Ex Parte Burns

Board of Patent Appeals and Interferences

Sep 9, 2011

11379098 (B.P.A.I. Sep. 9, 2011)

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.
11/379,098 04/18/2006 Frank R. Burns MD6669 US NA 9245
26691 7590 09/09/2011
POTTER ANDERSON & CORROON LLP
ATTN: JANET E. REED, PH.D.
P.O. BOX 951
WILMINGTON, DE 19899-0951
EXAMINER
LU, FRANK WEI MIN
ART UNIT PAPER NUMBER
1634
MAIL DATE DELIVERY MODE
09/09/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte FRANK R. BURNS
__________

Appeal 2010-010670
Application 11/379,098
Technology Center 1600
__________

Before DEMETRA J. MILLS, ERIC GRIMES, and MELANIE L.
McCOLLUM, Administrative Patent Judges.

McCOLLUM, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a sample
preparation process. The Examiner has rejected the claims as obvious. We
have jurisdiction under 35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
Claims 1, 2, 4, 6, and 7 are on appeal (App. Br. 3). The claims have
not been argued separately and therefore stand or fall together. 37 C.F.R.
§ 41.37(c)(1)(vii). Claim 1 is representative and reads as follows:
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1. A process for preparing a sample for analytical testing, which
comprises:
(a) enriching and/or growing the sample in an enrichment/growth
medium in a vessel; and
(b) disrupting the sample to release the intracellular contents of the
sample,
wherein the disruption is carried out in the same vessel as the enriching
and/or growing and the disruption is accomplished by providing disruptive
elements in the vessel and subjecting the vessel and its contents to a force.
Claims 1, 2, 4, 6, and 7 stand rejected under 35 U.S.C. § 103(a) as
obvious over Domanico et al. (US 2004/0180445 A1, Sep. 16, 2004) in view
of Bucala et al. (US 6,030,615, Feb. 29, 2000) (Ans. 3 & 5).
The Examiner relies on Domanico for teaching
a process for preparing a sample (ie., bacterial host cells
transformed with pUC19 plasmid) for analytical testing, which
comprises: a) enriching and/or growing the sample in an
enrichment/growth medium in a vessel (ie., growing in one well
in 96 well plates overnight); and b) disrupting the sample to
release the intracellular contents of the sample (ie., disrupting
the bacterial host cells with a lysis buffer), wherein the
disruption is carried out in the same vessel (ie., the one well in
96 well plates) as the enriching and/or growing.
(Ans. 3.)
The Examiner relies on Bucala for teaching “that the disruption is
accomplished by providing disruptive elements (ie., glass beads) in the
vessel and subjecting the vessel and its contents to a force (ie., vortexing)”
(id. at 4). The Examiner concludes:
the simple substitution of one well known bacteria lysis method
(ie., the method using lysis buffer taught by Domanico et al.,)
from another well known bacteria lysis method (ie., the method
by vortexing a vessel containing bacteria and glass beads taught
by Bucala et al.,) . . . would have been prima facie obvious to
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one having ordinary skill in the art at the time the invention was
made since the bacteria lysis method taught by Domanico et al.,
and the bacteria lysis method taught by Bucala et al., are used
for the same purpose (ie., lysing bacteria) and are exchangeable.
(Id.)
ISSUE
Does the evidence support the Examiner’s combination of Domanico
and Bucala?
FINDINGS OF FACT
1. Domanico discloses a method for lysing host cells using a lysis
solution (Domanico ¶ [0007]).
2. Domanico also discloses that the method preferably “comprises
vortexing or mixing the cells with a pre-chilled lysis solution for a period of
from 10 to 30 seconds” (id. at ¶ [0063]).
3. In one embodiment, Domanico discloses: “[H]ost cells are
transformed with target low molecular weight nucleic acid. . . . The host
cells are grown to a target concentration . . . , harvested, and spun down. . . .
The LB growth media . . . is decanted off of the cell pellet, and pre-chilled
lysis solution . . . added to the cell pellet.” (Id. at ¶ [0066].)
4. In an alternative embodiment, Domanico discloses “the lysis
solution is added directed [sic, directly] to the cell culture, i.e., prior to the
cells being spun down and growth media decanted off of the cell pellet”
(id.).
5. In Example 2, Domanico discloses: “Bacterial host cells were
transformed with pUC19 plasmid and grown in 96 well plates overnight as is
well known in the art. Plates were thawed for 15 minutes at room
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temperature, and approximately 400 l of previously described Lysis buffer
added per well of each plate.” (Id. at ¶ [0096].)
6. In Example 3, Domanico discloses a lysis buffer containing
glass matrix beads (id. at ¶ [0100]).
7. Bucala discloses:
[C]ultures were grown at 37° C. . . . Bacteria then were
harvested by centrifugation and the cell pellets frozen at -20° C.
until use.
For protein purification, the bacterial pellets . . . were thawed
and resuspended in 3.5 ml of Tris-buffered saline. . . . The
bacteria were lysed by adding an equal volume of washed glass
beads . . . and vortexing the mixture vigorously for 10 min.
(Bucala, col. 28, ll. 15-29.)
PRINCIPLES OF LAW
A reference may be said to teach away when a person of
ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was
taken by the applicant. The degree of teaching away will of
course depend on the particular facts; in general, a reference
will teach away if it suggests that the line of development
flowing from the reference’s disclosure is unlikely to be
productive of the result sought by the applicant.
In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
ANALYSIS
Domanico discloses lysing cells by adding lysis buffer to the vessel in
which the cells were grown (Finding of Fact (FF) 5; see also FF 4). Bucala
discloses lysing cells in a vessel by providing disruptive elements to the
vessel and subjecting the vessel and its contents to a force (FF 7). In view of
Bucala’s teachings, we agree with the Examiner that it would have been
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obvious to lyse Domanico’s cells by providing disruptive elements to the
cell growth vessel and subjecting the vessel and its contents to a force
(Ans. 4-5).
Bucala may not teach “the inclusion of disruptive elements in the
grown medium/vessel” and/or “disrupting the cells in the growth medium”
(App. Br. 5). However, Appellant has not demonstrated that Bucala teaches
away from doing this or that it is contrary to accepted wisdom. On the
contrary, Domanico discloses disrupting the cells in the growth
medium/vessel (FF 4-5), which indicates that doing so is not contrary to
accepted wisdom.
In addition, we do not agree that the Examiner’s proposed
modification renders Domanico unsuitable for its intended purpose. The
purpose of Domanico’s lysing solution is to lyse cells (FF 1). Bucala
discloses a different technique for lysing cells (FF 7). Appellant has not
adequately explained why the use of Bucala’s technique would be unsuitable
for its stated purpose.
CONCLUSION
The evidence supports the Examiner’s combination of Domanico and
Bucala. We therefore affirm the obviousness rejections of claims 1, 2, 4, 6,
and 7.
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TIME PERIOD FOR RESPONSE
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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