Ex Parte BEUG et al

Board of Patent Appeals and Interferences

Mar 28, 2000

07947982 (B.P.A.I. Mar. 28, 2000)

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Paper No. 40
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written for publication
in a law journal and (2) is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte HARTMUT BEUG,
MAX L. BIRNSTIEL,
MATTHEW COTTEN, ERNST WAGNER
and HARALD KANDOLF
______________
Appeal No. 1996-1005
Application 07/947,982
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HEARD: March 7, 2000
_______________
Before WILLIAM F. SMITH, GRON and SPIEGEL, Administrative Patent Judges.
WILLIAM F. SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the final rejection of claims 67, 69, 71,
73 through 80, 96, 97, 99 and 104 through 106, all the claims remaining in the application.
Claims 67 and 96 are representative of the subject matter on appeal and read as follows:
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Application 07/947,982
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67. A polynucleotide molecule, comprising:
(a) a first polynucleotide molecule coding for a tRNA; and
(b) a second polynucleotide molecule coding for a ribozyme, said second
polynucleotide molecule being located between the A- and B-boxes of said first
polynucleotide molecule.
96. A pharmaceutical preparation, comprising as an active component one or
more of the polynucleotide molecules of claim 67.
The references relied upon by the examiner are:
Pardridge et al. (Pardridge) 4,902,505 Feb. 20, 1990
Hofstetter et al. (Hofstetter), “A Split Promoter for a Eucaryotic tRNA Gene,” Cell, Vol. 24,
pp. 573-85 (May 1981)
Jennings et al. (Jennings), “Inhibition of SV40 replicon function by engineered antisense
tRNA transcribed by RNA polymerase III,” The EMBO Journal, Vol. 6, No. 10, pp. 3043-46
(1987).
Wu et al. (Wu 1987), “Receptor-mediated in Vitro Gene Transformation by a Soluble DNA
Carrier System,” The Journal of Biological Chemistry, Vol. 262, No. 10, pp. 4429-32 (Apr.
1987).
Uhlenbeck, “A small catalytic oligoribonucleotide,” Nature, Vol. 328, pp. 596-600 (Aug. 1987).
Wu et al. (Wu 1988), “Receptor-mediated Gene Delivery and Expression in Vitro,” The
Journal of Biological Chemistry, Vol. 263, No. 29, pp. 14621-624 (Oct. 1988).
Haseloff et al. (Haseloff), “Simple RNA enzymes with new and highly specific
endoribonuclease activities,” Nature, Vol. 334, pp. 585-91 (Aug. 1988).
Simons, “Naturally occurring antisense RNA control -- a brief review,” GENE, Vol. 72, pp.
35-44 (1988).
Claims 67, 69, 71, 73 through 76, 79, 80, 96, 97 and 99 are rejected under 35 U.S.C. §
103. As evidence of obviousness, the examiner relies upon Jennings, Hofstetter, Wu 1987,
Wu 1988, Uhlenbeck and Haseloff. Claims 77 and 78 stand rejected under 35 U.S.C. § 103.
In addition to the evidence of obviousness set forth in the previous sentence, the examiner
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Application 07/947,982
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further relies upon Simons. Finally, claims 104 through 106 stand rejected under 35 U.S.C. §
103. In addition to the evidence of obviousness set forth in the first sentence of this
paragraph, the examiner relies upon Pardridge. We reverse.
DISCUSSION
The claims on appeal are directed to a polynucleotide molecule and a pharmaceutical
preparation containing as an active component one or more of the claimed polynucleotide
molecules. As set forth in claim 67, the polynucleotide molecule has two components. First,
the claim requires a polynucleotide molecule coding for a tRNA. Second, the claim requires a
polynucleotide molecule coding for a ribozyme. The second polynucleotide molecule must be
located between A- and B-boxes of the first polynucleotide molecule.
All of the rejections depend primarily upon the examiner's interpretation of Jennings.
In reviewing this aspect of the examiner's position, we find the examiner has read the
reference too broadly. We first point out that the specification of this application describes a
broader invention which may be termed generic to that now claimed in claim 67. In relevant
part, the broader invention only required as the second polynucleotide molecule a “DNA
coding for RNA-inhibiting RNA.” See, e.g., original claim 1. There are at least two specific
embodiments described in the specification of this application of “DNA coding for RNA-
inhibiting RNA,” i.e., antisense RNA and RNA coding for a ribozyme. See, e.g., original
claims 2 and 4. Jennings is directed to the antisense RNA aspect of the invention described
in the specification of the application and is cited by applicants in the paragraph bridging
pages 6-7 of the specification. However, during prosecution of this application, the claims
were narrowed to their present state and are now strictly limited to the second embodiment
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wherein the second polynucleotide molecule is one which codes for a ribozyme. The
examiner's position began to fall apart when the claims were narrowed.
The examiner describes Jennings at page 4 of the examiner's answer as suggesting
“using the pol III promoters in tRNA molecules specifically to express any RNA-inhibiting
RNA.” The examiner amplifies this thought in the paragraph bridging pages 8-9 of the
answer where in responding to appellants' arguments the examiner states that “the
teachings of Jennings that a pol III promoter is useful to express an antisense RNA would
have suggested to the ordinary skilled artisan that it would have also been useful to express
another type of RNA-modifying RNA known in the art, i.e., a ribozyme.” However, the
examiner has not referred to any facts of record in support of these assertions.
In our view, the examiner has not properly established that one of ordinary skill in the
art would have read Jennings in this broad manner. Simply put, we find no factual support for
the examiner's assertion that one of ordinary skill in the art would have found it obvious to
modify the teachings of Jennings by using a polynucleotide sequence encoding a ribozyme
for one encoding antisense RNA. Conclusions of obviousness must be based upon facts, not
generalities. In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967), cert.
denied, 389 U.S. 1057 (1968); In re Freed, 425 F.2d 785, 788, 165 USPQ 570, 571 (CCPA
1970). Absent a fact-based explanation from the examiner, it appears that the only reason
for making such a substitution comes from appellants’ disclosure of the present invention, not
from Jennings or any of the additional references relied upon by the examiner. This is, of
course, improper hindsight.
Accordingly, all rejections must be reversed.
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The decision of the examiner is reversed.
REVERSED
William F. Smith )
Administrative Patent Judge )
)
)
)
Teddy S. Gron ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Carol A. Spiegel )
Administrative Patent Judge )

WFS/cam
Appeal No. 1996-1005
Application 07/947,982
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