Ex Parte Liu

Patent Trial and Appeal Board

Sep 27, 2016

14056921 (P.T.A.B. Sep. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/056,921 10/17/2013
52059 7590 09/29/2016
LIFE TECHNOLOGIES CORPORATION
Attn: IP Department
5823 Newton Drive
Carlsbad, CA 92008
FIRST NAMED INVENTOR
Jason Yingjie LIU
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
LT00863 6277
EXAMINER
CHUNDURU, SURYAPRABHA
ART UNIT PAPER NUMBER
1637
NOTIFICATION DATE DELIVERY MODE
09/29/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
LifetechDocket@system.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JASON YINGJIE LIU
Appeal2015-002156
Application 14/05 6,921
Technology Center 1600
Before JEFFREY N. FREDMAN, JOHN G. NEW, and TA WEN CHANG,
Administrative Patent Judges.
NEW, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2015-002156
Application 14/05 6,921
SUMMARY
Appellant files this appeal under 35 U.S.C. § 134(a) from the
Examiner's Final Rejection of claims 1-3 and 7 as unpatentable under 35
U.S.C. § 103(a) as being obvious over the combination of Dennis Y. Wang et
al., Direct Amplification of STRs from Blood or Buccal Cell Samples,
FORENSIC SCI. INT'L: GENETICS SUPPL. SER. 2, 113-14 (1993) ("Wang"),
Sangha et al. (US 2003/0113906 Al, June 19, 2003) ("Sangha"), and M.
Barbisin et al., Quantifiler® Duo DNA Quantification Kit: A Guiding Tool
for Short Tandem Repeat Genotyping of Forensic Samples, 2 (2) J. FORENSIC
RES. 1-11 (2011) ("Barbisin").
We have jurisdiction under 35 U.S.C. § 6(b)
We AFFIRM.
NATURE OF THE CLAIMED INVENTION
Appellant's invention is directed to a workflow for direct qPCR
quantification of unprocessed forensic casework samples. According to the
Specification, the direct qPCR quantification of unprocessed forensic
casework samples and direct STR amplification of unprocessed forensic
casework samples collected on the same PE-swab greatly increases forensic
laboratory's efficiency and capability. Abstract.
REPRESENTATIVE CLAIM
Appellant argues the claims together. App. Br. 10. Claim 1 is
representative of the claim on appeal, and recites:
1. A method comprising contacting one or more surfaces
with a paper in the collection of evidence for a criminal
investigation, depositing the paper into a vessel, performing a
multiplex real-time polymerase chain reaction (rtPCR) within the
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vessel and detecting the level of fluorescence emitted from the
vessel during the multiplex rtPCR, wherein the level of
fluorescence is detected by a charge-coupled device while the
paper is in the vessel, and wherein the multiplex rtPCR
comprises a 5' exonuclease probe.
App. Br. 15.
ISSUES AND ANALYSIS
We agree with, and adopt, the Examiner's findings and conclusion
that the appealed claim is prima facie obvious over the cited prior art
references. We address the arguments raised by Appellant below.
Issue
Appellant argues the Examiner erred because the closest prior art of
record negates any motivation to combine the references relied upon. App.
Br. 10.
Analysis
Appellant does not dispute that the combined prior art references cited
by the Examiner teach or suggest the limitations of the claims on appeal.
However, Appellant adduces two prior art references of record, which they
argue teach a real-time polymerase chain reaction ("rtPCR") in which paper
is present in the reaction vessel: (1) N. Nozawa et. al. Real-Time PCR Assay
Using Specimens on Filter Disks as a Template for Detection of
Cytomegalovirus in Urine, 45 (4) J. CLIN. MICROBIO. 1305---07 (2007)
("Nozawa"); and (2) B.J. Taylor et al., Real- time PCR Detection of
Plasmodium Directly from Whole Blood and Filter Paper Samples, IO
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MALARIAJ. 244--51 (2011). App. Br 10. Appellant contends Nozawa,
which Appellant maintains may be the closest prior art, is not relied upon by
the Examiner in establishing a prima facie case of obviousness. Id.
Appellant admits that, of the references relied upon by the Examiner:
( 1) Wang teaches performing a PCR during which paper is present in the
reaction vessel, but not an rtPCR; (2) Barbisin teaches performing an rtPCR
and detecting fluorescence with a charge-coupled device but without paper
present in the reaction mixture; and (3) Sangah teaches paper devices for
collecting forensic samples, but is silent with respect to the performance of
rtPCR while paper is present in the reaction vessel. App. Br. 10-11.
However, Appellant asserts, Nozawa teaches an rtPCR assay in which
filter paper is present in the reaction vessel. App. Br. 11. Appellant argues
that Nozawa also teaches devices for detecting fluorescence in rtPCR and, in
particular, teaches what devices should and should not be used to detect
fluorescence when filter paper is present in the reaction vessel. Id.
Appellant points to Nozawa's teaching that: "only instruments equipped
with a photo - multiplier tube scanning system could be used for real-time
PCR assays with filter disks in the reaction mixture, due to the fact that
instruments using a charge-coupled device were adversely affected by
nonspecific signals from the disks." Id. (quoting Nozawa, page 1305).
Therefore, Appellant argues, a person of ordinary skill would not have
combined Wang and Barbisin because N ozawa teaches that charge-coupled
devices are adversely affected by nonspecific signals when paper is present
in the rtPCR reaction. Id.
The Examiner responds that Nozawa is not the closest prior art to the
instant claims. To the contrary, the Examiner finds, the combination of the
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applied references teaches or suggests each and every claim limitation. Ans.
8. The Examiner points to Nozawa's teaching that:
Since isocode filters allowed for more efficient amplification
than the others, these filters were used for the following
experiments. Next, we found that only instruments equipped
with a photo-multiplier-tube scanning system (e.g., Stratagene
MX3500P) could be used for realtime PCR assays with filter
disks in the reaction mixture, due to the fact that instruments
using a charge-coupled device camera (e.g., AB17700) were
adversely affected by nonspecific signals from the disks.
Id. (quoting Nozawa 1305). The Examiner finds that Nozawa is silent with
respect to the conditions under which this effect was realized or what
attempts may have been made to mitigate the influence of the nonspecific
signals from the disks. Id.
The Examiner then cites Taylor, a later prior art reference, which the
Examiner finds establishes that, by at least 2011, it was well known in the
art that rtPCR could be successfully performed while paper was present in
the reaction vessel and the level of fluorescence detected with a charge-
coupled device ("CCD") device. Ans. 8. The Examiner finds Taylor
specifically teaches both that filter paper itself demonstrates high
background fluorescence, as well as how to successfully mitigate this effect
when using CCD detection with rtPCR performed with paper in the vessel.
Id. The Examiner finds these techniques include altering the baseline and
threshold fluorescence units, as well as preliminary testing with blank filter
papers and negative controls to allow for successful interpretation of results.
Id. (citing Taylor 2, 7).
Appellant argues that the flaw in the Examiner's reasoning is that
whereas Nozawa and Taylor both teach rtPCR can be performed while paper
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is present in the reaction vessel and the level of fluorescence detected, only
Nozawa teaches the claimed 5' exonuclease-based rtPCR probe. Reply Br.
5. Appellant contends that Taylor teaches using SYBR® Green, a
fluorescent double-stranded DNA binding dye, which is not recited in the
claims. Id.
We are not persuaded by Appellant's arguments. Appellant does not
deny that the combined cited prior art references teach all of the limitations
of the claims on appeal. Rather, Appellant contends that Nozawa teaches
away from the claimed invention, arguing that Nozawa teaches that, when
performing rtPCR, instruments using a charge-coupled device (as required
by the claims) were adversely affected by nonspecific signals from the disks.
See App. Br. 11. However, we agree with the Examiner that Taylor, a
subsequent reference, teaches that, by 2011 (prior to Appellants' filing date
of Oct. 17, 2013), the impediments taught by Nozawa had been largely
overcome, a finding that Appellant does not deny.
Moreover, we are not persuaded by Appellant's reply that Taylor does
not teach the use of a 5' exonuclease-based rtPCR assay. The Examiner
relies upon the teachings of Barbisin as teaching this limitation, which
Appellant does not dispute. See Final Act. 4. Nozawa also teaches the use
of such a probe, and Appellant adduces no evidence that the methods taught
by Taylor would be inconsistent with the use of a 5' exonuclease-based
rtPCR probe, or would be thereby rendered inoperative. See In re Keller,
642 F.2d 413, 426 (C.C.P.A. 1981) ("[O]ne cannot show non-obviousness
by attacking references individually where ... the rejections are based on
combinations of references"). We consequently affirm the Examiner's
rejection of the claims.
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DECISION
The Examiner's rejection of claim 1-3 and 7 as unpatentable under 35
U.S.C. § 103(a) is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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