Ex Parte ETZEL et al

Patent Trial and Appeal Board

Sep 28, 2018

14182448 (P.T.A.B. Sep. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/182,448 02/18/2014
108197 7590 10/02/2018
Parker Highlander PLLC
1120 South Capital of Texas Highway
Bldg. 1, Suite 200
Austin, TX 78746
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Mark R. ETZEL
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
W ARF.P0047US 8545
EXAMINER
GWARTNEY, ELIZABETH A
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
10/02/2018 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):
docket@phiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK R. ETZEL, ABHIRAM ARUNKUMAR, and
SHANTANU AGARWAL
Appeal2017-011534
Application 14/182,448
Technology Center 1700
Before MARK NAGUMO, MICHAEL P. COLAIANNI, and
MONTE T. SQUIRE, Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision to finally reject claims 1, 3-25, 27, and 29, which constitute all the
claims pending in this application. We have jurisdiction under 35 U.S.C.
§ 6(b ). We AFFIRM.
1 In explaining our Decision, we refer to the Specification filed February 18,
2014 ("Spec."); Final Office Action dated September 16, 2016 ("Final
Act."); Advisory Action dated March 15, 2017 ("Adv. Act."); Appeal Brief
filed May 16, 2017 ("Appeal Br."); and Examiner's Answer dated August
24, 2017 ("Ans.").
2 Appellants are Applicants, Wisconsin Alumni Research Foundation and
Dairy Management Inc. Bib Data Sheet 1. Wisconsin Alumni Research
Foundation is also identified in the Appeal Brief as the real party in interest.
Appeal Br. 3.
Appeal2017-011534
Application 14/182,448
The Claimed Invention
Appellants' disclosure relates to the field of protein chemistry and,
particularly, to a process of concentrating milk proteins using negatively
charged ultrafiltration. Spec. 2. According to Appellants, the claimed
invention includes the production and use of negatively-charged
ultrafiltration membranes to achieve high hydraulic permeability with low
sieving coefficients. Abstract; Spec. 7.
Claim 1 is illustrative of the claimed subject matter on appeal and is
reproduced below from the Claims Appendix to the Appeal Brief ( Appeal
Br. 12) (key disputed claim language italicized and bolded):
1. A method of concentrating dairy proteins
compnsmg:
(a) providing a dairy protein mixture containing
dairy proteins;
(b) contacting said mixture with a negatively
charged ultrafiltration membrane wherein said
ultrafiltration membrane has a molecular weight cutoff of
100 kDa or greater and a negative charge of more than 3
milliequivalents per square meter,
wherein said ultrafiltration produces a hydraulic
permeability of more than 120 Liters per hour per square
meter per bar and a protein sieving coefficient of no more
than about 0.05 of said dairy proteins of interest, thereby
producing concentrated dairy proteins.
The References
The Examiner relies on the following prior art references as evidence
in rejecting the claims on appeal:
Etzel et al., US 2012/0029165 Al Feb.2,2012
(hereinafter "Etzel")
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Application 14/182,448
Heath Himstedt et al., Chapter 11 - Membranes in the Dairy Industry, Modem
Applications in Membrane Science and Technology, Vol. 1078, 171-224 (2011)
(hereinafter "Himstedt").
The Rejections
On appeal, the Examiner maintains (Ans. 2) the following rejections:
1. Claims 1, 3-25, and 27 are rejected under pre-AIA 35 U.S.C.
§ 102 (b) as being anticipated by or, in the alternative, under pre-AIA 35
U.S.C. § 103(a) as obvious over Etzel. ("Rejection 1 "). Ans. 2.
2. Claim 29 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Etzel in view of Himstedt ("Rejection 2"). Ans. 4.
OPINION
Having considered the respective positions advanced by the Examiner
and Appellants in light of this appeal record, we affirm the Examiner's
rejections based on the fact finding and reasoning set forth in the Answer,
Advisory Action, and Final Office Action, which we adopt as our own. We
highlight and address specific findings and arguments below for emphasis.
Appellants do not present separate argument in response to the
Examiner's Rejections 1 and 2. Rather, Appellants argue claims 1, 3-25,
and 27 (Rejection 1) and claim 29 (Rejection 2) as a group and address both
rejections together. Appeal Br. 4. We select claim 1 as representative and
both Rejections 1 and 2, and all the remaining claims pending in this Appeal
stand or fall with claim 1. 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner determines that Etzel discloses all of the limitations of
claim 1 and thus, anticipates the claim. Ans. 2-3 (citing Etzel ,r,r 7, 27, 48).
Regarding the recitation "a negative charge of more than 3 milliequivalents
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Application 14/182,448
per square meter," the Examiner finds that Etzel inherently discloses this
limitation. Id. at 2. In particular, the Examiner finds that because Etzel
discloses a negatively-charged membrane obtained by a method identical to
the method disclosed in Appellants' Specification, Etzel' s membrane would
inherently display a negative charge, as claimed. Id. at 2, 6-7 (citing Etzel
,r,r 7, 48).
Alternatively, the Examiner finds that Etzel teaches or suggests a
method satisfying all of the steps of claim 1 and thus, determines the
reference would have rendered claim 1 obvious. Ans. 3, 6-8 (citing Etzel iTiT
7, 27, 48, 49, 52, 53). In particular, the Examiner determines that because
charge is recognized in the art as a "result-effective variable," one of
ordinary skill in the art would have optimized the charge of the membrane,
among other variables, to obtain a desired protein fraction/concentration. Id.
at 7-8 ( citing Etzel iTiT 48--49).
Appellants argue that the Examiner's rejections should be reversed
because the prior art Etzel reference is directed to the "fractionation" of a
particular protein species from a protein mixture and, in contrast, the
claimed method is directed to the "concentration" of a dairy protein mixture.
Appeal Br. 5---6. In particular, relying principally on the Declaration of Dr.
Mark Etzel dated July 28, 2016 ("Etzel Deel."), Appellants contend that
Etzel cannot be anticipatory because "concentration and fractionation are
entirely different undertakings which are not 'inherently' found at the same
time." Id. at 5.
We do not find Appellants' argument persuasive of reversible error in
the Examiner's rejections based on the fact-find and reasoning provided by
the Examiner at pages 5-6 of the Answer. In particular, on the record before
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Application 14/182,448
us, we concur with the Examiner's determination that the fractionating of a
particular protein species from a protein mixture Etzel discloses would have
been considered by one of ordinary skill to be a process of concentrating that
particular protein species. As the Examiner finds (Ans. 5), Etzel discloses
that the fractionating results in the permeate having an increased ratio of the
protein of interest as compared to the starting protein mixture (see Etzel ,r 7
( disclosing "said first permeate comprises an increased ratio of said protein
of interest as compared to said protein mixture"). Contrary to what
Appellants argue, we find that Etzel's disclosure in this regard is actually
consistent with Appellants' definition of the term "concentrating" (see
Appeal Br. 6 (arguing "[c]oncentrating means that a product is present at a
higher concentration (e.g., µg/µL) tha[n] in an untreated sample") as well as
the broadest reasonable interpretation of the term. In re Am. A cad. of Sci.
Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)
Appellants next argue that the Examiner's rejections should be
reversed because Etzel does not teach or suggest the recitation "wherein said
ultrafiltration membrane has ... a negative charge of more than 3
milliequivalents per square meter." Appeal Br. 6. In particular, Appellants
contend that the Examiner has failed to establish inherency because
"[ s ]imply mentioning a material that can be used to make a negatively-
charged membrane falls short of providing a teaching sufficient" to support a
finding ofinherency. Id. at 7.
Appellants' argument is not persuasive of reversible error. On the
record before us, we find that a preponderance of the evidence supports the
Examiner's analysis and determination (Ans. 2-8) that Etzel discloses all of
the limitations of claim 1, including the recitation "wherein said
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ultrafiltration membrane has ... a negative charge of more than 3
milliequivalents per square meter." Etzel ,r,r 7, 27, 48, 49, 52, 53. As the
Examiner finds (Ans. 2, 6-7) and, notably, Appellants do not dispute or
challenge in the Appeal Brief, Etzel discloses a negatively-charged
ultrafiltration membrane obtained by the method identical to the method
disclosed by Appellants in the Specification. Compare Etzel ,r 48 with,
Spec. 11, 1. 28-Spec. 12, 1. 12 (same). Thus, as the Examiner's explains
(Ans. 2, 6-7), because Etzel discloses a negatively-charged ultrafiltration
membrane obtained by the method identical to Appellants' disclosed
method, it follows that Etzel's membrane would inherently display "a
negative charge of more than 3 milliequivalents per square meter," as recited
in the claim.
Indeed, it is well settled that:
Where ... the claimed and prior art products are identical or
substantially identical, or are produced by identical or
substantially identical processes, the PTO can require an
applicant to prove that the prior art products do not necessarily
or inherently possess the characteristics of his claimed product.
Whether the rejection is based on 'inherency' under 35 U.S.C. §
102, on 'prima facie obviousness' under 35 U.S.C. § 103,
jointly or alternatively, the burden of proof is the same, and its
fairness is evidenced by the PTO' s inability to manufacture
products or to obtain and compare prior art products.
In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations omitted). See also
In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990).
Moreover, Appellants have not provided persuasive evidence that
shows Etzel' s process would fail to result in an ultrafiltration membrane
having a negative charge of more than 3 milliequivalents per square meter as
recited in claim 1. Appellants' arguments regarding the Etzel Declaration
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(Appeal Br. 5, 8-10) are not well-taken because they are conclusory and
unsupported by persuasive evidence in the record. In re De Blauwe, 736
F.2d 699, 705 (Fed. Cir. 1984). The portions of the Etzel Declaration upon
which Appellant relies (see Etzel Deel. 2--4) are argumentative, lack
adequate factual support, and rest on Dr. Etzel' s uncorroborated opinion
testimony and conclusory statements as the bases for his disagreement with
the Examiner's factual findings. See, e.g., Ashland Oil, Inc. v. Delta Resins
& Refractories, Inc., 776 F.2d 281,294 (Fed. Cir. 1985) ("Lack of factual
support for expert opinion going to factual determinations ... may render
the testimony of little probative value in a validity determination."); Am.
Acad. of Sci. Tech. Ctr., 367 F.3d at 1368 ("[T]he Board is entitled to weigh
the declarations and conclude that the lack of factual corroboration warrants
discounting the opinions expressed in the declarations.") ( citations omitted).
Lastly, Appellants argue that the Examiner has failed to establish that
the ultrafiltration membrane's charge is art recognized as a result-effective
variable. Appeal Br. 8 (citing In re Antoine, 559 F.2d 618 (CCPA 1977).
We do not find Appellants' argument persuasive of reversible error in the
Examiner's rejections because they too are largely conclusory (De Blauwe,
736 F.2d at 705) and for the reasons provided by the Examiner at pages 2-3
and 7-8 of the Answer. In particular, we agree with the Examiner's findings
that charge is recognized in the art as a result-effective variable (Ans. 7) and
determination that one of ordinary skill in the art would have optimized the
pH of the protein mixture and the charge of the membrane to obtain a
desired protein fraction/concentration (id. ,r 8). Etzel ,r,r 48, 49, 52, 53.
"A recognition in the prior art that a property is affected by the
variable is sufficient to find the variable result-effective." In re Applied
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Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012). "[D]iscovery of an
optimum value of a result effective variable in a known process is ordinarily
within the skill of the art." In re Boesch, 617 F.2d 272,276 (CCPA 1980)).
Here, as the Examiner finds (Ans. 7-8), Etzel teaches adjusting the pH of the
protein mixture feed stream to the ultrafiltration membrane's charge is key
to fractionation of proteins and that when the pH of the solution is less than a
certain level, the protein has a net positive charge and conversely, when the
pH is adjusted above a certain level, the protein has a net negative charge.
Etzel ,r,r 48--49. Because Etzel' s disclosure indicates that the charge is
affected by adjusting the pH, on this record, we are persuaded that the
charge is an art-recognized result-effective variable.
Accordingly, we affirm the Examiner's rejections of claims 1, 3-25,
and 27 under pre-AIA 35 U.S.C. § 102 (b) as being anticipated by or, in the
alternative, under pre-AIA 35 U.S.C. § 103(a) as obvious over Etzel
(Rejection 1) and claim 29 under pre-AIA 35 U.S.C. § 103(a) obvious over
the combination of Etzel and Himstedt (Rejection 2).
DECISION/ORDER
The Examiner's rejections of claims 1, 3-25, 27, and 29 are affirmed.
It is ordered that the Examiner's decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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