Ex Parte Ikawa et al

Board of Patent Appeals and Interferences

Jun 15, 2011

10377799 (B.P.A.I. Jun. 15, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte TAIJI IKAWA, OSAMU WATANABE, FUMIHIKO HOSHINO,
TAKASHI MATSUYAMA, TSUTOMU KAJINO,
HARUO TAKAHASHI, MASAAKI TSUCHIMORI, and
TAKUYA MITSUOKA

Appeal 2011-000650
Application 10/377,799
Technology Center 1600
__________

Before DONALD E. ADAMS, MELANIE L. McCOLLUM, and
STEPHEN WALSH, Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
method for photo-inducing immobilization of very small functional objects
on a surface. The Patent Examiner rejected the claims as obvious and on the
ground of non-statutory obviousness-type double patenting. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.

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STATEMENT OF THE CASE
Claims 21, 22, 28, 29, 31 and 40-44 are on appeal. (App. Br. 4.)
Claim 21 is representative and reads as follows:
21. A method for photoinducing immobilization of very small
functional objects on a surface comprising:
i) arranging very small functional objects on a surface of a carrier
comprising a surface layer of a material with the capability of
photoinduced deformation which immobilizes said very small
functional objects during light irradiation;
ii) immobilizing said very small functional objects via light irradiation at
positions on the surface of said carrier;
wherein said very small functional objects are organic molecules selected
from the group consisting of polypeptide molecules, protein molecules,
nucleic acid molecules, polysaccharide molecules, and mixtures thereof, and
wherein said immobilizing provides a surface from which the very small
functional objects are never detached.

The Examiner rejected the claims as follows:
• claims 21, 22, 28, 29, 31 and 40-44 under 35 U.S.C. § 103(a) as
unpatentable over Watanabe,1 Hanazato,2 and Nikiforov; 3 and
• claims 21, 22, 28, 29, 31 and 40-44 on the ground of non-statutory
obviousness-type double patenting as unpatentable over claims 1-23 of
Watanabe, in view of Hanazato and Nikiforov.
Claims 22, 28, 29, 31 and 40-44 have not been argued separately (see
App. Br. 16-17) and therefore stand or fall with claim 21. 37 C.F.R.
§ 41.37(c)(1)(vii).

1 US Patent No. 6,413,680 B1 issued to Osamu Watanabe et al., Jul. 2, 2002.
2 US Patent No. 4,894,339 issued to Yoshio Hanazato et al., Jan. 16. 1990.
3 US Patent No. 6,413,680 B1 issued to Theo Nikiforov et al., Oct. 21, 1997.
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OBVIOUSNESS
The Issue
The Examiner’s position is that Watanabe disclosed an optical
recording method for recording very small objects, i.e., informative objects.
(Ans. 4.) The Examiner found that Watanabe disclosed placing the objects
on a recording layer comprising a photosensitive material, and then
irradiating the objects with either ultraviolet, visible, or near infrared light.
(Id.) The Examiner also found that Watanabe taught that the objects are
preferably 100 nm, 25 nm, or smaller, and may include microorganisms.
(Id.) Additionally, the Examiner found that Watanabe’s recording is
accomplished either by observing depressions in the recording layer caused
by the small objects or by observing the small objects when caused to move
on the recording layer from one position to another by the radiation pressure
of light. (Id. at 4-5.) The Examiner found that Watanabe disclosed that the
irradiating light “fixes the very small objects on the recording layer.” (Id. at
5.) However, the Examiner found that Watanabe did not expressly disclose
attaching a protein or a nucleic acid on the recording layer. (Id.)
The Examiner found that Hanazato disclosed forming enzyme
immobilized membranes by coating a support with a solution of
photosensitive resin, glucose oxidase and serum albumin, and hardening the
solution by irradiation with ultraviolet light. (Id.) Additionally, the
Examiner found that Nikiforov disclosed multimers of oligonucleotide
probes ligated into a phagemid vector, which vector was immobilized onto
polystyrene plates and fixed by ultraviolet irradiation. (Id.)
According to the Examiner, it would have been obvious to a person of
ordinary skill in the art at the time the invention was made to use a protein
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such as an enzyme or nucleic acid as the very small object in Watanabe’s
method that is fixed to the recording layer by irradiating with light to record
characteristics of the enzyme or nucleic acid in view of the teachings of
Hanazato and Nikiforov. (Id.) The Examiner found that the very small
objects of Watanabe are inherently immobilized at positions on the
recording layer because the reference disclosed these objects are “fixed” on
the recording layer. (Id.)
According to the Examiner, the instant claims encompass Watanabe’s
method of irradiating very small objects with light while on a recording
layer. (Id.) The Examiner found that Watanabe’s recording layer undergoes
photo-induced deformation because the small objects form depressions in
the recording layer surface when irradiated with light. (Id.) Additionally,
the Examiner found that the polymer used to form Watanabe’s recording
layer is the same material used to prepare the immobilizing carrier of the
claimed invention. (Id. at 5-6, citing Spec. 59-60.) Further, the Examiner
found that Watanabe’s embodiment involving the small objects being moved
with irradiation pressure of light did not result in the objects being detached
from the recording layer. (Id. at 6.)
Appellants contend that their claimed invention “is not concerned
with recording an image or recording the movement of a living organism.”
(App. Br. 9.) Appellants also assert that while Watanabe disclosed that its
informative object may be 100 nm or less, which would include biological
molecules, Watanabe also disclosed that there is no limitation on size or
shape of the informative object and that the object can either be in direct
contact with the recording medium or not. (Id.) Additionally, Appellants
assert that the Examiner should have considered the difference in the
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intended use of the prior art method (optical recording) and compared with
that of the claimed method (photoinducing immobilization of a biological
molecule). (Id. at 10.)
Further, Appellants assert that Watanabe did not provide a reasonable
expectation of success for permanently attaching biological molecules such
as polypeptides or DNA to a photoreactive substrate, as compared to
informative objects such as polystyrene microspheres disclosed in
Watanabe’s figures 1 and 2. (Id.) Appellants assert that Watanabe disclosed
that some informative objects, such as microorganisms, do not become
immobilized in one place on the photoreactive substrate and other smaller
objects like microspheres at least partially wash off with water. (Id.)
According to Appellants, Watanabe excluded photoimmobilization of
very small (nanometer) sized objects by proposing “a record of movement of
an informative object which is a fine particle movable by radiant pressure of
light.” (Id. at 10-11.) Appellants additionally assert that Watanabe’s
informative objects “are not immobilized at positions on the surface since
they are free to move about and assume different positions on the surface.”
(Id. at 13.) Further, Appellants assert that Watanabe taught “a genus of
physical objects that have optical fields and d[id] not specifically
contemplate use of any particular type of informative object like polypeptide
molecules, protein molecules, nucleic acid molecules, and/or polysaccharide
molecules.” (Id. at 14.) Therefore, according to Appellants, “Watanabe is
non-analogous art, as it contemplated using informative objects in an optical
recording process and did not contemplate permanently immobilizing
polypeptide molecules, protein molecules, nucleic acid molecules, and/or
polysaccharide molecules on a surface such as a biochip. (Id.)
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Appellants also assert that the Examiner has not explained “why an
ordinary artisan at the time of the invention would have sought to
immobilize [the instantly recited molecules] on a recording medium using
UV light.” (Id.) Further, Appellants assert that the combined prior art did
not provide the claimed invention because “[t]he use of UV instead of light
to attach labile biological molecules degrades the biological molecules.”
(Id.) In particular, Appellants assert that Hanazato’s “chemical crosslinking
reaction” with enzymes and hardening the resin by UV irradiation and
Nikiforov’s “chemical bonding reaction” through UV irradiation are known
to damage the functions of protein molecules and nucleic acid molecules.
(Id. at 15.) According to Appellants, the instantly claimed method of using
“strong physical bonding enhanced by photoinduced deformation of the
surface layer… is less harsh and non-denaturing….” (Id.) Therefore,
Appellants assert that the combined references “cannot provide a reasonable
expectation of success for the superior biological properties provided by the
[instantly claimed] invention….” (Id. at 14-15.) Appellants also assert that
the claimed method is superior to prior art methods by not requiring
“blocking of sites on a substrate unbound by a biological molecule.” (Id. at
16.)
The issue with respect to this rejection is whether the record supports
the Examiner’s conclusion that the cited references would have made the
claimed compositions and methods prima facie obvious.
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Findings of Fact
1. We agree with the Examiner’s explicit findings regarding the scope
and content of the prior art references. (See Ans. 4-6.)
2. Watanabe states, “The recording medium was washed with water to
remove part of the polystyrene microspheres, and the irradiated area of the
recording medium was observed under an atomic force microscope.”
(Watanabe col. 22, ll. 23-24.)
3. Watanabe states, “Each micrograph shows microspheres 2
(informative object) remaining on the recording medium….” (Id. at col. 22,
ll. 27-30.)
4. The Specification describes an aspect of the invention “including a
step of immobilizing very small objects on the surface of a carrier …, and a
step of observing the very small objects by an appropriate process of giving
displacement force to the very small object.” (Spec. 37.)
5. The Specification also explains that “the ‘displacement force’ means
an appropriate type of force, which exerts an action to displace very small
object[s] from the arranged or immobilized position to a different position.”
(Id.)
6. Hanazato disclosed that its “enzyme immobilized membranes may be
dipped into a glutaraldehyde solution to form chemical crosslinking for
improved mechanical strength.” (Hanazato col. 5, ll. 37-40.)
7. Nikiforov disclosed that “[a]ny variety of methods can be used to
immobilize the linker or primer oligonucleotide to the solid support,”
including a method that did not require chemical crosslinking. (Nikiforov
col. 10, ll. 21-22, 38-47.)

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Principles of Law
“[I]n a section 103 inquiry, ‘the fact that a specific [embodiment] is
taught to be preferred is not controlling, since all disclosures of the prior art,
including unpreferred embodiments, must be considered.’” Merck & Co.,
Inc. v. Biocraft Laboratories, Inc., 874 F.2d 804, 807 (Fed. Cir. 1989)
(quoting In re Lamberti, 545 F.2d 747, 750 (C.C.P.A. 1976)).
“If a person of ordinary skill can implement a predictable variation,
§ 103 likely bars its patentability.” KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 417 (2007). “Two criteria have evolved for determining whether prior
art is analogous: (1) whether the art is from the same field of endeavor,
regardless of the problem addressed, and (2) if the reference is not within the
field of the inventor's endeavor, whether the reference still is reasonably
pertinent to the particular problem with which the inventor is involved.” In
re Clay, 966 F.2d 656, 658-659 (Fed. Cir. 1992).

Analysis
After considering all the evidence and arguments, we conclude that
the record supports a conclusion of prima facie obviousness. We are not
persuaded of nonobviousness by Appellants’ assertions that (i) Watanabe is
directed to an optical recording, (ii) Watanabe disclosed that any molecule
that can generate at optical field is an “informative object,” or (iii) Watanabe
taught that there is no limitation on size or shape of its informative object.
(See App. Br. 9.) First, we agree with the Examiner that the instantly
claimed method of photoinducing immobilization does not exclude
recording, as disclosed by Watanabe. (See Ans. 7.) Next, the fact that
Watanabe disclosed a broad range of molecules that could be used as its
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informative object does not establish that immobilizing the organic
molecules recited in the instant claims would have been nonobvious. (See
App. Br. 9.) Third, the Examiner correctly found Watanabe expressly taught
that its informative objects can be 100 nm or smaller, and even 25 nm or
smaller. (Ans. 4.) The disclosure of these very small objects must be
considered. See Merck & Co., Inc., 874 F.2d at 80. The Examiner provided
sound reasoning supporting the conclusion that a skilled artisan at the time
of the invention would have considered it obvious to select either a protein
such as an enzyme or nucleic acid, as taught by Hanazato and Nikiforov, as
the very small object in Watanabe’s method. (See Ans. 5.)
We are also not persuaded by Appellants’ assertion that Watanabe did
not provide a reasonable expectation of success for permanently attaching
biological molecules such as polypeptides or DNA to a photoreactive
substrate. (App. Br. 10.) According to Appellants, Watanabe disclosed that
small objects like polystyrene microspheres at least partially wash off with
water. (See id.) However, as Appellants acknowledge Watanabe did not
disclose that all of the microspheres were removed. (See FF-3.) Rather,
some of the microspheres remained attached to the recording medium (see
FF-4), and were “never detached,” as required by the instant claims. The
washing step served merely to remove unfixed microspheres.
Appellants also assert that Watanabe disclosed that some informative
objects do not become immobilized because the reference described both
recording the movement of an object movable by radiant pressure of light,
and the informative objects being free to move about and assume different
positions on the surface. (See App. Br. 10-11.) The Examiner rebuts this
argument by pointing to a similar disclosure in Appellants’ Specification,
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where the Specification describes “a step of immobilizing very small
objects on the surface of a carrier,” followed by “a step of observing the very
small objects by an appropriate process of giving displacement force to the
very small object.” (FF-4.) The Specification explains that this
“displacement force” is “an appropriate type of force, which exerts an action
to displace [a] very small object from the arranged or immobilized position
to a different position.” (FF-5, emphasis added.) From these disclosures, it
is apparent that the Specification contemplated the movement of an
“immobilized” object from one location to another on the carrier. Thus,
Appellants have not distinguished the claimed invention reciting
“immobilizing said very small functional objects via light irradiation at
positions on the surface of said carrier” from the combined prior art.
Moreover, we are not persuaded that Watanabe is non-analogous art.
Appellants based this contention upon their assertions that Watanabe
“contemplate[d] using informative objects in an optical recording process
and d[id] not contemplate permanently immobilizing polypeptide molecules,
protein molecules, nucleic acid molecules, and/or polysaccharide molecules
on a surface such as a biochip.” (App. Br. 14.) As discussed, the claims do
not exclude the use of the very small objects in an optical recording method
where the objects are fixed, i.e., immobilized on a surface by light
irradiation. Also, as discussed, Watanabe’s teaching that its objects may be
100 nm or smaller, or even 25 nm or smaller, along with the teachings of the
secondary references, would have suggested to a skilled artisan at the time of
the invention that protein molecules and nucleic acid molecules could be
selected as Watanabe’s smaller informative objects. To the extent
Appellants’ argument relates to a “biochip” (App. Br. 14) we remain
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unpersuaded. We understand this term to refer to the recitation in claim 40
“that the surface of said carrier is contained by a device selected from the
group consisting of a DNA chip, a protein chip….” We agree with the
Examiner that the claims fail to require any structure for these chips,
therefore an enzyme or nucleic acid immobilized on the recording layer of
Watanabe can be considered to be such a DNA or protein chip. (See Ans.
6.)
We also disagree with Appellants’ assertion that the Examiner has not
explained why an artisan would have attempted to immobilize the instantly
recited molecules on a recording medium using UV light. (App. Br. 14.)
The Examiner explained that the combined references suggested the
modification of Watanabe’s method by using protein molecules or nucleic
acid molecules as the small informative objects. (Ans. 5-6.) The Examiner
also explained that the artisan would have been motivated to select these
molecules of Hanazato or Nikiforov “when desiring to record
characteristics” of the molecules according to Watanabe’s recording method.
(Id. at 5.)
Finally, Appellants assert that when combined, the prior art does not
yield the claimed method or provide a reasonable expectation of successfully
achieving the “superior biological properties provided by the invention.”
(App. Br. 14-15.) According to Appellants, the methods of Hanazato and
Nikiforov involving the use of UV light and crosslinking reactions would
damage the function of protein or nucleic acid molecules, unlike the
instantly claimed method. (Id. at 15.) As the Examiner explained, the
instant claims do not require obtaining superior activity of biomolecules.
(Ans. 14.) Nor do the claims exclude using UV light in the light irradiation
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step. (See Ans. 13.) Indeed, the Specification disclosed that the wavelength
and source of irradiating light are not limited and specifically mentions
ultraviolet irradiation. (Id.) Additionally, as the Examiner explained,
neither Hanazato nor Nikiforov disclosed that using UV irradiation caused
significant damage to the protein or DNA molecules. (Id.) Therefore,
Appellants have not established with persuasive evidence that the use of UV
light in the Examiner’s combined method would have damaged the
biomolecules. Further, the secondary references did not require chemical
crosslinking. Hanazato disclosed forming chemical crosslinking as an
optional step. (See FF-6; Ans. 14.) Nikiforov disclosed that any variety of
methods can be used to immobilize the linker or primer oligonucleotide to
the solid support, including a method that did not require chemical
crosslinking. (See FF-7; Ans. 14.) Thus, Appellants have not established
with persuasive evidence that the combined prior art method would not have
provided a reasonable expectation of successfully achieving the claimed
invention.

OBVIOUSNESS-TYPE DOUBLE PATENTING
The Issue
The Examiner’s position is that it would have been obvious to modify
the recording method of Watanabe’s patent claims by using an enzyme or a
nucleic acid as the informative object in view of Hanazato and Nikiforov,
which disclosed immobilizing an enzyme or a nucleic acid using irradiation
with light. (Ans. 6.)
Appellants contend that “[t]he claims of this application are not
obvious over the patent claims, because the claims of Watanabe are directed
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to an optical recording method, not to a method for immobilizing molecules,
such as immobilizing protein and DNA molecules on a photodeformable
substrate.” (App. Br. 17.) Additionally, Appellants assert that Watanabe
“teaches away from the invention by indicating that the objects used to form
the image are removed.” (Id.) Further, Appellants assert that “Hanazato and
Nikiforov are non-analogous art, because they do not involve
immobilization of such molecules using a photodeformable substrate.” (Id.)
The issue with respect to this rejection is whether the Appellants
established that instant claims are patentably distinct from the subject matter
suggested by Watanabe claims 1-23 in view of Hanazato and Nikiforov.

Principles of Law
An obviousness-type double patenting analysis entails two steps:
(1) construction of the claims of the patent and the claim in the application
to identify any differences, and (2) determination of whether the differences
in subject matter between the claims render the claims patentably distinct.
See Eli Lilly & Co. v. Barr Labs., Inc., 251 F.3d 955, 968 (Fed Cir. 2001).
A prior art reference is said to teach away from an Applicant’s
invention “when a person of ordinary skill, upon reading the reference,
would be discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was taken by the
applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).

Analysis
Appellants assert that their claims are not obvious over Watanabe’s
claims “because the claims of Watanabe are directed to an optical recording
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method, not to a method for immobilizing molecules, such as immobilizing
protein and DNA molecules on a photodeformable substrate.” (App. Br.
17.) We have found that the instant claims are obvious over Watanabe, in
view of Hanazato and Nikiforov. Therefore, we are not persuaded by this
argument for the same reasons.
Appellants additionally assert that Watanabe “teaches away from the
invention by indicating that the objects used to form the image are
removed.” (Id.) We are not persuaded by this argument. As discussed,
Watanabe disclosed that only some of its objects were removed, while the
remaining objects were fixed, i.e., immobilized on the recording medium
and never detached from it. (See FF-2, 3.) Therefore, Appellants have not
established that Watanabe taught away from the claimed method. See
Gurley, 27 F.3d at 553.
Appellants further assert that “Hanazato and Nikiforov are non-
analogous art, because they do not involve immobilization of such molecules
using a photodeformable substrate.” (App. Br. 17.) We disagree as
Appellants consider these secondary references to narrowly. Considered
more broadly, Watanabe, Hanazato and Nikiforov each addressed the same
field of endeavor, that is, immobilizing very small molecules by irradiation.
See Clay, 966 F.2d at 658-659.

CONCLUSIONS OF LAW
The record supports the Examiner’s conclusion that the cited
references would have made the claimed method prima facie obvious.
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The Appellants have not established that the appealed claims are
patentably distinct from Watanabe’s claims 1-23 in view of Hanazato and
Nikiforov.

SUMMARY
We affirm the rejection of claims 21, 22, 28, 29, 31 and 40-45 under
35 U.S.C. § 103(a) as unpatentable over Watanabe, Hanazato, and
Nikiforov; and
we affirm the rejection of claims 21, 22, 28, 29, 31 and 40-44 on the
ground of non-statutory obviousness-type double patenting as unpatentable
over claims 1-23 of Watanabe, in view of Hanazato and Nikiforov.
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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