DETAILED ACTION
Status of Claims:
Claims 1-20 are pending.
Claims 8-20 are withdrawn from consideration.
This Action is Made Final.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Arguments
Applicant's arguments filed 6/26/2026 have been fully considered but they are not persuasive. The applicant argues that Carbonell teaches a phenyl group or an alkyl group with two to four carbons, not a phenyl alkyl group with two to four carbons. This argument is not persuasive. Carbonell states “"H" is either phenyl or a linear or branched saturated alkyl group having from two to four carbon atoms” (see pg. 13 lines 5-6) and “said second hydrophobic functional group is selected from the class consisting of phenyl and linear or branched saturated alkyl groups having from two to four carbon atoms” (emphasis added). Although it is possible that the language can be interpreted as “alkyl” not applying to “phenyl”, the terms “group” and “groups” clearly applies to “phenyl”, therefore “two to four carbon atoms” applies to “phenyl”. A phenyl group with two to four carbon atoms is inherently a phenyl alkyl group. The applicant has not provided any reasonings as to why they believe “alkyl group” does not apply to “phenyl” and only applies to “linear or branched”.
The applicant argues that one skilled in the art would not have found it obvious to modify Carbonell with Lauber with a reasonable expectation of the Applicant’s demonstrated reduction in retention loss under highly aqueous conditions. This argument is not persuasive because Carbonell and Lauber are both hydrophobic chromatographic materials, therefor one skilled in the art would believe a surface coverage used in Lauber to be appliable to Carbonell. Further there is no evidence of unexpected results or significance with respect to the specific ligands and surface coverage.
The applicant argues that it would not have been obvious to modify Carbonell with Rainville because Carbonell does not teach a phenyl alkyl group. This argument is not persuasive because Carbonell does teach a phenyl alkyl group. The applicant further argues that one skilled in the art would not have combined the specific ligands claimed and the specific surface coverage. This argument is not persuasive because there is no evidence of unexpected results or significance with respect to the claimed surface coverage or ligands. Therefore one skilled in the art would have found obvious to use the known ligands in combination with the known surface coverage. Additionally, even if the applicant is correct that Carbonell does not disclose a C4 phenyl alkyl moiety it would still have been obvious to modify the second hydrophobic group of Carbonell to the phenylhexyl moiety of Rainville because it is the simple substitution of one known hydrophobic moiety to another known hydrophobic moiety with an expectation of success. Further the modification of Carbonell in view of Lauber and Rainville teaches all the limitations of claim 1 since the combination teaches all the limitations of claims 2 and 3, which depend from claim 1.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1 and 4-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Carbonell et al (CA 1,336,077) in view of Lauber et al (US 2021/0138361).
Regarding Claim 1:
Carbonell teaches the multi-component chromatographic material comprising: a chromatographic core having an exterior surface (solid hydrophobic support, solids have exterior surfaces) (see pg. 6 lines 12-17); and at least two different hydrophobic ligands covalently bound to the exterior surface (covalently bonded to solid supports) (see pg. 8 lines 34-35), wherein at least two different hydrophobic ligands comprise a first hydrophobic ligand (second hydrophobic group) selected from C2 to C4 phenyl alkyl moiety (phenyl alkyl groups with two to four carbons) (see pg. 12 lines 34-pg. 13 lines 6), and a second hydrophobic ligand selected from C4 to C30 alkyl moiety (C8 octyl and C18 octadecyl, “hydrophobic function group may be any of the hydrophobic functional groups noted with respect to silica particles above”) (see pg. 8 lines 27-33, pg. 9 lines 11-14). Given that the prior art range of C2 or C4 phenyl alkyl moiety overlaps the claimed range of C4 to C30 at the endpoint a prima facie case of obviousness exists and one skilled in the art would have found it obvious to use a C4 phenyl alkyl moiety (see MPEP 2144.05).
Carbonell does not explicitly teach wherein the total surface coverage of the at least two different hydrophobic ligands is less than 2.0 µmol/m2. Carbonell teaches the surface coverage per milliliter (volume) of silica particles (see pg. 9 lines 2-7) not surface area.
Lauber teaches a chromatographic cost having an exterior surface (silica chromatographic material) (see para. 0007) and a hydrophobic ligand (hydrophobic modifier) having a total surface coverage (surface concentration) of 0.2 to 5 micromole per square meter (see para. 0018). Given that the prior art range of 0.2 to 5 µmol/m2 overlaps the claimed range of 2.0 µmol/m2 an prima facie case of obviousness exists and it would have been obvious to ne skilled in the art to use a surface coverage of less than 2.0 µmol/m2 (see MPEP 2011.05).
Carbonell and Lauber are analogous inventions in the art of hydrophobic modified chromatographic materials. It would have been obvious to one skilled in the art to use a surface coverage of less than 2.0 µmol/m2 as disclosed by Lauber on the chromatographic core of Carbonell because it is within a range known to be for reveres phase chromatography (see Lauber para. 0043, 0018), which is the type of chromatography used in Carbonell (see Carbonell pg. 8 lines 34-37). The use of a known technique to improve similar devices (methods or products) in the same way is likely to be obvious. See KSR International Co. v. Teleflex Inc., 550
U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, C.).
Regarding Claim 4:
Carbonell, as modified, teaches the multi-component chromatographic material of claim 1, wherein the molar ratio of the first hydrophobic ligand to the second hydrophobic ligand is from about 2.5: 1.0 to about 1.0: 2.5 (about 1:1, provided as A-B-H where H is the first ligand and A is the second ligand) (see Carbonell pg. 12 line 31-pg. 13 line 9).
Regarding Claim 5:
Carbonell, as modified, teaches the multi-component chromatographic material of claim 4.
Carbonell does not teach the molar ratio of the first hydrophobic ligand to the second hydrophobic ligand is about 1.8: 1.0. However, “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.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Therefore one skilled in the art would have found it obvious to adjust the ratio of the first to second ligand and use a ratio of about 1.8:1.
Regarding Claim 6:
Carbonell, as modified, teaches the multi-component chromatographic material of claim 1, wherein the chromatographic core is porous and the average diameter of the pores of the chromatographic core is 60 to 4000 A (see Carbonell pg. 8 lines 22-26). Given that the prior art range of 60 to 4000 A overlaps the claimed range of less than 100 A a prima facie case of obviousness exists and one skilled in the art would have fount if obvious to use a core with a pore diameter within the claimed range (see MPEP 2144.05).
Regarding Claim 7:
Carbonell, as modified, teaches the reversed-phase liquid chromatography column comprising a multi- component chromatographic material of claim 1 (“typically columns…commercially available as reverse phase packings”) (see Carbonell pg. 8 lines 15-37).
Claim(s) 2 and 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Carbonell et al (CA 1,336,077) in view of Lauber et al (US 2021/0138361) as applied to claim 1 above, and further in view of Rainville et al (CN 112955239, English machine translation provided).
Regarding Claim 2:
Carbonell, as modified, teaches the multi-component chromatographic material of claim 1, wherein the second hydrophobic ligand is C18 alkyl moiety (octadecyl) (see Carbonell pg. 8 lines 27-33).
The combination does not teaches the first hydrophobic ligand is a phenylhexyl moiety.
Rainville teaches a chromatographic material wherein the hydrophobic ligand is a phenylhexyl moiety (phenylhexyl functional group) (see pg. 3, 7th paragraph).
Carbonell, as modified, and Rainville are analogous inventions in the art of hydrophobic modified chromatographic materials. It would have been obvious to one skilled in the art before the effective filing date of the invention to replace the C4 phenyl group of Carbonell with the phenylhexyl moiety (phenylhexyl functional group) of Rainville because it is the simple substitution of one known hydrophobic moiety with another known hydrophobic moiety suitable for chromatography, obviously resulting in a hydrophobic functionalized material, with an expectation of success. The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550
U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, B.).
Regarding Claim 3:
Carbonell, as modified, teaches the multi-component chromatographic material of claim 1, wherein the second hydrophobic ligand is C8 alkyl moiety (octyl) (see Carbonell pg. 8 lines 27-33).
The combination does not teaches the first hydrophobic ligand is a phenylhexyl moiety.
Rainville teaches a chromatographic material wherein the hydrophobic ligand is a phenylhexyl moiety (phenylhexyl functional group) (see pg. 3, 7th paragraph).
Carbonell, as modified, and Rainville are analogous inventions in the art of hydrophobic modified chromatographic materials. It would have been obvious to one skilled in the art before the effective filing date of the invention to replace the C4 phenyl group of Carbonell with the phenylhexyl moiety (phenylhexyl functional group) of Rainville because it is the simple substitution of one known hydrophobic moiety with another known hydrophobic moiety suitable for chromatography, obviously resulting in a hydrophobic functionalized material, with an expectation of success. The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550
U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, B.).
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CLAIRE A NORRIS whose telephone number is (571)272-5133. The examiner can normally be reached M-Th 7:30-5 F: 8-12.
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/CLAIRE A NORRIS/Primary Examiner, Art Unit 1779 7/26/2026
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