Ex Parte Bright

Patent Trial and Appeal Board

Apr 30, 2013

11006857 (P.T.A.B. Apr. 30, 2013)

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.
11/006,857 12/08/2004 Frank V. Bright 011520.00393 6817
26712 7590 05/01/2013
HODGSON RUSS LLP
THE GUARANTY BUILDING
140 PEARL STREET
SUITE 100
BUFFALO, NY 14202-4040
EXAMINER
SHIBUYA, MARK LANCE
ART UNIT PAPER NUMBER
1641
MAIL DATE DELIVERY MODE
05/01/2013 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte FRANK V. BRIGHT
____________________

Appeal 2011-003167
Application 11/006,857
Technology Center 1600
____________________

Before: WILLIAM V. SAINDON, NEIL T. POWELL, and
BEVERLY M. BUNTING, Administrative Patent Judges.

SAINDON, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-003167
Application 11/006,857
2
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1, 4-6, 8-11 and 33. We have jurisdiction under 35
U.S.C. § 6(b).

The Claimed Subject Matter
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A molecularly imprinted polymer for detecting the
presence of an analyte comprising:
at least one templated site which is capable of selectively
binding said analyte, said templated site bearing exposed
reactive groups needed to selectively bind the analyte, and at
least one reporter molecule,
wherein the reporter molecules in the polymer are
exclusively present at the templated sites.

References
The Examiner relies upon the following prior art references:
Goldstein
Upadhya
US 3,966,744
US 6,221,604
Jun. 29, 1976
Apr. 24, 2001
Chen US 2004/0157804 A1 Aug. 12, 2004
Pirilä-Honkanen, Thermodynamic and Spectroscopic Properties of 2-
Pyrrolidinones. 6. Normalized ET(30) Parameters for Binary Solvent
Mixtures of 2-Pyrrolidinone at 30 and 50°C, Journal of Solution Chemistry,
vol. 24, no.7, 641-649 (1995) (hereafter “Pirilä-Honkanen”).
Turkewitsch et al., Fluorescent Functional Recognition Sites through
Molecular Imprinting. A Polymer-Based Fluorescent Chemosensor for
Aqueous cAMP, Analytical Chemistry, vol. 70, no. 10, 2025-2030 (1998)
(hereafter “Turkewitsch”).
Appeal 2011-003167
Application 11/006,857
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Rejections
I. Claims 1, 4, 6, 9, and 33 are rejected under 35 U.S.C. § 102(b) as
anticipated by Turkewitsch. Ans. 4.
II. Claims 5 and 11 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Turkewitsch and Goldstein. Ans. 6.
III. Claims 6, 8, and 9 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Turkewitsch and Pirilä-Honkanen. Ans. 8.
IV. Claim 10 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Turkewitsch, Pirilä-Honkanen, Upadhya, and Chen. Ans. 10.

SUMMARY OF DECISION
We AFFIRM-IN-PART.

OPINION
Claim 1 requires “reporter molecules … exclusively present at the
templated sites.” The Examiner found that Turkewitsch describes a majority
of the reporter molecules at the templated sites and reasons that this satisfies
the limitation requiring “exclusively present.” See, e.g., Ans. 13-14.
Appellant argues, and we agree, that having a majority of reporter molecules
present at the templated sites does not satisfy the requirement for them to be
“exclusively present” at the templated sites. See, e.g., App. Br. 8. The
Examiner’s reasons at pages 13-14 (and similar statements elsewhere) fail to
articulate how a mere majority satisfies the exclusivity required by the
claims, given the stark difference between the plain meanings of the terms
“majority” and “exclusively.”
Accordingly, we are apprised of error in the rejection of claim 1, and
of claims 4, 6, and 9, which depend therefrom. The same error is present in
Appeal 2011-003167
Application 11/006,857
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rejections II and III. Claim 33, however, is of different scope, and we
address it separately.
Claim 33 requires the reporter molecules “site-selectively installed at
the template sites.” Appellant states that this “site-selectively installed”
limitation is equivalent in scope to the “exclusively present” limitation in
claim 1. App. Br. 3, 9. Appellant does not provide any explanation as to
why this different language is to be interpreted in this way. Outside an
indication to the contrary, it is presumed that different words or phrases are
used in separate claims to indicate the claims have different meanings.
Seachange Int’l, Inc. v. C-COR Inc., 413 F.3d 1361, 1368-1369 (Fed. Cir.
2005) (quoting Karlin Tech. Inc. v. Surgical Dynamics, Inc., 177 F.3d 968,
971-72 (Fed. Cir. 1999)). The presumption applies across independent
claims. Kraft Foods, Inc. v. Int’l Trading Co., 203 F.3d 1362, 1365-69 (Fed.
Cir. 2000). Accordingly, we do not accept Appellant’s proposed
construction of “site-selectively installed.”
The Examiner provides an explanation of how Turkewitsch describes
“site-selectively installed” reporter molecules. Ans. 19-20. We understand
the Examiner’s position to be that because the reporter molecules tend to
accumulate at the sites (i.e., a majority of them are located there because of
their low affinity to the template), that this means they selected those
particular sites. See also Turkewitsch, p. 2027 (“ensuring that the majority
of [fluorescent functional monomer] was present in imprinted binding
cavities”). Choosing one site over another is reasonably considered site
selection. Appellant does not persuasively argue that the Examiner’s
interpretation of the claims or their reading on Turkewitsch is in error.
Accordingly, we sustain the Examiner’s rejection of claim 33.
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Application 11/006,857
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DECISION
We REVERSE the Examiner’s decision regarding claims 1, 4-6, and
8-11.
We AFFIRM the Examiner’s decision regarding claim 33.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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