Bhaktavachalam Thiyagarajan et al.

Patent Trials and Appeals Board

Sep 29, 2020

14115238 - (D) (P.T.A.B. Sep. 29, 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.
14/115,238 04/16/2014 Bhaktavachalam Thiyagarajan 2198-72PCT/US 5250
23869 7590 09/29/2020
Hoffmann & Baron LLP
6900 Jericho Turnpike
Syosset, NY 11791
EXAMINER
ZALASKY MCDONALD, KATHERINE MARIE
ART UNIT PAPER NUMBER
1777
MAIL DATE DELIVERY MODE
09/29/2020 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 BHAKTAVACHALAM THIYAGARAJAN,
WEI GUO, and NANDU DEORKAR
__________

Appeal 2019-006969
Application 14/115,238
Technology Center 1700
____________

Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
DEBRA L. DENNETT, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL

Appellant1 appeals under 35 U.S.C. § 134(a) the final rejection of
claims 1, 4, 6–8, 10, and 13. Claims 14–23 are withdrawn. We have
jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Avantor
Performance Materials, LLC (Appeal Br. 3).
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Application 14/115,238

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STATEMENT OF THE CASE
Appellant’s invention is directed to the preparation of
chromatographic media for the purpose of separation and purification of
biomolecules, particularly antibodies (Spec. 1). The Specification describes
that the chromatographic media is based on allylamine and polyallylamine
as the major ligand (id.). According to the Specification, these major ligands
are modified with different functional groups to prepare ion exchange,
hydrophobic, and other functional chromatographic media (id.).
Claim 1 is illustrative (emphasis added):
1. Chromatographic media comprising porous media
particles[]derivatized with allyamine [sic] or polyallylamine on
a surface of the porous media particles, wherein said porous
media particles comprise particles selected from the group
consisting of epoxidized polyacrylates, haloalkylated
polyacrylates, epoxidized polymethacrylates, and haloalkylated
polymethacrylates, and said allylamine or polyallylamine has a
molecular weight less than 25,000.
Appellant appeals the following rejection:
1. Claims 1, 4, 6–8, 10, and 13 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Deorkar et al. (US 2008/0203029 A1;
published Aug. 28, 2008, “Deorkar”) in view of S. Rokushika et al.,
Polyallylamine-coated silica gel microbore column for liquid
chromatography, 332 J. Chromatography, 15–18 (1985)
(“Rokushika”), as evidenced by S. Shechter et al., Glycidyl Ether
Reactions with Amines, 48 Indus. & Eng’g Chem., 94–97 (1956)
(“Shechter”) and Wikipedia, Amine alkylation, available at
https://en.wikipedia.org/wiki/Amine_alkylation (“Amine alkylation”)
(Final Act. 2–4).
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Appellant argues claims 1, 4, 6–8, 10, and 13 as a group (see
generally Appeal Br. 3–12). We select claim 1 as representative. 37 C.F.R.
§ 41.37(c)(1)(iv). Accordingly, claims 4, 6–8, 10, and 13 will stand or fall
with our analysis of independent claim 1.
FINDINGS OF FACT & ANALYSIS
The Examiner finds, inter alia, that Deorkar’s polymeric
chromatographic media comprises porous polymeric resin particles formed
from epoxidized or halogenated polyacrylates or polymethacrylates (Final
Act. 3). The Examiner finds that Deorkar’s chromatographic media is made
suitable for the purification of biomolecules by derivatizing the particles
with a polymer of polyethyleneimine and then functionalizing the
derivatized surface (id.). The Examiner finds that the resulting mixed mode
media teaches each component of the subject matter of claim 1, with the
exception that Deorkar does not disclose that the surface of the particles is
derivatized with allylamine or polyallylamine (id.).
The Examiner finds that Rokushika teaches or suggests the remaining
component missing from Deorkar (id. at 3–4). Specifically, the Examiner
finds that Rokushika teaches polyallylamine as an alternative to
polyethyleneimine on amine or imine derivatized packing material for liquid
chromatography (id. at 3). The Examiner finds Rokushika teaches that a
“[polyallylamine-]derivatized substrate was easy to prepare, will similarly be
useful for the separation of isomeric phenolic compounds, and that the
packing material was stable for more than three weeks with carbonate
eluents” (id. at 3–4).
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The Examiner determines that it would have been obvious to a person
of ordinary skill in the art at the time of the invention to have substituted the
polyethyleneimine on Deorkar’s substrate with Rokushika’s polyallylamine
having a molecular weight of 8,500–11,000 because polyallylamine is a
recognized substitute for polyethyleneimine in chromatography packing
materials (id. at 4). The Examiner finds that the ordinarily skilled artisan
would have also been motivated to make this substitution because
polyallylamine and polyethyleneimine “offer[] similar separation
capabilities . . . and stability in basic conditions” (id. at 4).
Appellant argues that the Examiner has not established a prima facie
case of obviousness because Deorkar “teaches away from the use of silica-
based chromatography packings,” but Rokushika “exclusively deals with
silica-based chromatography packings” (Appeal Br. 9; see generally id. at 9–
11).
Appellant’s arguments are not persuasive.
Teaching away requires that a reference “criticize, discredit, or
otherwise discourage the solution claimed” by Appellant. In re Fulton, 391
F.3d 1195, 1201 (Fed. Cir. 2004). Here, we find that Deorkar does not teach
away from the claimed subject matter because Appellant has not identified
any disclosure that disparages substituting polyethyleneimine on Deorkar’s
substrate with polyallylamine. The Examiner, furthermore, does not propose
substituting Deorkar’s support material with Rokushika’s silica-based
chromatography packings.
Appellant argues that that the rejection of claim 1 as obvious over
Deorkar and Rokushika relies on conclusory statements without regard to
the underlying unpredictable chemistry (see Appeal Br. 9). According to
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Appellant, “the mechanism of action in Rokushika (attachment via ionic
bonding) is . . . wholly different than that of the presently claimed invention”
(id. at 10). Appellant argues that Rokushika’s alleged teaching that
polyallylamine and polyethyleneimine are interchangeable would not have
extended to non-silica particles (id. at 10–11).
We, however, agree with the Examiner that Appellant’s arguments
incorrectly imports Rokushika’s bonding mechanism between a
polyallylamine functional group and a silica particle into Deorkar’s
polymeric particle (Ans. 7). Appellant’s arguments thus unpersuasively
attempt to bodily incorporate Rokushika’s features, which are not required
for the Examiner’s proposed modification, into Deorkar’s structure.
Appellant has not addressed or rebutted the evidence provided by Amine
alkylation or Shechter, which both support that it was conventionally known
what the bonding mechanisms are between epoxy or haloalkyl groups and:
(i) secondary amines, such as polyethyleneimine, and (ii) primary amines,
such as polyallylamine (Ans. 7; Reply Br. 1–3). Therefore, Appellant has
not identified reversible error in the Examiner’s findings that Deorkar, in
view of Rokushika, renders obvious each component and limitation of the
chromatographic media recited in claim 1.
When the Examiner establishes a prima facie case of obviousness,
“[t]he burden then shifts to the applicant, who then can present arguments
and/or data to show that what appears to be obvious, is not in fact that, when
the invention is looked at as a whole.” In re Dillon, 919 F.2d 688, 696 (Fed.
Cir. 1990) (en banc). Thus, “the burden of showing unexpected results rests
on [the party] . . . who asserts them.” In re Klosak, 455 F.2d 1077, 1080
(CCPA 1972).
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For the reasons set forth in the Examiner’s Answer (Ans. 7–8),
Appellant has not met their burden of showing unexpected results (see
Appeal Br. 11–12; Reply Br. 3). Rather, Appellant presents attorney
argument unsupported by evidence that the claimed subject matter is
“completely different and unique in chemistry and performance than known
art” (Appeal Br. 11). Therefore, Appellant’s arguments do not rebut the
Examiner’s established prima facie case of obviousness.
Thus, based on this record, we sustain the Examiner’s § 103(a)
rejection.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§ Reference(s)/Basis Affirmed Reversed
1, 4, 6–8,
10, 13 103(a)
Deorkar, Rokushika,
Amine alkylation,
Shechter
1, 4, 6–8,
10, 13
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