Ex Parte Hobbs

Patent Trial and Appeal Board

Dec 28, 2016

12723458 (P.T.A.B. Dec. 28, 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.
12/723,458 03/12/2010 Roderick Nicholas Hobbs 20102647-02 5291
7590 12/30/2016
Agilent Technologies, Inc. in care of:
CPA Global
P. O. Box 52050
Minneapolis, MN 55402
EXAMINER
HUYNH, PHUONG N
ART UNIT PAPER NUMBER
1644
NOTIFICATION DATE DELIVERY MODE
12/30/2016 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):
IPOPS .LEGAL @ agilent.com
Agilentdocketing@cpaglobal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RODERICK NICHOLAS HOBBS.1
Appeal 2016-000815
Application 12/723,458
Technology Center 1600
Before ULRIKE W. JENKS, JOHN G. NEW, 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
passivated substrate for bioassays which have been rejected as anticipated
and as obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
STATEMENT OF THE CASE
The present invention is directed composition and methods for
isolation of cells and analytes. Spec. 12. The invention comprises
1 Appellant identifies the Real Party in Interest as Agilent Technologies, Inc.
Appeal Br. 3.
Appeal 2016-000815
Application 12/723,458
passivated substrates having a ligand and a blocking agent bonded to the
substrate and to each other. Spec. 13.
Claims 1, 3—6 and 13—15 are on appeal. Claim 1 is illustrative and
reads as follows:
1. A passivated substrate for use in assays,
comprising at least one covalently bonded ligand having
specific binding activity for a molecule, wherein the covalently
bonded ligand is directly bonded to a substrate; and
at least one covalently bonded blocking agent, wherein
the blocking agent is a hydrophilic polymer directly bonded to
the substrate; and, further the blocking agent and the ligand
have at least one additional covalent bond to one another.
The claims stand rejected as follows:
Claims 1, 3—6 and 13 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Tubbs2.
Claims 1,3,6, 13, and 14 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Shakesheff3.
Claims 1, 3, 5, 6, and 13 stand rejected under 35 U.S.C. § 102(a) or
(e) as anticipated by Campbell4.
Claims 1, 3, 4, and 15 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Tubbs in view of Craig5.
2 Tubbs et al., US 2007/0251871 Al, published Nov. 1, 2007 (“Tubbs”).
3 Shakesheff et al., US 6,855,329 Bl, issued Feb. 15, 2005 (“Shakesheff’).
4 Campbell et al., US 2008/0103277 Al, published May 1, 2008, filed Oct,
30, 2007 and claiming priority to Provisional Appl. No. 60/855,551, filed
Oct 31, 2006 (“Campbell”).
5 Craig et al., WO 2006/078618 A2, published July 27, 2006 (“Craig”).
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Application 12/723,458
THE ANTICIPATION REJECTIONS
Tubbs
The issue with this rejection is whether the evidence of record
supports the Examiner’s conclusion that claims 1, 3—6 and 13 are anticipated
by Tubbs.
“[Ujnless a reference discloses within the four comers of the
document not only all of the limitations claimed but also all of the
limitations arranged or combined in the same way as recited in the claim, it
cannot be said to prove prior invention of the thing claimed and, thus, cannot
anticipate under 35 U.S.C. § 102.” Net Money IN, Inc. v. VeriSign, Inc.,
545 F.3d 1359, 1371 (Fed. Cir. 2008).
The Examiner finds that Tubbs discloses a passivated substrate
comprising a ligand immobilized by ligand-bome carboxyl groups which
couple to surface amines on the substrate. Final Act. 3. The Examiner finds
that Tubbs teaches a blocking agent covalently bonded to the substrate and
that the ligand can be bound to the hydrophilic polymer. Final Act. 4—5.
The Examiner concludes that Tubbs anticipates the pending claims.
Appellant contends that Tubbs does not anticipate in that Tubbs does
not disclose an embodiment where each component, substrate, ligand and
blocking agent are directly bonded to the other two. Appeal Br. 5—6.
Appellant also contends that the Examiner has not shown that Tubbs
inherently discloses the claimed combination. Appeal Br. 6—7.
We find that Appellant has the better position. While Tubbs discloses
each of the different elements, the Examiner has not pointed to any teaching
or embodiment where the ligand is covalently bonded to the substrate, the
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Application 12/723,458
blocking agent is bonded to the substrate and the ligand is bonded to the
blocking agent. As Appellant points out, the examples cited by the
Examiner disclose compositions where the ligand is bonded to either the
substrate or the blocking agent but not to both. Appeal Br. 5—6.
We also agree with Appellant that the claimed combination is not
inherently disclosed by Tubbs. As Appellant points out, the claimed
combination is formed by first binding the ligand to the substrate followed
by binding the blocking agent to the substrate. Reply Br. 2. Next, the ligand
in crosslinked with the blocking agent. Id. The Examiner has not pointed to
anything in Tubbs that teaches that all these separate reactions take place in
a single series of reactions. As discussed above, the Examiner has not
directed us to teachings in Tubbs where each reaction occurs individually
and where one or two of the three bonds are formed but there is no evidence
in the record showing a case where all three reactions occur or where all
three sets of bonds are formed. Reply Br. 2—3.
We conclude that the evidence of record does not support the
Examiner’s conclusion that Tubbs anticipates claims 1, 3-6 and 13.
Shakesheff
The issue with this rejection is whether the evidence of record
supports the Examiner’s conclusion that claims 1, 3, 6, 13, and 14 are
anticipated by Shakesheff.
As with Tubbs, the Examiner finds that Shakesheff teaches a
passivated substrate comprising at least one hydrophilic polymer covalently
linked to a ligand. Final Act. 5. The Examiner finds that the ligand may be
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Application 12/723,458
directly or indirectly bound to the hydrophilic polymer portion of the
substrate. Final Act. 5—6
Appellant contends that Shakesheff fails to disclose the claimed
combination. Appeal Br. 7—8. Appellant contends that Shakesheff does not
disclose a single embodiment where all three components are arranged as
recited in the claims, i.e., where each component is directly bonded to the
other two. Appeal Br. 8. Appellant also argues that the Examiner has failed
to show that the claimed composition is inherently present. Appeal Br. 8—9.
Again, we find that the Appellant has the better position. As
Appellant points out, the portions of Shakesheff cited by the Examiner
disclose either binding a ligand to the blocking agent or to the substrate but
not both. Appeal Br. 7—8. The Examiner has not pointed to anything in
Shakesheff that discloses a combination where the blocking agent in bound
to both the surface and the ligand. Appeal Br. 8.
We also agree with Appellant that the Examiner has failed to establish
that the claimed combination is inherently present in Shakesheff. Appeal Br.
9. As Appellant points out, creating the claimed structure requires the
specific bonding of each of the components to each of the other two
components. Appeal Br. 8. The Examiner has pointed to no credible
evidence in the record to show that all three sets of bonds are created.
We conclude that the evidence of record does not support the
Examiner’s conclusion that that claims 1, 3, 6, 13, and 14 are anticipated by
Shakesheff.
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Application 12/723,458
Campbell
The issue with this rejection is whether the evidence of record
supports the Examiner’s conclusion that claims 1,3,4, and 15 are
anticipated by Campbell.
The Examiner finds that Campbell discloses a passivated substrate
containing one or more secondary components. Final Act. 6. The Examiner
finds that the secondary component can comprise a hydrophilic polymer
such as polyethylene glycol which can be covalently bonded to the substrate.
Id. The Examiner finds that the secondary component can also comprise a
ligand such as an antibody. The Examiner finds that the two or more
secondary components can be bound to the substrate and to each other.
Final Act. 7. The Examiner finds that Campbell anticipates the pending
claims. Final Act. 8.
Appellant contends that Campbell does not teach a structure where
“each component is directly bonded to the other two components.” Appeal
Br. 9, emphasis removed. Appellant argues that the portion of Campbell
cited by the Examiner does not disclose binding the ligand to both the
substrate and the blocking agent, rather it teaches that the ligand can be bond
to either the substrate or the blocking agent. Appeal Br. 10. Appellant also
argues that the Examiner has not established that the claimed structure is
present inherently. Appeal Br. 11.
Again, we find that Appellant has the better position. As with the
other references, the Examiner has not pointed to any credible evidence in
the record to show a structure where each of the components is directly
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Application 12/723,458
bonded to both of the remaining two components or conditions where such a
structure would be formed.
We conclude that the evidence of record does not support the
Examiner’s conclusion that that claims 1, 3, 4, and 15 are anticipated by
Campbell.
THE OBVIOUSNESS REJECTION
The issue is whether the evidence of record supports the Examiner’s
conclusion that claims 1,3,4, and 15 would have been obvious over Tubbs
combined with Craig.
The Examiner reiterates the teachings of Tubbs discussed above.
Final Act. 8. The Examiner finds that Craig discloses the attachment of
ligands to polystyrene particles for use in an assay. Final Act. 8—9. The
Examiner finds that Craig discloses the use of a hydrophilic polymer such as
aminodextran with a molecular weight if from 10,000 daltons to about
2,000,000 dalton attached to the substrate. Final Act. 9. The Examiner finds
that it would have been obvious to one skilled in the art to modify the
passivated substrate of Tubbs to use a higher molecular weight
aminodextran. Final Act. 9.
Appellant contends that the claims are not obvious as Tubbs does not
teach or suggest the direct linkage of each component to each of the other
two components. Appeal Br. 12-13. Appellant argues that Craig does not
cure the deficiencies of Tubbs. Appeal Br. 13.
We agree with Appellant. As discussed above, the Examiner has not
pointed to any teaching in Tubbs that the three components should be
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Application 12/723,458
directly bonded to each other. In addition, the Examiner has not pointed to
any teaching in Craig that show binding between the three components.
We conclude that the evidence of record does not support the
Examiner’s conclusion that claims 1,3,4, and 15 would have been obvious
over Tubbs combined with Craig under 35 U.S.C. § 103(a).
SUMMARY
We reverse the rejections under 35 U.S.C. § 102 (b).
We reverse the rejection under 35 U.S.C. § 102(a) or (e).
We reverse the rejection under 35 U.S.C. § 103(a).
REVERSED
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