Ex parte Nicholson

Board of Patent Appeals and Interferences

May 16, 2000

08196748 (B.P.A.I. May. 16, 2000)

1
Paper No. 17
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte DONALD W. NICHOLSON
______________
Appeal No. 1996-2229
Application 08/196,748
_______________
ON BRIEF
_______________
Before WINTERS, WILLIAM F. SMITH and LORIN, Administrative Patent
Judges.
WINTERS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal was taken from the examiner's decision rejecting
claims 1 through 4, which are all of the claims in the
application.
Claim 1, which is illustrative of the subject matter on
appeal, reads as follows:
1. LTC synthase, in substantially free form, having a4
molecular weight of 18 kDa as determined on silver stained
SDS-polyacrylamide denaturing gel.
Appeal No. 1996-2229
Application 08/196,748
2
The references relied on by the examiner are:
Yoshimoto et al. (Yoshimoto)(SS), “Isolation and Characterization
of Leukotriene C Synthetase of Rat Basophilic Leukemia Cells,” 4
80 Proc. Natl. Acad. Sci., USA, 8399-8403 (1985).
Yoshimoto et al. (Yoshimoto)(RR), “Properties of Highly Purified
Leukotriene C Synthase of Guinea Pig Lung,” 81 J. Clin. Invest.,4
866-71 (1988).
Söderström et al. (Söderström)(TT), “Leuktriene C Synthase:4
Characterization in Mouse Mastocytoma Cells, 187 Methods in
Enzymology, 306-12 (1990).
Söderström et al. (Söderström)(U), “On the Nature of Leukotriene
C Synthase in Human Platelets,” 294 Archives of Biochemistry and4
Biophysics, 70-74 (1992).
In the Appeal Brief, page 6, appellant relies on the
following
reference:
Nicholson et al. (Nicholson), “Purification of Human Leukotriene
C Synthase from Dimethylsulfoxide-Differentiated U937 Cells,” 4
209 Eur. J. Biochem., 725-34 (1992).

Claims 1 through 4 stand rejected under 35 U.S.C. § 112,
second paragraph, as indefinite. Claims 1 through 4 also stand
rejected under 35 U.S.C. § 102 as anticipated by or, in the
alternative, under 35 U.S.C. § 103 as unpatentable over
Appeal No. 1996-2229
Application 08/196,748
3
Söderström (U), Yoshimoto (RR), Yoshimoto (SS), or Söderström
(TT).
On consideration of the record, we reverse the examiner's
rejection under 35 U.S.C. § 112, second paragraph. We remand the
rejections under 35 U.S.C. § 102 or, in the alternative, 35
U.S.C.
§ 103.
CLAIM INTERPRETATION
As stated in Panduit Corp. v. Dennison Mfg. Co., 810 F.2d
1561, 1567-68, 1 USPQ2d 1593, 1597 (Fed. Cir.), cert. denied, 481
U.S. 1052 (1987), the decisional process en route to a conclusion
under 35 U.S.C. § 103 begins with a key legal question -- what is
the invention claimed? The decision maker is required to view
the claimed invention as a whole. 35 U.S.C. § 103. Claim inter-
pretation, in light of the specification, claim language, other
claims, and prosecution history, is a matter of law and will
normally control the remainder of the decisional process.
Independent claim 1 reads as follows:
1. LTC synthase, in substantially free form, having a4
molecular weight of 18 kDa as determined on silver
stained SDS-polyacrylamide denaturing gel.
Giving that claim its broadest reasonable interpretation
consistent with the specification, we conclude that the claim is
Appeal No. 1996-2229
Application 08/196,748
4
drawn to purified LTC synthase where the enzyme is purified to4
homogeneity. See particularly, these passages in the
specification: Abstract of the Disclosure; Summary of the
Invention, page 2, lines 13-16; and Example 1 at page 21, where a
single polypeptide of 18 kDa is obtained on silver stained SDS-
polyacrylamide denaturing gels.
In our judgment, claim 1, read in light of the application
disclosure, reasonably apprises those skilled in the art that
appellant's invention is LTC synthase purified to homogeneity4
and substantially free of other contaminants. That is the
broadest reasonable interpretation of the claim language “LTC4
synthase, in substantially free form, having a molecular weight
of 18 kDa as determined on silver stained SDS-polyacrylamide
denaturing gel.”
35 U.S.C. § 112, SECOND PARAGRAPH
Claims 1 through 4 stand rejected under 35 U.S.C. § 112,
second paragraph, as indefinite in view of the phrase “in
substantially free form.” This rejection is reversed. For the
reasons already discussed, we conclude that appellant's claims
are drawn to LTC synthase purified to homogeneity, having a4
molecular weight of
Appeal No. 1996-2229
Application 08/196,748
5
18 kDa as determined on silver stained SDS-polyacrylamide
denaturing gel, and substantially free of other contaminants.
The claims do, in fact, set out and circumscribe a particular
area with a reasonable degree of precision and particularity. In
re Moore,
439 F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA 1971).
35 U.S.C. §§ 102/103
Claims 1 through 4 stand rejected under 35 U.S.C. § 102 as
anticipated by or, in the alternative, under 35 U.S.C. § 103 as
unpatentable over Söderström (U), Yoshimoto (RR), Yoshimoto (SS),
or Söderström (TT). In entering these rejections, the examiner
does not designate any particular passage or passages relied on
in the cited references. See 37 CFR § 1.104(c)(2), which states:
In rejecting claims for want of novelty or for
obviousness, the examiner must cite the best
references at his or her command. When a
reference is complex or shows or describes
inventions other than that claimed by the
applicant, the particular part relied on must
be designated as nearly as practicable. The
pertinence of each reference, if not apparent,
must be clearly explained and each rejected
claim specified. [emphasis added]
This the examiner has not done. Nor does the appellant discuss
specific portions or passages of the cited references. For this
Appeal No. 1996-2229
Application 08/196,748
6
reason, the briefings on appeal are incomplete and the prior art
rejections are not ready for a disposition on appeal.
In the Appeal Brief, page 6, appellant relies on the
Nicholson reference as evidence of non-obviousness. The
examiner, however, does not counter with any argument or
response. This constitutes procedural error and, again, leaves
the Board with incomplete briefings on appeal. As stated in In
re Hedges, 783 F.2d 1038, 1039, 228 USPQ 685, 686 (Fed. Cir.
1986),
If a prima facie case is made in the first
instance, and if the applicant comes forward
with reasonable rebuttal, whether buttressed
by experiment, prior art references, or
argument, the entire merits of the matter are
to be reweighed. [citation omitted]
This the examiner has not done.
On return of this application to the examining corps, we
recommend that the examiner reevaluate the patentability of
claims
1 through 4 on prior art grounds. If the examiner adheres to the
position that appellant's claims are anticipated by or, in the
alternative, obvious over Söderström (U), Yoshimoto (RR),
Yoshimoto (SS), or Söderström (TT), the examiner should issue an
Appeal No. 1996-2229
Application 08/196,748
7
appropriate Office action setting forth the basis for that
position. In so doing, the examiner should designate “as nearly
as practicable” the particular part or passage of each prior art
reference relied on.
37 CFR § 1.104(c)(2). Further, the examiner should provide a
substantive response to appellant's reliance on Nicholson as
evidence of non-obviousness. See the Appeal Brief, page 6.
Further, in reevaluating the patentability of claims 1 through 4
on prior art grounds, the examiner should consider the proper
interpretation of those claims as discussed in the first section
of this opinion.
We remand this application to the examiner to reevaluate the
patentability of claims 1 through 4 in light of the foregoing
discussion. On the surface, it would appear the Yoshimoto (RR)
constitutes the closest prior art in this case. This follows
from the examiner's argument that Yoshimoto (RR) describes a 91-
fold purification of LTC synthase (Examiner's Answer, page 7)4
and appellant's similar description of that reference in the
Appeal Brief, page 5. Therefore, on return of this application,
we recommend that the examiner pay particular attention to
Yoshimoto (RR). The examiner should explain why the subject
matter sought to patented in claims 1 through 4, properly
Appeal No. 1996-2229
Application 08/196,748
8
interpreted, would have been obvious over Yoshimoto (RR),
including a discussion of the most relevant passage or passages
in that reference.
CONCLUSION
The rejection of claims 1 through 4 under 35 U.S.C. § 112,
second paragraph, is reversed.
The rejections of claims 1 through 4 under 35 U.S.C.
§§ 102/103 are not ready for a disposition on appeal.
Appeal No. 1996-2229
Application 08/196,748
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We remand this application so that the examiner may
reevaluate the patentability of claims 1 through 4 on prior art
grounds in light of the foregoing discussion.
REVERSED and REMANDED
Sherman D. Winters )
Administrative Patent Judge )
)
)
)
William F. Smith ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Hubert C. Lorin )
Administrative Patent Judge )
Appeal No. 1996-2229
Application 08/196,748
10
SDW/cam
Gabriel Lopez
Patent Department
Merck & Co., Inc.
P. O. Box 2000
Rahway, NJ 07065-0907