Ex Parte DAHL et al

Patent Trial and Appeal Board

Dec 1, 2016

13021141 (P.T.A.B. Dec. 1, 2016)

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.
13/021,141 02/04/2011 Fredrik DAHL 92171-805393(5021-US03) 3903
16167 7590 12/05/2016
Kilpatrick Townsend & Stockton LLP/ Complete
Genomics, Inc.
1100 Peachtree Street, Suite 2800
Mailstop: IP Docketing - 22
Atlanta, GA 30309
EXAMINER
THOMAS, DAVID C
ART UNIT PAPER NUMBER
1637
NOTIFICATION DATE DELIVERY MODE
12/05/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ipefiling@kilpatricktownsend.com
jlhice@kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FREDRIK DAHL, RADOJE DRMANAC,
and ANDREW SPARKS1
Appeal 2015-006049
Application 13/021,141
Technology Center 1600
Before ERIC B. GRIMES, RICHARD J. SMITH, and JOHN E.
SCHNEIDER, Administrative Patent Judges.
SCHNEIDER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
method for inserting multiple DNA adaptors into targeted DNAs that have
been rejected as anticipated. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
The present invention is directed to “methods to provide repeated
cycles of nucleic acid cleavage and ligation to insert multiple DNA adaptors
1 Appellants identify the Real Parties in Interest as Complete Genomics, Inc.
(assignee) and Beijing Genomics Institute (parent company). Br. 2.
Appeal 2015-006049
Application 13/021,141
into a population of circular target DNAs at defined positions with respect to
one another.” Spec. 13.
Claims 18—37 are on appeal. Claim 18 is illustrative and reads as
follows:
18. A method for processing a nucleic acid, the method
comprising:
(a) obtaining a plurality of target fragments of a target DNA;
(b) preparing initial constructs each comprising one of the
target fragments circularized by ligating a first adaptor between
both ends of the fragment;
(c) cleaving the target fragment in the initial constructs at a
defined distance from the first adaptor on both sides thereof,
thereby cutting away a portion of the target fragment to form
linear constructs in which the first adaptor is interior from both
ends;
(d) preparing two-adaptor constructs each comprising one of
the linear constructs by a method that comprises ligating a
second adaptor between both ends of the linear DNA.
The claims stand rejected as follows:
Claims 18—37 stand rejected under 35 U.S.C. § 102(e) as anticipated
by Sparks.* 2
THE REJECTION UNDER 35 U.S.C. § 102(e)
In rejecting claims 18—37, the Examiner finds that the Sparks
reference teaches a method for processing a nucleic acid encompassing the
same steps as recited in the instant claims. Final Act. 8—10. The Examiner
2 Sparks, et al., US 2009/0075343 Al, published Mar. 19, 2009 (“Sparks”).
Claims 18—37 were also rejected for non-statutory obviousness-type double
patenting over claims 7—17 of US 7,897,344 in view of Sparks and claims 7—
17 of US 7,901,890 in view of Sparks. Ans. 5—8. Appellants have filed
terminal disclaimers obviating these rejections. Ans. 12.
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Appeal 2015-006049
Application 13/021,141
also finds that the present application lists Fredrik Dahl, Radoje Drmanac,
and Andrew Sparks as inventors, and the Sparks reference lists Andrew
Sparks, Steven Huang, Radoje Drmanac, and Arnold Oliphant as inventors.
Ans. 15.
In response, Appellants argue that Sparks in not eligible as prior art as
it not a published application of another inventive entity. Br. 3. In support
of this argument Appellants have submitted the Declaration of Dr.
Drmanac.3 In his Declaration, Dr. Drmanac states that “[t]he inventors
named on the ‘343 application [Sparks] were identified based on what is
claimed in that application, not what is claimed here. Steven Huang and
Arnold Oliphant did not contribute to the making of the invention claimed
here.” Drmanac Decl. 3. Appellants argue that Dr. Drmanac’s Declaration
is sufficient to establish that Sparks is not a published application by another
under 35 U.S.C. § 102(e).
In response, the Examiner finds that the Declaration is not
unequivocal regarding inventorship. Ans. 16. In addition, the Examiner
states that “even if the inventors Huang and Oliphant were removed from the
Sparks application, there is still a difference in the inventive entities, as
Fredrik Dahl is listed as an inventor of the current application but is not
listed as an inventor in the Sparks application.” Id.
The issue with respect to this appeal is whether the Drmanac
Declaration is sufficient to establish that the invention claimed in the present
application was not described in “an application for patent, published under
3 Declaration of Dr. Radoje T. Drmanac, dated Nov. 17, 2014, filed Nov. 18,
2014 (“Drmanac Decl.”)
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Appeal 2015-006049
Application 13/021,141
section 122(b), by another filed in the United States before the invention by
the applicant for patent.” 35 U.S.C. § 102(e) (emphasis added).
To establish that a prior application in not the work of another
inventive entity, Appellants must come forward with evidence to support
their argument. In re Katz, 687 F.2d 450, 455 (CCPA 1982) (It is incumbent
on the applicant to provide “a satisfactory showing which would lead to a
reasonable conclusion that [applicant] is the . . . inventor” of the subject
matter disclosed in the article and claimed in the application.). An
“unequivocal declaration” from the applicant that he invented the subject
matter disclosed in the prior published application is sufficient to establish
inventorship. In re DeBaun, 687 F.2d 459, 463 (CCPA 1982).
We agree with the Examiner that the Drmanac Declaration is not
sufficient to show that Sparks in not the application of another inventive
entity. While Dr. Drmanac states that Messrs. Huang and Oliphant did not
invent what is claimed in the instant application, the declaration is devoid of
any persuasive evidence regarding who invented subject matter disclosed in
Sparks and claimed in the present application. Dr. Drmanac makes no
statement as to who is the inventor of the overlapping subject matter. As
such his declaration is insufficient to show that Sparks in not available as
prior art under 35 U.S.C. § 102(e). See In re Facius, 408 F.2d 1396, 1407
(CCPA 1969) (Failure to identify prior disclosure as his invention resulted in
finding that applicant had not overcome prima facie availability of a
reference.)
In addition, as the Examiner pointed out, even if Messrs. Huang and
Oliphant did not invent what is claimed in the instant application, the Sparks
reference would still not have the same inventive entity as the present
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Appeal 2015-006049
Application 13/021,141
application, because the Sparks reference would have an inventive entity of
Drmanac and Sparks, while the present application has an inventive entity of
Dahl, Drmanac, and Sparks. See In re Land, 368 F.2d 866, 881 (CCPA
1966) (“Land and Rogers individually [are] separate legal entities from Land
and Rogers as joint inventors. . . . There is no indication that the portions of
the references relied on disclose anything they did jointly. Neither is there
any showing that what they did jointly was done before the filing of the
reference patent applications.”). See also MPEP § 2136.05.
Conclusion of Law
We conclude that the Declaration of Dr. Drmanac is insufficient to
establish that Sparks is not available as prior art under 35 U.S.C. § 102(e).
DECISION
We affirm the rejection of claims 18—37 under 35 U.S.C. § 102(e).
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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