11386937 (B.P.A.I. Aug. 29, 2012)

Ex Parte Lal et al

Board of Patent Appeals and InterferencesAug 29, 2012

11386937 (B.P.A.I. Aug. 29, 2012)

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. 11/386,937 03/23/2006 Preeti Lal 039386-2285 4693 22428 7590 08/29/2012 FOLEY AND LARDNER LLP SUITE 500 3000 K STREET NW WASHINGTON, DC 20007 EXAMINER SAOUD, CHRISTINE J ART UNIT PAPER NUMBER 1647 MAIL DATE DELIVERY MODE 08/29/2012 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 PREETI LAL, JENNIFER L. HILLMAN, NEIL C. CORLEY, KARL J. GUEGLER, MARIAH R. BAUGHN, SUSAN K. SATHER, and PURVI SHAH __________ Appeal 2011-005611 Application 11/386,937 Technology Center 1600 __________ Before LORA M. GREEN, JEFFREY N. FREDMAN, and STEPHEN WALSH, Administrative Patent Judges. GREEN, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134 from the Examiner’s rejection of claims 42-48 and 52. We have jurisdiction under 35 U.S.C. § 6(b). Appeal 2011-005611 Application 11/386,937 2 The claims are drawn to an isolated polynucleotide, a recombinant polynucleotide, an isolated cell transformed with the recombinant polynucleotide, and a method of producing a polypeptide using the isolated polynucleotide, and may be found in the Claims Appendix to the Appeal Brief (App. Br. 15-16). Claims 42-48 and 52 stand rejected under 35 U.S.C. § 101 on the grounds that the claimed invention is not supported by either a specific or substantial utility or a well-established utility (Ans. 3). The claims are also rejected under 35 U.S.C. § 112, first paragraph, “as failing to adequately teach how to use the instant invention for those reasons given above with regard to the rejection of these claims under 35 U.S.C. §101” (Ans. 8). Finally, claims 42, 43, and 45-47 stand rejected under 35 U.S.C. § 102(e) as being anticipated by Young et al. (US Patent No. 6,620,912 B2, issued September 16, 2003) (Ans. 8). We agree with the rejections and responses to Appellants’ arguments that are set out in the Examiner’s Answer and the Supplemental Examiner’s Answer, and therefore adopt the Examiner’s findings and reasoning as our own. The Examiner’s rejections are affirmed. TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). Appeal 2011-005611 Application 11/386,937 3 AFFIRMED alw