Ex Parte Marlowe et al

Board of Patent Appeals and Interferences

Mar 27, 2009

10734063 (B.P.A.I. Mar. 27, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JON C. MARLOWE, ELIZABETH A. WEST, HIENTHUC
PHAN, and EMILY R. SCHULTZ
____________

Appeal 2008-3527
Application 10/734,0631
Technology Center 1600
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Decided: March 27, 20092
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Before ERIC B. GRIMES, JAY P. LUCAS, and CAROLYN D. THOMAS,
Administrative Patent Judges.

C. THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

1 Application filed December 10, 2003. The real party in interest is Rosetta
Inpharmatics LLC.
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 CFR § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date.
Appeal 2008-3527
Application 10/734,063

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I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a final rejection
of claims 14-22 mailed November 30, 2006, which are all the claims
remaining in the application. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

A. INVENTION
Appellants invented a computer implemented method for generating a
binding-ready biological sample and work instructions for preparing the
binding-ready biological sample. (Spec., Abstract.)

B. ILLUSTRATIVE CLAIM
The appeal contains claims 14-22. Claims 1-13 and 23-25 are
cancelled. Claim 14 is the only remaining independent claim. Claim 14 is
illustrative:
14. A computer implemented method for preparing a
binding-ready biological sample for a binding assay, comprising:
receiving a binding assay design for a binding assay;
preparing an experiment design for generating a binding-
ready biological sample to be used in said binding assay;
choosing a robot method for generating said binding-
ready biological sample;
generating work instructions for generating said binding-
ready biological sample based on said experiment design and said
robot method; and
executing said work instructions on robot stations to
generate the binding-ready biological sample.

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Application 10/734,063

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C. REFERENCES
The references relied upon by the Examiner in rejecting the claims on
appeal are as follows:
Bluestein US 4,780,423 Oct. 25, 1988
Lucas US 6,996,538 B2 Feb. 7, 2006
(Filed Mar. 7, 2001)

D. REJECTION
The Examiner entered the following rejection which is before us for
review:
Claims 14-22 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bluestein in view of Lucas.

II. PROSECUTION HISTORY
Appellants appealed from the Final Rejection and filed an Appeal
Brief (App. Br.) on August 7, 2007. The Examiner mailed an Examiner’s
Answer (Ans.) on November 30, 2007. Appellants filed a Reply Brief
(Reply Br.) on January 30, 2008.

III. FINDINGS OF FACT
The following findings of fact (FF) are supported by a preponderance
of the evidence.
Bluestein
1. Bluestein discloses providing improved solid supports for
heterogeneous fluorescence immunoassays (col. 4, ll. 5-10).
2. Bluestein discloses “using an IMMOPHASE radioimmunoassay
kit . . . wherein the sample, a radiolabeled anti-ferritin antibody, and
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Application 10/734,063

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an anti-ferritin antibody coupled to CPG glass through organosilane
linkages are incubated together” (col. 6, ll. 36-43).
3. Bluestein discloses an automated fluorescence immunoassay
system using the SCREEN MACHINE system (col. 8, ll. 61-64).
4. In Bluestein, “Pandex’s SCREEN MACHINE automatically
performs particle concentration fluorescence immunoassays” (col. 9,
ll. 1-3).

IV. PRINCIPLES OF LAW
Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a
rejection [under § 103] by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of secondary
indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998)). Therefore, we look to Appellants’ Brief to show error in
the proffered prima facie case. Only those arguments actually made by
Appellants have been considered in this decision. Arguments which
Appellants could have made but chose not to make in the Brief have not
been considered and are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(vii).
V. ANALYSIS
Common Feature In All Claims
The only independent claim, claim 14, recites, inter alia, “preparing
an experiment design for generating a binding-ready biological sample to be
used in said binding assay.”
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The Obviousness Rejection
We now consider the Examiner’s rejection of claims 14-22 under 35
U.S.C. § 103(a) as being obvious over the combination of Bluestein and
Lucas.
The Examiner found that the second step of claim 14, noted supra, is
taught by Bluestein in column 8, lines 10-31 (Ans. 4). Appellants on the
other hand contend that “nothing in Bluestein would disclose or suggest to a
person of ordinary skill in the art a computer implemented method for
preparing a binding-ready biological sample (ferritin) for a binding assay
(immunoassay). The Bluestein reference only describes an automated
method for the immunoassay” (App. Br. 5). We agree with Appellants.
Bluestein discloses a method for providing improved heterogeneous
fluorescence assays using a kit with prepared samples (e.g., ferritin-
containing solutions) and utilizing a SCREEN MACHINE system (FF 1-4).
The Examiner suggests that Bluestein in column 8 discloses preparing an
experiment design for generating a binding-ready biological sample.
However, we find no such teachings in Bluestein. Instead, the cited sections
of Bluestein appear to focus mainly on maintaining assay precision and
accuracy instead of preparing binding-ready biological samples to be used in
the assays. While we agree that Bluestein discloses biological samples (e.g.,
ferritin-containing solutions) to be used in an assay, the Examiner has not
shown, and we do not readily find, where Bluestein discloses preparing an
experiment design for generating such samples. As such, we can only rule
on the basis of the evidence that is provided in support of the rejection, and
we find it deficient. The allocation of burdens requires that the USPTO
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produce the factual basis for its rejection of an application under 35 U.S.C.
§§ 102 and 103. In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984)
(citing In re Warner, 379 F.2d 1011, 1016 (CCPA 1967)). The one who
bears the initial burden of presenting a prima facie case of unpatentability is
the Examiner. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
Again, we find that the factual basis that the Examiner is relying on in
Bluestein (and Lucas) deficient to show the above-noted features.
Therefore, we find that the Appellants have established that the Examiner
erred in his findings. Therefore, we reverse the rejection of claim 14-22.

VI. CONCLUSIONS
We conclude that Appellants have shown that the Examiner erred in
rejecting claims 14-22.

VII. DECISION
In view of the foregoing discussion, we reverse the Examiner’s
rejection of claims 14-22.

REVERSED

erc

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