Ex Parte Merino et al

Patent Trial and Appeal Board

Dec 30, 2014

12956237 (P.T.A.B. Dec. 30, 2014)

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.
12/956,237 11/30/2010 Sandra Patricia Merino 0005630USV1/1267 9021
27623 7590 12/30/2014
OHLANDT, GREELEY, RUGGIERO & PERLE, LLP
ONE LANDMARK SQUARE, 10TH FLOOR
STAMFORD, CT 06901
EXAMINER
SORKIN, DAVID L
ART UNIT PAPER NUMBER
1774
MAIL DATE DELIVERY MODE
12/30/2014 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 SANDRA PATRICIA MERINO, STEVEN J. DALESSIO, and ROBIN
ROY LOUIS RUDY OTTEN
____________

Appeal 2013-004046
Application 12/956,237
Technology Center 1700
____________

Before CHUNG K. PAK, MARK NAGUMO, and WESLEY B. DERRICK,
Administrative Patent Judges.

PAK, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal1 under 35 U.S.C. § 134(a) from the Examiner’s
decision2 finally rejecting claims 1 and 2, which are all of the claims pending in the
above-identified application. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
The subject matter on appeal relates to “centrifuge equipment utilizing a
removable core which can be replaced with another core of different dimensions to

1 Appeal Brief filed October 15, 2012 at 3. Reply Brief filed January 28, 2013.
2 Final Rejection mailed September 6, 2011(“FR.”) at 2-4 and the Examiner’s
Answer mailed October 26, 2012 (“Ans.”) at 4-6.
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Application 12/956,237

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obtain directly linear scale process results for a particulate protein separation and
purification protocol.” (Spec. 1, ¶ [0002].) The use of such centrifuge equipment,
unlike a prior art centrifuge system, is said to allow for the adjustment of “the
volume of the rotor assembly so the same centrifuge systems can be used for
sedimentation processes of multiple scales while maintaining the same separation
characteristics for each process.” (Spec. 7-8, ¶ [0025].) According to page 15,
paragraph [0058], of the Specification:
The present invention provides for a centrifuge rotor assembly
comprising means for adjusting the volume of the rotor assembly to
accommodate, for example, large-scale, pilot scale and laboratory
scale separations. The separations utilizing the present invention are
both scalable and linear. Scalability is the ability to go from one
volume of product to another volume of product without significant
changes to the centrifuge protocol. Linearity is the ability for the
centrifuge to separate different density materials to yield the same
purification results and /or concentration. . . . [(emphasis added.)]

Details of the appealed subject matter are recited in representative
independent claim 13 which is reproduced below from the Claims Appendix of the
Appeal Brief:
1. A method for achieving linear scale separation of particles of a
product during centrifugation comprising the steps of:

operating a centrifuge apparatus at certain predetermined
parameters depending upon a product to be separated;

placing a first core having a first core configuration in a rotor
housing to define a first rotor assembly having a first volume
capacity;

3 Claim 2, like claim 1, is also drawn to a method of “achieving linear scale
separation of particles a product” with “a second particle separation of the product
which is a linear change with respect to the first particle separation.”
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rotating the first rotor assembly having the first volume
assembly having the first volume capacity in the centrifuge apparatus
and passing the product through the first rotor assembly during
rotation thereof so as to achieve a first particle separation of the
product;

substituting a second core having a second core configuration
within the rotor housing to define a second rotor assembly having a
second volume capacity that is different than the first volume
capacity; and

rotating the second rotor assembly having the second volume
capacity in the centrifuge apparatus and passing the product through
the second rotor assembly during rotation thereof so as to achieve a
second particle separation of the product which is a linear change
with respect to the first particle separation.

(App. Br. 9 (emphasis added).)
Appellants seek review of the Examiner’s rejection of claims 1 and 2 under 35
U.S.C. §103(a) as unpatentable over the disclosures of Cline (Cline, “Continuous
Sample Flow Density Gradient Centrifugation,” Progress in Separation and
Purification, vol. 4, Interscience Publisher, pp. 297-324 (1971)).

DISCUSSION
Upon consideration of the evidence on this record, we concur with
Appellants that the Examiner has not carried the burden of establishing a prima
facie case of obviousness regarding the subject matter recited in claims 1 and 2
within the meaning of 35 U.S.C. § 103(a). As correctly explained by Appellants,
the Examiner’s § 103(a) rejection is predicated upon misinterpretation of the
limitation “linear change” in the “method for achieving linear scale separation of
particles of a product” recited in the claims on appeal. (App. Br. 3-8 and Reply Br.
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2-5.) When the Specification expressly or impliedly defines the limitation “linear
change” in the context of the “method for achieving linear scale separation of
particles a product” recited in the claims on appeal, as explained by Appellants in
the Appeal Brief and the Reply Brief, such definition in the Specification governs
the claim interpretation analysis. 4 Phillips v. AWH Corp., 415 F.3d 1303, 1321
(Fed. Cir. 2005) (“the specification is ‘the single best guide to the meaning of a
disputed term,’ and that the specification ‘acts as a dictionary when it expressly
defines terms used in the claims or when it defines term by implication’”); In re
Zletz, 893 F.2d 319, 321-22 (Fed. Cir. 1989) (“During patent examination the
pending claims must be interpreted as broadly as their terms reasonably allow.
When the applicant states the meaning that the claim terms are intended to have,

4 Unlike the claim interpretation proposed by the Examiner based on a
mathematical theory, the Specification defines the limitation “linear change” in
claims 1 and 2 as requiring the same centrifuge separation characteristics, namely
the same purification and/or concentration results, upon separating at least two
different volumes of products having at least two different densities in first and
second rotor assemblies having, inter alia, different volume capacities, for
example, resulting from employing different core configurations in the same rotor
housing as indicated supra. (See also App. Br. 5 and 7 and Reply Br. 2-5.) Upon
return of this application to the Examiner’s jurisdiction, both the Examiner and
Appellants are advised to determine whether Cline teaches the separation
parameters used for obtaining the same desired purification results and/or
concentration results for two rotors having different volume capacities used for
separating two different volumes of products are result effective variables in view
of the foregoing interpretation of the term “linear change” in the claims. In re
Boesch, 617 F.2d 272, 276 (CCPA 1980)(“[D]iscovery of an optimum value of a
result effective variable…is ordinarily within the skill of the art.”); In re Applied
Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012)(“A recognition in the prior
art that a property is affected by the variable is sufficient to find the variable result-
effective.”)

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the claims are examined with that meaning, in order to achieve a complete
exploration of the applicant’s invention and its relation to the prior art.”)
Accordingly, we reverse the Examiner’s § 103(a) rejection for the reasons
set forth in the Appeal Brief and the Reply Brief.

ORDER
Upon consideration of the record, and for the reasons given above, it is
ORDERED that the decision of the Examiner to reject the claims on appeal
under 35 U.S.C. §103(a) is REVERSED;
REVERSED