Appeal No. 2005-0209
Application 09/274,014
wherein “pore volume is minimized in order to foreclose access to the pore volume by molecules
in the solution” (id., pages 12-13).
With respect to the examiner’s position that Girot acknowledges that it is known in the
art that “it is generally desirable to have as great a density difference as possible between the
solid support particles (e.g., silica) and the fluidizing medium,” at col. 2, ll. 8-11, and similarly at
col. 2, ll. 17-19, and thus it would have been “understood by one of ordinary skill in the art,
[that] minimizing porosity (percent empty space) maximizes density” (answer, page 2),
appellants submit that the Girot teachings “must be balanced . . . against the primary purpose” of
the reference “to provide a bead in which even macromolecules can enter the pores” (brief, page
14). Thus, appellants contend that while one of ordinary skill in the art “might have been
motivated to select values at the lower end of the stated pore volume range,” this person “would
not have been motivated to extend the range lower than the endpoint of the disclosed range,”
arguing that “[a] porosity of less than 30% as presently claimed is therefore not a ‘workable’
range when considered in light of the purpose of Girot” (id.).
The examiner addresses appellants’ calculation of the pore volume of porous silica,
explaining that this dense mineral oxide exists in different densities ranging “from about 2.1 to
about 2.6 grams/ cm3,” citing the 59th Edition of the CRC Handbook of Chemistry and Physics
B-161,2 and calculates the pore volume based on about 0.2 cm3/gram silica, the lower end of the
disclosed range, to be “about 30%” (answer, page 10). The examiner further finds that “[m]ost
claims of [Girot] are not limited to a particular porosity,” and takes the position that “[a]percent
porosity of less than 30% would not prevent biomolecules from entering the pores” (id., pages
10-11).
Appellants find the examiner’s findings that 0.2 cm3/gram of porous silica is “about
30%” to be “correct,” but refers to “empirical studies by appellants have shown that Girot’s
supports possess, at the lowest end of the range, a porosity of about 40%” in maintaining the
position that “[a] porosity of less than 30% . . . is not a ‘workable’ range . . . in light of the
purpose of Girot” and there “would not have been motivation to use a pore volume less than the
1 See brief, page 3, and the Boschetti declaration under 37 CFR § 1.132 filed September 25,
2002 (¶ 1.).
2 Robert C. Weast, ed., Boca Raton, FLA. CRC Press, Inc. 1978.
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