Ex Parte Bunch et al

Board of Patent Appeals and Interferences

Aug 28, 2012

11100259 (B.P.A.I. Aug. 28, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte THOMAS A. BUNCH and KATIE M. RUOCCO
__________

Appeal 2011-006109
Application 11/100,259
Technology Center 1600
__________

Before DONALD E. ADAMS, DEMETRA J. MILLS, and ERIC GRIMES,
Administrative Patent Judges.

MILLS, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134. The Examiner has rejected
the claims for obviousness. Claims 1-4, 6-22, 28-32, 34-68, 74-76, and 78-
88 are pending. Claims 39-68, 74-76, 78-85, and 87 are withdrawn. Claims
1-4, 6-22, 28-32, 34-38, 86, and 88 are rejected. We have jurisdiction under
35 U.S.C. § 6(b).
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STATEMENT OF THE CASE
The following claim is representative:
1. A composition for covalently attaching a biomolecule to a support
comprising
(a) an alkylene diol;
(b) a betaine;
(c) a detergent; and
(d) a salt comprising a mixture of NaCl and sodium citrate
wherein the alkylene diol is from 30 to 70% by volume of the
composition, and the composition has a pH from greater than 9.0.

Cited References

The Examiner relies on the following prior art references:

Hackler et al., Development of chemically modified glass surfaces for
nucleic acid, protein and small molecule microarrays, 7 Molecular Diversity
25-36 (2003).

Calevro et al., Assessment of 35mer amino-modified oligonucleotide based
microarray with bacterial samples, 57 Journal of Microbiological Methods
207-218 (2004).

Rickman et al., Optimizing spotting solutions for increased reproducibility
of cDNA microarrays, 31 Nucleic Acids Research 1-8 (2003).

Pal US 2004/0054160 A1 Mar. 18, 2004
Augello et al. US 2002/0146677 A1 Oct. 10, 2002

Grounds of Rejection
Claims 1-4, 6-17, 22, 28-31, 34-38, 86, and 88 are rejected under 35
U.S.C. §103(a) as being unpatentable over Hackler et al. in view of Pal,
Calevro, and Rickman.
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Claims 18-21, and 32 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Hackler et al. in view of Pal, Calevro, Rickman and
Augello.

FINDINGS OF FACT
The Examiner’s findings of fact are set forth in the Answer at pages 4-
9.

Discussion
ISSUE
The Examiner concludes that
it would have been prima facie obvious at the time the invention was
filed to modify the spotting composition of Hackler et al. to include
chemicals which improve the spotting shape produced by the spotting
solution in order to produce microarrays which have uniform spots to
decrease the background noise from microarray production. The
ordinary artisan would be motivated to modify the spotting
composition of Hackler et al. to include betaine and SSC as taught by
Calevro et al. because Calevro et al. teaches that a solution containing
betaine and SSC provided the best spot shape of the spotting solution
(p. 212 last sentence).
The ordinary artisan would have been motivated to modify the
composition of Hackler et al. to include the ethylene glycol in the
buffer composition of citrate as taught by Pal because Pal teaches the
ethylene glycol composition posses a degree of stability that permits
long-term storage of nucleic acids in solution without excessive
degradation (p. 1 paragraph 10). Pal teaches the medium enables
superior adhesion to a functionalized substrate surface as well as
enhanced hybridization efficiency to the printed nucleic acid (p. 2
paragraph 10).
The ordinary artisan would be further motivated to modify the
composition of Hackler et al. to further include a detergent . . .
because Rickman et al. teaches the addition of detergent to a spotting
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solution yields spots of superior quality in terms of morphology, size
homogeneity, signal reproducibility and intensity (abstract).
Thus a combination of the [sic] would have the expected benefit of
improving properties of Hackler's spotting solution in terms of
morphology, size homogeneity, signal reproducibility and intensity.

(Ans. 7-8.)
Appellants
disagree[ ] that one of skill in the art would have been
motivated to add a solution containing SSC to a phosphate
solution at a pH of 10. SSC, which is an acronym for saline-
sodium citrate buffer has a pH of approximately 7. The addition
of the SSC buffer to a solution at a pH of 10 would do one of
two things; either it would defeat the purported advantages of
Hackler, or it would defeat the purported advantages of
Calevro. If the SSC buffer modified the pH of the phosphate
buffer from 10, the advantages noted by Hackler would be lost
because Hackler found the best anchoring at a pH of 10. If the
phosphate buffer modified the pH of the SSC buffer from 7, the
advantages noted by Calevro would be lost.
Calevro found that a solution containing betaine and SSC
provided the best spotting solution. Betaine, which is N,N,N-
trimethylglycine (Calevro, page 209) is zwitterionic at a pH of
7. Betaine would not be zwitterionic at a pH of 10 and would
therefore behave very differently in a pH 10 solution. Because
of its different behavior, a non-zwitterionic betaine would likely
not provide the same benefits noted in Calevro. Therefore, one
of skill in the art would not be motivated to combine the
teachings of Hackler and Calevro together because the
advantages of either Hackler or Calevro, or both would be lost.
(App. Br. 6-7.)
The issue is: Does the cited prior art suggest the invention as
claimed?

PRINCIPLES OF LAW
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“In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness. Only if that
burden is met, does the burden of coming forward with evidence or
argument shift to the applicant.” In re Rijckaert, 9 F.3d 1531, 1532 (Fed.
Cir. 1993) (citations omitted). In order to determine whether a prima facie
case of obviousness has been established, we consider the factors set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966): (1) the scope and content
of the prior art; (2) the differences between the prior art and the claims at
issue; (3) the level of ordinary skill in the relevant art; and (4) objective
evidence of nonobviousness, if present.
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).

ANALYSIS
We agree with the Examiner’s fact finding, statement of the rejection
and responses to Appellants’ arguments as set forth in the Answer. We find
that the Examiner has provided evidence to support a prima facie case of
obviousness. We provide the following additional comment.
Appellants argue that one of ordinary skill in the art would not have
been motivated to combine Hackler with Calevro because
Calevro found that a solution containing betaine and SSC provided
the best spotting solution. Betaine, which is N,N,N-trimethylglycine
(Calevro, page 209) is zwitterionic at a pH of 7. Betaine would not be
zwitterionic at a pH of 10 and would therefore behave very differently
in a pH 10 solution. Because of its different behavior, a non-
zwitterionic betaine would likely not provide the same benefits noted
in Calevro. Therefore, one of skill in the art would not be motivated
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to combine the teachings of Hackler and Calevro together because the
advantages of either Hackler or Calevro, or both would be lost.
(App. Br. 7.)
We are not persuaded by Appellants’ argument. In response to this
argument, the Examiner finds that
the appellant has not provided any evidence that the structure of SSC
would change in such a way to no longer provide the advantage of
good spot shape in a spotting solution (Calevro p. 212 last sentence).
Further although the appellant asserts that betaine would not be
zwitterionic at pH of 10, the appellant has not provided evidence of
such. Gagnon (WO 2010/030222A1 March 18, 2010) teaches
"betaine is in its zwitterionic form at pH values ranging from about
pH 4 to about pH 10" (p. 9 lines 20-25). As such, the art indicates that
at least for pH values from pH 4 to pH 10 betaine is in its zwitterionic
form. As such it appears that the betaine used by Calevro et al. would
maintain the same structural advantages in a solution of pH 10.

(Ans. 12.)
Thus the Examiner concludes that
each of the components in the composition have advantageous
properties which would improve the spotting solution as stated in the
35 USC 103(a) [rejection]. It was well known in the prior art to
modify spotting solutions with different chemical components in order
to arrive at a solution which would bind an oligonucleotide to a solid
support. In the instant case each of these chemicals have different
advantages which would be beneficial to the spotting solution which
is taught in the prior art.

(Ans. 10.)

We agree that the Examiner has provided evidence that each of the
claimed components of the spotting composition is known in the prior art to
provide beneficial spotting improvements and results. Appellants have not
rebutted this argument with sufficient evidence or evidence of unexpected
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results. With respect to Appellants’ other arguments, they have been
addressed fully in the Response to Arguments section of the Answer and we
adopt the Examiner’s position as our own. The obviousness rejections are
affirmed for the reasons of record.

CONCLUSION OF LAW
The cited references support the Examiner’s rejection of claims 1 and 18 as
obvious. The obviousness rejections are affirmed. Because they are not
separately argued, claims 2-4, 6-17, 22, 28-31, 34-38, 86, and 88 fall
together with claim 1; and claims 19-21 and 32 fall together with claim 18.

TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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