11159412 (B.P.A.I. Nov. 23, 2011)

Ex Parte Bard et al

Board of Patent Appeals and InterferencesNov 23, 2011

11159412 (B.P.A.I. Nov. 23, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES __________ Ex parte ALLEN J. BARD and WUJIAN MIAO __________ Appeal 2011-000174 Application 11/159,412 Technology Center 1600 __________ Before DEMETRA J. MILLS, LORA M. GREEN, and JEFFREY N. FREDMAN, Administrative Patent Judges. MILLS, Administrative Patent Judge. ERRATUM On November 23, 2011, the Board of Patent Appeals and Interferences (hereinafter the “Board”) mailed a Decision to Appellants. Prior to the Decision being mailed, there was a change in the panel. Therefore, the panel should be corrected to read “DEMETRA J. MILLS, LORA M. GREEN, and JEFFREY N. FREDMAN.” Appeal 2011-000174 Application 11/159,412 2 Accordingly, a copy of the original Board decision is being re-mailed with the correct panel. The original time period for response will be reset. UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES __________ Ex parte ALLEN J. BARD and WUJIAN MIAO __________ Appeal 2011-000174 Application 11/159,412 Technology Center 1600 __________ Before DEMETRA J. MILLS, and LORA M. GREEN, and MELANIE L. McCOLLUM, Administrative Patent Judges. MILLS, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134. The Examiner has rejected claims 48-50, 52, 53, 56, 62-69, 71, 73-75, 77, 178, 186-191, 193, 194, 205- 209, 214-217, 219-221 and 224-2331 as anticipated. We have jurisdiction under 35 U.S.C. § 6(b). 1 Claims 61, 83-85, 196, and 218 are also pending, but stand withdrawn from consideration (Ans. 2). Appeal 2011-000174 Application 11/159,412 2 STATEMENT OF THE CASE Claim 48, the only independent claim, is representative and reads as follows: 48. A composition for detecting an analyte of interest in a sample comprising: (A)k, (B)u, (C), (D)x wherein A is an ECL moiety which can be induced to repeatedly emit electromagnetic radiation by direct exposure to an electrochemical energy source; B is at least one first carrier containing A, wherein A can be released from B and B is either linked to (1) an analog of the analyte of interest; or (2) to a first specific binding partner of the analyte of interest; C is the sample which may contain the analyte of interest; and D is at least one second carrier and is either linked to (3) the analog of the analyte of interest; or (4) a second specific binding partner of the analyte of interest; wherein k is an integer equal to or greater than 2; and u and x are each an integer equal to or greater than 1, provided that B and D are not both linked to the analog of the analyte of interest, and provided that if B is linked to the analog of the analyte of interest, then D is linked to the second specific binding partner and if D is linked to the analog of the analyte of interest, then B is linked to the first specific binding partner, wherein B comprises an interior and includes a plurality of the ECL moieties A within the interior of B and the ECL moiety A is soluble in organic solvent and insoluble in aqueous solvent. Cited References The Examiner relies on the following prior art references: Wang et al. [‘389] US 2004/0058389 A1 Mar. 25, 2004 Wang et al. [‘036] US 7,176,036 B2 Feb. 13, 2007 Appeal 2011-000174 Application 11/159,412 3 Grounds of Rejection 1. Claims 48-50, 52, 53, 56, 62-69, 71, 73-75, 77, 178, 186-191, 193, 194, 205-209, 214-217, 219-221, and 224-233 are rejected under 35 U.S.C. § 102(a) as being anticipated by Wang ‘389. 2. Claims 48-50, 52, 53, 56, 62-69, 71, 73-75, 77, 178, 186-191, 193, 194, 205-209, 214-217, 219-221, and 224-233 are rejected under 35 U.S.C. § 102(a) as being anticipated by Wang ‘036. FINDINGS OF FACT The Examiner’s findings of fact are set forth in the Answer at pages 3-7. The following additional fact finding is highlighted. 1. ECL stands for electrochemiluminescence. Spec. 2. The Specification, page 29, defines an ECL moiety broadly as, “any compound that can be induced to repeatedly emit electromagnetic radiation by direct exposure to an electrochemical source.” The term ECL moiety is not limited by any formula or aromatic compounds. 2. The “ECL moiety can comprise a metal-containing organic compound wherein the metal is chosen, for example, from ruthenium or osmium.” Spec. 29. Suitable ECL moieties have a polydentate ligand of M, which can include an aromatic polydentate ligands such as the nitrogen containing bipyridyl ligand. Spec. [070]. 3. Wang ‘389 discloses that an electroactive marker is any marker or substantive, including redox markers, that can be detected by electrochemical detection. [0043]. See also Wang ‘036, col. 6, ll. 14- 26. Markers include ruthenium or osmium complexes. Wang, ‘389, ¶43. Appeal 2011-000174 Application 11/159,412 4 4. Chemiluminescence is defined as the “emission of light as a result of a chemical reaction at environmental temperatures.” http://www.thefreedictionary.com/chemiluminescence Discussion ISSUE The Examiner finds that both Wang references teach each element claimed. Appellants argue that “Wang et al. discloses broad classes of compounds that can act as electroactive markers, some of which may include metal complexes.” (App. Br. 10.) According to Appellants, however, Wang et al. does not disclose any chemical structures which function as ECL moieties that can be induced to repeatedly emit electromagnetic radiation by direct exposure to an electrochemical energy source. (Id.) Appellants argue that ruthenium complexes are not inherently electroactive (id. at 14-16), providing evidence of four ruthenium complexes that are not electroactive (Reply Br. 3-6). For example, Appellants argue that ruthenium complexes such as RuCl2(PPh3)3, [RuCl2)C6H6)]2, [RuCl2)C5H5)]2, and Ru(C5H7O2)3 are not electrochemiluminscent. (Id. at 5- 6.) The issue is: Does the cited prior art anticipate the invention as claimed? Appeal 2011-000174 Application 11/159,412 5 PRINCIPLES OF LAW In order for a prior art reference to serve as an anticipatory reference, it must disclose every limitation of the claimed invention, either explicitly or inherently. See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). As set forth in In re Oelrich, 666 F.2d 578, 581 (CCPA 1981)(quoting Hansgirg v. Kemmer, 102 F.2d 212, 214 (CCPA 1939)) (internal citations omitted): Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient. If, however, the disclosure is sufficient to show that the natural result flowing from the operation as taught would result in the performance of the questioned function, it seems to be well settled that the disclosure should be regarded as sufficient. ANALYSIS We do not find that the Examiner has set forth a prima facie case of anticipation on the evidence before us. Appellants have shown with appropriate evidence that not all ruthenium complexes are chemiluminescent. Thus, said the Examiner has established that either of the Wang references inherently and necessarily discloses an ECL moiety as required by the claims. Thus, we are constrained to reverse the anticipation rejections. Appeal 2011-000174 Application 11/159,412 6 CONCLUSION OF LAW The cited references do not support the Examiner’s anticipation rejections. REVERSED cdc