Edouard S. P. Bouvier et al.

Patent Trials and Appeals Board

Jan 17, 2020

13336009 - (D) (P.T.A.B. Jan. 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.
13/336,009 12/23/2011 Edouard S. P. Bouvier W-728/121350-01301 5130
13871 7590 01/17/2020
WOMBLE BOND DICKINSON (US) LLP / Waters
ATTN: IP DOCKETING
P.O. BOX 7037
ATLANTA, GA 30357-0037
EXAMINER
PEO, KARA M
ART UNIT PAPER NUMBER
1777
NOTIFICATION DATE DELIVERY MODE
01/17/2020 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):
BostonDocket@wbd-us.com
IPDocketing@wbd-us.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte EDOUARD S. P. BOUVIER and HUA YANG
____________

Appeal 2019-002309
Application 13/336,009
Technology Center 1700
____________

Before KAREN M. HASTINGS, JAMES C. HOUSEL, and
DEBRA L. DENNETT, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner’s decision rejecting claims 44–50 under 35 U.S.C. § 103 as
unpatentable over the combined prior art of Granger (US 2006/0144770 A1;
published July 6, 2006), Komiya (US 4,835,058; issued May 30, 1989), and
Peters (US 5,929,214; issued July 27, 1999), and rejecting claims 45 and 46
under 35 U.S.C. § 112, second paragraph, as indefinite.
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).

1 We use the word “Appellant” to refer to the “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies Waters Technologies Corporation as
the real party in interest (Appeal Br. 2).
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We AFFIRM.
CLAIMED SUBJECT MATTER
Claim 44 is illustrative of the subject matter on appeal:
44. A hydrophobic interaction chromatography separation
method comprising:
providing a column having a stationary phase represented
by formula:

wherein X comprises a silica core, a titanium oxide core, an
aluminum oxide core, an iron oxide core, or an organic-
inorganic hybrid core;
flowing a mobile phase having a salt concentration
through the column;
injecting a sample comprising one or more analytes onto
the column thereby contacting the sample and the stationary
phase, wherein at least one of the one or more analytes is
retained on the stationary phase; and
decreasing the salt concentration of the mobile phase
thereby separating the sample into the one or more analytes by
degree of hydrophobic interaction between the stationary phase
and the one or more analytes, wherein the one or more analytes
are separated in order of increasing hydrophobicity.

Appellant’s arguments mainly focus on the sole independent claim 44,
except for the arguments presented for the § 112, second paragraph,
rejection of claims 45 and 46 (see generally Briefs).

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OPINION
Upon consideration of the evidence of record and each of Appellant’s
contentions as set forth in the Appeal Brief, as well as the Reply Brief, we
determine that Appellant has not demonstrated reversible error in the
Examiner’s rejections (e.g., see generally Ans.). In re Jung, 637 F.3d 1356,
1365–66 (Fed. Cir. 2011) (explaining the Board’s long-held practice of
requiring Appellant(s) to identify the alleged error in the Examiner’s
rejection). We sustain the rejections generally for the reasons expressed by
the Examiner in the Final Office Action and the Answer.
We add the following primarily for emphasis.
The § 112, Second Paragraph, Rejection
During prosecution, claims are definite if they “set out and
circumscribe a particular area with a reasonable degree of precision and
particularity.” In re Moore, 439 F.2d 1232, 1235 (CCPA 1971).
The Examiner found the language of dependent claims 45 and 46
indefinite, since each claim requires isolating or detecting “the one or more
compositions” but claim 44 does not recite any compositions (Final Act. 3,
4). Appellant points out that the Specification describes in one paragraph
that the method can be used to separate “the one or more
analytes/compositions” such that one of ordinary skill would have
understood that the terms analyte and composition “to be synonymous”
(Appeal Br. 13, 14 citing Spec. ¶ 902; Reply Br. 10).

2 For the Specification filed December 23, 2011, the relevant paragraph
appears to be 87, not 90.
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In prosecution before the PTO “[i]t is the applicants’ burden to
precisely define the invention, not the PTO’s.” In re Morris, 127 F.3d 1048,
1056 (Fed. Cir. 1997). The purpose of this requirement is to provide the
public with adequate notice of the boundaries of protection involved. The
time to do so is during prosecution where an applicant has the ability to
amend the claims to more precisely define the metes and bounds of the
claimed invention. See Ex parte Miyazaki, 89 USPQ2d 1207, 1210–12
(BPAI 2008).
Notably, claim 44 does not recite separating one or more
compositions, and claim 45 yet further requires a step of “isolating” and
claim 46 requires a further step of “detecting” such that the reliance upon the
Specification’s use of separating one or more analytes/compositions in a
single paragraph does not make it clear that the isolating and detecting steps
apply to an analyte or composition synonymously. As pointed out by the
Examiner, the term “analytes” has a different scope than the term
“compositions” (Ans. 19, 20). In light of the different scope of these terms
which results in multiple interpretations applicable to the claims, it is
appropriate for Appellant to amend the claims to make clear which
interpretation is required.
Accordingly, we affirm the Examiner’s § 112, second paragraph,
rejection of claims 45 and 46 for indefiniteness.
The § 103 Rejection
It has been established that the predictable use of known prior art
elements performing the same functions they have been known to perform is
normally obvious, and the combination of familiar elements is likely to be
obvious when it does no more than yield predictable results. KSR Int’l Co.
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v. Teleflex Inc., 550 U.S. 398, 418 (2007); see also KSR, 550 U.S. at 418
(“the [obviousness] analysis need not seek out precise teachings directed to
the specific subject matter of the challenged claim, for a court can take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ.”). See also In re Fritch, 972 F.2d 1260, 1264–65
(Fed. Cir. 1992) (a reference stands for all of the specific teachings thereof
as well as the inferences one of ordinary skill in the art would have
reasonably been expected to draw therefrom).
Appellant’s main contentions focus on a change in principle of
operation of Granger and thus a lack of a reason to use the claimed known
hydrophilic ligand of 3-glyceryloxypropyl as found in Komiya’s column
material in the column of Granger because Granger is directed to capillary
electrochromatography (CEC) and Peters is directed to hydrophobic
interaction chromatography (HIC), while Komiya is directed to packing
materials for normal phase liquid chromatography and aqueous gel
permeation chromatography (Appeal Br. 8–12; Reply Br. 3–9). Appellant
also argues that there is no reasonable expectation of success or motivation
to combine the teachings of the references, especially since Komiya teaches
this ligand is not fully satisfactory (Appeal Br. 11, 12). Appellant also states
that the Examiner cannot “cherry-pick” elements of different
chromatography methods within Granger (Reply Br. 8). Appellant’s
arguments are not persuasive of reversible error for reasons presented by the
Examiner (Ans. 9–19).
As pointed out by the Examiner, all of the references are directed to
chromatographic separation (e.g., Ans. 10, 11). Indeed, Appellant’s
Specification discusses in the Background section that hydrophobic
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interaction chromatography (HIC) processes using a stationary phase
through which the mobile phase flows is known in the prior art (Spec. ¶¶ 7,
8).3 Appellant’s invention is directed to the use of a stationary phase that
comprises particles with a hydrophobic surface and a plurality of hydrophilic
ligands attached thereto (Spec. ¶ 11). There is no dispute that, as found by
the Examiner, Granger teaches a hydrophobic core column material having
hydrophilic diol ligands are known for their use in chromatography
separations and Komiya exemplifies that hydrophilic ligands encompassed
by claim 44 are known for their use in chromatography separations (Final
Act. 3, 4), such that the substitution of one known diol ligand for another in
Granger’s column material would have been obvious (Final Act. 4, 5; Ans.
18).
It is well established that a prior art reference must be considered in
its entirety, i.e., as a whole, when determining if it would lead one of
ordinary skill in the art away from the claimed invention. W.L. Gore &
Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 1550 (Fed. Cir. 1983); In re
Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005) (whether a reference teaches
away from a claimed invention is a question of fact).

3 An applicant cannot defeat an obviousness rejection by asserting that the
cited references fail to teach or suggest elements which the applicant has
acknowledged are taught by the prior art. Constant v. Advanced Micro-
Devices, Inc., 848 F. 2d 1560, 1570 (Fed. Cir. 1988) (“A statement in a
patent that something is in the prior art is binding on the applicant and
patentee for determinations of anticipation and obviousness.”) and In re
Nomiya, 509 F.2d 566, 571n.5 (CCPA 1975) (A statement by an applicant
that certain matter is prior art is an admission that the matter is prior art for
all purposes).

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Furthermore, “[t]he Supreme Court’s decision in KSR . . . directs us to
construe the scope of analogous art broadly, stating that ‘familiar items may
have obvious uses beyond their primary purposes, and a person of ordinary
skill often will be able to fit the teachings of multiple patents together like
pieces of a puzzle.’” Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed.
Cir. 2010) (quoting KSR, 550 U.S. at 420).
While Komiya may teach some disadvantages of an inorganic support
with e.g., 3-glyceroloxypropyl, as a hydrophilic stationary phase, Komiya
also uses these same 3-glyceroloxypropyl diol ligands in the invention
disclosed therein (Komiya col. 2, ll. 54–55; Ans. 17 (explaining that such a
situation does not amount to teaching away from the use of 3-
glyceroloxypropyl diol ligands as a substitute for diol ligands of Granger).
One of ordinary skill in the art would have inferred and readily
appreciated that a known or obvious material for use in a chromatography
separation, such as that discussed by the Examiner in Granger/Komiya
(Granger, Example 9 chromatographic column; Komiya, e.g., col. 2, ll. 14–
56), may predictably be used in the known HIC process as exemplified in
Peters and admitted to be prior art.
Likewise, Appellant’s arguments regarding the lack of motivation to
combine the cited art are also unpersuasive for the reasons given above.
That is, the arguments fail to account for “the inferences and creative steps
that a person of ordinary skill in the art would employ.” See KSR, 550 U.S.
at 418. Cf., In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992) (“[T]he law
does not require that the references be combined for the reasons
contemplated by the inventors.”); see also In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006).
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It has been established that obviousness does not require absolute
predictability of success; all that is required is a reasonable expectation of
success. In re Kubin, 561 F.3d 1351, 1360 (Fed. Cir. 2009). Furthermore,
inasmuch as the material as recited was obvious and/or known in the art as
suitable for a chromatographic separation process, it is incumbent upon
Appellant to establish that the present inventors had to resort to more than
routine experimentation to determine if it would have been effective in a
known HIC chromatographic separation, e.g., of the type disclosed by
Peters. However, no such evidence is of record.
Thus, Appellant has not shown reversible error in the Examiner’s
position that it would have been obvious for one of ordinary skill to have
used a known/obvious chromatography column material as exemplified in
Granger/Komiya for the chromatography column of a known HIC process as
exemplified in Peters. See KSR, 550 U.S. at 417 (the predictable use of
known prior art elements or steps performing the same functions they have
been known to perform is normally obvious; the combination of familiar
elements/steps is likely to be obvious when it does no more than yield
predictable results); see also In re Merck & Co., Inc., 800 F.2d 1091, 1097
(Fed. Cir. 1986) (“Non-obviousness cannot be established by attacking
references individually where the rejection is based upon the teachings of a
combination of references.”) and In re Sneed, 710 F.2d 1544, 1550 (Fed.
Cir. 1983) (“[I]t is not necessary that the inventions of the references be
physically combinable to render obvious the invention under review.”).
Accordingly, we sustain the Examiner’s rejection of independent
claim 44, as well as all claims dependent thereon since none are argued
separately (see generally Appeal Br.).
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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
44–50 103 Granger, Komiya,
Peters
44–50
45, 46 112,
second
paragraph
Indefiniteness 45, 46

TIME PERIOD FOR RESPONSE
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