Ex Parte FEKETE et al

Patent Trials and Appeals Board

May 13, 2019

15041648 - (D) (P.T.A.B. May. 13, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
15/041,648 02/11/2016
52059 7590 05/15/2019
LIFE TECHNOLOGIES CORPORATION
Attn: IP Department
5823 Newton Drive
Carlsbad, CA 92008
FIRST NAMED INVENTOR
Richard A. FEKETE
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
6742 D3Cl US 3274
EXAMINER
HORLICK, KENNETH R
ART UNIT PAPER NUMBER
1637
NOTIFICATION DATE DELIVERY MODE
05/15/2019 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):
PatentDocketing@thermofisher.com
pair_thermofisher@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD A. FEKETE and ANNALEE NGUYEN
Appeal2018-003278
Application 15/041,648 1
Technology Center 1600
Before DONALD E. ADAMS, RACHEL H. TOWNSEND,
and DAVID COTTA, Administrative Patent Judges.
TOWNSEND, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a
composition including a polypeptide having deoxyribonuclease activity and
a surfactant and that is substantially free of a cation chelator, which have
been rejected as obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
STATEMENT OF THE CASE
Appellants' invention is directed to a kit for preparation of samples
for detection and/or quantitation of nucleic acid. (Spec. ,r 3.)
1 Appellant, is Applied Biosystems, LLC, and it identifies itself, Life
Technologies Corp., and Thermo Fischer Scientific Inc. as the real parties in
interest. (Appeal Br. 1.)
Appeal2018-003278
Application 15/041,648
Claims 55-62 and 68-79 are on appeal. Claim 55 is representative
and reads as follows:
55. A composition comprising: a polypeptide having
deoxyribonuclease activity and a surfactant that substantially
lacks fluorescence between 300 nm and 750 nm when in use for
in situ analysis of nucleic acid, wherein the composition is
substantially free of a cation chelator.
( Appeal Br. 9.)
The following grounds of rejection by the Examiner are before us on
review:
Claims 55-58, 60, 62, 68-71, and 76-79 under 35 U.S.C. § I03(a) as
unpatentable over Pasloske. 2
Claims 59 and 72-75 under 35 U.S.C. § I03(a) as unpatentable over
Pasloske and Butler. 3
Claim 61 under 35 U.S.C. § I03(a) as unpatentable over Pasloske and
Tsionsky. 4
DISCUSSION
Non-Obviousness over Pasloske
The Examiner finds that Pasloske discloses kits for lysis of cell
samples where the kits comprise a deoxyribonuclease and the surfactant
TRITON X-100. (Final Action 3.) The Examiner recognizes that in the one
disclosed composition that includes TRITON X-100, Im EDTA is also
included. (Ans. 5; see also Final Action 5.)
2 Pasloske, US 2003/0170617 Al, published Sept. 11, 2003.
3 Butler et al., US 6,313,282 Bl, issued Nov. 6, 2001.
4 Tsionsky et al, US 6,919,173 B2, issued Jul. 19, 2005.
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Appeal2018-003278
Application 15/041,648
The Examiner finds that "[i]t was conventional in the art to prepare
final solutions by combining appropriate amounts of separate stock solutions
at a desired time." (Final Action 5; see also Ans. 6) This fact coupled with
Pasloske' s teaching of using one or more reagents leads the Examiner to the
conclusion that Pasloske "considered as a whole," suggests "separate
solutions of DN ase/TRITON X-100 and EDT A which may be combined at a
desired time to form the cell lysis buffer described in paragraph 0030." (Id.)
Thus, according to the Examiner, "[i]n this way, the claimed composition,
containing no EDT A, would have been obvious as useful in preparing the
composition of Pasloske, which contains 1 mM EDTA." (Ans. 6.)
We disagree with the Examiner's obviousness determination.
Pasloske teaches a kit that includes at least a buffer and a catabolic enzyme.
(Pasloske ,r 27 .) Pasloske also teaches that the kits can include the buffer
and catabolic enzyme "in one or more suitable containers." (Id. ,r 28; see
also id. ,r 1 7 ("In certain embodiments, a catabolic enzyme may or may not
be included in the Cell Lysis Buffer and in some case may be introduced
before, after or simultaneously with the Cell Lysis Buffer.").) Thus,
Pasloske can fairly be said to teach an enzyme and a buffer are contained
separately.
However, Pasloske mentions the inclusion of the surfactant Triton
XlOO only when it is in combination with lmM EDTA and a catabolic
enzyme. (Id. ,r,r 30, 39.) In other words, as Appellants point out "the only
instances where Pasloske teaches a composition having both: i) a
polypeptide having deoxyribonuclease activity (a 'catabolic' enzyme
according to Pasloske's description); and ii) a surfactant (e.g., Triton
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Appeal2018-003278
Application 15/041,648
XlOO),[]' it is in the presence of a cation chelator, i.e., lmM EDT.")
(Appeal Br. 3; see also Reply B. 2.)
While it may be the case that components of a solution can be
combined one by one, the Examiner has not pointed us to any evidence in
this record to suggest that one of ordinary skill in the art would have
reasonably combined Triton X 100 with deoxyribonuclease before adding the
cation chelator so as to create, at least for a time, the claimed composition.
See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418-19 (2007) ("[I]t can be
important to identify a reason that would have prompted a person of
ordinary skill in the relevant field to combine the elements in the way the
claimed new invention does ... because inventions in most, if not all,
instances rely upon building blocks long since uncovered, and claimed
discoveries almost of necessity will be combinations of what, in some sense,
is already known."). "When there is a design need or market pressure to
solve a problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue the known
options within his or her technical grasp." Id. at 421. The Examiner has not
indicated a known design need, or market pressure that would lead to a
conclusion of obviousness here. Thus, we do not find the Examiner has
shouldered the initial burden of presenting a prima facie case of obviousness
based on the record before us. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992).
In light of the foregoing, we do not sustain the Examiner's
obviousness rejection of claims 55-58, 60, 62, 68-71, and 76-79 over
Pasloske.
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Appeal2018-003278
Application 15/041,648
The Examiner's additional rejections are premised on the position that
Pasloske renders obvious a composition that includes a surfactant and
deoxyribonuclease together and without an EDT A chelator. (See Final
Action 3--4.) For the reasons just discussed, we also do not sustain the
remaining obviousness rejections.
SUMMARY
We reverse the rejection of claims 55-58, 60, 62, 68-71, and 76-79
under 35 U.S.C. § 103(a) as unpatentable over Pasloske.
We reverse the rejection of claims 59 and 72-75 under 35 U.S.C.
§ 103(a) as unpatentable over Pasloske and Butler.
We reverse the rejection of claim 61 under 35 U.S.C. § 103(a) as
unpatentable over Pasloske and Tsionsky.
REVERSED
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