Ex Parte Gasteyer et al

Patent Trial and Appeal Board

Mar 26, 2014

11702479 (P.T.A.B. Mar. 26, 2014)

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.
11/702,479 02/05/2007 Theodore Hall Gasteyer III 21684 4285
27182 7590 03/27/2014
PRAXAIR, INC.
LAW DEPARTMENT - M1-04
39 OLD RIDGEBURY ROAD
DANBURY, CT 06810-5113
EXAMINER
LU, JIPING
ART UNIT PAPER NUMBER
3743
MAIL DATE DELIVERY MODE
03/27/2014 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 THEODORE HALL GASTEYER III, ROBERT REX SEVER,
BALAZS HUNEK, NIGEL GRINTER,
and MELINDA LEE VERDONE
____________

Appeal 2011-010349
Application 11/702,479
Technology Center 3700
____________

Before GAY ANN SPAHN, MICHAEL C. ASTORINO, and
HYUN J. JUNG, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1-3, 5-7, 9, 11-19, 24, 25, 27, and 29-38. Claims 4,
8, 10, 20-23, 26, and 28 are cancelled. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).
We REVERSE.
Appeal 2011-010349
Application 11/702,479

2
Claimed Subject Matter
Claims 1 and 29 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the subject matter on appeal.
1. A method of lyophilizing a material comprising the steps of:
pressurizing the atmosphere within a chamber above
atmospheric pressure and cooling the material in the pressurized
chamber at a prescribed cooling rate to a desired nucleation
temperature;
rapidly decreasing the pressure in the chamber to
uniformly induce nucleation of freezing in the material at the
desired nucleation temperature;
further cooling the nucleated material to or below a final
temperature to freeze the material; and
drying the frozen material to produce a dried product
having reduced moisture or solvent.

Rejections
Claims 1-3, 5-7, 9, 19, 24, 25, 27, and 29-32 are rejected under 35
U.S.C. § 102(b) as anticipated by Truong-Le (US 2003/0219475 A1, pub.
Nov. 27, 2003).
Claims 11-18 and 33-38 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Truong-Le.

OPINION
Anticipation by Truong-Le
Claims 1-3, 5-7, 9, 19, 24, 25, and 27
Claim 1 recites “[a] method of lyophilizing a material comprising,”
among other things, a step of “rapidly decreasing the pressure in the
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Application 11/702,479

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chamber to uniformly induce nucleation of freezing in the material at the
desired nucleation temperature.” App. Br., Clms. App’x.
The Examiner finds Truong-Le discloses the step of “rapidly
decreasing,” as recited in claim 1. Ans. 3-4. The Examiner explains that
“Truong-Le also discloses in paragraph 0070, lines 8-10 that the material is
to be freeze dried in a rapidly reducing pressure to generate the foam with
ice nucleation.” Ans. 5.
The Appellants contend Truong-Le does not disclose that the
“pressure decrease occurs rapidly, as is required by independent claim 1.”
App. Br. 10. The Appellants’ contention is persuasive.
At the outset, we note that the Appellants’ Specification includes a
subtitle “STEP 2 – RAPIDLY DECREASING THE PRESSURE” at page
20. The first paragraph under this subtitle states “[t]he depressurization
should be finished in several seconds or less, preferably 40 seconds or less,
more preferably 20 seconds or less, and most preferably 10 seconds or less.”
Spec. para. [0053]. The scope of claims in patent applications is determined
by giving claims “their broadest reasonable interpretation consistent with the
specification” and “in light of the specification as it would be interpreted by
one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d
1359, 1364 (Fed. Cir. 2004). Based on the above-quoted portion of the
Specification, the term “rapidly decreasing” would be interpreted by one of
ordinary skill in the art as “several seconds or less.” This interpretation is
consistent with the remainder of the Specification. Notably, the preferences
of “40 seconds or less, more preferably 20 seconds or less, and most
preferably 10 seconds or less” would help instruct one of ordinary skill in
the art to understand the scope of “several seconds or less,” i.e., “rapidly
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Application 11/702,479

4
decreasing.” For instance, the Specification provides Example 10 wherein a
“freeze-dryer was . . . depressurized from about 14 psig to about atmospheric
pressure in less than five seconds to induce nucleation of the solution within
the vials.” Spec. para. [0091] (emphasis added).
As discussed above, the Examiner finds that Truong-Le’s paragraph
[0070] at lines 8-10, which states “[t]he pressure is rapidly reduced to about
50 mTorr for about an half an hour to generate the foam with ice nucleation
and ice propagation throughout” (emphasis added), reads on the step of
“rapidly decreasing” of claim 1.
The Appellants assert that “the pressure decrease in [the] Truong-Le
reference is disclosed to occur over an hour or so.” App. Br. 10 (citing
paras. [0012] and [0023]). Although the Appellants do not appear to address
lines 8-10 of paragraph [0070] of Truong-Le, which discloses rapidly
reducing/decreasing pressure over a half an hour, the assertion is nonetheless
persuasive. Thus, the issue regarding the “rapidly decreasing” step of claim
1 is ultimately whether Truong-Le’s disclosure of half an hour reads on
“rapidly decreasing,” as required by claim 1.
As discussed above, the term “rapidly decreasing” is interpreted as
“several seconds or less” and the Specification is instructive as to the phrase
“several seconds or less” by explaining that “several seconds or less” is
“preferably 40 seconds or less, more preferably 20 seconds or less, and most
preferably 10 seconds or less.” Spec. para. [0053]. Based on the guidance
from the Specification, we cannot agree with a finding that a “half an hour”
time period, albeit identified as “rapidly” reducing/decreasing in Truong-Le,
corresponds to “rapidly decreasing” as required by claim 1, i.e., “several
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5
seconds or less.” Thus, Truong-Le’s disclosure of half an hour does not read
on “rapidly decreasing,” as required by claim 1.
Thus, the Examiner’s rejection of independent claim 1, and dependent
claims 2, 3, 5-7, 9, 19, 24, 25, and 27, as anticipated by Truong-Le is not
sustained.
Claims 29-32
Claim 29 recites “[a] method of lyophilizing a material comprising,”
among other things, a step of “bringing the material to a temperature near or
below a phase transition temperature in a pressurized gas atmosphere.” App.
Br., Clms. App’x.
With respect to the aforementioned step of claim 29, the Examiner
explains that “[a]s described in Paragraphs 22-23 of [the] Truong-Le patent,
the formulation of the material can be held to a temperature near a phase
transition temperature in pressure controlled chambers.” Ans. 9; see also
Ans. 3-4.
The Appellants contend that the aforementioned step of claim 29 is
not present in Truong-Le. App. Br. 11.
The Appellants’ contention is persuasive. Although paragraph 22 of
Truong-Le discloses cooling or bringing a material to a phase transition
temperature, paragraph 22 does not disclose that bringing the material to the
phase transition temperature occurs “in a pressurized gas atmosphere.”
Paragraph 23 discloses the term “pressure controlled chambers,” but does
not disclose that the previously described step of bringing the material to the
phase transition temperature occurs in the “pressure controlled chambers.”
In other words, the Examiner has not provided sufficient evidence that
Truong-Le discloses the step of “bringing the material to a temperature near
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or below a phase transition temperature in a pressurized gas atmosphere,” as
recited by claim 29. As such, the Examiner’s finding is inadequately
supported.
Thus, the Examiner’s rejection of independent claim 29, and
dependent claims 30-32, as anticipated by Truong-Le is not sustained.

Obviousness based on Truong-Le
The Examiner rejects claims 11-18, which depend from claim 1, and
claims 33-38, which depend from claim 29, by modifying “the pressure in
the chamber and the material temperature” in Truong-Le’s method to meet
the limitations of claims 11-18 and 33-38. See Ans. 4.
However, the Examiner’s rejection of dependent claims 11-18 does
not explain how modifying “the pressure in the chamber and the material
temperature” in Truong-Le’s method would remedy the deficiency that
Truong-Le’s half an hour time period does not read on “rapidly decreasing,”
as required by claim 1. Likewise, the Examiner’s rejection of dependent
claims 33-38 does not explain how modifying “the pressure in the chamber
and the material temperature” would remedy the deficiency that paragraphs
22 and 23 of Truong-Le do not read on “bringing the material to a
temperature near or below a phase transition temperature in a pressurized
gas atmosphere,” as required by claim 29. Since modifying “the pressure in
the chamber and the material temperature” in Truong-Le’s method would
not remedy the deficiencies discussed above with regard to the rejection of
claims 1 and 29, the rejection of claims 11-18 and claims 33-38 is also not
sustained.
Appeal 2011-010349
Application 11/702,479

7
DECISION
We REVERSE the rejections of claims 1-3, 5-7, 9, 11-19, 24, 25, 27,
and 29-38.

REVERSED

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