Alan Howe

Patent Trials and Appeals Board

Mar 2, 2020

11901875 - (D) (P.T.A.B. Mar. 2, 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.
11/901,875 09/19/2007 Alan Howe 421/73/3 DIV 8043
25297 7590 03/02/2020
Jenkins, Wilson, Taylor & Hunt, P.A.
3015 Carrington Mill Boulevard
Suite 550
Morrisville, NC 27560
EXAMINER
RAWLINGS, STEPHEN L
ART UNIT PAPER NUMBER
1643
NOTIFICATION DATE DELIVERY MODE
03/02/2020 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):
datcheson@jwth.com
usptomail@jwth.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALAN HOWE
Appeal 2018-006764
Application 11/901,875
Technology Center 1600
Before DONALD E. ADAMS, FRANCISCO C. PRATS, and
JOHN E. SCHNEIDER Administrative Patent Judges.
SCHNEIDER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 15–18 and 23–26. 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(a). Appellant identifies the real party in interest as the University of
North Carolina at Chapel Hill. Appeal Br. 1.
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Application 11/901,875

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CLAIMED SUBJECT MATTER
The claims are directed to a kit for detecting phosphoproteins. Claim
15, reproduced below, is illustrative of the claimed subject matter:
15. A kit comprising:
(a) a phosphoprotein detection reagent (PPDR) comprising:
(i) a polydentate chelator that coordinates a Zn2+ ion;
(ii) a detectable moiety conjugated to the polydentate
chelator, wherein when the Zn2+ ion is coordinated to the
chelator, a chelator-metal ion moiety is formed that can
selectively bind to a phosphorylated amino acid residue in
a phosphoprotein to create a chelator-metal-ion-
phosphoprotein (CMPP) complex, and the detectable
moiety allows the CMPP complex to be detected; and
(iii) a Zn2+ ion,
(b) a membrane;
(c) a carboxy-blocking reagent; and
(d) instructions for using the PPDR.

REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Patton, et al. US 7,550,271 B2 June 23, 2009
Kinoshita-Kikuta, et al., Enrichment of phosphorylated proteins from cell
lysate using novel phosphate-affinity chromatography at physiological
pH, 6 Proteomics 5088–5095 (2006)
Ficarro et al., Phosphoproteome analysis by mass spectrometry and its
application to Saccharomyces cerevisiae, 20 Nature Biotech 301–305
(2002)

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REJECTIONS
The Examiner has rejected claims 15–18 and 23–262 as follows:
Claims 15–18 and 23–26 have been rejected under pre-AIA 35 U.S.C.
§ 112, first paragraph for failure to comply with the written description
requirement.
Claims 15–18 and 23–26 have been rejected under pre-AIA 35 U.S.C.
§ 112, first paragraph for failure to comply with the enablement requirement.
Claims 15–18 and 23–26 have been rejected under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Patton combined with Kinoshita-Kukuta and
Ficarro.
OPINION
I – Written Description
A. Issue
The issue with respect to this rejection is whether the Examiner
correctly determined that the claims fail to satisfy the written description
requirement.
The Examiner finds that the pending claims do not comply with the
written description requirement. Non-Final Act. 12. The Examiner finds
that the term “polydentate chelator” that coordinates with Zn2+ is not
supported by the present Specification. Id. The Examiner finds that the
term “polydentate chelator” embraces a wide variety of compounds which
may have substantially different structures. Id. The Examiner goes on to
find that although the Specification gives some examples of polydentate

2 Claims 10, 11, 13, and 14 are also pending in the application but have been
withdrawn from consideration. Non-Final Act. 2
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chelators, they are not representative of the entire class of compounds which
falls within the term. Id. at 12–13. The Examiner finds the term
“polydentate chelator” that binds to Zn2+ is a functional description and does
not provide an adequate description of the claimed genus. Id at 13. The
Examiner also finds that the Specification does not provide adequate written
description for the term phosphoprotein detection reagent in that the
Specification does not provide examples of complexes which bind to protein
containing phosphothreonine or phosphotryosine. Id. at 14. The Examiner
concludes,
the disclosure describing the claimed subject matter fails to
adequately described that subject matter with the requisite clarity
and particularity to reasonably convey to the skilled artisan
Applicant’s possession thereof as of the filing date of the
application, so as satisfy the written description requirement set
forth under 35 U.S.C. § 112, first paragraph.

Id. at 18.
Appellant contends that the Specification contains an adequate
description of the claimed invention. Appeal Br. 4–14. Appellant contends
that the term polydentate chelator is fully defined in the Specification and
that at least eleven different examples of polydentate chelators are recited in
the Specification. Id. at 7–8. Appellant contends that one skilled in the art
would understand which chelators would be able to coordinate with Zn2+ and
would appreciate that Appellant had the claimed invention is its possession.
Id. at 9–11. In support of this contention, Appellant offers the Declaration
of the inventor, Dr. Howe.3 Id. at 9. Dr. Howe testifies that the term

3 Declaration Pursuant to 37 C.F.R. § 1.132, filed December 19,
2016(“Howe Decl.”).
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polydentate chelator was well-known in the art and that the art recognized
that there were polydentate chelators that bind to Zn2+. Howe Decl. ¶¶ 9–10.
With respect to the issue of binding to phosphoproteins, Appellant
contends that the Specification provides an adequate description as to why
one skilled in the art would expect the disclosed complexes to
phosphorylated amino acids in addition to phosphoserine. Appeal Br. 13–
14.
B. Legal Principles

“[W]hile the description requirement does not demand any particular
form of disclosure, or that the specification recite the claimed invention in
haec verba, a description that merely renders the invention obvious does not
satisfy the requirement.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d
1336, 1352 (Fed. Cir. 2010) (en banc) (citations omitted). “[T]he test
requires an objective inquiry into the four corners of the specification from
the perspective of a person of ordinary skill in the art. Based on that inquiry,
the specification must describe an invention understandable to that skilled
artisan and show that the inventor actually invented the invention claimed.”
Id. at 1351.
A “sufficient description of a genus instead requires the disclosure of
either a representative number of species falling within the scope of the
genus or structural features common to the members of the genus so that one
of skill in the art can ‘visualize or recognize’ the members of the genus.” Id.
at 1350.
“The written description requirement requires possession as shown in
the specification, not as shown by prior experimental work.” Allergan, Inc.
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v. Sandoz Inc., 796 F.3d 1293, 1309 (Fed. Cir. 2015) (emphasis in the
original).
C. Analysis

We have considered the positons of the Examiner and Appellant and
find that the Examiner has the better position. The Specification does not
contain an adequate written description of the claimed invention, particularly
it does not describe a polydentate chelator which coordinates with a zinc
cation so as to selectively bind to a phosphorylated amino acid residue in a
phosphoprotein.
Although the Specification describes polydentate chelators in general,
lists metals that may be used in the practice of the inventions, and gives
examples of polydentate chelators, Appellant points to nothing in the
Specification where a polydentate chelator that coordinates with a zinc
cation is described. See Spec. 20–21. In addition, there is no description of
any specific polydentate chelator-zinc complex which binds to a
phosphorylated amino acid.
Appellant contends that one skilled in the art would understand from
reading the Specification that zinc can be used to prepare the
polydentate/metal complex. Appeal Br. 6–8. Appellant also points to
evidence that zinc chelator complexes were known in the art. Id. at 8–10.
These arguments are unpersuasive. Although it may have been
obvious to one skilled in the art, following the teachings of the Specification
to use a zinc cation, this does not mean that there is an adequate written
description of zinc containing chelator complexes. Ariad, 598 F.3d at 1352.
Similarly, although zinc containing chelator complexes may have been
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known in the art at the time the invention was made, that is insufficient to
comply with the written description requirement. Allergan, 796 F.3d at
1309.
Appellant contends that the Specification contains an adequate written
description as the disclosure contains a listing of at least eleven different
polydentate chelators. Appeal Br. 8. Appellant contends that based on the
disclosure of these chelators and the general description of chelators in the
Specification, one skilled in the art would understand that nature and
structure of the chelator molecules that can be used to practice the invention.
Id.
Again, we are not persuaded by this argument. As the Examiner
points out, although the Specification does list some examples of chelators
which may work, “there is no correlation between any one particularly
identifying material or structural features that are necessarily shared by at
least substantial number of the ‘polydentate chelators’ of which the
‘phosphoprotein detection reagents’ are comprised and their common ability
to coordinate Zn2+ so as to selectively bind to phosphorylated amino acid
residues in phosphoproteins.” Ans. 24. We agree with the Examiner that
that eleven polydentate chelators listed in the Specification can be
reasonably regarded as representative of the class of compounds recited in
the claims. Id. at 25.
Appellant contends that claims 25 and 26 are separately patentable as
they recite particular polydentate chelators which are disclosed in the
Specification. Appeal Br. 24. Appellant contends that one skilled in the art
would have known that zinc can bind to the chelators and that based on the
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disclosure in the Specification, one skilled in the art would have been able to
practice the invention without undue experimentation. Id.
Appellant’s argument does not persuade us that claims 25 and 26 are
separately patentable. The issue with respect to the written description
requirement is not whether one skilled in the art could practice the invention,
but whether one skilled in the art would understand what the inventor has
invented. Compliance with the written description requirement must be
found within the Specification itself. Although the Specification describes
the two specific chelators, Appellant points to nothing in the Specification
that discloses the ability of those chelators to coordinate with a zinc cation or
the ability of a complex comprising either of the specific chelators with a
zinc cation to bind to a phosphorylated amino acid residue in a
phosphoprotein.
Based on the forgoing we affirm the rejection of claims 15–18 and
23–26 for failure to comply with the written description requirement.

II – Enablement
A. Issue
The issue with respect to this rejection is whether the Examiner has
correctly determined that the rejected claims are not enabled.
The Examiner finds that although the Specification discloses how to
make and use a kit based on a biotinylated nitriloacetic acid (“NTA”)
conjugate coordinated with an iron cation to detect a phosphoprotein, the
Specification does teach how to make and use a polydentate chelator
coordinated with a zinc cation. Non-Final Act. 27. The Examiner finds that
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the art, and in particular Chaga4 teaches that chelating agents coordinated
with different metals have different binding properties making it difficult to
predict how a chelator with a zinc cation substituted for an iron cation might
react with a phosphoprotien. Id. at 27–28. The Examiner concludes that the
claimed invention cannot be practiced without undue experimentation. Id. at
29.
Appellant contends that the rejection is improper in that the Examiner
failed to properly consider all of the factors set forth in In re Wands, 858
F.2d 731 (Fed. Cir. 1988). Appeal Br. 19–20. Appellant also contends that
one skilled in the art would have been able to substitute a zinc cation for the
iron cation in the examples. Id. at 21–22. In support of this proposition,
Appellant points to the teachings of Hemdan5 and Nieba6 where it is shown
that zinc cations can coordinate with NTA and iminodiacetic acid (“IDA”).
Id. at 22–23.

B. Legal Principles
“Section 112 requires that the patent specification enable those skilled
in the art to make and use the full scope of the claimed invention without
undue experimentation. . . . [S]ee also In re Goodman, 11 F.3d 1046, 1050

4 Grigoriy S. Chaga, Twenty-five years of immobilized metal ion affinity
chromotagraphy: past, present and future, 49 J. Biochem. Biophys. Methods
313–334 (2001) (“Chaga”).
5 Esmat S. Hemdan et al., Surface topography of histidine residues: A facile
probe by immobilized metal ion affinity chromatography, 86 Proc. Nat’l
Acad. Sci. 1811–1815 (1989) (“Hemdan”).
6 Lars Nieba et al., BIACORE Analysis of Histidine-Tagged Proteins Using a
Chelating NTA Sensor Chip, 252 Anal. Biochem. 217–228 (1997) (“Nieba”).
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(Fed. Cir. 1993) (‘[T]he specification must teach those of skill in the art how
to make and how to use the invention as broadly as it is claimed.’).”
Invitrogen Corp. v. Clontech Labs. Inc., 429 F.3d 1052, 1070–71 (Fed. Cir.
2005) (internal quotes omitted).
“[A]n invention may be enabled even though it has not been
described.” University of Rochester v. G.D. Searle & Co., 358 F.3d 916,
921 (Fed. Cir. 2004).

The enablement requirement is often more indulgent than the
written description requirement. The specification need not
explicitly teach those in the art to make and use the invention;
the requirement is satisfied if, given what they already know, the
specification teaches those in the art enough that they can make
and use the invention without “undue experimentation.”

Amgen, Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1334
(Fed. Cir. 2003).

Analysis
We have considered the arguments advanced by the Examiner and
Appellant and conclude that the claims are enabled. Although the
Specification only discloses the use of iron cation containing complexes,
Appellant has shown that zinc cation analogs were known at the time of the
invention. Appeal Br. 22–23. In addition, the Specification describes how
the cation complex would interact with the phosphoprotein. See, e.g., Spec.,
40, ll. 23–25. We agree with Appellant that given the state of the art at the
time the invention was made, one skilled in the art would have been able to
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practice the claimed invention without undue experimentation. Appeal Br.
24.
The Examiner’s reliance on Chaga to show unpredictability is
misplaced. Chaga teaches that hard metal ions such as Fe3+ coordinate with
oxygen and that intermediate metal ions such as Zn2+ coordinate with
nitrogen, oxygen and sulfur. Chaga, 314. We agree with Appellant that this
would lead one skilled in the art to conclude that both Fe3+ and Zn2+ could be
used to coordinate with oxygen in the phosphate group. Appeal Br. 21.
We conclude that the Examiner has not established that the rejected
claims are not enabled.

III. Obviousness
The Examiner has rejected claims 15–18 and 23–26 as unpatentable
over Patton combined with Kinoshita-Kikuta and Ficarro.
Appellant contends that the rejection is improper as the present
application is a divisional of USSN 10/719,990 which was filed on
November 21, 2003, well before the 102(a) or 102(e) dates of the cited
references. Appeal Br. 25–26. Appellant contends that the present
application and the parent application comply with the enablement and
written description requirements of 35 U.S.C. § 112 allowing Appellant to
claim benefit 2003 filing date of the parent application. Appeal Br. 25–28.
In order to receive benefit of the earlier filing date under §§ 119
and/or 120, the later-filed application must be an application for a patent for
an invention which is also disclosed in the prior application (the parent or
original nonprovisional application or provisional application); the
disclosure of the invention in the parent application and in the later-filed
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application must be sufficient to comply with the requirements of the first
paragraph of 35 U.S.C. § 112. See Transco Products, Inc. v. Performance
Contracting, Inc., 38 F.3d 551 (Fed. Cir. 1994). As discussed above, we
find that the present disclosure does not satisfy the written description
requirements of 35 U.S.C. § 112. Because the earlier Specification is
identical to the present Specification, it too does not satisfy the written
description requirement. For this reason, Appellant’s claim of priority back
to 2003 fails giving the present application a filing date of September 19,
2007. Thus the cited references are prior art under 35 U.S.C. §§ 102(a) and
201(e).
For this reason we affirm the rejection based on obviousness.

CONCLUSION
The Examiner’s rejection for failure to comply with the written
description requirement is affirmed.
The Examiner’s rejection for lack of enablement is reversed
The Examiner’s rejection for obviousness is affirmed.

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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
15–18, 23–
26
112 Written
Description
15–18, 23–
26

15–18, 23–
26
112 Enablement 15–18, 23–
26
15–18, 23–
26
103 Patton, Kinoshita-
Kikuta, Ficarro
15–18, 23–
26

Overall
Outcome
15–18,23–
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