11443601 (B.P.A.I. Oct. 20, 2010)

Ex Parte Odedra

Board of Patent Appeals and InterferencesOct 20, 2010

11443601 (B.P.A.I. Oct. 20, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES __________ Ex parte RAJ ODEDRA __________ Appeal 2010-010139 Application 11/443,601 Technology Center 1600 __________ Before CAROL A. SPIEGEL, DONALD E. ADAMS, and STEPHEN WALSH, Administrative Patent Judges. WALSH, Administrative Patent Judge. DECISION ON APPEAL1 This is an appeal under 35 U.S.C. § 134(a) involving claims to a kit comprising labeled nucleotides. The Patent Examiner rejected the claims on the ground of obviousness. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2010-010139 Application 11/443,601 2 STATEMENT OF THE CASE Claims 15 and 17-19, which are all the pending claims, are on appeal. Claim 15 is representative and reads as follows: 15. A kit for a nucleotide sequencing method, said kit comprising a first set of nucleotides comprising all four natural bases, A, C, G and T, or analogues thereof, and each base is labelled with a different reporter moiety and a second set of nucleotides comprising all four natural bases, A, C, G and T, or analogues thereof, and each base is labeled with a different reporter moiety characterized in that each reporter moiety in the first set of nucleotides is distinguishable from that in the second set. The Examiner rejected claims 15 and 17-19 under 35 U.S.C. § 103(a) as unpatentable over Garner2 and the 1988 Stratagene Catalog.3 Claims 17-19 have not been argued separately and, therefore, stand or fall with claim 15. 37 C.F.R. § 41.37(c)(1)(vii). OBVIOUSNESS The Issue The Examiner found that Garner taught eight differently labeled nucleotides and that the Stratagene Catalog taught advantages for assembling labeled nucleotides into kits. (Ans. 3-4.) On that evidence, the Examiner concluded it would have been obvious to assemble Garner’s eight differently labeled nucleotides in a kit. (Id. at 4-5.) Appellant disagrees, arguing that Garner and the Stratagene Catalog did not suggest a kit to be used for Appellant’s purpose. (App. Br. 3-6.) 2 Harold R. Garner et al., US 6,337,472 B1, filed Oct. 19, 1998, issued Jan. 8, 2002. 3 Stratagene Cloning Systems, 1988 Catalog at 39. Appeal 2010-010139 Application 11/443,601 3 The issue is whether the evidence of record is sufficient to support a legal conclusion of obviousness. Findings of Fact We adopt the Examiner’s findings concerning the scope and content of the prior art.4 Principles of Law Where a patentee uses the claim preamble to recite structural limitations of his claimed invention, the PTO and courts give effect to that usage. Conversely, where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation. Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997) (citations omitted). A rejection for obviousness must include “articulated reasoning with some rational underpinning to support the legal conclusion.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007), quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). “[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” KSR, 550 U.S. at 417. Analysis Claim 15’s preamble indicates that the kit defined in the body of the claim is intended for use in a sequencing method. The Examiner correctly 4 There is a typo in the Answer’s quotation from Stratagene 39: an ellipsis should appear between items 1) and 2). (See Ans. 4.) Appeal 2010-010139 Application 11/443,601 4 reasoned that the preamble in claim 15 is not a claim limitation. E.g., Rowe, 112 F.3d at 478. Appellant agrees that the Stratagene catalog teaches a motivation to combine reagents into a kit, but argues that there is no teaching or motivation “to include two distinct sets of nucleotides with eight different reporter moieties.” (App. Br. 4.) We disagree with that assessment of the evidence because Garner taught eight different labeled nucleotides. Although claim 15 recites “a first set of nucleotides comprising all four natural bases . . . labelled” and “a second set of nucleotides comprising all four natural bases . . . labelled,” there is nothing in the claim language to distinguish the set of eight differently labeled nucleotides that Garner taught. Appellant further argues that even if the combined prior art teachings led a person to consider a kit, “it would be a kit for in vitro labeling, not sequencing, and it would contain only one set of labeled nucleotides and not two sets as in the claimed invention.” (Id.) These two arguments are not persuasive. First, the intended use of the kit is not a claim limitation. Second, the set of eight differently labeled nucleotides taught by Garner necessarily contains two sets of four nucleotides, each differently labeled. Appellant argues that the real question is “whether it would be obvious to the skilled person to use [Garner’s labeled nucleotide triphosphosphates] in [a sequencing method].” (Id.) Appellant is mistaken. The claims are not directed to a method. Finally, the Examiner identified reasons given in the prior art to combine the teachings of the references. The evidence supports the Examiner’s finding that the Stratagene Catalog explicitly taught the Appeal 2010-010139 Application 11/443,601 5 advantages of kits. Thus, we disagree with Appellant’s argument that the rejection was based on impermissible hindsight. (Id. at 5.) CONCLUSION The evidence supports the Examiner’s findings and legal reasoning. SUMMARY We affirm the rejection of 15 and 17-19 under 35 U.S.C. § 103(a) as unpatentable over Garner and the 1988 Stratagene Catalog. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED cdc GE HEALTHCARE BIO-SCIENCES CORP. PATENT DEPARTMENT 101 CARNEGIE CENTER PRINCETON, NJ 08540