Ex Parte Cleuziat et al

Board of Patent Appeals and Interferences

Sep 16, 2009

10343109 (B.P.A.I. Sep. 16, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte
PHILIPPE CLEUZIAT, SANDRA INCARDONA, and CORINNE JAY
__________

Appeal 2009-009368
Application 10/343,109
Technology Center 1600
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Decided: September 16, 2009
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Before DONALD E. ADAMS, ERIC GRIMES, and STEPHEN WALSH,
Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a method
of lysing cells. The Examiner has rejected the claims as obvious. We have
jurisdiction under 35 U.S.C. § 6(b). We reverse.

Appeal 2009-009368
Application 10/343,109

STATEMENT OF THE CASE
Claims 7, 8, 10, 11, and 13-17 are pending and on appeal. Claim 7 is
representative and reads as follows:
Claim 7: A method for lysing cells, comprising
providing a sample containing prokaryotic cells, eukaryotic cells or a
mixture of both prokaryotic cells and eukaryotic cells;
adding a plurality of lysing beads to said sample;
lysing said cells using one method selected from the group consisting
of sonication and mechanical vortex centrifugation for up to 20 minutes,
thereby producing a processed biological sample;
wherein at least three of the following parameters (a) through (d) are
satisfied:
(a) the lysing beads comprise small-diameter beads and large diameter
beads, with an amount of said small-diameter beads corresponding to 50%
or less than an amount of said large-diameter beads;
(b) a mass of the lysing beads is from 50 to 100% of a mass of the
processed biological sample;
(c) the lysing step is performed for a time of from 10 to 20 minutes;
(d) 7 or less non-lysing glass beads are added to said sample prior to
lysing to drive the movement of the lysing beads;
wherein a diameter of the smaller lysing beads is between 90 and 150
μm, and wherein a diameter of the larger lysing beads is between 400 and
600 μm.
OBVIOUSNESS
Issue
The Examiner has rejected claims 7, 8, 10, 11, and 13-17 under 35
U.S.C. § 103(a) as being obvious in view of Hirose1 and Chisti.2

1 Hirose et al., 1999, Biotechnology Techniques 13:571-575
2 Chisti et al., 1999, Fermentation Technology, Bioprocessing, Scale-Up
and Manufacture, In Biotechnology: The Science and The Business, 2nd ed.,
Moses et al., eds., Harwood Academic Publishers, New York, pp. 177-222.
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Application 10/343,109

The Examiner finds that Hirose discloses a method of lysing cells
with a plurality of glass beads having a “diameter between 40-90 μm,”
which discloses “small diameter (0.04 mm) and large diameter (0.09 mm)
glass beads” (Ans. 8), but does not teach that the amount of small diameter
beads is 50% or less that of the large diameter beads, or that the diameter of
the larger beads is 400-600 μm, or that the mass of the beads is 50-100% of
the mass of the sample, or the inclusion of seven or fewer (non-lysing) glass
beads (id. at 6). The Examiner finds that Chisti discloses that “bead density,
diameter, and bead loading are important considerations in the cell
disruption” (id.), and concludes that “a person of ordinary skill in the art
would have recognized that the size, the percentage mass and number of the
glass beads (bead loading) are result-effective-variables which could have
been optimized” (id.).
Appellants contend that the Examiner erred in finding that Hirose and
Chisti suggest parameters (a), (c), and (d) of claim 7, and thus erred in
finding that the cited references suggest at least three of the recited
parameters (Appeal Br. 16).
The issue with respect to this rejection is: Does the evidence of
record support the Examiner’s conclusion that Hirose and Chisti suggest
three of parameters (a) through (d) of claim 7?
Findings of Fact
1. Hirose discloses that E. coli “strains overexpressing recombinant
α-amylase were cultured in shaken flasks containing small glass beads.
Most of the cells underwent mechanical lysis and more than 90% of the α-
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Application 10/343,109

amylase content and also of other non-recombinant enzymes were released
into the culture fluid after 24 h.” (Hirose, abstract).
2. Hirose discloses that glass beads with a size of 0.04-0.09 mm (40-
90 µm) were used in the culturing/lysing process (id. at 572).
3. Chisti discloses that a bead mill is a preferred method for cell
disruption in a fermentation process (Chisti 209).
4. Chisti discloses that “[b]ead mills consist of either a vertical or
horizontal cylindrical chamber … filled to the desired level with steel or
ballotini glass beads to provide the grinding action” (id.)
5. Chisti discloses that “[b]ead diameter and bead loading are …
important considerations in a disruption operation. Generally the disruption
increases with increasing bead loads and so does the power consumption and
the production of heat.” (Id. at 210.)
6. Chisti discloses that “more rapid disruption is achieved with
smaller beads, the optimal bead size being dependent on the size of the
microbial cells being disintegrated: the smaller the cell size the smaller
should be the bead diameter” (id.)
7. Chisti discloses that “[f]or fungal hyphae … bead sizes > 1 mm
may be satisfactory. For animal and plant cells and for yeasts the bead size
should be < 1 mm. The lower practical limit on bead size is about 0.3 mm.”
(Id.).
Principles of Law
“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
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argument shift to the applicant.” In re Rijckaert, 9 F.3d 1531, 1532 (Fed.
Cir. 1993).
Analysis
Claim 7 is directed to a method for lysing cells by adding lysing beads
to a sample and applying sonication or mechanical vortex centrifugation.
Claim 7 also requires that at least three of four specific parameters – limiting
the sizes or amounts of the beads or the length of the lysing step, or
requiring the presence of non-lysing beads – are satisfied.
The Examiner finds that Hirose discloses adding a plurality of glass
beads with a “diameter between 40-90 μm,” which discloses “small diameter
(0.04 mm) and large diameter (0.09 mm) glass beads,” as recited in
parameter (a) of claim 7 (Ans. 8). Although finding that Hirose does not
disclose the remainder of claim 7’s parameters (a), (c), or (d) (Ans. 6), the
Examiner reasons that Chisti discloses that “bead density, diameter, and
bead loading are important considerations in the cell disruption” (id.) and
that “a person of ordinary skill in the art would have recognized that the size,
the percentage mass and number of the glass beads (bead loading) are result-
effective-variables which could have been optimized” (id.).
Appellants argue that the combination of the cited references do not
suggest any of parameters (a), (c), or (d) recited in claim 7, and thus do not
suggest three of the four recited parameters.
Appellants’ arguments are persuasive that the cited references do not
suggest parameters (a) and (d) of claim 7, and thus do not suggest more than
two of the recited parameters. Parameter (a) of claim 7 requires two discrete
sets of lysing beads: small-diameter beads with a diameter between 90 and
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150 μm and large diameter beads with a diameter between 400 and 600 μm.
Hirose discloses beads with a range of between 40-90 μm, and thus a
mixture of beads that includes some that are of 90 µm size recited in claim 7.
However, Hirose does not disclose two discrete sets of differently sized
beads.
Chisti discloses that beads of different sizes are used for lysing
different types of cells. Chisti does not suggest using two discrete
populations of large and small beads. Since neither of the cited references
suggests using a combination of different-sized beads, the Examiner has not
adequately explained how the combined references would have suggested
parameter (a) of claim 7: two discrete sets of lysing beads, one set with a
diameter between 90 and 150 μm and the other set with a diameter between
400 and 600 μm.
Parameter (d) of claim 7 specifies that “7 or less non-lysing glass
beads” are added to the sample “prior to lysing to drive the movement of the
lysing beads.” To the extent that the Examiner relies on Chisti’s suggestion
to optimize bead number as suggesting this parameter, we disagree. Neither
Hirose nor Chisti suggests including non-lysing beads as part of the lysing
process. The Examiner has not adequately explained how the cited
references would have suggested parameter (d) of claim 7 to one or ordinary
skill in the art.
Thus, the Examiner has not adequately explained how the cited
references would have suggested parameters (a) or (d) of claim 7, and
therefore has not shown that the cited references would have suggested at
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least three of the four recited parameters. The rejection of claim 7 as
obvious in view of Hirose and Chisti is reversed.
The rejection of claims 8, 10, 11, and 13-17, which depend from claim
7, is also reversed for the reasons discussed above.
Conclusions of Law
The evidence of record does not support the Examiner’s conclusion
that Hirose and Chisti suggest three of parameters (a) through (d) of claim 7.
SUMMARY
We reverse the rejection of claims 7, 8, 10, 11, and 13-17 under 35
U.S.C. § 103(a) as being obvious in view of Hirose and Chisti.

REVERSED

Ssc:

JAMES C. LYDON
100 DAINGERFIELD ROAD
SUITE 100
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