11387291 (B.P.A.I. May. 31, 2011)

Ex Parte Knize

Board of Patent Appeals and InterferencesMay 31, 2011

11387291 (B.P.A.I. May. 31, 2011)

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. 11/387,291 03/22/2006 Mark G. Knize IL-11512 4902 24981 7590 06/01/2011 Lawrence Livermore National Security, LLC LAWRENCE LIVERMORE NATIONAL LABORATORY PO BOX 808, L-703 LIVERMORE, CA 94551-0808 EXAMINER SHEN, BIN ART UNIT PAPER NUMBER 1653 MAIL DATE DELIVERY MODE 06/01/2011 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES __________ Ex parte MARK G. KNIZE __________ Appeal 2010-006692 Application 11/387,291 Technology Center 1600 __________ Before DEMETRA J.MILLS, ERIC GRIMES, and LORA M. GREEN, Administrative Patent Judges. MILLS, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134. The Examiner has rejected the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b). Appeal 2010-006692 Application 11/387,291 2 STATEMENT OF THE CASE The following claim is representative: 1. A method of preparing a biological cell for analysis, comprising the step [sic] of: providing a planar chromatographic support medium, applying a porous coating material to said chromatographic support medium leaving a strip of said chromatographic support medium without said porous coating material, deposition of the biological cell on said strip of said planar chromatographic support medium without said porous coating material, and lysis of the biological cell, and one or two dimensional chromatography of the biological cell. Cited References The Examiner relies on the following prior art references as evidence: Graham et al., Characteristics of a Human Cell Line Transformed by DNA from Human Adenovirus Type 5, 36 J. GEN. VIROL. 59-72 (1977). Hu et al., Capillary Sieving Electrophoresis/Micellar Electrokinetic Capillary Chromatography for Two-Dimensional Protein Fingerprinting of Single Mammalian Cells, 76 ANAL. CHEM. 4044-4049 (2004). Neukirchen et al., Two-dimensional Protein Analysis at High Resolution on a Microscale, 257 J. OF BIO. CHEM. 15229-15234 (1982). Grounds of Rejection 1. Claims 1-7 and 9-16 are rejected under 35 U.S.C. § 103(a) for obviousness over Graham and Hu in view of Neukirchen. FINDINGS OF FACT The Examiner’s findings of fact are set forth in the Answer at pages 2- 4. We adopt the Examiner’s findings as our own. Appeal 2010-006692 Application 11/387,291 3 Discussion ISSUE The Examiner concludes It would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the method of Graham by depositing the cell before lysis of the cell as taught by Hu or by crushing said cells as taught Neukirchen. One would have been motivated to make either of these modifications to the method of Graham since Hu et al teach the equivalence of injecting the cells directly on the electrophoresis apparatus followed by lysis of cell by heating, and Neukirchen teach the equivalence of crushing the cells prior to electrophoresis. One of skill in the art would have a reasonable expectation of success because Hu and Neukirchen both successfully demonstrate that their method of generating protein fingerprints from single cells achieves high resolution protein analysis with their gel electrophoresis regardless of how the cells lysis is achieved in the gel. (Ans. 4.) Appellant argues that the claim limitations, “applying a porous coating material to said chromatographic support medium leaving a strip of said chromatographic support medium without said porous coating material,” “deposition of the biological cell on said strip of said planar chromatographic support medium without said porous coating material, and lysis of the biological cell” and one or two dimensional chromatography of the biological cell, are not taught by the cited references. (Claim 1, See App. Br. 24-26.) The issue is: Does the cited prior art support the Examiner’s rejection of the claims for obviousness? Appeal 2010-006692 Application 11/387,291 4 PRINCIPLES OF LAW “In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial burden of presenting a prima facie case of obviousness. Only if that burden is met, does the burden of coming forward with evidence or argument shift to the applicant.” In re Rijckaert, 9 F.3d 1531, 1532 (Fed. Cir. 1993) (citations omitted). In order to determine whether a prima facie case of obviousness has been established, we consider the factors set forth in Graham v. John Deere Co., 383 U.S. 1, 17 (1966): (1) the scope and content of the prior art; (2) the differences between the prior art and the claims at issue; (3) the level of ordinary skill in the relevant art; and (4) objective evidence of nonobviousness, if present. “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). ANALYSIS We agree with the Examiner’s fact finding, statement of the rejection and responses to Appellant’s arguments as set forth in the Answer. We provide the following additional comments. Appellant’s argument, as we understand it, is that the comb used by Graham to leave a strip of said chromatographic support medium without said porous coating material, as argued by the Examiner, is not the same as a mask used in the Specification to prepare the surface of the chromatographic support while leaving a section of the coating surface exposed. However, the pending claims are not limited to a mask prepared support surface. Appellant has failed to address why the comb of the prior art fails to leave a Appeal 2010-006692 Application 11/387,291 5 strip of said chromatographic support medium without said porous coating material. Appellant argues that the prior art does not disclose the limitations of claims 2, 3, 7, and 9-12 (App. Br. 22-23), however Appellant fails to indicate error in the Examiner’s findings of fact with respect to these claims. See In re Jung, 637 F. 3d 1356, 1365 (2011) (Appellant chose not to proffer a serious explanation of the difference between what was claimed and what was described in the prior art.) Thus we affirm the obviousness rejection for the reasons of record. CONCLUSION OF LAW The cited references support the Examiner’s obviousness rejection. TIME PERIOD 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 alw