Ex parte Karl et al.

Board of Patent Appeals and Interferences

May 26, 1999

07771097 (B.P.A.I. May. 26, 1999)

Application for patent filed October 4, 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publication in a law journal and (2) is not binding precedent of the Board.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. 28
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte JOHANN KARL and
FRIDL LANG
__________
Appeal No. 95-2371
Application 07/771,0971
__________
ON BRIEF
__________
Before WILLIAM F. SMITH, ELLIS, and ROBINSON, Administrative Patent Judges.
WILLIAM F. 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
16 and 18 through 20, all the claims remaining in the application.
Appeal No. 95-2371
Application 07/771,097
It appears that the examiner’s consideration of this reference has been limited to2
an English language abstract thereof. We have obtained a full text translation of this
Japanese language document and have based our consideration of the examiner’s
rejection on the full text translation.
2
Claims 1 and 14 are illustrative of the subject matter on appeal and read as follows:
1. A method for determining an analyte in a sample solution, said method
comprising: contacting said sample solution with a receptor in solution which specifically
binds to said analyte to form a precipitate; and quantitatively measuring the amount of
formation of said precipitate by a nephelometric or turbidimetric method as a
measurement of the amount of said analyte present in said sample solution; said
contacting of said sample solution with said receptor being in the presence of at least one
non-ionic polymer selected from the group consisting of a polyvinyl pyrrolidine having
molecular weight of at least 360,000 and a polyethylene glycol having a molecular weight
of at least 40,000.
14. Reagent useful in determining an analyte via a precipitation reaction,
comprising: a receptor comprising at least one antibody which specifically binds to said
analyte to form a precipitate, and at least one non-ionic polymer selected from the group
consisting of a polyvinyl pyrrolidine having a molecular weight of at least 360,000 and a
polyethylene glycol having a molecular weight of at least 40,000.
The references relied upon by the examiner are:
Cole 5,102,788 Apr. 7, 1992
(Filed Apr. 28, 1989)
Chichibu et al. (Chichibu)
(Japanese Kokai) 58-2660 Jun. 30, 19812
Hellsing, Automated Immunoanalysis, Chapter 3: Enhancing Effects of Nonionic Polymers
on Immunochemical Reactions, pp. 67-112 (1977)
Appeal No. 95-2371
Application 07/771,097
Our reversal of the examiner’s rejection renders moot appellants’ "REQUEST3
FOR RESCHEDULING OF ORAL HEARING." A request was re-filed by facsimile on May
18, 1999 and is designated as Paper No. 27 in the administrative file.
3
Claims 1 through 16 and 18 through 20 stand rejected under 35 U.S.C. § 103. As
evidence of obviousness, the examiner relies upon Chichibu, Hellsing and Cole. We
reverse.3
Discussion
The claims on appeal all require the presence or use of a polyvinyl pyrrolidine
polymer having a molecular weight of at least 360,000 or a polyethylene glycol polymer
having a molecular weight of at least 40,000. We agree with appellants’ arguments in the
Appeal Brief that the three references relied upon by the examiner do not teach or suggest
the use of these polymers and, in fact, teach away from using such polymers. See, e.g.,
Appeal Brief, page 5, last full paragraph.
Chichibu does teach the use of a high molecular weight saccharide polymer in an
assay system similar to that required by the claims on appeal. However, the only high
molecular polymers described in the reference are saccharide polymers. Chichibu does
teach that a polyethylene glycol polymer may be used in that assay. However, the
molecular weight of the polyethylene glycol polymer is 6,000. See page 7 of the
translation. Thus, we agree with appellants’ position that the prior art tends to teach away
from, not towards, the claimed subject matter. The examiner relies upon the paragraph
Appeal No. 95-2371
Application 07/771,097
4
bridging pages 73-74 of Hellsing. However, the only high molecular weight polymers
described in this portion of the reference are again saccharide polymers. The examiner
relies upon Cole for its teachings such as those set forth at column 5, lines 51-61, that
assay systems may use nonionic polymers such as polyethylene glycol, polyvinyl
pyrrolidine, or dextran. However, the examiner has not established that Cole teaches or
suggests using polyethylene glycol or polyvinyl pyrrolidine having a molecular weight as
required by the claims on appeal.
The decision of the examiner is reversed.
REVERSED
William F. Smith )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
Joan Ellis )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
Douglas W. Robinson )
Administrative Patent Judge )
Appeal No. 95-2371
Application 07/771,097
5
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