Ex Parte Bryan

Board of Patent Appeals and Interferences

Jun 6, 2006

09729133 (B.P.A.I. Jun. 6, 2006)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte BRUCE BRYAN
__________

Appeal No. 2006-0381
Application No. 09/729,133
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ON BRIEF
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Before SCHEINER, GRIMES, and GREEN, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL

This appeal involves claims to a bubble-blowing composition containing a
bioluminescent fluorescent protein, which the examiner has rejected for obviousness.
We have jurisdiction under 35 U.S.C. § 134. We affirm.
Background
The specification discloses “systems for producing bioluminescent light, and to
combinations of the systems with articles of manufacture including toys, textiles, food
and beverages, to produce novelty items.” Page 1. Sources of bioluminescence
include various luciferases (see pages 27-30), aequorin (see pages 34-40), and any of
several fluorescent proteins (see pages 58-62). “GFPs [green fluorescent proteins] are
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Application No. 09/729,133

activated by blue light to emit green light and thus may be used in the absence of
luciferase and in conjunction with an external light source with novelty items.” Page 59.
“Soap bubbles are blown from water solutions or other aqueous composition
containing soap or another surfactant. . . . Such compositions, preferably those that
have near neutral pH, can be combined with the components of the bioluminescence
generating systems.” Page 113. “[A] fluorescent protein, such as GFP, BFP [blue
fluorescent protein] or a phycobiliprotein, may be added to the bubble-making
composition and then illuminated using an external light source. For example, bubbles
containing a fluorescent protein may be produced in a room illuminated with light of an
appropriate wavelength to cause the fluorescent protein to fluoresce.” Page 114.
Discussion
1. Claim construction
Claims 1-3, 5, and 8-14 are on appeal. Claims 4, 6, 7, 9, 11, and 15-21 are also
pending: claims 9 and 11 have been objected to but not rejected, and claims 4, 6, 7,
and 15-21 have been withdrawn from consideration by the examiner. In addition, for the
generic claims, the examiner required Appellant to elect a single article of manufacture
for examination on the merits; Appellant elected the species of bubbles, bubble-making
toys, and bubble bath. See the response filed December 11, 2002.
The claims on appeal stand or fall together. See the Appeal Brief, page 3. We
will focus on claim 5, which is representative. Claims 1 and 5 read as follows:
1. A combination, comprising:

an article of manufacture; and a bioluminescent fluorescent protein,
whereby the combination is a novelty item.

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Application No. 09/729,133

5. The combination of claim 1, wherein the article of manufacture is bubbles,
a bubble making toy or bubble bath.

Claim 5 is directed to the combination of a bioluminescent fluorescent protein
and, e.g., “bubbles,” which we interpret to include a bubble-making composition. The
recited “bioluminescent fluorescent protein” includes GFP, BFP, and phycobiliprotein
(specification, page 114) but does not include luciferase: claim 19, which has been
withdrawn from consideration, depends on claim 1 and adds the limitation that the
combination “further compris[es] a luciferase, a luciferin or a luciferase and a luciferin.”
2. Obviousness
The examiner rejected claims 1-3, 5, and 8-14 under 35 U.S.C. § 103 as obvious
in view of Halbritter1 and Prasher.2 The examiner reasoned that Halbritter teaches
bubble-making solutions containing a chemiluminescent light-generating system, and
that Prasher teaches that the A. victoria green-fluorescent protein is “highly fluorescent”
(Prasher, abstract) and “stable to a variety of harsh conditions including heat, extreme
pH, and chemical denaturants” (id., page 230, left-hand column).
The examiner concluded that it would have been obvious to substitute the
fluorescent protein taught by Prasher for the chemiluminescent system used by
Halbritter. The examiner found that Prasher’s teaching that A. victoria GFP is stable to
a variety of harsh conditions would have suggested its inclusion in a bubble-making
solution, “which will include surfactants and that may be stored under a variety of
conditions by consumers.” Examiner’s Answer, page 5.

1 Halbritter, U.S. Patent 5,246,631, issued September 21, 1993
2 Prasher et al., “Primary structure of the Aequorea victoria green-fluorescent protein,” Gene, Vol. 111,
pp. 229-233 (1992)

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We agree with the examiner that the cited references would have suggested
bubble-making solutions comprising A. victoria GFP to a person of ordinary skill in the
art. Those skilled in the art would have recognized that chemiluminescence and
bioluminescence are alternative means of generating light. In addition, as noted by the
examiner, Prasher teaches that A. victoria GFP is stable to (i.e., retains its activity in the
presence of) chemical denaturants. In the recombinant protein field, surfactants are
recognized as protein-denaturing agents. Thus, the teachings of the references would
have suggested the substitution of A. victoria GFP – a bioluminescent protein that is
stable in the presence of surfactants – for the chemiluminescent agent used by
Halbritter.
Appellant argues that Prasher does not provide “explicit or implicit support” for
the examiner’s statement that A. victoria GFP is stable in the presence of surfactants.
Appeal Brief, page 4.
This argument is not persuasive. As noted above, surfactants – which are also
known as detergents or soaps – are well-known protein denaturing agents. Halbritter
teaches that “bubble blowing involves dipping a ring-shaped article into a liquid soap
solution.” Col. 1, lines 13-15. See also column 2, lines 45-55: “Suitable bubble blowing
solutions may include anionic, cationic, non-ionic and ampholytic surfactants. . . .
Solutions containing conventional surfactants, such as sodium laureth sulfate or
ammonium laureth sulfate may be utilized.” We agree with the examiner that the class
of “chemical denaturants” described by Prasher would have been recognized by those
skilled in the art as including the surfactants described by Halbritter as a necessary
component of bubble-making solutions.

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Application No. 09/729,133

Appellant also argues that bioluminescent systems and chemiluminescent
systems are distinct:
Often substances present in a chemiluminescent system are incompatible
with the bioluminescent fluorescent proteins of bioluminescent systems.
For example, the Halbritter ‘631 reference teaches that “the preferred
chemiluminescent agent includes an oxalate diester which reacts with a
peroxide and a fluorescer to provide the emission of light.” . . . When
peroxide contacts a bioluminescent component, such as a fluorescent
protein, it destroys the coelenterazine necessary to allow the
bioluminescent reaction to take place by destroying the oxygen.
Accordingly, one skilled in the art would not replace the chemiluminescent
system of Halbritter ‘631 with a bioluminescent fluorescent protein.

Appeal Brief, page 5.
We find this argument unpersuasive, for the reasons discussed on pages 11-15
of the Examiner’s Answer. To summarize, unlike luciferase, GFP does not require
oxygen and a substrate (e.g., coelenterazine) to generate light. See the specification at
page 36 (“The native [aequorin] protein contains oxygen and a heterocyclic compound
coelenterazine, a luciferin, . . . bound thereto. . . . Upon addition of trace amounts Ca2+
. . . , it undergoes a conformational change th[at] catalyzes the oxidation of the bound
coelenterazine using the protein-bound oxygen. Energy from this oxidation is released
as a flash of blue light.”) and page 59 (“GFPs are activated by blue light to emit green
light and thus may be used in the absence of luciferase and in conjunction with an
external light source.”).
In addition, the basis of the rejection is not that it would be obvious to add the
A. victoria GFP to the chemiluminescent system described by Halbritter; there would be
no need for A. victoria GFP in the bubble-making solution if the chemiluminescent
system were retained. The examiner’s rejection is based on the obviousness of

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Application No. 09/729,133

“replacing the entire chemiluminescent system (i.e., all of the oxalate diester, the
peroxide and the fluorescer in the preferred embodiment of Halbritter) used with the
bioluminescent fluorescent protein of Prasher.” Examiner’s Answer, page 15. Thus,
any potential incompatibility between the A. victoria GFP and the components of
Halbritter’s system would not lead persons skilled in the art away from combining the
cited references.
Summary
The examiner has made out a prima facie case of obviousness, which Appellant
has not rebutted. We therefore affirm the rejection of claim 5. Claims 1-3 and 8-14 fall
with claim 5.

AFFIRMED

Toni R. Scheiner )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
Eric Grimes )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
Lora M. Green )
Administrative Patent Judge )

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Application No. 09/729,133

Alan G. Towner
Pietragallo, Bosick & Gordon
One Oxford Centre
38th Floor
Pittsburgh, PA 15219

dem