Ex Parte Pierik et al

Patent Trial and Appeal Board

Feb 28, 2017

12625803 (P.T.A.B. Feb. 28, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/625,803 11/25/2009 ANKE PIERIK 2008P01183US 1942
24737 7590 03/02/2017
PTTTT TPS TNTFT T FfTTTAT PROPFRTY fr STANDARDS
EXAMINER
465 Columbus Avenue KINGAN, TIMOTHY G
Suite 340
Valhalla, NY 10595 ART UNIT PAPER NUMBER
1798
NOTIFICATION DATE DELIVERY MODE
03/02/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
marianne. fox @ philips, com
debbie.henn @philips .com
patti. demichele @ Philips, com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL
AND APPEAL BOARD
Ex parte ANKE PIERIK and JOHAN FREDERIK DIJKSMAN
Appeal 2015-007302
Application 12/625,8031
Technology Center 1700
Before PETER F. KRATZ, LINDA M. GAUDETTE, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants2 appeal under 35U.S.C. § 134 the final rejection of claims
1—13 and 15. We have jurisdiction over the appeal pursuant to 35 U.S.C. §
6(b).
1 This application was the subject of Appeal No. 2012-010077.
2 Appellants identify the real party in interest as Koninklijke Philips N.V.
App. Br. 2.
Appeal 2015-007302
Application 12/625,803
We AFFIRM.
Appellants’ invention is directed to a method of depositing a
substance such as DNA or a protein on a support comprising the steps of
depositing a transfer solution on a predefined position of the support and
depositing a substance solution on the same predefined position where the
transfer solution was placed, whereby an immobilization of the deposited
substance at the location of overlap between the deposited transfer solution
and the deposited substance solution on the support is achieved (Spec. 1:2—
8; 4:28—33). The goal of the disclosed method is to avoid “satellite drops”
that form by splashing of the solution during spotting a substance on a
support by immobilizing the substance using the transfer solution (Spec.
2:31-34; 3:1-7).
Claim 1 is illustrative:
1. A method for depositing a substance on a support,
comprising acts of:
predefining a plurality of positions located at a distance
of between 0.1 nm to 2 cm to each other on the support; and
on each of the plurality of predefined positions
separately and without mixing making a first deposit and
after a predefined period of time making a second deposit, the
first and second deposits are alternatively selected from a
transfer solution capable of activating the support and said
substance to form an overlap between the deposited transfer
solution and the deposited substance and to cause
immobilization of the deposited substance at the overlap.
Appellants appeal the following rejections:
1. Claims 1, 2, and 6—13 are rejected under 35 U.S.C. § 103(a), as being
unpatentable over Anderson (US 2001/0012537 Al, pub. Aug. 9,
2001).
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Application 12/625,803
2. Claim 3 is rejected under 35 U.S.C. § 103(a), as being unpatentable
over Anderson in view of Hermanson (.Bioconjugate Techniques,
Academic Press, Inc. 170—172 (1996)).
3. Claims 4 and 5 are rejected under 35 U.S.C. § 103(a), as being
unpatentable over Anderson in view of Butcher (US 5,316,913, iss.
May 31, 1994)).
4. Claim 15 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Anderson in view of Billadeau (US 2006/0019319 Al, pub. Jan.
26, 2006).
Appellants limit their arguments to claim 1 only (App. Br. 5). Therefore,
the dependent claims under rejections (1) to (4) will stand or fall with claim
1.
FINDINGS OF FACT AND ANALYSES
The Examiner’s findings and conclusions are located on pages 2-4
and 8—12 of the Answer. We adopt the Examiner’s findings and well-
reasoned conclusions as our own. We add the following analysis primarily
for emphasis.
Appellants argue that Anderson fails to teach or suggest making first
and second depositions on each of a plurality of predefined positions of the
support (Reply Br. 5—8; App. Br. 6). Appellants contend that Anderson’s 1
171 does not teach making first and second depositions on a plurality of
predefined positions (Reply Br. 4; App. Br. 7). Appellants further contend
that Anderson’s 1173 does not teach depositing a transfer solution at
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Application 12/625,803
plurality of predefined positions at a distance of between 0.1 nm to 2 cm to
each other on the support (Reply Br. 4—5).
Contrary to Appellants’ arguments, the Examiner reasonably finds
that Anderson’s 1171 teaches the surface of a support is activated with a
solution of 0.2 M N-ethyl-N’-(3-dimethylaminopropyl)carbodiimide (EDC)
and 0.05 M N-hydroxysuccinimide (NHS) in distilled water for the trapping
of a protein G. Anderson teaches applying the solution that contains protein
G in a buffer solution to the activated surfaces followed by deactivating the
surface (Anderson 1171). While Appellants contest the Examiner’s
interpretation of this paragraph, no evidence has been proffered by
Appellants to challenge the Examiner’s reasonable interpretation of the
reference. Plainly, Anderson’s 1171 teaches sequentially applying an
activating (or transfer) solution to predetermined portions of a support
followed by applying a solution to the predetermined portions to trap the
protein to the activated sites.
Appellants further argue that Anderson’s placing of, e.g., DNA or
RNA in a polymeric matrix material formed into fibers and then forming a
bar or block of longitudinally adhered fibers, which is then sliced to form a
sliced section of fibers that is placed upon the solid surface having activated
sites, teaches away from depositing a substance as recited in claim 1 (Reply
Br. 5; Anderson Fig. 1). Anderson, however, teaches activating a solid
surface by applying a transfer solution and a protein to the “predetermined
sites” where the transfer solution was applied (Ans. 8—9, Anderson 1171).
Anderson further teaches that a slice of fibers may be overlaid on and
adhered to predetermined activated sites (Anderson 1174). In other words,
Anderson teaches placing first and second depositions on a solid support to
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Appeal 2015-007302
Application 12/625,803
activate the solid support and bind the protein to each of the predetermined
sites. This activation of the solid support at predetermined sites is sufficient
to meet the claim requirements. Anderson’s additional application of a
sliced fiber bundle that includes a fiber covering each of the predetermined
sites is not excluded by the claims. Rather, the overlaying of the sliced fiber
bundle over the activated predetermined sites would have suggested that
activated sites are positioned at the same spacing of the fibers (e.g., 1 mm
apart) (Anderson H 91, 173, 174). Anderson further teaches that the fiber
diameter may be made smaller and the array could be microarrays that
includes over 1,000,000 or even 1,000,000,000 cells (Anderson || 54, 147).
Regarding the spacing of the predefined positions of the transfer
solutions on the support, the Examiner finds that Anderson discloses at ||
54 and 145 forming microarrays that comprise 100 to 1,000,000 cells with
each cell comprising a fiber of 100 microns in diameter with a 10,000 in a
bar of fibers occupying a 1 cm square (Ans. 4). The Examiner further finds
that Anderson discloses in || 173 to 174 slicing colored fiber bundles into 2
mm x 2mm squares that are positioned at the activated predetermined
locations containing the protein G (Ans. 10—12). The Examiner concludes
that based upon these teachings that it would have been obvious to deposit
transfer solution and substance at intervals of greater than or equal to 1 cm
in order to provide space on the solid phase for the individual arrays (Ans.
11).
Appellants’ arguments fail to specifically address or show error in the
Examiner’s findings with regard to what Anderson at || 54 and 145 would
have suggested to one of ordinary skill in the art regarding the spacing of the
predefined positions on the support. The Examiner’s obviousness analysis
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Application 12/625,803
regarding the spacing between the predetermined sites includes, inter alia,
the teachings of H 54, 145, 171, 173, and 174 of Anderson. Appellants’
argument that Anderson’s disclosure of a “2x2” array of fibers does not
disclose that the measurements are 2 mm on each side (Reply Br. 5).
Anderson’s 1173 discloses that the filled fibers are 1 mm in diameter, so the
2x2 fiber array is reasonably understood to be 2 mm by 2 mm in size as
found by the Examiner (Ans. 11). Appellants do not challenge the
Examiner’s finding that the 1 mm fiber diameter would form predetermined
sites spaced at a distance within the claimed range (i.e., 0.1 nm to 2 cm)
(Ans. 11).
On this record, the preponderance of the evidence favors the
Examiner’s obviousness conclusion. We affirm the Examiner’s § 103
rejections.
DECISION
The Examiner’s decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
ORDER
AFFIRMED
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