Mark Etzel et al.

Patent Trials and Appeals Board

Jul 29, 2020

2019005908 (P.T.A.B. Jul. 29, 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.
13/181,234 07/12/2011 Mark R. Etzel 09824114-P110012US02 3965
60961 7590 07/29/2020
Intellectual Property Dept./DeWitt LLP
Wisconsin Alumni Research Foundation
2 East Mifflin Street,
Suite #600
Madison, WI 53703-2865
EXAMINER
DUBOIS, PHILIP A
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
07/29/2020 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):
IP-DOCKET@dewittllp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte MARK R. ETZEL, THATCHER ROOT,
ABHIRAM ARUNKUMAR, and SEYHUN GEMILI
__________

Appeal 2019-005908
Application 13/181,234
Technology Center 1700
__________

Before LINDA M. GAUDETTE, FRANCISCO C. PRATS, and
LILAN REN, Administrative Patent Judges.

PRATS, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–26. We have jurisdiction under
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 the Wisconsin
Alumni Research Foundation, Madison, WI. Appeal Br. 3.
Appeal 2019-005908
Application 13/181,234

2

STATEMENT OF THE CASE
The following rejections are before us for review:
(1) Claims 1–4, 6–19, and 26 under 35 U.S.C. § 112, first paragraph,
as lacking enablement for the full scope of the subject matter claimed (Final
Act. 2–5;2 Ans. 4–6);
(2) Claims 1–4, 6–19, and 26 under 35 U.S.C. § 112, first paragraph,
as failing to comply with the written description requirement (Final Act. 5;
Ans. 6–7); and
(3) Claims 1–26 under 35 U.S.C. § 103(a) as being unpatentable over
Bhushan3 and van Reis4 (Final Act. 6–8; Ans. 7–9).
Appellant’s claim 1, the sole independent claim on appeal, is
representative and reads as follows:
1. A method for fractionating a protein mixture comprising
multiple protein species to obtain a protein of interest
comprising:
(a) adjusting the pH of said protein mixture based on
the isoelectric point of said protein of interest,
thereby rendering a net charge of about zero on
said protein of interest,
(b) adjusting the conductivity of said protein mixture
such that said multiple species other than said
protein of interest are rejected by a charged
ultrafiltration membrane; and
(c) contacting said mixture with said charged
ultrafiltration membrane to achieve a first

2 Final Action entered June 5, 2018.
3 S. Bhushan and M.R. Etzel, Charged Ultrafiltration Membranes Increase
the Selectivity of Whey Protein Separations, 74 J. FOOD SCI. E131–E139
(2009).
4 US 7,001,550 B2 (issued Feb. 21, 2006).
Appeal 2019-005908
Application 13/181,234

3

permeate and a first retentate, wherein said
ultrafiltration membrane has a pore size at least
100 kDa above at least one of said multiple species
other than said protein of interest,
wherein said first permeate comprises an increased ratio
of said protein of interest as compared to said protein
mixture, and wherein said protein mixture is a milk
protein or a whey protein mixture.
Ans. 3.5
ENABLEMENT
The Examiner’s Rejection
The Examiner determined that Appellant’s Specification, “while being
enabling for a method of fractionating a protein mixture comprising GMP
[(glycomacropeptide)], ALA [(alpha-lactalbumin)], BLG [(beta-
lactoglobulin)], and IgG [(immunoglobulin G)] to obtain a protein of
interest, does not reasonably provide enablement for a method of
fractionating a protein mixture of milk and/or whey.” Ans. 4.
The Examiner determined that Appellant’s claims use a charged
ultrafiltration membrane with no upper limit as to pore size, and further
determined that the claims do not state specifically which proteins are
allowed to pass through the membrane, “leaving the skilled artisan guessing
as to species appellant meant to reject or isolate, especially when
considering that no upper limit is set pore size of the membranes.” Ans. 4.

5 The Examiner’s Answer explains that the version of claim 1 presented in
the Claims Appendix of the Appeal Brief (entered January 17, 2019) does
not reflect the entry of the After Final Amendment filed August 6, 2018.
Ans. 3. Appellant acknowledges that the version of claim 1 reproduced on
page 2 of the Examiner’s Answer is accurate. See Reply Br. 2 (entered July
29, 2019).
Appeal 2019-005908
Application 13/181,234

4

The Examiner found that, although the level of skill in the relevant art
is high, protein purification can be affected by multiple factors in addition to
the charge of the purified proteins, including pH, ionic strength, sieving,
effect of hydrodynamics, variability of sieving coefficients, membrane
charge, salt concentration, and pressure. Ans. 5 (citing Belfort6 and
Bhushan).
The Examiner found that “[n]one of the cla[i]ms take into account
these parameters. The properties of the proteins are going to be highly
variable, thus the parameters of what is needed for an unknown ‘protein of
interest’ will be equally variable.” Ans. 4–5.
The Examiner conceded that Appellant’s Specification “does provide
several test examples[,] but they are limited to the proteins of claims 5 and
21–25,” which are not subject to the enablement rejection. Ans. 6. The
Examiner found, moreover, that the rejected claims “are generic to
mixture[s] of protein comprising multiple protein species.” Ans. 6.
As to the level of experimentation required to practice the full scope
of the claimed subject matter, the Examiner concluded as follows:
While the [rejected] claims indicate that the mixture is
eventually reduced to milk and whey proteins and the level of
skill in the art is high, the evidence available to date indicates
that the level of experimentation needed to make or use the
claimed invention in its currents breadth is undue, especially in
view of the claimed pore sizes.
Ans. 6.

6 US 2008/0017576 A1 (published Jan. 24, 2008).
Appeal 2019-005908
Application 13/181,234

5

Analysis
“[T]o be enabling, the specification of a patent must teach those
skilled in the art how to make and use the full scope of the claimed invention
without undue experimentation.” Trustees of Boston University v. Everlight
Electronics Co., Ltd., 896 F.3d 1357, 1362 (Fed. Cir. 2018) (bracketing in
original; internal quotations omitted).
“[T]here must be sufficient disclosure, either through illustrative
examples or terminology, to teach those of ordinary skill [in the art] how to
make and how to use the invention as broadly as it is claimed.” In re Vaeck,
947 F.2d 488, 496 (Fed. Cir. 1991)
When making an enablement rejection, “it is incumbent upon the
Patent Office . . . to explain why it doubts the truth or accuracy of any
statement in a supporting disclosure and to back up assertions of its own
with acceptable evidence or reasoning which is inconsistent with the
contested statement.” In re Marzocchi, 439 F.2d 220, 224 (CCPA 1971).
In the present case, Appellant persuades us that the Examiner has not
explained sufficiently why the evidence of record shows that practicing the
full scope of the claimed invention would have required undue
experimentation by a skilled artisan.
As an initial matter, we note that claim 1’s process is limited to two
specific starting materials, either a milk protein mixture or a whey protein
mixture. See Appeal Br. 19. Thus, rather than encompassing an extensive
array of unknown potential target proteins as the Examiner suggests,
Appellant’s claims are limited to a relatively narrow universe of known
proteins of interest. See Spec. 7–10 (describing proteins in milk and whey).
Appeal 2019-005908
Application 13/181,234

6

We note, moreover, that the first step in claim 1’s process requires
adjusting the pH of the protein mixture based on the isoelectric point of the
protein of interest, to give the protein of interest a net charge of about zero.
See Appeal Br. 19. Thus, practicing the claimed invention requires a skilled
artisan to know at least the isoelectric point of the target protein, if not the
identity of the protein, contrary to the Examiner’s suggestion that a skilled
artisan had to guess which protein was desired to pass through the
membrane. See Ans. 4.
Indeed, claim 1 states expressly in step (b) that the charged
ultrafiltration membrane rejects the charged proteins that are not of interest,
whereas in step (c) the permeate which passes through the membrane
comprises an increased proportion of the uncharged protein of interest. See
Appeal Br. 19. The Examiner does not persuade us, therefore, that guessing
was required to determine that claim 1 requires at least some of the
uncharged protein of interest to pass through the membrane, whereas at least
some of the charged proteins not of interest do not pass through the
membrane.
In addition to the fact that Appellant’s claims are directed to
performing the claimed process on a starting material of relatively narrow
and defined scope, we agree with Appellant that the Examiner has not
explained sufficiently why the Specification does not provide adequate
guidance for practicing the claimed invention. In particular, the Examiner
concedes that Appellant’s Specification exemplifies fractionating a variety
of mixtures of milk and whey proteins. See Ans. 6; see also Spec. 15–21
(Examples 1–5). The Examiner, however, does not explain specifically why
the multiple examples of fractionating various milk and whey proteins fail to
Appeal 2019-005908
Application 13/181,234

7

provide sufficient guidance for other milk or whey proteins, particularly
given the relatively simple steps required to practice the claimed invention.
Appellant persuades us, moreover, that the Examiner has not
explained sufficiently why the cited disclosures in Belfort and Bhushan
demonstrate that practicing the full scope of the invention would have
required undue experimentation by a skilled artisan. We acknowledge
Belfort’s disclosure that, in general, a number of factors can affect
microfiltration (MF) and ultrafiltration (UF) processes:
[T]o date there is no theory or model that can predict the
performance of a general MF or UF process a priori because of
difficulties in accounting for pH, ionic strength, sieving through
the membrane cake, effect of hydrodynamics, variability of
sieving coefficients, and other parameters during diafiltration
and/or concentration, and membrane pore size distribution.
Belfort ¶ 8.
The Examiner has not explained sufficiently, however, why these
known considerations as to protein filtration processes in general
demonstrate that a skilled artisan, equipped with the knowledge in the art,
and armed with the specific guidance provided by Appellant’s Specification,
would have required undue experimentation to practice the specific process
recited in Appellant’s claims, particularly given the defined scope of the
claimed starting materials. Indeed, rather than supporting the Examiner’s
conclusion of non-enablement, the Bhushan reference provides evidence that
the factors enumerated in Belfort were routinely adjusted when fractionating
whey protein mixtures encompassed by Appellant’s claims. See Bhushan
E131 (describing previous experiments involving adjustments in pH and
conductivity); id. at E135 (describing effects of adjusting different variables
including pH, membrane charge, and flux).
Appeal 2019-005908
Application 13/181,234

8

The Examiner, moreover, fails to explain specifically why it would
have involved undue experimentation to determine suitable pore sizes for a
membrane useful in a process encompassed by claim 1. By itself, the fact
that claim 1 might encompass a wide range of membranes does not persuade
us that undue experimentation would have been required to arrive at a
suitable membrane encompassed by claim 1.
In sum, given the relatively narrow scope of the claimed starting
materials, the amount of guidance presented in the Specification including
multiple working examples, and the lack of persuasive evidence suggesting
that the specific process recited in Appellant’s claims would have required
undue experimentation on the part of skilled artisans, Appellant persuades us
that the Examiner has not shown sufficiently that the Specification fails to
enable the full scope of the claimed subject matter. We therefore reverse the
Examiner’s rejection of claims 1–4, 6–19, and 26 for lack of enablement.

WRITTEN DESCRIPTION
The Examiner’s Rejection
In rejecting claims 1–4, 6–19, and 26 as failing to comply with the
written description requirement, the Examiner applied a rationale similar to
that advanced as to the enablement rejection discussed above, noting in
particular that “the claims do not identify what proteins are being rejected
and what proteins are allowed to pass; the nature of the concept is there, but
in all practically the applicants were not in position of all possible ways of
separating the ‘proteins of interest’.” Ans. 6.
Moreover, the Examiner asserted “some species of protein that are not
of interest will still be allowed to pass. At pg. 135, right column, seventh
Appeal 2019-005908
Application 13/181,234

9

paragraph, BHUSAN also makes clear that the separation of proteins also
depends on the conductivity, pressure, salt concentrations, etc.” Ans. 6–7.
The Examiner determined that Appellant “did not have possession of
the parameters needed for all ‘proteins of interest’ in view of the claimed
pore sizes.” Id. at 7.
Analysis
We agree with Appellant that the preponderance of the evidence does
not support the Examiner’s finding that the claims lack descriptive support.
As the Federal Circuit has noted:
A claim will not be invalidated on section 112 grounds
simply because the embodiments of the specification do not
contain examples explicitly covering the full scope of the claim
language. That is because the patent specification is written for
a person of skill in the art, and such a person comes to the
patent with the knowledge of what has come before. Placed in
that context, it is unnecessary to spell out every detail of the
invention in the specification; only enough must be included to
convince a person of skill in the art that the inventor possessed
the invention and to enable such a person to make and use the
invention without undue experimentation.
Falkner v. Inglis, 448 F.3d 1357, 1366 (Fed. Cir. 2006) (quoting LizardTech,
Inc. v. Earth Resource Mapping, PTY, Inc., 424 F.3d 1336, 1345 (Fed. Cir.
2005)).
In the present case, as discussed above in relation to the enablement
rejection, Appellant’s claims recite using a relatively narrow and defined set
of starting materials. As discussed above, moreover, the Examiner does not
persuade us that it is unclear that claim 1 requires the uncharged protein of
interest to pass through the charged ultrafiltration membrane, whereas at
Appeal 2019-005908
Application 13/181,234

10

least some of the charged proteins that are not of interest do not pass through
the membrane.
As also discussed above, because skilled artisans would have known
how to manipulate the conditions involved in fractionating whey protein
mixtures encompassed by Appellant’s claims, we are not persuaded that any
general level of unpredictability that might be present in the art suggests that
Appellant’s Specification fails to provide sufficient detail for practicing the
full scope of the specific process recited in the claims.
The Examiner does not persuade us, therefore, that Appellant’s
Specification fails to provide sufficient detail to establish that Appellant
possessed the full scope of the claimed subject matter at the time the
application was filed. Accordingly, we reverse the Examiner’s rejection of
claims 1–4, 6–19, and 26 as failing to comply with the written description
requirement.

OBVIOUSNESS
The Examiner’s Rejection
The Examiner cited Bhushan as teaching or suggesting a process
having all of the steps and features of the process recited in Appellant’s
representative claim 1, except for claim 1’s requirement for the charged
ultrafiltration membrane to have a pore size at least 100 kDa above at least
one of the proteins not of interest. See Ans. 7–8.
The Examiner cited van Reis as evidence that the process of claim 1
would have been obvious despite the difference between the claimed process
and Bhushan’s process. Ans. 8. In particular, the Examiner cited van Reis
as disclosing that it was known in the art that, when performing
Appeal 2019-005908
Application 13/181,234

11

ultrafiltration processes, charged ultrafiltration membranes with pore sizes
up to 1000 kDa were useful for blocking the passage of charged proteins
significantly smaller than the size of the pores of the charged membranes.
Id. (citing van Reis, 2:10–15, Figs. 7, 8).
Therefore, the Examiner concluded, “it would have been obvious to
one skilled in the art to further vary the size of the membrane of BHUSAN
to 100kDa or even greater based on how the charged membranes repel
proteins having the same charge polarity as the membrane, as taught by
REIS.” Ans. 8.
Analysis
In this instance, having carefully considered all of the arguments and
evidence advanced by Appellant and the Examiner, Appellant does not
persuade us that a preponderance of the evidence fails to support the
Examiner’s conclusion that the process of Appellant’s representative claim 1
would have been obvious in view of Bhushan and van Reis.
Appellant does not dispute the Examiner’s finding that Bhushan
teaches a process having all of the steps and features of the process of
representative claim 1, with Bhushan’s process differing from claim 1’s
process only in that Bhushan does not use a charged ultrafiltration
membrane with a pore size at least 100 kDa above at least one of the
proteins not of interest. See Appeal Br. 8–18; Reply Br. 4–5.
Rather, Appellant’s primary argument is that a skilled artisan would
not have been motivated by van Reis to substitute the charged ultrafiltration
membrane of Bhushan’s process with a charged ultrafiltration membrane
having a pore size at least 100 kDa above at least one of the proteins not of
interest, because van Reis’s process involves sequestering the protein of
Appeal 2019-005908
Application 13/181,234

12

interest in the membrane’s retentate, rather than the permeate, as recited in
Appellant’s claim 1, and as taught in Bhushan. See, e.g., Appeal Br. 10, 16–
18; Reply Br. 4–5. We are not persuaded.
The Supreme Court has explained that, where a skilled artisan would
have recognized that an element known in the art would be useful for a
particular purpose, the artisan had good reason to use the known element for
its art-recognized purpose:
When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp. If this
leads to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense. In that
instance the fact that a combination was obvious to try might
show that it was obvious under § 103.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007).
In the present case, Bhushan’s process, like the process of Appellant’s
claim 1, involves adjusting the pH of a protein mixture so that a protein of
interest has a net neutral charge, thereby allowing the protein of interest to
pass through a charged ultrafiltration membrane, whereas proteins having
the same charge as the membrane are not able to pass through the
membrane:
This study examined the use of positively charged membranes
to increase the selectivity of ultrafiltration and allow the
fractionation of proteins from cheese whey. By adding a
positive charge to ultrafiltration membranes, and adjusting the
solution pH, it was possible to permeate proteins having little or
no charge, such as glycomacropeptide, and retain proteins
having a positive charge. Placing a charge on the membrane
increased the selectivity by over 600% compared to using an
uncharged membrane.
Appeal 2019-005908
Application 13/181,234

13

Bhushan E131 (abstract); see also id. at E135 (“Adding a positive charge to
the ultrafiltration membrane increased the selectivity of the separation by
over 600%. Whereas the 2 proteins of similar size (GMP and BLG) could
not be separated well using an uncharged membrane, the separation was
successful using the charged membrane.”).
Thus, Bhushan’s process, like the process of Appellant’s
representative claim 1, involves the problem of using a charged
ultrafiltration membrane to block certain proteins from passing through the
membrane (proteins having a charge with the same polarity as the
membrane), while allowing other proteins (uncharged proteins) to pass
through.
It is undisputed that Bhushan’s 30 kD cutoff membrane does not meet
claim 1’s requirement for the pore size to be at least 100 kDa above at least
one of the proteins not of interest. See Bhushan E133 (charged membrane
had 30 kD molecular weight cutoff); see also id. at E132 (listing molecular
weights of whey proteins including GMP (the permeated protein of interest,
molecular weight 8.6 kD), BLG (molecular weight 18 kD), with the largest
protein being IgG (molecular weight 150 kD)). As the Examiner found,
however, van Reis discloses that it was known in the art that charged
ultrafiltration membranes were useful for blocking proteins from passing
through the membrane, based on charge, even when the membrane’s pore
sizes were significantly above the size of the blocked proteins.
Specifically, van Reis describes filtration processes employing a 150
kD protein “on neutral and positively charged membranes of nominal
MWCOs [molecular weight cutoffs of] 30, 100 and 300 kD.” van Reis
21:52–56. And, van Reis discloses that “[b]y applying a positive charge to
Appeal 2019-005908
Application 13/181,234

14

the exterior and pore surfaces of the membrane, a significant decrease in
sieving (increased retention) was achieved for all of the positively charged
membranes having various molecular weight cut-offs (different average pore
sizes)”. Id. at 21:62–66 (emphasis added); see also id. at Fig. 7 (showing
results of processes described at van Reis 21:52–66).
Thus, while Bhushan did not employ a charged ultrafiltration
membrane with a pore size significantly larger than its charge-blocked
proteins, van Reis discloses that charged ultrafiltration membranes were
useful for blocking proteins from passing through the membrane, based on
charge, even when the membrane’s pore sizes were more than 100 kD above
the size of the blocked proteins. We therefore agree with the Examiner that
a skilled artisan would have understood from van Reis that charged
ultrafiltration membranes as large as 300 kD would be useful in Bhushan’s
process, and that a skilled artisan therefore had good reason to use van
Reis’s ultrafiltration membranes in Bhushan’s process. We therefore also
agree with the Examiner that the process recited in Appellant’s claim 1
would have been obvious in view of Bhushan and van Reis. See KSR, 550
U.S. at 416 (“[W]hen a patent claims a structure already known in the prior
art that is altered by mere substitution of one element for another known in
the field, the combination must do more than yield a predictable result.”).
We acknowledge, but are unpersuaded by, Appellant’s contention that
van Reis is limited to processes in which the protein of interest is
sequestered in the retentate, and proteins not of interest pass to the permeate,
in contrast to the process of Bhushan and Appellant’s claim 1. See Appeal
Br. 16 (“Van Reis always has a positive or negative net charge on the protein
of interest, and the protein of interest is always rejected by a membrane
Appeal 2019-005908
Application 13/181,234

15

having a like net charge.”); Reply Br. 5 (“[T]he method disclosed by van
Reis always places a positive or negative charge on the protein of interest.
Always.”).
Contrary to Appellant’s contention, van Reis expressly contemplates
blocking proteins not of interest based on charge, and allowing uncharged
proteins of interest to pass through the charged ultrafiltration membrane, as
recited in Appellant’s claim 1 and disclosed in Bhushan:
Alternatively, the invention contemplates a method of
separating a desired protein from at least one protein of a
mixture of proteins in an aqueous buffered solution by altering
the pH of the solution such that the desired protein is neutral
and the protein to be separated from it has a net charge that is
the same as the charged membrane. Next the protein mixture is
contacted with the charged cellulose filtration membrane of the
invention. The desired protein is separated from the charged
protein by retaining the charged protein upstream of the
membrane and filtering the desired protein through the
membrane. This process is repeated until the desired protein is
separated from a chosen number of proteins of the mixture.
van Reis 10:47–59.
Thus, in addition to teaching that charged ultrafiltration membranes
are useful for blocking proteins based on charge, even when the membranes’
pores are 100 kD above the size of the protein as recited in Appellant’s
representative claim 1, van Reis discloses that blocking proteins based on
charge is useful when the blocked proteins are not the protein of interest, as
also recited in Appellant’s claim 1, and in Bhushan. Appellant does not
persuade us, therefore, that the teachings of van Reis are incompatible with
either the claimed process, or with Bhushan.
We are also unpersuaded by Appellant’s intimation that Bhushan
selected its pore size specifically for the mixture of whey proteins
Appeal 2019-005908
Application 13/181,234

16

fractionated by the reference, and that a skilled artisan therefore would not
have used membranes, like van Reis’s, with larger pore sizes. See Appeal
Br. 15–16 (“What is important is that Bhushan’s disclosure of 30 kD pore
size . . . was meant to exclude BLG dimers (2 x 18.4 kDa = ~37 kDa), which
is the predominant form of BLG in milk.”).
Appellant points to no disclosure in Bhushan suggesting that
Bhushan’s 30 kD pore size was intended to block passage of BLG. Indeed,
contrary to Appellant’s contention that Bhushan’s objective was to employ
its 30 kD cutoff membrane to separate GMP and BLG based on size,
Bhushan states expressly that the proteins were sufficiently similar in size
that the 30 kD membrane could not separate them effectively, unless a
positive charge was applied to the membrane. See E135 (“Adding a positive
charge to the ultrafiltration membrane increased the selectivity of the
separation by over 600%. Whereas the 2 proteins of similar size (GMP and
BLG) could not be separated well using an uncharged membrane, the
separation was successful using the charged membrane.” (emphasis added)).
Lastly, Appellant does not persuade us that it has advanced evidence
of unexpected results sufficient to outweigh the evidence of prima facie
obviousness advanced by the Examiner in the Bhushan and van Reis
references. See Appeal Br. 13 (“[W]e have discovered that membranes of
much larger pore size (300 kDa) can be used to fractionate proteins that are
very small (14.4 to 18.4 kDa) as long as a positive charge is covalently
attached to the membrane surface. This was a surprising discovery . . . .”
Appeal 2019-005908
Application 13/181,234

17

(quoting Etzel Decl. ¶ 3));7 see also id. (“[S]urprisingly, BLG was still
mostly not transmitted (14%) by the 300 kDa charged membrane.” (quoting
Etzel Decl. ¶ 3)).
As discussed above, van Reis discloses that a charged ultrafiltration
membrane with a 300 kD pore size was capable of blocking a protein of
significantly smaller size (150 kD). See van Reis 21:52–66; see also id. at
Fig. 7. We are not persuaded, therefore, that Appellant’s results were
actually unexpected.
In sum, for the reasons discussed, Appellant does not persuade us that
the Examiner erred in determining that Bhushan and van Reis would have
suggested performing a process having all of the steps and features recited in
Appellant’s representative claim 1. For the reasons discussed, Appellant
also does not persuade us that it has advanced evidence of unexpected
results sufficient to outweigh the prior art evidence presented by the
Examiner in relation to claim 1.
Because the preponderance of the evidence therefore supports the
Examiner’s conclusion of obviousness as to claim 1, we affirm the
Examiner’s rejection of claim 1 over Bhushan and van Reis. Claims 2–26
fall with claim 1. See 37 C.F.R. 41.37(c)(1)(iv).

7 Declaration under 37 C.F.R. § 1.132 of Mark R. Etzel (signed April 8,
2013).
Appeal 2019-005908
Application 13/181,234

18

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–4, 6–19,
26
112, first
paragraph
Enablement 1–4, 6–19,
26
1–4, 6–19,
26
112, first
paragraph
Written Description 1–4, 6–19,
26
1–26 103(a) Bhushan, van Reis 1–26
Overall
Outcome
1–26

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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED