Ex Parte Luo et al

Board of Patent Appeals and Interferences

May 21, 2008

09715725 (B.P.A.I. May. 21, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte YING LUO, XIANG XU, CINDY LEO,
BETTY HUANG, and MARY SHEN
____________

Appeal 2008-2048
Application 09/715,725
Technology Center 1600
____________

Decided: May 21, 2008
____________

Before DONALD E. ADAMS, LORA M. GREEN, and
FRANCISCO C. PRATS, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

ORDER REMANDING TO THE EXAMINER

This appeal under 35 U.S.C. § 134 involves claims 26, 27, 29, 30, and
32, the only claims pending in this application. We have jurisdiction under
35 U.S.C. § 6(b). However, on consideration of the record, we find that this
case is not in condition for a decision on appeal, and thus remand it to the
Examiner.
Appeal 2008-2048
Application 09/715,725

Evidence Relied Upon:
The Answer expressly states that “[n]o evidence is relied upon by the
examiner in the rejection of the claims under appeal” (Ans. 4). However,
notwithstanding this express statement to the contrary, the Examiner cites a
number of references throughout the remainder of the Answer.
If the Examiner intends to rely on evidence to support the rejections of
record this evidence must be clearly identified in the “Evidence Relied
Upon” section of the Answer. However, if the express statement in the
“Evidence Relied Upon” section of the Answer is correct, the Examiner
should remove all reliance on the references cited in the Answer.
Further, assuming the Examiner does intend to rely on the evidence
cited in the body of the Answer, the Examiner should insure that each
evidentiary reference is present in the electronic file wrapper. In this regard,
we note that Burgess and Shiseki do not appear to be of record in this
Administrative Record. The PTO-1449 and PTO-892 forms separately
identified in the electronic file wrapper do not list the Burgess or Shiseki
references. In addition, it appears that a number of additional references
cited by the Examiner (e.g., Burgess), which are present in the electronic file
wrapper, are not identified on these PTO-1449 and PTO-892 forms.
Accordingly, prior to taking any further action on this record, the
Examiner should insure that the Administrative Record is complete.

Luo et al., US 6,737,232 B1, issued May 18, 2004:
According to Office records, the instant application is a continuation
of Application No. 09/442,013, filed November 17, 1999. On May 18,
2004, Application No. 09/442,013 issued to Luo et al. as US Patent No.
2
Appeal 2008-2048
Application 09/715,725

6,737,232 B1. As a continuation the instant application would be expected
to have the same disclosure as Luo. For clarity, we reproduce claims 7 and
11 of Luo and claim 29 on appeal below:
Luo:
7. A method of screening for a bioactive agent capable of modulating
apoptosis in a mammalian cell, comprising:
a) contacting a candidate bioactive agent with a mammalian cell
expressing a recombinant nucleic acid encoding an ING2 protein; and
b) measuring apoptosis in said mammalian cell;
wherein said encoded ING2 protein comprises an amino acid sequence
selected from the group consisting the amino acid sequences set forth in
SEQ ID Nos: 2, 4, 6, 8, and 10, wherein said ING2 protein will bind to an
IAP in the absence of said candidate bioactive agent, and wherein a change
in the inhibition of apoptosis indicates that said bioactive agent is capable
of modulating apoptosis in a mammalian cell comprising an ING2 protein.
11. The method according to claim 7, wherein said ING2 protein
comprises the amino acid sequence set forth in SEQ ID NO: 8.

Appealed claim 29:
29. A recombinant ING2 protein, consisting essentially of the
contiguous amino acid sequence set forth SEQ ID NO: 8.
Notwithstanding the fact that, as a continuation, the disclosure in the
instant Specification is expected to be the same as that in Luo, the Examiner
asserts that “Examiner reviews the contemplated uses for the claimed SEQ
ID NO:8 suggested by the specification and clearly provides reasons why
3
Appeal 2008-2048
Application 09/715,725

one would not know how to use SEQ ID NO:8 for the uses contemplated in
the specification” (Ans. 4 (emphasis added)).
It would appear that the Examiner’s assertion on this record is in
conflict with Luo, which claims a method of screening for a bioactive agent
capable of modulating apoptosis in a mammalian cell, comprising: a)
contacting a candidate bioactive agent with a mammalian cell expressing a
recombinant nucleic acid encoding an ING2 protein; and b) measuring
apoptosis in said mammalian cell; wherein said encoded ING2 protein
comprises, inter alia, an amino acid sequence set forth in SEQ ID NO: 8.
Accordingly, prior to any further action on this record, we encourage
the Examiner to take a step back and consider this administrative record
together with Luo and any other available prior art to determine if the
Examiner’s position on this record is in conflict with Luo.
If, after further consideration, the Examiner remains of the opinion
that a rejection should be made, the Examiner should clearly articulate the
basis for such a rejection insuring that any evidence relied upon in support of
such a rejection is present in the electronic file wrapper.

CONCLUSION
In summary, we remand the application to the Examiner for further
consideration and action consistent with the direction provided above.

REMANDED

clj
4
Appeal 2008-2048
Application 09/715,725

BOZICEVIC, FIELD & FRANCIS LLP
1900 UNIVERSITY AVENUE
SUITE 200
EAST PALO ALTO, CA 94303

5