10470797 (B.P.A.I. Jun. 29, 2011)

Ex Parte Miller

Board of Patent Appeals and InterferencesJun 29, 2011

10470797 (B.P.A.I. Jun. 29, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES __________ Ex parte STEFAN MILLER __________ Appeal 2010-005033 Application 10/470,797 Technology Center 1600 __________ Before DEMETRA J. MILLS, LORA M. GREEN, and FRANCISCO C. PRATS, Administrative Patent Judges. MILLS, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134. The Examiner has rejected the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b). Appeal 2010-005033 Application 10/470,797 2 STATEMENT OF THE CASE The following claims are representative and read as follows: 1. A method for the detection of bacteria comprising the steps: a) coupling one or more species of isolated bacteriophage tail proteins onto a support; b) incubating said support coupled with said isolated bacteriophage tail proteins with a sample, whereby bacteria in said sample are bound to said bacteriophage tail proteins; c) contacting the bacteria bound to said isolated bacteriophage tail proteins with bacteriophages and/or bacteriophage proteins that bind specifically to the bacteria to be detected; d) removing bacteriophages and/or bacteriophage proteins not bound to the bacteria; and e) detecting the bound bacteria (i) by an enzyme coupled to said specifically bound bacteriophages and/or bacteriophage proteins, or (ii) by an immunoassay. 17. A method for the detection of bacteria comprising the steps: a) coupling one or more species of isolated bacteriophage tail proteins onto a support; b) incubating said support coupled with said isolated bacteriophage tail proteins with a sample, whereby bacteria in said sample are bound to said isolated bacteriophage tail proteins; c) removing said sample from the bacteria not bound to said isolated bacteriophage tail proteins; d) adding substances which permeate or destroy the bacterial membrane, and e) detecting bound bacteria by bacterial cellular enzymes, nucleic acids, proteins, lipids or sugar residues. Appeal 2010-005033 Application 10/470,797 3 Cited References The Examiner relies on the following prior art references: Miller US 7,087,376 B2 Aug. 8, 2006 Goldberg US 5,864,013 Jan. 26,1999 Judkins WO 93/17129 Sep. 2,1993 Bennett et al., The use of bacteriophage-based systems for the separation and concentration of Salmonella, 83 JOURNAL OF APPLIED MICROBIOLOGY 259-265 (1997). Grounds of Rejection 1. Claims 17, 18, 20, and 22-25 are rejected under 35 U.S.C.§ 103(a) for obviousness over Bennett in view of Goldberg. 2. Claims 1, 4-6, 8-13, 16-20, 22 and 24-27 are rejected under 35 U.S.C. § 103(a) for obviousness over Judkins in view of Goldberg. FINDINGS OF FACT The findings of fact are set forth in the Answer at pages 3-9. Discussion ISSUE The Examiner states that it would have been obvious to one of ordinary skill in the art at the time of invention to utilize the phage tail proteins of Goldberg in the method of Bennett et al. in order to take advantage of the need to exploit the unique features of proteins to form appropriate subunits without flaws and of exact dimension and uniformity, which ultimately should improve the strength and consistency of the structures (tail protein) because the surfaces are more regular and can interact more closely over an extended area than larger, more Appeal 2010-005033 Application 10/470,797 4 heterogeneous material. Moreover, it would be obvious to use modified tail proteins to provide specific surface properties (i.e. the ability to bind specific ligands). (Ans. 4-5.) The Examiner further argues that it would have been obvious to one of ordinary skill in the art at the time of invention to modify the invention of Judkins et al. by attaching the bacteriophage to the solid support prior to incubation with the sample to increase sensitivity and ultimately obtain a more efficient assay. One would have had a reasonable expectation, barring evidence to the contrary, that the method would be effective for the detection of bacteria in a sample because of the tail proteins improved strength and consistency due to the fact that the surfaces are more regular and can interact more closely over an extended area than larger, more heterogeneous material. (Ans. 8.) Appellant argues that “Goldberg does not provide a teaching for phage tail proteins in the context of microorganism/virus binding,” (App. Br. 4) and therefore, there is no motivation to combine the cited references. The issue is: Is there motivation to combine the cited references to arrive at the claimed invention? PRINCIPLES OF LAW “In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial burden of presenting a prima facie case of obviousness. Only if that burden is met, does the burden of coming forward with evidence or argument shift to the applicant.” In re Rijckaert, 9 F.3d 1531, 1532 (Fed. Appeal 2010-005033 Application 10/470,797 5 Cir. 1993) (citations omitted). In order to determine whether a prima facie case of obviousness has been established, we consider the factors set forth in Graham v. John Deere Co., 383 U.S. 1, 17 (1966): (1) the scope and content of the prior art; (2) the differences between the prior art and the claims at issue; (3) the level of ordinary skill in the relevant art; and (4) objective evidence of nonobviousness, if present. ANALYSIS Appellant argues that “Goldberg does not provide a teaching for phage tail proteins in the context of microorganism/virus binding,” (App. Br. 4) and therefore, there is no motivation to combine the cited references. We are persuaded by Appellant’s argument. Goldberg teaches use of T4 phage tail fibers as a protein building block in forming a molecular sieve or a molecular weight cut-off filter to remove microorganisms or viruses. (See Goldberg, col. 15, ll. 1-12; see also id. at col. 2, ll. 20-22.) While Goldberg teaches that the protein components of the pores can be modified to provide specific binding properties (id. at col. 15, ll. 6-12), we agree with Appellant that Goldberg does not disclose or suggest that the phage tail proteins may be used to specifically bind to microorganisms For this reason, we agree with Appellant that the ordinary artisan would not have been motivated to use the T4 phage tail fiber protein building blocks as taught by Goldberg in the methods of detecting microorganisms as taught by Bennet of Judkins. Thus the combination as set forth by the Examiner does not teach or suggest the substitution of phage tail proteins which bind microorganisms for the entire phage microorganism binding disclosed by Bennett and Judkins. Appeal 2010-005033 Application 10/470,797 6 CONCLUSION OF LAW The cited references do not support the Examiner’s obviousness rejection. TIME PERIOD No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). REVERSED alw