Ex Parte Kolesinski et al

Patent Trial and Appeal Board

Jul 23, 2013

11895209 (P.T.A.B. Jul. 23, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/895,209 08/23/2007 Henry S. Kolesinski HK003AFP-DIV 9751
7590 07/23/2013
Gaetano D. Maccarone
63 Chelsea Street
Charlestown, MA 02129
EXAMINER
THERKORN, ERNEST G
ART UNIT PAPER NUMBER
1776
MAIL DATE DELIVERY MODE
07/23/2013 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 HENRY S. KOLESINSKI and ROBERT S. COOLEY
____________________

Appeal 2012-001597
Application 11/895,209
Technology Center 1700
____________________

Before PETER F. KRATZ, CATHERINE Q. TIMM, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 1, 2, 5-8, and 19. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
Appellants’ claims are directed to a chromatographically active
separation member. Claim 1 is illustrative:
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Claim 1. A chromatographically active separation
member comprising
a) a substrate having first and second opposed surfaces;
and
b) a continuous film of a chromatographically active
functional polymeric material carried by said first surface, said
continuous film having a thickness of from about 0.25µ to
about 3.0µ.
(Claims App’x at Br. 15.)
The Examiner rejects claims 1, 2, 5-8, and 19 under 35 U.S.C.
§ 103(a) as obvious over Gill1 in view of Dickey2, either alone or further in
view of either Overton3 or Betz4. The Examiner further rejects claim 7 over
Gill in view of Dickey, either alone or further in view of either Overton or
Betz, and further in view of Dorgebray5. The Examiner also rejects claim 8
over Gill in view of Dickey, either alone or further in view of either Overton
or Betz, and further in view of Varady6.
Appellants’ arguments focus on two limitations found in claim 1, the
limitation that the film of a chromatographically active functional polymeric
material be continuous (Br. 8-11 (Issue A)) and the limitation that the film
have a thickness from about 0.25µ to about 0.3µ (Br. 11-12 (Issue B)). With
respect to the further rejections of claims 7 and 8, Appellants rely upon the
reasons they advance against the rejection of claim 1 (Br. 13-14 (Issues C

1 Alison L. Gill et al., The Continuous Isolation of Trypsin by Affinity
Absorbent Recycling, 56 BIOTECHNOLOGY & ENGINEERING 538 (1997).
2 Dickey, US 4,548,802, patented Oct. 22, 1985.
3 Overton, US 6,068,684, patented May 30, 2000.
4 Betz et al., US 5,653,875, patented Aug. 5, 1997.
5 Jozefonvicz née Dorgebray et al., US 5,372,820, patented Dec. 13, 1994.
6 Varady et al., US 5,030,352, patented July 9, 1991.
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and D)). Therefore, claim 1 is representative for resolving the issues on
appeal.

OPINION
Issue A
The Examiner finds that Gill describes a separation member with a
continuous film of a chromatographically active functional polymeric
material as required by claim 1, or alternatively, that Dickey teaches such a
continuous film (Ans. 4-6).
Appellants contend that the film of Gill is not “continuous” as claimed
because Gill covalently bonds the functional capture moieties (i.e., soybean
trypsin inhibitor or SBTI functional moiety) to the nylon belt and, therefore,
there are areas of the belt free of capture material (Br. 9). This contrasts,
according to Appellants, with their film in which the capture moiety is
present over the entire surface (Br. 9-10).
Further, Appellants contend that Dickey teaches sorbent materials that
are not the same as the continuous film of chromatographically active
functional polymeric material recited in their claims (Br. 11).
The issue on appeal is: Have Appellants identified a reversible error
in the Examiner’s finding that Gill, or alternatively Dickey, teaches a
continuous film of a chromatographically active functional polymeric
material?
To resolve the issue, we must first determine the meaning of
“continuous” as recited in claim 1. Claim interpretation is a matter of law
and will normally control the remainder of the decisional process. Panduit
Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1567-68 (Fed. Cir. 1987).
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In determining the meaning of “continuous”, we consider how that
term is used in the Specification. See U.S. v. Adams, 383 U.S. 39, 49 (1966)
(“[I]t is fundamental that claims are to be construed in the light of the
specifications and both are to be read with a view to ascertaining the
invention.”).
Appellants’ Specification refers to a “thin layer of a
chromatographically active capture material” (Spec.7, ¶ 0002). “The capture
material is a thin layer of a functionalized polymeric material which is
chemically interactive with the desired product.” (Spec., ¶ 0014.) “The
functionalized polymeric material includes a moiety which exhibits a high
affinity and specificity for the product of interest.” (Id.) This moiety may
be attached by chemically reacting the substrate material with a functional
monomeric or polymeric material (Spec., ¶ 0024).
The thin layer is referred to as continuous in various portions of the
Specification (Spec. ¶¶ 0013, 0021, 0040, 0041, and 0043) . Those portions
of the Specification indicate that directly reacting the capture material with
the substrate will create a continuous layer. For instance, the Specification
states:
In another aspect of the invention there is provided a
chromatographic separation web which includes a substrate
carrying on one or both sides a thin continuous layer of a
capture material. Any capture chemistry can be used to
separate the desired product(s) from the mixture. The web may
be chemically modified using various interactive functional
chemistries such as by depositing a coating of the capture
material on the substrate or by direct reaction of the capture
material with the substrate.

7 References to the “Spec.” are to Substitute Specification filed October 29,
2007.
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(Sub. Spec. ¶ 0013 (emphasis added); see also ¶ 0024.)
In addition, the Specification uses the word “continuous” to
distinguish a “continuous” layer from a “patterned” layer of separate lines or
dots with no underlying continuous layer (Spec. ¶¶ 0021 and 0040-43)8.
While Appellants attempt to distinguish layers formed by covalent
bonding of functionalized moieties from the continuous layer of capture
material of their Specification, the difference is illusory. Appellants’
Specification does not use the term “continuous” to so distinguish such
layers. Appellants use the term to distinguish a continuous coating from a
discontinuous patterned coating.
We determine that “continuous film” as recited in claim 1
encompasses films with functional groups covalently bonded onto a
substrate.
There is no dispute that Gill teaches a polymer belt (substrate) to
which a chromatographically active functional polymeric material (SBTI
bonded to the substrate through a polyethyleneimine spacer) has been
applied (Br. 9; Ans. 4-5; see also Gill 540, col. 1, ll. 4-8). To form the belt,
Gill immerses an activated nylon belt into a solution of the
polyethyleneimine followed by immersing into a solution of SBTI (Gill,
540, col. 1, “Preparation of Affinity Belts”). Such an immersion method
allows the reaction to occur over the entire surface of the nylon belt. Gill’s
bonded functional material is a continuous film within the meaning of claim
1.

8 The Specification discloses an embodiment including a patterned layer of
capture material that is a continuous layer with thickness variations in
accordance with the pattern (Spec. ¶¶ 0040-43). Therefore, a patterned layer
is only discontinuous if it is has no such underlying continuous layer.
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With respect to Dickey, the Examiner finds Dickey discloses coating a
belt with a chromatographically active functional polymer material, namely
a gel as disclosed in column 5, lines 20-27 and methyl amine substituted
sepharose gel as disclosed in column 6, lines 58-59 (Ans. 6). There is no
dispute that the methyl amine substituted sepharose gel is a
chromatographically active functional polymeric material as required by
claim 1 (compare Br. 11 with Ans. 5-6).
Given that Dickey discloses a gel that is the required material of the
claim, Appellants’ contention that Dickey’s sorbent materials “are not the
same as the continuous film recited in the claims” (Br. 11) is unpersuasive.
The Examiner does not rely upon the sorbent materials to support the
rejection.
Issue B
With respect to the thickness limitation of the claim, Appellants focus
their attention on the teachings of Overton and Betz and disregard the
Examiner’s finding with respect to the rejection over Gill in view of Dickey
that “[i]t is considered to be within the skill of a person of ordinary skill in
the art to determine the thickness of the coating.” (Ans. 6 and 12.)
As we determined above, both Gill and Dickey disclose including a
continuous film on the substrate in order to form a chromatographically
active separation member. In such a situation, the Examiner’s
determination, which relies upon the skill of the ordinary artisan, was
proper. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (An
improvement in the art is obvious if “it is likely the product not of
innovation but of ordinary skill and common sense.”); In re Huang, 100 F.3d
135, 139 (Fed. Cir. 1996) (a difference in thickness ratio did not support a
conclusion of non-obviousness because such a modification “was within the
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capabilities of one skilled in the art”) (quoting In re Aller, 220 F.2d 454, 456
(CCPA 1955)); and Aller, 220 F.2d at 456 (“where the general conditions of
a claim are disclosed in the prior art, it is not inventive to discover the
optimum or workable ranges by routine experimentation.”).

CONCLUSION
We sustain the Examiner’s rejections.

DECISION
The Examiner’s decision is affirmed.

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).

AFFIRMED
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