Ex parte Klock

Board of Patent Appeals and Interferences

Jul 26, 1999

07938832 (B.P.A.I. Jul. 26, 1999)

Application for patent filed August 31, 1992. According to appellant, this1
application is a continuation-in-part of Application 07/753,196, filed August 30, 1991.
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publication in a law journal and (2) is not binding precedent of the Board.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. 24
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte JOHN C. KLOCK, JR.
__________
Appeal No. 95-4342
Application 07/938,832 1
__________
HEARD: July 14, 1999
__________
Before WILLIAM F. SMITH, TORCZON, and LORIN, 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
3 through 7, 14 through 16, 18 and 23 through 32, all the claims remaining in the
application.
Appeal No. 95-4342
Application 07/938,832
2
Claims 23 and 15 are illustrative of the subject matter on appeal and read as
follows:
15. A kit for performing monosaccharide linkage structural analysis of
carbohydrates, said kit comprising, a carbohydrate derivatizing agent, a glycosidic bond
hydrolyzing agent and a fluorophore label.
23. A method of analyzing structural relationships between monosaccharides
of a carbohydrate comprising:
a) derivatizing a carbohydrate with a carbohydrate derivatizing agent which
covalently binds to the free functional groups of the carbohydrates to form a derivatized
carbohydrate;
b) converting said derivatized carbohydrate into derivatized monosaccharides by
breaking the glycosidic bonds of said derivatized carbohydrate;
c) forming labeled derivatized monosaccharides by reacting said derivatized
monosaccharides with a fluorescence labelling compound;
d) separating said labeled derivatized monosaccharides by electrophoresis; and
e) identifying said labeled derivatized monosaccharides by comparing the
electrophoresis mobility of said labeled derivatized monosaccharides to a
monosaccharide standard, said monosaccharide standard comprising mono-saccharides
derivatized with said carbohydrate derivatizing agent and labeled
with said fluorescence labelling compound.
The references relied upon by the examiner are:
Lindberg, “Methylation Analysis of “Complex Carbohydrates: General Procedure and
Application for Sequence Analysis”, Methods in Enzymology, Vol. 50, pp. 3-33 (1978).
Levery, “Microscale Methylation Anaysis of Glycolipids Using Capillary Gas
Chromatography -- Chemical Ionization Mass Fragmentography with Selected Ion
Monitoring,” Methods in Enzymology, Vol. 138, Part E. pp. 13-25 (1987).
Appeal No. 95-4342
Application 07/938,832
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Jackson, “The use of polyacrylamide-gel electrophoresis for the high-resolution separation
of reducing saccharides labelled with the fluorophore 8-aminonaphthalene-1, 3,6-
trisulphonic acid,” Biochemistry Journal, Vol. 270, pp. 705-713 (1990).

Jackson, “Polyacrylamide Gel Electrophoresis of Reducing Saccharides Labeled with th e
Fluorophore 2-Aminoacridone: Subpicomolar Detection Using an Imaging System Based
on a Cooled Charge-Coupled Device,” Analytical Biochemistry, Vol. 196, pp. 238-244
(1991).
Jackson (PCT Applicatioin) WO 91/05256 Apr. 18, 1991
Claims 3 through 7, 14 through 16, 18 and 23 through 32 stand rejected under 35
U.S.C. § 112, first paragraph, as being non-enabled. Claims 3 through 7, 14 through 16,
18 and 23 through 32 also stand rejected under 35 U.S.C. § 103 as unpatentable over the
three Jackson references listed above in combination with Lindberg or Levery. We reverse
both of these rejections. In addition, we raise an issue for the examiner’s consideration
upon return of the application to the examining group.
DISCUSSION
Enablement
The examiner maintains that the specification, while providing a method of
determining the identities and linkage sites of a carbohydrate’s constituent
monosaccharides, is not enabling for determining the “entirety of the structure” of a
complex carbohydrate. All of the claims have been rejected on this basis. See the
Answer, page 5. Having considered the positions of appellant and the examiner, we are in
agreement with appellant that the examiner has failed to establish that the phrase
Appeal No. 95-4342
Application 07/938,832
4
“analyzing structural relationships between monosaccharides of a carbohydrate,” as it
appears throughout the specification and in independent claim 23, would be “understood
in the field of carbohydrate chemistry to mean an analysis establishing the complete
structure of a carbohydrate.” The appellant’s use of the phrase in the specification and
claims appears to be entirely consistent with its use in the prior art. See the Brief, page 6.
To the extent that the examiner argues that the claims encompass inoperative
embodiments, we are not persuaded. First, the examiner’s conclusion is based on an
interpretation of “analyzing structural relationships” which is not justified by the record.
Second, as set forth in Atlas Powder Co. v. E.I. Du Pont De Nemours & Co., 750 F.2d
1569, 1576-77, 224 USPQ 409, 414 (Fed. Cir. 1984):
Even if some of the claimed combinations were inoperative,
the claims are not necessarily invalid. "It is not a function of the
claims to specifically exclude . . . possible inoperative
substances . . . . In re Dinh-Nguyen, 492 F.2d 856, 859-59,
181 USPQ 46, 48 (CCPA 1974) (emphasis omitted). Accord,
In re Geerdes, 491 F.2d 1260, 1265, 180 USPQ 789, 793
(CCPA 1974); In re Anderson, 471 F.2d 1237, 1242, 176
USPQ 331, 334-35 (CCPA 1971). Of course, if the number of
inoperative combinations becomes significant, and in effect
forces one of ordinary skill in the art to experiment unduly in
order to practice the claimed invention, the claims might
indeed be invalid. See, e.g., In re Cook, 439 F.2d 730, 735,
169 USPQ 298, 302 (CCPA 1971).
The examiner has not performed the fact finding needed in order to properly reach a
conclusion of “undue experimentation.”
Accordingly, we reverse the rejection of claims 3 through 7, 14 through 16,
Appeal No. 95-4342
Application 07/938,832
5
18 and 23 through 32 under 35 U.S.C. § 112, first paragraph.
Obviousness
Claims 3 through 7, 14 and 23 through 32 are directed to analysis of the structural
relationships between monosaccharides of a carbohydrate; claims 15, 16 and 18 are
directed to kits for performing the analysis. In its broadest aspect, the method comprises
derivatizing a carbohydrate with an agent which covalently binds to the free functional
groups of the carbohydrate; breaking the glycosidic bonds of the derivatized carbohydrate
to convert it to derivatized monosaccharides; labeling the derivatized monosaccharides
with a fluorescent label; separating the fluorescent, derivatized monosaccharides
electrophoretically; and identifying the separated monosaccharides by comparing their
electrophoretic mobility with standards labeled and derivatized in the same manner. See
independent claim 23.
Lindberg discloses structural analysis of a carbohydrate through methylation of the
free hydroxyl groups on the carbohydrate, hydrolysis of the methylated carbohydrate into its
constituent monosaccharides, and separation and characterization of the
monosaccharides by gas-liquid chromatography and mass spectrometry. Lindberg’s
methylation and hydrolysis steps correspond to the derivatization and degradation steps of
the present method. Levery’s disclosure is equivalent to Lindberg’s.
The three Jackson references describe structural analysis of carbohydrates based
upon electrophoretic separation of fluorescently labeled reducing saccharides and
Appeal No. 95-4342
Application 07/938,832
As stated in Pro-Mold & Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568,2
1573, 37 USPQ2d 1626, 1629 (Fed. Cir. 1996) (citation omitted), “It is well-established
that before a conclusion of obviousness may be made based on a combination of
references, there must have been a reason, suggestion or motivation to lead an inventor to
combine those references.”
6
comparison to labeled standards. This method corresponds roughly to the labeling,
separating and identifying steps of the present method.
According to the examiner, “[i]t would have been obvious to the worker of ordinary
skill in the art . . . having the above mentioned references before him to select the
methylated carbohydrates as the monosaccharide derivatives in the electrophoretic
separation thereof, to determine the structural relationships of such monosaccharides
since Jackson teaches the advantages of the highly sensitive electrophoretic separation,
and each of Levery and Lindberg teach the specific advantages of employing methylated
monosaccharides in such methods.” See the Answer, the paragraph bridging pages 7
and 8.
If we understand the examiner’s position correctly, it is that it would have been
obvious to arrive at the present invention by combining the derivatizing and hydrolyzing
steps of Levery’s or Lindberg’s method with the labeling, separating and identifying steps
of Jackson’s method. The examiner’s proposed reason or suggestion for combining the
references seems to be simply that both methods have advantages. 2
We have no doubt that the prior art could be modified in a manner consistent with
appellant’s specification and claims. The fact that the prior art could be so modified,
Appeal No. 95-4342
Application 07/938,832
7
however, would not have made the modification obvious unless the prior art suggested the
desirability of the modification. In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127
(Fed. Cir. 1984). Here, we find no reason stemming from the prior art which would have
led a person having ordinary skill to the claimed method. In our judgment, the only reason
or suggestion to combine the references in the manner proposed by the examiner comes
from appellant’s specification. The rejection of claims 3 through 7, 14 through 16, 18 and
23 through 32 under 35 U.S.C. § 103 is reversed.
OTHER ISSUE
We note that the carbohydrate derivatizing agent of kit claims 15, 16 and 18 differs
from the derivatizing agent of method claims 3-7, 14 and 23-32 in at least one significant
aspect: it is not limited to one capable of covalently binding the free functional groups of a
carbohydrate. Despite this difference, claims 15, 16 and 18 were included in the rejection
of all the claims under 35 U.S.C. § 103 without comment. Thus, it appears that the
patentability of the kit claims has not been separately considered. Upon return of the
application to the examining group, we urge the examiner to take a step back and ensure
that the patentability of the kit claims has been separately evaluated.
REVERSED
Appeal No. 95-4342
Application 07/938,832
8
)
WILLIAM F. SMITH )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
RICHARD TORCZON )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
HUBERT C. LORIN )
Administrative Patent Judge )
Appeal No. 95-4342
Application 07/938,832
9
Albert P. Halluin
Pennie & Edmonds
1155 Avenue of the Americas
New York, NY 10036