Ex parte Batista

Board of Patent Appeals and Interferences

Mar 19, 1998

07813868 (B.P.A.I. Mar. 19, 1998)

Application for patent filed December 20, 1991.1
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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 28
UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte FRANCISCO BATISTA
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Appeal No. 95-0063
Application No. 07/813,8681
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ON BRIEF
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Before WINTERS, WILLIAM F. SMITH and GRON, Administrative Patent
Judges.
WINTERS, Administrative Patent Judge.
DECISION ON APPEAL
This appeal was taken from the examiner's decision rejecting
claims 15 through 34, which are all of the claims remaining in
the application.
Claims 15 and 25 are representative:
Appeal No. 95-0063
Application No. 07/813,868
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15. Method for the immobilization of an organic thiol
compound, HS-R, in which R is an organic residue, to a water-
insoluble polymer of non-polypeptide structure exhibiting a
disulfide (-S-S-) group directly bound to a saturated carbon atom
at each of its sulphur atoms, characterized in the steps that:
(i) said polymer is contacted with an oxidation agent in such an
amount and of such a kind that it is capable of transforming
said disulfide group (-S-S-) to an oxidized disulfide group
capable of reacting with thiol groups, whereupon
(ii) the polymer obtained in step (i) exhibiting one or more
oxidized disulfide groups is contacted with the organic
thiol compound HS-R under conditions allowing reaction to
the formation of one -S-S-R group and one -SO (H) group pern
disulfide oxide group that undergoes the reaction where n is
1 or 2. [Emphasis added.]
25. Method for the immobilization of an organic thiol
compound, HS-R, in which R is an organic residue, to a polymer
exhibiting a disulfide (-S-S-) group directly bound to a
saturated carbon atom at each of its sulphur atoms characterized
in the steps that:
(i) said polymer is contacted with an oxidation agent in such an
amount and of such a kind that it is capable of selectively
transforming said disulfide group (-S-S-) to a -S-SO - groupn
where n is essentially 1 or 2, whereupon
(ii) the polymer obtained in step (i) exhibiting one or more -S-
SO - groups is contacted with the organic thiol compound n
HS-R under conditions allowing reaction to the formation of
one -S-S-R group and one -SO (H) group per -S-SO - groupn n
that undergoes the reaction,
with the proviso that the polymer carrying the disulfide group is
not a wool textile fiber. [Emphasis added.]
The reference relied on by the examiner is:
J. A. Maclaren et al. (Maclaren), "Partially Oxidised Disulphide
Groups in Oxidised Wool - Reaction with Thiols," JSDC 564-67
(Nov. 1968).
Appeal No. 95-0063
Application No. 07/813,868
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As stated in the Examiner's Answer, page 2, the previously
entered rejections under 35 U.S.C. § 112, first and second
paragraphs, have been withdrawn. The issue remaining for review
is whether the examiner erred in rejecting claims 15 through 34
under 35 U.S.C. § 103 as unpatentable over Maclaren. For the
reasons set forth below, this rejection is reversed.
DISCUSSION
Maclaren discloses a method which bears close relationship
to the method recited in claims 15 through 34, except that
Maclaren's starting material is partially oxidized wool. Claims
15 through 24 preclude wool in view of the language "a water-
insoluble polymer of non-polypeptide structure exhibiting a
disulfide (-S-S-) group directly bound to a saturated carbon atom
at each of its sulfur atoms." Likewise, the polymer in claim 32
is "insoluble in water and of non-polypeptide structure." Claims
25 through 31, 33 and 34 also preclude wool in view of the
express proviso that "the polymer carrying the disulfide group is
not a wool textile fiber." In sum, Maclaren's method and the
claimed method are similar but Maclaren uses a partially oxidized
Appeal No. 95-0063
Application No. 07/813,868
With respect to the polymeric starting material, claims2
25 through 31, 33 and 34 are broader than claims 15 through 24
and 32. The former claims preclude wool, but "read on" other
polypeptide structures. The latter are restricted to polymers
which are insoluble in water and have a non-polypeptide
structure.
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wool starting material whereas all of the appealed claims
preclude a wool starting material.2
The examiner acknowledges the difference between Maclaren's
method and the claimed method. According to the examiner,
[t]he claimed process differs from this prior art
process only in the choice of the polymer. However, it
is the same process employing the same inventive
concept of binding a desired organic compound to a
carrier polymer and accomplishing the same desired
result of immobilizing the desired organic compound.
See In re Durden, 226 USPQ 359. [Examiner Answer, page
4, first full paragraph].
That analysis is flawed because the examiner does not adequately
establish how a person having ordinary skill in the art would
have arrived at the claimed subject matter as a whole, including
appellant's non-wool starting materials, based on the teachings
found in Maclaren. 35 U.S.C. § 103. The examiner is not at
liberty to dissect the claims; to remove specific limitations; to
redraft the claims as though they called for "a carrier polymer"
broadly; and to hold that the redrafted method would have been
obvious over Maclaren's disclosure of the same general process
using a partially oxidized wool starting material. See In re
Appeal No. 95-0063
Application No. 07/813,868
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Ochiai, 71 F.3d 1565, 1571, 37 USPQ2d 1127, 1132-33 (Fed. Cir.
1995); In re Brouwer, 77 F.3d 422, 425-26, 37 USPQ2d 1663, 1666
(Fed. Cir. 1995).
The examiner's decision is reversed.
REVERSED
SHERMAN D. WINTERS )
Administrative Patent Judge )
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)
)
)
WILLIAM F. SMITH ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
)
TEDDY S. GRON )
Administrative Patent Judge )
Appeal No. 95-0063
Application No. 07/813,868
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Holly D. Kozlowski
DINSMORE & SHOHL
1900 Chemed Center
255 East Fifth St.
Cincinnati, OH 45202