Ex Parte Kronick et al

Board of Patent Appeals and Interferences

Nov 3, 2010

11008384 (B.P.A.I. Nov. 3, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MEL N. KRONICK and ERIC M. LEPROUST
____________

Appeal 2010-008772
Application 11/008,384
Technology Center 1600
____________

Before DONALD E. ADAMS, DEMETRA J. MILLS, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL1

This appeal under 35 U.S.C. § 134 involves claims 1, 5, and 7-10. We
have jurisdiction under 35 U.S.C. § 6(b). Pending “[c]laims 4, 6, and 11-15
were withdrawn” from consideration (App. Br. 3).

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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STATEMENT OF THE CASE
The claims are directed to “[a] method.” Claim 1 is representative
and is reproduced in the “Claims Appendix” of Appellants’ Brief (App. Br.
15).
Claims 1, 5, and 7-10 stand rejected under 35 U.S.C § 103(a) as
unpatentable over the combination of Pederson,2 Sparks,3 and Hahn.4
We reverse.
ISSUE
Does the preponderance of evidence on this record support a
conclusion of obviousness?
FINDINGS OF FACT
FF 1. Appellants define “[t]he term chemical array” as “a composition of
matter that includes a plurality of distinct feature[s] of chemical moieties,
referred to herein conveniently as first moieties” (Spec. 12: 23-26).
FF 2. Pedersen teaches the synthesis of a single peptide or protein and the
parallel and substantially simultaneous synthesis of a plurality of peptides or
proteins on a number of separate sheet or film pieces arranged on a common
support followed by the cleavage of the thereof (Pedersen, Abstract and col.
15, ll. 15-23; see also Ans. 5 and 12).
FF 3. Pedersen teaches that upon completion of the synthesis step “the
synthesized peptides or proteins on the solid support are deprotected and
cleaved” from the solid support (Ans. 5).
FF 4. Pederson does not, however, teach that the cleavage of a peptide or
protein from the solid support results in a “solution phase composition [that]

2 Pedersen et al., US 5,886,104, issued March 23, 1999.
3 Sparks et al., US 6,309,820 B1, issued October 30, 2001.
4 Hahn et al., WO 02/28890 A1, published April 11, 2002.
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is a mixture comprising two or more of the polypeptide first moieties” (Ans.
6).
FF 5. “Sparks teaches methods for screening a plurality of polypeptides”
including (1) a method wherein an immobilized recognition unit on a solid
support is brought into contact with a solution comprising a plurality of
polypeptides or (2) a method wherein the plurality of polypeptides are
separated into individual polypeptides which are then probed by the
recognition unit (id. at 6-7).
FF 6. Hahn teaches, inter alia, that functional molecules can be selectively
linked to a peptide (id. at 7).
ANALYSIS
Based on the foregoing factual findings the Examiner concludes that
[O]ne of ordinary skill[] in the art at the time of the invention
would have been motivated to acquire a solution phase
comprising a mixture of [a] plurality of polypeptides in the
method of Pedersen since Sparks teaches that a solution of [a]
plurality of polypeptides can be used in a screening assay.

(Ans. 7.) While this may be true, Appellants’ claimed invention requires “an
array of a plurality of polypeptide or polysaccharide features” that is
configured in such a manner that the cleavage of the features from the array
results in a mixture comprising two or more polypeptide or polysaccharide
first moieties (see e.g., Claim 1). As Appellants explain, Pederson teaches a
method wherein “each of the different peptides is present on a separate piece
of substrate, not on an array as required by Claim 1” (App. Br. 7). We
agree.
While Pederson suggests that separate sheet or film pieces (e.g.,
arrays) can be arranged on a common support to facilitate the parallel
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Application 11/008,384

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synthesis of peptides or proteins on the individual arrays (FF 2), the
Examiner failed to establish an evidentiary basis to support the conclusion
that the arrangement of these individual arrays on a common support “reads
on the claimed limitation of an array of a plurality of polypeptide features”
(Ans. 12). To the contrary, as Appellants explain
[I]t is clear that when Pederson teaches parallel and
substantially simultaneous synthesis of multiple polypeptides,
the individual peptides are synthesized on separate substrates
and although multiple polymer molecules are synthesized, each
of the different species of the polymers were synthesized on
separate pieces of the substrate. Thus, the end result of
Pederson’s method is not an array of a plurality of polypeptides.

(Reply Br. 5.) Stated differently, while Pederson may suggest the grouping
of various arrays on a common support to facilitate the processing of arrays
undergoing one or more similar processing steps, the Examiner has failed to
establish that Pederson suggest an individual array that contains different
peptides or proteins. Accordingly, we are constrained to reverse the
rejection of record.
CONCLUSION OF LAW
The preponderance of evidence on this record fails to support a
conclusion of obviousness. The rejection of claims 1, 5, and 7-10 under 35
U.S.C § 103(a) as unpatentable over the combination of Pederson, Sparks,
and Hahn is reversed.

REVERSED

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Application 11/008,384

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