Fauquet, Nicolas

Patent Trials and Appeals Board

Sep 11, 2020

2019005471 (P.T.A.B. Sep. 11, 2020)

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.
13/884,531 07/22/2013 Nicolas Fauquet F117.12-0001 2976
27367 7590 09/11/2020
WESTMAN CHAMPLIN & KOEHLER, P.A.
SUITE 1100
121 South Eighth Street
MINNEAPOLIS, MN 55402
EXAMINER
PEO, KARA M
ART UNIT PAPER NUMBER
1777
NOTIFICATION DATE DELIVERY MODE
09/11/2020 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):
docketing@wck.com
tsorbel@wck.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte NICOLAS FAUQUET
__________

Appeal 2019-005471
Application 13/884,531
Technology Center 1700
____________

Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
DEBRA L. DENNETT, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL

Appellant1 appeals under 35 U.S.C. § 134(a) the final rejections of
claims 1, 3, 4, 7, 8, 10–13, 16, and 17. Claims 6, 15, 18, and 19 have been
canceled; claims 2, 5, 9, and 14 are withdrawn. We have jurisdiction over
the appeal pursuant to 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Nicolas
Fauquet (Appeal Br. 3).
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STATEMENT OF THE CASE
Appellant’s invention is directed to a method for separating fractions
of a mixture by liquid phase chromatography (Spec. 1:11–12). According to
the Specification, the claimed method addresses issues inherent in the
discontinuous processing of high volumes by liquid phase chromatography
(id. at 2:1–2). Such high-volume processing is said to be complex in terms
of pump and valve connections and entails moving injection points into
various columns or changing flow directions (id. at 2:5–6). According to the
Specification, the claimed method also avoids issues encountered during
gradient chromatography, which requires a longer balancing phase between
two injections and the use of complex solvent mixtures (id. at 2:9–10).
Claim 1 is illustrative (emphasis added):
1. A method comprising:
purifying a mixture by liquid chromatography resulting in
separation of fractions of the mixture to be purified, the
fractions consisting of a sole product of interest, wherein
purifying comprises:
a first set of multiple injections of the mixture, wherein
the first set of multiple injections are made
successively into a first liquid contained in a first
chromatography column and wherein the multiple
successive injections are each separated in time by
a time interval A,
a first set of multiple collecting operations, wherein
fractions of the first liquid in the first
chromatography column are collected successively
and wherein two successive collections of the
fractions are separated in time by the time interval
A, generating the fractions comprising the sole
product of interest and wherein a first collecting
operation of the first set of multiple collecting
operations starts a time after the first injection of
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the first set of multiple injections that is at least
equal to the retention time of the sole product of
interest;
a second set of multiple injections of the fractions
comprising the sole product of interest, wherein
the second set of multiple injections of the
fractions are carried out successively into the first
liquid within the first chromatography column or
are carried out successively into a second liquid
within a second chromatography column, and
wherein two successive injections of the second set
of multiple injections of the fractions into the first
or second liquid are separated in time by a time
interval B, wherein time interval B is not equal to
time interval A and where time interval A and B
are not integer multiples of one another; and
a second set of multiple collecting operations, wherein
fractions from the first liquid or from the second
liquid in which the fractions comprising the sole
product of interest are injected are collected
successively, wherein two successive collecting
operations from the liquid in which the fractions
comprising the sole product of interest were
injected into are separated in time by the time
interval B not equal to time interval A.
Appellant appeals the following rejections:
1. Claims 1, 3, 4, 7, 8, 10–13, 16, and 17 are rejected under 35
U.S.C. § 112, ¶ 2 as indefinite for failing to particularly point out and
distinctly claim the subject matter which the applicant regards as the
invention (Final Act. 2–3).
2. Claims 1, 3, 4, 7, 8, 10–13, 16, and 17 are rejected under 35
U.S.C. § 103(a) as unpatentable over Petro et al. (US 6,730,228 B2;
issued May 4, 2004, “Petro”) (Final Act. 3–8).
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Appellant offers separate arguments in support of independent claim 1
(see generally Appeal Br. 9–13). Appellant argues claims 1, 3, 4, 7, 8, 10–
13, 16, and 17 as a group (id. at 9, 13). Dependent claims 3, 4, 7, 8, 10–13,
16, and 17 will stand or fall with our analysis of independent claim 1.
FINDINGS OF FACT & ANALYSIS
A. Rejection of claims 1, 3, 4, 7, 8, 10–13, 16, and 17 as indefinite under
35 U.S.C. § 112, ¶ 2
The Examiner determines that the limitation “the fractions consisting
of a sole product of interest” recited in claim 1 is indefinite (Final Act. 2).
The Examiner finds that the term “consisting of” renders the claim indefinite
because this “transitional phrase . . . excludes any . . . ingredient not
specified in the claim” (id.). According to the Examiner, claim 1
encompasses a fraction having: (i) a sole product of interest and (ii) other
products, which are not products of interest (id.). The Examiner finds that
claim 1 is unclear as to “how a fraction ‘mixture[,]’ which is ‘consisting of a
sole product’ contains ‘a sole product of interest’” (id. at 3).
Appellant argues that the claims are definite because “[t]he fraction
referred to and claimed is a fraction that has been purified according to the
method so as to contain only the product of interest, solely the product of
interest as the other components have been separated from the sole product
of interest” (Appeal Br. 9) (emphasis added).
The Examiner responds that: (i) the Specification “does not provide
any definition of what the term ‘product of interest’ means” and (ii) the
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claim “term ‘fractions comprising’ . . . further renders the claim indefinite”
(Ans. 10).
In assessing whether a claim is indefinite, we determine whether those
skilled in the art would understand what is claimed when the claim is read in
light of the specification. Orthokinetics, Inc. v. Safety Travel Chairs, Inc.,
806 F.2d 1565, 1576 (Fed. Cir. 1986). In the present case, the Specification
describes a method for separating fractions of a mixture by liquid phase
chromatography (Spec. 1:11–12). Contrary to the Examiner’s position (Ans.
10), it would be clear to one of ordinary skill in the art that the claimed
“fractions comprising the sole product of interest” encompasses fractions
which are produced from intermediate steps in the purification method
(emphasis added). The Specification, furthermore, provides several
examples showing that “[t]he collection of the fractions of interest results in
production of the purified product” (Spec. 19:1; see generally id. at 15:9–
19:10), i.e., the claimed “fractions consisting of a sole product of interest.”2

2 When used in a claim, the transitional phrase “consisting of” excludes any
element, step, or ingredient not specified in the claim. In re Gray, 53 F.2d
520 (CCPA 1931). We note that the Specification describes that the eluted
product of interest is isolated within solvent fractions (Spec. 18:5–19:8). In
other words, solvent would be excluded from the fractions of the sole
product of interest as claim 1 is currently drafted. Claim 1 uses the
transitional phrase “comprising” in the context of the method recited and
which does not exclude the described solvent. If the described solvent does
not materially affect the basic characteristics of the purified product,
Appellant has the responsibility to clarify the disputed claim term’s meaning
by amending the application to account for the presence of solvent in the
fraction “consisting of” a sole product of interest. See, e.g., In re
Janakirama-Rao, 317 F.2d 951, 954 (CCPA 1963) (“The word ‘essentially’
[in the phrase ‘consisting essentially of’] opens the claims to the inclusion of
ingredients which would not materially affect the basic and novel
characteristics of appellant’s composition[] as defined in the balance of the
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In our view, one of ordinary skill in the art would understand what is
claimed when the claim is read in light of the Specification.
We reverse the Examiner’s § 112, second paragraph, rejection.
B. Rejection of claims 1, 3, 4, 7, 8, 10–13, 16, and 17 as unpatentable
over Petro
The Examiner finds that Petro renders obvious each step and
limitation of the method for purifying a mixture recited in independent claim
1 (Final Act. 3–6).
The Examiner finds Petro teaches that a first set of multiple mixture
injections are made successively into a liquid contained in a first
chromatography column (id. at 3). The Examiner finds Petro discloses that
the first set of multiple mixture injections are made such that two successive
injections are separated by a time interval A (id. at 3–4).
The Examiner finds Petro discloses a first set of multiple collection
operations, in which “the first collecting operation . . . starts a time after the
first injection of the multiple injections of the mixture to be purified at least
equal to the retention time of the product of interest” (id. at 4).
The Examiner finds Petro teaches a second set of multiple fraction
injections comprising the sole product of interest, which are generated in the
first collecting operation (id.). The Examiner finds Petro discloses that the
second set of multiple fraction injections are made such that two successive
injections of fractions are separated by a time interval B (id. at 5).
The Examiner finds “Petro teaches that time intervals A and B are not
critical and can include a wide range of time spans,” including 10 minutes

claim, according to the applicable law.”); see also In re Zletz, 893 F.2d 319,
321–22 (Fed. Cir. 1989).
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and 180 seconds, respectively (id.). The Examiner finds that these specific
A and B time intervals are unequal and are not integer multiples of each
other, as required by claim 1 (id.). The Examiner finds that “Petro teaches
that operational conditions, such as separation rate and injection frequency,
can be selected to achieve a balance between sample throughput and
resolution” (id.). The Examiner determines that it would have been obvious
for one of ordinary skill in the art at the time of the invention to have
“optimized, by routine experimentation, the relationship of” Petro’s time
intervals A and B “to obtain the desired balance between chromatography
resolution, separation rate, and injection frequency” (id.).
Appellant argues that the Examiner has not established a prima facie
case of obviousness because Petro’s teachings are deficient (see Appeal Br.
10–11). Appellant argues that Petro fails to teach or suggest that time
intervals A and B are neither equal nor integer multiples of each other (id. at
10). In support of this argument, Appellant directs our attention to the
following disclosure in Petro:
In general, the time interval that defines the sampling
frequency for sampling the first-dimension mobile phase eluent,
and preferably, that also defines the injection frequency of the
sampled portion into the second-dimension mobile phase, is not
narrowly critical, and can range, for example, from about 10
minutes to about 5 seconds or less. Preferably, the time interval
that defines the sampling frequency can range from about 5
minutes to about 10 seconds, and in some embodiments, from
about 2 minutes to about 30 seconds. Generally, therefore, a
discrete volume of the first-dimension mobile phase is sampled
(and preferably, also injected into the second-dimension mobile
phase) at least once every 10 minutes, and more preferably at
least once every 5 minutes, and most preferably at least once
every 2 minutes. In some embodiments, a discrete volume of
the first-dimension mobile phase can be sampled (and
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preferably, also injected into the second-dimension mobile
phase) at least once every 180 seconds, and more preferably at
least once every 1 minute, even more preferably at least once
every 30 seconds, and in some cases, at least once every 15
seconds, at least once every 10 seconds or at least once every 5
seconds.
Petro 12:43–64.
Appellant contends that this disclosure describes executing the second
successive injections at the same time interval frequency as the first
successive injections (Appeal Br. 10). Appellant distinguishes the claimed
subject matter from Petro’s method because the latter teaches “a common
frequency of first collection column and injection in the second column”
(id.). Appellant argues that Petro teaches away from the claimed method
because the prior art method does not vary the sample frequency within a
run (id. at 11).
Appellant’s arguments are not persuasive.
Teaching away requires that a reference “criticize, discredit, or
otherwise discourage the solution claimed” by Appellant. In re Fulton, 391
F.3d 1195, 1201 (Fed. Cir. 2004). Here, we find that Petro does not teach
away from the claimed subject matter because Appellant has not identified
any disclosure that disparages varying the sample frequency within a run.
Rather, Petro explicitly discloses that “the time interval that defines the
sampling frequency” of a first set of multiple collection operations, “and
preferably, that also defines the injection frequency of the sampled portion
into the” second set of multiple fraction injections, “is not narrowly critical.”
Petro 12:43–47 (emphasis added); see also In re Fritch, 972 F.2d 1260,
1264 (Fed. Cir. 1992) (explaining that “[i]t is well settled that a prior art
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reference is relevant for all that it teaches to those of ordinary skill in the
art”).
Furthermore, all disclosures of a reference including non-preferred
embodiments must be considered in the obviousness analysis. In re
Lamberti, 545 F.2d 747, 750 (CCPA 1976). In our view, Petro’s non-
preferred embodiments would have reasonably suggested varying the sample
frequency within a run such that: (i) the sampling frequency time interval of
a first set of multiple collection operations is 10 minutes and (ii) the
injection frequency of the sampled portion into the second set of multiple
fraction injections is 180 seconds. See Petro 12:43–64.
In view of the prior art’s teachings, Appellant has not identified
reversible error in the Examiner’s findings that Petro renders obvious each
step and limitation of the method recited in claim 1 (Final Act. 3–6).
When the Examiner establishes a prima facie case of obviousness,
“[t]he burden then shifts to the applicant, who then can present arguments
and/or data to show that what appears to be obvious, is not in fact that, when
the invention is looked at as a whole.” In re Dillon, 919 F.2d 688, 696 (Fed.
Cir. 1990) (en banc). Thus, “the burden of showing unexpected results rests
on [the party] . . . who asserts them.” In re Klosak, 455 F.2d 1077, 1080
(CCPA 1972). For the reasons set forth below, Appellant has not met his
burden of showing unexpected results.
Appellant argues that the Affidavit of Prof. Anna Maria Papini and
Dr. Olivier Monasson (“Exhibit A”) demonstrates the unexpected results of
not only improving “productivity by a factor of two . . . [,] but also
reduc[ing] the amount of consumables” (Exhibit A; see also Appeal Br. 12).
In particular, Appellant argues that the Examiner reversibly erred “in
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discounting the unexpected results previously provided in” Exhibit A
(Appeal Br. 12).
We, however, agree with the Examiner that these results are not
probative evidence of unexpected results (Ans. 16–17). As a preliminary
matter, we note that there is no indication that the statements made by Prof.
Papini or Dr. Monasson in Exhibit A have been sworn to before a notary.
See MPEP § 715.04 II. Even assuming that Appellant submitted competent
evidence in the form of a notarized affidavit or a sworn declaration,3 the
provided statements lack factual corroboration and, thus, are entitled to little
weight. See In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984) (“It is well
settled that unexpected results must be established by factual evidence.
Mere argument or conclusory statements . . . does not suffice.”).
We, moreover, agree with the Examiner that Exhibit A’s showing of
unexpected results is not commensurate in scope with the degree of
protection sought because claim 1 is not directed to, inter alia, improved
productivity by a factor of two or consumables reduction (see Ans. 16).
Therefore, Appellant’s results do not rebut the Examiner’s established prima
facie case of obviousness.
Thus, based on this record, we sustain the Examiner’s § 103(a)
rejection.

3 We further not that there is also no acknowledgment by either Prof. Papini
or Dr. Monasson that any willful false statements contained therein: (i) are
punishable by fine and/or imprisonment and (ii) may jeopardize the validity
of the application or any patent issuing thereon. See MPEP § 715.04 II.
Exhibit A, furthermore, contains no declaration that all statements made of
Prof. Papini’s or Dr. Monasson’s own: (i) knowledge are true and
(ii) information and belief are believed to be true. Id.
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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3, 4, 7, 8,
10–13, 16,
17
112, second
paragraph
Indefiniteness 1, 3, 4, 7,
8, 10–13,
16, 17
1, 3, 4, 7, 8,
10–13, 16,
17
103(a)

Petro

1, 3, 4, 7,
8, 10–13,
16, 17

Overall
Outcome
1, 3, 4, 7,
8, 10–13,
16, 17

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)(iv).
AFFIRMED