Ex Parte Charkoudian et al

Board of Patent Appeals and Interferences

Jun 25, 2009

10133015 (B.P.A.I. Jun. 25, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOHN CHARKOUDIAN and NEIL P. SOICE
____________

Appeal 2009-003368
Application 10/133,015
Technology Center 1700
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Decided:1 June 25, 2009
____________

Before TERRY J. OWENS, PETER F. KRATZ, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

KRATZ, Administrative Patent Judge.
DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

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Application 10/133,015

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This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 6-9, 12-14, 16-27, 75, and 76. We have
jurisdiction pursuant to 35 U.S.C. § 6. Oral arguments were presented on
June 11, 2009.
Appellants’ claimed invention is directed to a porous membrane
having a heat stable biomolecule resistant surface coating comprising a
specified crosslinked terpolymer.
Claim 6 is illustrative and reproduced below:
6. A clean, caustic resistant, porous membrane comprising a
microporous membrane substrate and a heat stable biomolecule resistant
surface, wherein said heat stable biomolecule resistant surface is a separately
formed surface coating which comprises a crosslinked terpolymer, said
terpolymer comprising at least two monofunctional monomers selected from
the group consisting of acrylamides, methacrylamides, and N-vinyl
pyrrolidones, and at least one polyfunctional monomer selected from the
group consisting of polyfunctional acrylamides, polyfunctional
methacrylamides, and diacroylpiperazines;

wherein said surface coating is formed in situ on said membrane
substrate by a method comprising exposing said monomers to heat,
ultraviolet light or electron beam;

provided that when said monofunctional monomer comprises an
acrylamide that comprises diacetone acrylamide, said diacetone acrylamide
is present in an amount of no more than 37.5% by weight of said surface.

The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
Stone 3,770,454 Nov. 6, 1973
Barabas 3,941,718 Mar. 2, 1976
Fukutomi 6,484,887 B1 Nov. 26, 2002

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Translation of WO 99/67013, Yoshida et al., “Porous Polyvinylidene
Fluoride Resin Film and Processing for Producing the Same”, p. 24 (Dec.
29, 1999)

Claims 6-9, 12-14, 16-18, 20-27, 75, and 76 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Barabas in view of Yoshida (WO
99/67013).2 Claim 19 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Barabas in view of Yoshida and Fukutomi.
We reverse the stated rejections for reasons set forth in the Appeal
Brief and Reply Brief. Our reasoning follows.
The Examiner relies on Barabas for teaching a composite material
comprising a coated carrier, which composite is disclosed as being useful in
the purification of beer (Ans. 3-4). The Examiner acknowledges that
Barabas does not disclose the use of a micro porous membrane as the carrier,
as required by the appealed claims (Ans. 4). See appealed independent
claims 6, 14, and 75. The Examiner turns to Yoshida (Takamura) for a
teaching of a porous polyvinylidene fluoride (PVDF) porous membrane that
is used for purifying beer (Ans. 4). The Examiner maintains that the use of

2 Our references to Yoshida are to the English language translation by FLS,
Inc., of record. The Examiner and Appellants refer to Yoshida using the
second named inventor’s surname (Takamura). Stone (U.S. Patent No.
3,770,454) is referenced in the body of the first stated rejection for an
alleged “state of fact” but is not enumerated as a reference being relied upon
in the first sentence of either of the stated grounds of rejection (Ans. 3-5).
However, the Examiner does list Stone as evidence being relied upon
elsewhere (see, e.g., Ans. 3, Item No. 8). Moreover, Appellants do not
quibble with the Examiner as to whether or not Stone is properly before us
(see generally Reply Brief). Accordingly, we shall likewise consider Stone
as part of the evidence before us to the extent relied upon by the Examiner in
rejecting the appealed claims.

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the PVDF membrane of Yoshida as the carrier of Barabas would have been
obvious to one having ordinary skill in the art at the time of the invention
because such a PVDF membrane “is widely used in beer purification and
excellent in chemical resistance and mechanical properties” (id.).
As for the claimed requirement that the micro porous membrane
substrate coating provides a biomolecule resistant surface, the Examiner
turns to Stone for allegedly teaching an amount of an enzyme complex
present in beer, which value the Examiner attributes to the composite
material of Barabas as an enzyme binding property that is said to be
comparable to Appellants’ “biomolecule resistant” surface limitation
characteristic set forth in all of the independent claims on appeal (Ans. 4-5).
Aside from maintaining that the Examiner’s proposed combination of
Barabas and Yoshida (Takamura) is not tenable for establishing the
obviousness of employing Yoshida’s membrane as an inert carrier substrate
in Barabas, Appellants take issue with the Examiner’s insistence that the
composite material of Barabas is biomolecule resistant. This determination
of the Examiner is incorrect, according to Appellants, because Barabas
discloses a composite material as an adsorbent for removing solutes, such as
proteinaceous complexes, from beverages such as beer (App. Br. 4-5). In
particular, Appellants argue that the Examiner has reversibly erred by
attributing to the composite material of Barabas a biomolecule binding
property that allegedly corresponds to that required by the appealed claims
(Reply Br. 1-3). According to Appellants, this is because the Examiner’s
attribution is improvidently premised on an alleged teaching of Stone
concerning beer additives; that is, beer containing a specified quantity of
added enzyme complex, which asserted teaching of Stone is inadequate for
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ascribing a biomolecule resistance property to any particular adsorbent
suggested by Barabas (id.).

PRINCIPAL ISSUE
Have Appellants identified reversible error in the Examiner’s
obviousness rejections by arguing that that the Examiner improperly
attributes a biomolecule resistant surface property to the composite
adsorbent of Barabas based on alleged teachings of Stone with respect to
beer enzyme complex content?

PRINCIPLES OF LAW
It is well settled that the burden of establishing a prima facie case of
non-patentability resides with the Patent and Trademark Office (PTO). See
In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984).
A sustainable obviousness rejection must be accompanied by “some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)
(quoted with approval in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007)).
Pending claim terms are given their broadest reasonable construction
as they would be understood by one of ordinary skill in the art when read in
light of and consistently with the Specification. “When the applicant states
[in his or her specification] the meaning that the claim terms are intended to
have, the claims are examined with that meaning . . . .” In re Zletz, 893 F.2d
319, 321 (Fed. Cir. 1989).

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FINDINGS OF FACT
The Specification provides that:
[a]s used herein, the terms “biomolecule resistant” or
“biomolecule resistance” as applied to membranes or
membrane surfaces of the invention mean a membrane or
membrane surface that adsorbs less than about 30 micrograms
of IgG per square centimeter of membrane area as measured by
the IgG binding test described herein.

Spec. 13: 28-31.

Appellants provide a test for biomolecule resistance to IgG protein
adsorption for a membrane disk (Spec. 28-29).
Appellants furnish a Total Organic Content method for determining
extractable levels for membranes of a particular size using a filled 40 ml vial
for extraction testing 47 mm disks of membrane (Spec. 29).
Barabas discloses an adsorbent system (composite material)
comprising an inert carrier plus an insoluble polymeric coating (col. 1, ll. 63-
69, col. 2, ll. 18-22). In particular, Barabas discloses that “[t]ypical carriers
can be swelling or non-swelling clays, zeolites, alkaline earth metal oxides,
and hydroxides, silica gel, glasses, ion exchange resins, talc, diatomaceous
earth and the like” (col. 2, ll. 11-14).
Barabas generically notes that a polymeric substrate could be
employed as a carrier; however, the Examiner has found that Barabas does
not disclose (“teach”) a micro-porous membrane as a carrier (Barabas, col.
2, ll. 60-62; Ans. 4).
Barabas furnishes an example of an inert carrier/polymer coating
combination that includes a specified diatomaceous earth as the carrier
(substrate), which carrier/polymer coating combination is disclosed as being
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useful as an adsorbent (chill-proofing agent) for purifying beverages such as
beer and wine (Examples 1 and 7).
Example 3 of Barabas is directed to a carrier/coating combination that
employs an inorganic inert carrier comprising montmorillonite (Barabas, col.
5, l. 63-col. 6, l. 4). The Example 1 procedure that is also followed in
Example 3 includes drying a washed polymer reaction product/carrier
combination using a vacuum oven and ball milling the dry polymer-carrier
combination (Barabas, col. 5, ll. 39-43 and col. 5, l. 65-col. 6, l. 4).
The Examiner has not pointed to any disclosure in Barabas that
explicates a particular biomolecule resistance property for the disclosed
adsorbent system (see generally Examiner’s Answer).
Yoshida is directed to PVDF- based hollow fiber porous membranes
disclosed as possessing excellent water permeability and pressure resistance
with a surface having a high open pore ratio (pp. 3-7).
Yoshida discloses that the membrane can be used for recovery of
usable materials from beer fermentation broths or enzyme broths, etc. (p.22).
The Examiner has not pointed to any disclosure of Yoshida that would
suggest coating the membrane or that would suggest that a particular
biomolecule resistance for the membrane or membrane surface would have
been a sought characteristic for the membrane of Yoshida (see generally the
Examiner’s Answer).
Stone is directed to chill proofing fermented malt beverages via the
addition of an enzyme complex preparation in combination with at least one
specified sulfite salt and/or a specified ascorbate salt using about 1-5 ppm
enzyme complex preparation (col. 2, ll. 34-44).
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Absent a combination with salt or a tannic acid pretreatment, Stone
indicates that about 15-25 ppm of enzyme complex preparation is required to
satisfactorily chill proof specified American type beers (col. 2, ll. 8-26).
Fukutomi discloses ion selective membranes that comprise a woven
fabric-shaped backing, a matrix component, and a cationic or anionic
polymer component that may be cross-linked, and which membranes are
disclosed as being resistant to pinhole development (col. 2, ll. 38-60, col. 3,
ll. 30-35). The ionic polymer component may be formed by chemically
modifying a non-ionic polymer or formed from polymerizing anionic or
cationic monomers with or without known nonionic monomers (Fukutomi,
col. 3, ll. 47-55 and col. 4, ll. 3-9).
Fukutomi discloses, inter alia, 2-(meth)acryloylamino - 2- methyl-1-
propanesulfonic acid as a typical anionic monomer useful in forming an
ionic polymer (col. 3, l. 56 –col. 4, l. 2).

ANALYSIS
All of the appealed claims require a porous membrane including a
micro porous substrate having a biomolecule resistant surface that comprises
a specified terpolymer (see independent claims 6, 14, and 75). Appellants
state the meaning of the claim term “biomolecule resistant” in the
Specification (see, e.g., Spec 13: 28-31). Accordingly, in giving the
appealed claims the broadest reasonable construction that they warrant as
they would have been understood by one of ordinary skill in the art when
read in light of the Specification, we determine that the claim term
“biomolecule resistant” requires a “membrane surface that adsorbs less than
about 30 micrograms of IgG per square centimeter of membrane area as
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measured by the IgG binding test described” in the Specification (Spec. 13:
28-31, 28-29).
In asserting the obviousness of the claimed porous membrane over the
asserted combined teachings of Barabas and Yoshida, the Examiner (1)
points to Stone’s disclosure of a 25 ppm upper endpoint for a disclosed
range of an amount of an enzyme complex added to an American type beer
for satisfactory chill proofing the beer as a state of fact; (2) converts
(somehow) the disclosed upper range value for a beer enzyme complex
additive that was provided in units of parts per million (ppm) to units of
micrograms per centimeter squared (µm/cm2) by employing a multiplier of
40 ml and a divisor of 52.05 cm2 taken from page 29 of Appellants’
Specification wherein a Total Organic Content method for determining
extractable levels for membranes of a particular size using a filled 40 ml vial
for extraction was set forth; and (3) ascribes the reported converted value
(19 µm/cm2) for the beer additive as an adsorption limit for the composite
material of Barabas that allegedly corresponds to the biomolecule resistance
of the membrane surface of the appealed claims (less than about 30
micrograms of IgG per square centimeter of membrane area as measured by
the IgG binding test).
As we found above, the binding test is described at pages 28 and 29 of
the Specification separately from the Total Organic Carbon Extractable test
set forth at page 29 of the Specification. The latter test described a
conversion of ppm to µm C per cm2 related to the apparatus and techniques
employed therein. The Examiner has not fairly explained how the asserted
conversion of Stone’s enzyme complex additive upper limit value using
conversion factors from Appellants’ disclosed Total Organic Carbon
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Extractable test and the application thereof to a composite adsorbent of
Barabas favors the Examiner’s obviousness position before us.
Like Appellants, we can not subscribe to the Examiner’s conversion
of the Stone data respecting a beer additive and the attribution of that
converted value to the composite material of Barabas as a biomolecule
resistance property that corresponds to the biomolecule resistance required
of the claimed biomolecule resistant membrane surface (Reply Br. 1-3).
The Examiner has not otherwise satisfactorily articulated how the
proposed combination of Barabas and Yoshida, and/or the proposed
combination of Barabas, Yoshida, and Fukutomi with respect to the separate
rejection of dependent claim 19, would have reasonably resulted in the
claimed subject matter, including the membrane biomolecule resistant
surface.
On this record, we reverse the stated rejections.

CONCLUSION
Appellants have identified reversible error in the Examiner’s
obviousness rejections because the Examiner improperly attributes a
biomolecule resistant surface property to the composite adsorbent of Barabas
based on alleged teachings of Stone with respect to beer enzyme complex
content.

ORDER
The decision of the Examiner to reject claims 6-9, 12-14, 16-18, 20-
27, 75, and 76 under 35 U.S.C. § 103(a) as being unpatentable over Barabas
in view of Yoshida (WO 99/67013); and to reject claim 19 under 35 U.S.C.
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§ 103(a) as being unpatentable over Barabas in view of Yoshida, and
Fukutomi is reversed.

REVERSED

PL Initial:
sld

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