, 70,
73, 78–80, 161–
163, 173–178

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED