Ex parte HAASE et al.

Board of Patent Appeals and Interferences

Sep 11, 1998

07687819 (B.P.A.I. Sep. 11, 1998)

Application for patent filed April 19, 1991.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written for
publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte FERDINAND C. HAASE and
DEAN E. CRESS
_____________
Appeal No. 94-2279
Application 07/687,8191
______________
ON BRIEF
_______________
Before WINTERS, WILLIAM F. SMITH and WEIMAR, Administrative Patent Judges.
WILLIAM SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the final rejection of claims 1 through
22. Claims 23 through 73 are pending but have been withdrawn from consideration by the
examiner.
Claim 1 is illustrative of the subject matter on appeal and reads as follows:
Appeal No. 94-2279
Application 07/687,819
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Appeal No. 94-2279
Application 07/687,819
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1. A composition of matter comprising at least one polypeptide of interest fused to
at least one biotinylated avidin binding polypeptide, wherein the polypeptide of interest and
the biotinylated avidin binding polypeptide each have a N-terminus and a C- terminus and
the fusion takes place at the C-terminus of the biotinylated avidin binding polypeptide.
The references relied upon by the examiner are:
Berger, “Antibodies that Bind Biotin and Inhibit Biotin-Containing Enzymes,” Methods in
Enzymology, vol. 62, pp. 319-326 (1979).
Nagai et al. (Nagai), “Generation of $-Globin by Sequence-Specific Proteolysis of a Hybrid
Protein Produced in Escherichia Coli,” Nature, vol. 309, pp. 810-812 (1984).
Kohanski et al. (Kohanski), “Receptor Affinity Chromatography,” Annals New York
Academy of Sciences, vol. 447, pp. 373-385 (1985).
Lowenadler et al. (Lowenadler), “Production of Specific Antibodies Against Protein A
Fusion Proteins,” The EMBO Journal, vol. 5, pp. 2393-2398 (1986).
Murtif et al. (Murtif), “Mutagenesis Affecting the Carboxyl Terminus of the Biotinyl Subunit of
Transcarboxylase,” The Journal of Biological Chemistry, vol. 262, pp. 11813-11816
(1987).
Maina et al. (Maina), “An Escherichia Coli Vector to Express and Purify Foreign Proteins
by Fusion to and Separation from Maltose-Binding Protein,” Gene, vol. 74, pp. 365-373
(1988).
Sambrook et al. (Sambrook), “Molecular Cloning: A Laboratory Manual,” Cold Spring
Harbor, NY (1989).
Cronan, “Biotination of Proteins in Vivo,” The Journal of Biological Chemistry, vol. 265, pp.
10327-10332 (1990).
Claims 1 through 15 stand rejected under 35 U.S.C. § 103 as unpatentable over
Cronan in view of Maina, Nagai and Lowenadler and further in view of Murtif. Claims 1
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Application 07/687,819
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through 15 also stand rejected under 35 U.S.C. § 103 as unpatentable over Maina in view
of Murtif and further in view of Berger and Kohanski. Claims 16 through 22 stand rejected
under 35 U.S.C. § 103 as unpatentable over Maina in view of Murtif and further in view of
Sambrook. We reverse.
DISCUSSION
Claim 1 is directed to at least one polypeptide of interest which is fused to at least
one biotinylated avidin binding polypeptide. Importantly, fusion takes place at the C-
terminus of the biotinylated avidin binding polypeptide.
The key to each of the three rejections pending against the claims on appeal is the
disclosure of Murtif. Murtif reports the results obtained from studies of how mutagenesis
affects the carboxy terminus of the biotinyl subunit of transcarboxylase. Murtif determined
that the carboxy terminus of the biotinyl subunit of transcarboxylase is very critical in
biotination. For the reasons set forth beginning at page 8, line 4, of the Appeal Brief and
continuing through the second line of page 10 of the document, we agree with appellants
that Murtif teaches away from the claimed invention. As further evidence that at the time of
the present invention, Murtif would have been viewed as teaching away from the claimed
subject matter, we make reference to Cronan. Cronan describes fused polypeptides
containing a polypeptide of interest fused to at least one biotinylated avidin binding
polypeptide. However, the fusion in Cronan takes place at the N-terminus of the
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Application 07/687,819
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biotinylated avidin polypeptide, not the C-terminus as required by the claims on appeal.
When Cronan performed the reported studies, they were aware of the results reported in
Murtif. See Cronan, paragraph bridging pages 10327-28. Viewed in this light, Cronan
provides evidence that a person skilled in this art, having knowledge of the disclosure of
Murtif, would have proceeded in a manner opposite that required by the claims on appeal.
In summary, we agree with appellants that the examiner’s rejections are premised
upon impermissible hindsight.
The decision of the examiner is reversed.
REVERSED
Appeal No. 94-2279
Application 07/687,819
6
)
SHERMAN D. WINTERS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
WILLIAM F. SMITH )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
ELIZABETH C. WEIMAR )
Administrative Patent Judge )
sd
Jordan J. Driks
ROHM and HAAS COMPANY
Independence Mall West
Philadelphia, PA 19105