Ex parte Heuckeroth et al.

Board of Patent Appeals and Interferences

Aug 19, 1998

08091550 (B.P.A.I. Aug. 19, 1998)

Application for patent filed July 15, 1993. According to appellants, the1
application is a continuation of Application 07/745,660, filed August 16, 1991, now
abandoned; which is a division of Application 07/208,192, filed June 16, 1988, now
abandoned; which is a continuation-in-part of Application 07/151,774, filed February 3,
1988, now abandoned.
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publication in a law journal and (2) is not binding precedent of the Board.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. 9
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte ROBERT O. HEUCKEROTH,
STEVEN P. ADAMS, and
JEFFREY I. GORDON
__________
Appeal No. 94-3919
Application 08/091,5501
__________
ORDER VACATING REJECTION AND
REMANDING APPLICATION TO THE EXAMINER
__________
Before WINTERS and WILLIAM F. SMITH, Administrative Patent Judges, and
McKELVEY, Senior Administrative Patent Judge.
WILLIAM F. SMITH, Administrative Patent Judge.
Appeal No. 94-3919
Application 08/391,550
2
ORDER VACATING REJECTION AND
REMANDING APPLICATION TO THE EXAMINER
Claim 15 is the only claim pending in the application and reads as follows:
15. A method of acylating a peptide or protein comprising reacting the CoA ester
of an oxy- or thio-substituted fatty acid analog compound having activity as a substrate of
myristoylating enzymes selected from the group consisting of C or C fatty acids or alkyl13 14
esters thereof in which a methylene group normally in a carbon position from 4 to 13 is
replaced with oxygen or sulfur with said peptide or protein in the presence of a source of
N-myristoyl transferase to thereby decrease the hydrophobicity of the resulting acyl peptide
or protein compared to the corresponding myristoyl peptide or protein while maintaining
about the same chain length.
The examiner has rejected this claim under 35 U.S.C. § 101 alleging that the claim method
"lacks utility." (Examiner's Answer, page 3). In relevant part, the examiner has concluded
that "myristoylation of proteins does not constitute any useful practical utility other than to
advance further study." (Examiner's Answer, page 4).
Parent application 07/745,660 was the subject of Appeal No. 93-1653. Claim 15,
as it was pending the parent application, reads as follows:
15. A method of acylating a peptide or protein comprising reacting the CoA ester
of an oxy- or thio-substituted fatty acid analog compound having activity as a substrate of
myristoylating enzymes selected from the group consisting of C or C fatty acids or alkyl13 14
esters thereof in which a methylene group normally in a carbon position from 4 to 13 is
replaced with oxygen or sulfur with said peptide or protein in the presence of a source of
N-myristoyl transferase.
When this application was refiled, claim 15 was amended to add the language describing
the decreased hydrophobicity of the resulting acyl peptide or protein. On the record
Appeal No. 94-3919
Application 08/391,550
A copy of the ‘689 patent is attached to this opinion.2
3
developed in the parent application, the prior merits panel affirmed the rejection under 35
U.S.C. § 101 of claim 15 as it then read.
In considering the issues raised in this appeal, this merits panel discovered U.S.
Patent No. 5,571,689 ('689 patent). The '689 patent lists four co-inventors including the2
present three co-inventors. Claim 1 of the '689 patent reads as follows:
1. A method of acylating a peptide or protein at an amino terminal glycine residue
of said peptide or protein with an analog of myristic acid to form a N-myristoyl analog
peptide or protein comprising reacting said peptide or protein with N-myristoyltransferase
and an enzyme substrate consisting of the CoA ester of a diheteroatom-substituted fatty
acid analog of myristic acid selected from the group consisting of C and C fatty acids,13 14
in which two non-adjacent methylene groups of said analogs which are normally in
positions from 3 to 13 are replaced by oxygen or sulfur to reduce the hydrophobicity of said
myristic acid analog.
Claim 15 of this application and claim 1 of the '689 patent differ most significantly in that
claim 15 of this application requires the use of a monoheteroatom-substituted fatty acid
analog of myristic acid while claim 1 of the '689 patent requires the use of a diheteroatom-
substituted fatty acid analog of myristic acid.
The issuance of the '689 patent changes the factual background against which the
utility of the method of claim 15 on appeal must be determined. Since the record has
significantly changed from that considered by the prior merits panel in the previous appeal
and the examiner in considering the issue in this application, we VACATE the examiner's
Appeal No. 94-3919
Application 08/391,550
4
rejection under 35 U.S.C. § 101 and remand the application to the examiner to assess the
new record and make a new determination as to whether the claim on appeal possesses
utility under 35 U.S.C. § 101.
We take no position on the merits of the utility issue raised, either on the previous
record or the newly expanded record. It may be that the method of claim 15 is not directed
to a patentable utility. This assessment, based upon the new record, is best made by the
examiner in the first instance. If the reassessment results in the examiner determining that
the method set forth in claim 15 on appeal lacks utility under 35 U.S.C. § 101, she should
issue an appropriate Office action stating such a rejection. As a second separate
matter, we note that the administrative file of this application indicates that the examiner
only searched the claimed invention in a single class and subclass. In addition, it does not
appear that the examiner has performed a search of any of the electronic databases
available to the examiners. In this regard, we note that the face of the '689 patent indicates
that a more extensive search was performed on very similar subject matter. Upon return of
the application, the examiner should ensure that an appropriate search of the subject
matter claimed in this application has been performed.
Appeal No. 94-3919
Application 08/391,550
5
This application, by virtue of its “special” status, requires an immediate action.
MPEP § 708.01(d). It is important that the Board be informed promptly of any action
affecting the appeal in this case.
VACATED & REMANDED
Sherman D. Winters )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
William F. Smith ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
Fred E. McKelvey, Senior )
Administrative Patent Judge )
Appeal No. 94-3919
Application 08/391,550
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Scott J. Meyer - A3SG
Monsanto Company
800 North Lindbergh Blvd.
St. Louis, MO 63167