Justin Holmes et al.

Patent Trials and Appeals Board

Feb 28, 2020

12668859 - (D) (P.T.A.B. Feb. 28, 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.
12/668,859 06/29/2010 Justin Holmes 061127-406992 9081
27148 7590 02/28/2020
POLSINELLI PC
900 WEST 48TH PLACE
SUITE 900
KANSAS CITY, MO 64112-1895
EXAMINER
MANGOHIG, THOMAS A
ART UNIT PAPER NUMBER
1788
NOTIFICATION DATE DELIVERY MODE
02/28/2020 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):
patentdocketing@polsinelli.com
rendsley@polsinelli.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JUSTIN HOLMES, MICHAEL MORRIS, JOHN HANRAHAN,
DONAL KEANE, and MARK COPLEY

____________

Appeal 2018-007995
Application 12/668,859
Technology Center 1700
____________

Before JEFFREY R. SNAY, DEBRA L. DENNETT, and
JANE E. INGLESE, Administrative Patent Judges.

SNAY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner’s decision rejecting claims 151–158 under 35 U.S.C. § 103(a) as
unpatentable over Landry (US 2006/0118490 A1, June 8, 2006) (“Landry”)
in combination with Noritake (JP 5-43217 A, February 23, 1993, as
translated) (“Noritake”). We have jurisdiction over the appeal under 35
U.S.C. § 6(b).

1 We use the word “Appellant” to refer to the “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies UNIVERSITY COLLEGE CORK –
NATIONAL UNIVERSITY OF IRELAND, CORK, as the real party in
interest (Appeal Br. 1).
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Application 12/668,859

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We AFFIRM.
CLAIMED SUBJECT MATTER
Claim 151, as reproduced below from the Claims Appendix of the
Appeal Brief,2 is illustrative of the subject matter on appeal:
Claim 151. Mesoporous silica microparticles produced by a
method comprising:
a. preparing a pre-sol solution comprising a silica
precursor and a structure directing agent dissolved in a mixed
solvent;
b. base-catalyzing a hydrolysis and condensation reaction
of the presolution at a temperature ranging from about -100°C to
about 80°C to produce mesoporous silica microparticles having
an average pore diameter;
c. using the structure directing agent as a porogen to
increase the size of pores in the microparticles; and
d. treating the resulting mesoporous microparticles to
enlarge the average pore diameter;
wherein the microparticles are spherical with particle diameters
that vary no more than about 5% from an average particle
diameter and wherein the average particle diameter ranges from
about 0.1 μm to about 50 μm, and the pores of the microparticles
are arranged in a random direction.
Appellant represents that all of the appealed claims stand or fall
together. Appeal Br. 4 (“For the purposes of this Appeal, claims 151–158

2 Appellant presents a version of the claims, including claim 151, that
includes After-Final amendments which were denied entry by the Examiner.
See Advisory Action, May 12, 2017. However, the differences between the
claims presented by Appellant and those which in fact are pending are not
material to any issue raised in this appeal.
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are under appeal and are submitted to stand or fall together.”). We address
claim 151, with the remaining claims standing or falling with that claim.
OPINION
Upon consideration of the evidence of record and each of Appellant’s
contentions as set forth in the Appeal Brief, as well as the Reply Brief, we
determine that Appellant has not demonstrated reversible error in the
Examiner’s rejections (e.g., see generally Ans.). In re Jung, 637 F.3d 1356,
1365–66 (Fed. Cir. 2011) (explaining the Board’s long-held practice of
requiring Appellant(s) to identify the alleged error in the Examiner’s
rejection). We sustain the rejections for the reasons expressed by the
Examiner in the Final Office Action and the Answer.
We add the following primarily for emphasis.
Relevant to Appellant’s arguments on appeal, the Examiner finds that
Landry discloses mesoporous inorganic oxide spheres having a “remarkable
narrow particle size distribution” for use in chromatography, but does not
specify that the particle diameters vary by no more than about 5% from the
average. Final Act. 4. The Examiner finds that Noritake exemplifies silica
particles having a coefficient of variation of 5% or less relative to the mean
as being suitable for chromatography applications. Id. Appellant does not
dispute these findings. See Briefs generally.
Appellant argues that one of ordinary skill would have been unable to
apply the particle synthesis conditions of Noritake to that of Landry. Appeal
Br. 8–11; Reply Br. 7–12. See also Declaration (“Decl.”), October 17, 2016,
¶ 9 (“[T]he acid-catalyzed techniques used in Landry to form microparticles
are incompatible with the base-catalyzed techniques used by Noritake.”).
However, as the Examiner explains (Ans. 9), Noritake is relied upon merely
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Application 12/668,859

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as recognition in the art that a particle distribution in which particles varied
5% or less relative to the mean was desirable for chromatography purposes.
Appellant acknowledges that a desired particle size distribution may be
obtained through conventional separation techniques. Spec. 2
(“Conventionally to obtain a batch of particles in the 1 µm size range, size-
monodisperse enough of UHPLC, it is necessary to separate out the desired
particles which is a very time consuming process.”). Whether Noritake
employs a different particle synthesis technique does not negate the relied-
upon teaching that it was desirable to provide chromatography particles
having a size variance of 5% or less relative to the mean.
Appellant also argues that the Examiner improperly overlooked
evidence of long-felt need in the art. Appeal Br. 6–7; Reply Br. 14–16.
Appellant points to page 1 of the Specification for evidence of long-felt
need. Id. at 6 n. 20. We see no such evidence at page 1 of the Specification.
At page 2 of the Specification, however, it is stated that “it is difficult to
form high yields of porous particles with mean diameters below 2µ that have
a narrow size distribution,” and that conventional particle separation
techniques for that purpose were “time consuming.” Spec. 2:11–16. These
unsubstantiated statements are not persuasive evidence of a long-felt unmet
need in the art. See In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2009 (“[O]ur
precedent requires that the applicant submit actual evidence of long-felt
need, as opposed to argument.”).
For the foregoing reasons, Appellant does not identify error in the
Examiner’s rejection of claim 151. Accordingly, the rejection of claims
151–158 is sustained.
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CONCLUSION
In summary:
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
151–158 103(a) Landry, Noritake 151–158

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)(iv).

AFFIRMED