Ex Parte Poustka et al

Patent Trial and Appeal Board

Dec 23, 2016

09880688 (P.T.A.B. Dec. 23, 2016)

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.
09/880,688 06/13/2001 Annemarie Poustka POUSTKA-2 6614
20151 7590 12/28/2016
HENRY M FEIEREISEN, LLC
HENRY M FEIEREISEN
708 THIRD AVENUE
SUITE 1501
NEW YORK, NY 10017
EXAMINER
KAUP, SAHANA S
ART UNIT PAPER NUMBER
1639
NOTIFICATION DATE DELIVERY MODE
12/28/2016 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):
INFO @ FEIEREISENLLC.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANNEMARIE POUSTKA, FRANK BREITLING,
KARL-HEINZ GROSS, STEFAN DUBEL, and RAINER SAFFRICH
Appeal 2015-006677
Application 09/880,688
Technology Center 1600
Before DONALD E. ADAMS, RICHARD M. LEBOVITZ, and
RICHARD J. SMITH, Administrative Patent Judges.
LEBOVITZ, Administrative Patent Judge.
DECISION ON APPEAL
This appeal involves claims directed to a method for applying a
monomer to a support for the combinatorial synthesis of molecule libraries.
The Examiner rejected the claims as obvious under 35 U.S.C. § 103(a). We
have jurisdiction under 35 U.S.C. § 134. The obviousness rejections are
reversed.
STATEMENT OF CASE
Appellants appeal from the rejection by the Examiner of pending
claims 75, 78, 79, 84, 86—89, and 92—99. Appeal Br. 1.
The Final Rejection set forth four grounds of rejection of claims 75,
78, 79, 84, 86—89, and 92—99. The Answer repeated these grounds, but on
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Application 09/880,688
the last page of the Answer indicated they were all withdrawn. Ans. 20.
The Answer set forth the following new grounds of rejection:
A. Claims 75, 84, 86, and 97—99 under 35 U.S.C. § 103(a) (pre-AIA)
as obvious in view of Fodor,1 Raffaele,2 and Lambert.3 Ans. 11.
B. Claims 87—89 and 92—94 under 35 U.S.C. § 103(a) (pre-AIA) as
obvious in view of Fodor, Raffaele, Lambert, and Grosso.4 Ans. 14.
C. Claims 78 and 79 under 35 U.S.C. § 103(a) (pre-AIA) as obvious
in view of Fodor, Raffaele, Lambert, Grosso, and Hoffman.5 Ans. 17.
D. Claims 95 and 96 under 35 U.S.C. § 103(a) (pre-AIA) as obvious
in view of Fodor, Raffaele, Lambert, Grosso, Hoffman, and Park.6 Ans. 18.
The only independent claims on appeals are claims 75 and 87. Claim
75 is representative and reads as follows:
75. A method for applying substances including
monomers to a support for the combinatorial synthesis of
molecule libraries, comprising the steps of:
embedding at least one amino acid monomer or
nucleotide monomer into a matrix of at least one solvent that at
a temperature of less than 90° C is in a solid state of
aggregation, thereby forming monomer-immobilizing transport
units;
applying these transport units in the solid state of
aggregation onto a solid support by laser printing at a
temperature of less than 90° C, whereby the transport units
become electrostatically charged and thereby transferred onto
pre-determined regions of a laser-writable roller and thereafter
1 Fodor et al., US 5,510,270, issued Apr. 23, 1996 (“Fodor”).
2 Raffaele, WO 98/22250, published May 28, 1998 (“Raffaele”).
3 Lambert et al., US 5,750,318, issued May 12, 1998 (“Lambert”).
4 Grosso et al., US 5,185,226, issued Feb. 9, 1993 (“Grosso”).
5 Hoffman et al., US 4,912,032, issued Mar. 27, 1990 (“Hoffman”).
6 Park et al., WO 98/51408, published Nov. 19, 1998 (“Park”).
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applied to the support, where the transport units are remaining
in the solid state of aggregation;
thereafter, changing the transport units from a solid state
of aggregation to a liquid state of aggregation thereby
mobilizing the monomers and diffusing the monomers within
the transport units, and
thereafter, covalently linking the thus mobilized
monomers to molecules located on the support through a
linking reaction, thereby yielding a number of different
monomers coupled to the support in the predetermined
locations and washing away non-linked monomers
applying in this manner more than one layer of
monomers to the support, whereby monomers from a second
layer are covalently linked to monomers from a first layer that
were previously linked to the support and washing away the
non-linked monomers.
The main dispute in all the rejections is whether the combination of
Fodor and Raffaele teach “changing the transport units from a solid state of
aggregation to a liquid state of aggregation thereby mobilizing the
monomers and diffusing the monomers within the transport units” as recited
in claim 75.
Independent claim 87 has a step of “changing the toner particles from
a solid state of aggregation to a liquid state of aggregation, thereby
mobilizing the monomers and diffusing the monomers within the toner
particles and thus permitting release of the monomers onto the support.”
Both independent claims thus have a step of mobilizing monomers by
changing a solid state of aggregation to a liquid state of aggregation.
Consequently, all claims stand or fall together on this issue.
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REJECTIONS
Claim 75 is directed to a “method for applying substances including
monomers to a support for the combinatorial synthesis of molecule
libraries.” The method comprises “embedding at least one amino acid
monomer or nucleotide monomer into a matrix of at least one solvent that at
a temperature of less than 90° C is in a solid state of aggregation” to form
“monomer-immobilizing transport units.” After the “embedding” step, the
transport units are applied to a solid support by laser printing, following by
“changing the transport units from a solid state of aggregation to a liquid
state of aggregation thereby mobilizing the monomers and diffusing the
monomers within the transport units.”
The Examiner found that Fodor describes the recited “embedding”
step, including utilizing a solvent that possesses the claimed characteristics.
Ans. 11. The Examiner stated that Fodor does not “expressly teach other
particles composed of ‘at least one solvent that at a temperature of less than
90° C is in a solid state of aggregation’” as recited in claim 75. Id. at 12.
The Examiner found that Raffaele describes “application of other types of
particles composed of ‘at least one solvent that at a temperature of less than
90° C is in a solid state of aggregation’ by laser printing.” Id. The
Examiner also found that Raffaele teaches that “some of the substrate or
parts of the substrate or components can become adhesive or can melt or set
or dissolve or degrade under particular conditions as indicated in lines 29-
31, pg. 5 and lines 31-33, pg. 18[] as set forth by instant claim 75.” Id. at 13
(emphasis omitted).
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The Examiner found that it would have been prima facie obvious to
combine Fodor and Raffaele for the following reasons:
Fodor et al. teach combinatorial synthesis using laser light and
gel particles that contain monomers that can be released and
linked to surface of array. In addition, Raffaele et al. teach the
merits of using application of other types of particles composed
of “at least one solvent that at a temperature of less than 90° C
in a solid state of aggregation” by laser printing. Therefore, it
would be obvious to a person of ordinary skill in the art to
develop the method of combinatorial synthesis using particles
that change physical states based on temperature, as taught by
Fodor et al., in which the particle can be composed of
supercooled liquids, as taught by Raffaele et al. One of
ordinary skill in the art would have been motivated to combine
these references and would have had a reasonable expectation
of success in doing so because Raffaele et al. also teach
application of gel particles by laser printing (e.g. laser printing
as indicated in Abstract; line 31, pg. 5 and lines 1-2, pg. 6;
application of electrostatically charged particles, biological
material, gel material or super-cooled material onto a substrate
as indicated in 13-14, pg. 4).
Id. at 13—14.
The Examiner has the burden to establish a case of prima facie
obviousness considering the factors set out by the Supreme Court in Graham
v. John Deere, 383 U.S. 1 (1966). In re Bell, 991 F.2d 781, 783 (Fed. Cir.
1993); In re Rijckaert, 9 F.3d 1531, 1532 (Fed. Cir. 1993); In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). In this case, the Examiner
did not establish that the cited Fodor and Raffaele publications describe or
suggest “changing the transport units from a solid state of aggregation to a
liquid state of aggregation thereby mobilizing the monomers and diffusing
the monomers within the transport units” and then “linking the thus
mobilized monomers to molecules located on the support through a linking
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reaction.” Consequently, we conclude that the Examiner did not meet the
burden of establishing prima facie obviousness of the claims.
The Examiner stated that Fodor teaches “gel particles that contain
monomers that can be released and linked to surface of array” (Ans. 13, 15).
The support for this statement appears to be based on the following
disclosures from Fodor {id. at 11—12):
8. Substrate: ... In many embodiments, at least one surface of
the substrate will be substantially flat, although in some
embodiments it may be desirable to physically separate
synthesis regions for different polymers with, for example,
wells, raised regions, etched trenches, or the like. According to
other embodiments, small beads may be provided on the
surface which may be released upon completion of the
synthesis.
Fodor, col. 7,11. 51—59.
The substrate may be biological, nonbiological, organic,
inorganic, or a combination of any of these, existing as
particles, strands, precipitates, gels, sheets, tubing, spheres,
containers, capillaries, pads, slices, films, plates, slides, etc.
Id. at col. 11,11. 2—13.
While the disclosure at column 7 of Fodor refers to the release of
small beads, it does not describe whether the beads serve as the monomer
carrier as inferred by the Examiner nor how the release is accomplished.
Even if the Examiner is correct that the beads are utilized to carry the
monomer to the desired location, Fodor does not explain how the beads are
released. The subsequent disclosure at column 11 of Fodor cited by the
Examiner refers to the composition of the substrate to which the monomers
are attached, not to the beads. Thus, the Examiner’s focus on “gels” in this
passage is not for the same purpose as in claim 75.
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Moreover, even if the beads are made of “gel” as found by the
Examiner, such a finding does not establish that the bead is made of “at least
one solvent that at a temperature of less than 90° C is in a solid state of
aggregation” and then mobilizing the monomers associated with the bead by
“changing” the beads “from a solid state of aggregation to a liquid state of
aggregation” as required by claim 75. It appears that the Examiner relied
upon Raffaele for teaching the latter limitation.
One of ordinary skill in the art would have been motivated to
combine these references and would have had a reasonable
expectation of success in doing so because Raffaele et al. also
teach application of gel particles by laser printing[ ](e.g. laser
printing as indicated in Abstract; line 31, pg. 5 and lines 1-2,
pg. 6; application of electrostatically charged particles,
biological material, gel material or super-cooled material onto a
substrate as indicated in 13-14, pg. 4).
Ans. 14.
Raffaele describes making three-dimensional objects by printing a
desired cross-section outline on a substrate and then applying energy to the
outline to cause the substrate to weaken at the outline. Raffaele, Abstract.
Raffaele teaches that the method involves “printing on . . . substrate[s] a
desired cross-sectional outline, binding the substrates and applying sufficient
energy to the printed outline to cause each printed substrate to weaken at the
outline.” Id. at 3:2—5. Raffaele also teaches, as referenced by the Examiner
(Ans. 12):
. . . different layers in the stack may react differently to light
intensity or frequency, which can result in different effects,
depending on the aim. This concept can be used to bind the
stack, or to bind parts of the stack, or to bind stack components,
if some of the substrate or parts of the substrate or components
can become adhesive or can melt or set or dissolve or degrade
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or remain unaffected under particular conditions. In these
embodiments, the printing can be carried out by suitably
directed light, including light generated by a laser.
Id. at 5:26—6:2.
Raffaele further teaches:
Preferably, if more than one substrate is used and it is desired to
bind them, the substrates are bonded together by suitable
means, including those of the prior art: use of a hot roller to
melt adhesive with which a substrate is coated. Any other
appropriate method of bonding may be used.
Id. at 9:4—7.
The above-reproduced disclosures refer to attaching substrates
together. The Examiner did not explain their pertinence to the step of
printing the monomer on the substrate and releasing it by a change in state as
required by claim 75. Consequently, the Examiner’s reference to the above-
quoted passages from Raffaele does not support the rejection.
The Examiner also cited the following disclosure from Raffaele (Ans.
13):
The printing step usually involves the deposit of a suitable
material on the substrate. The nature of the material to be
deposited will depend on the intended purpose of the product,
and on any method of causing weakening in the substrate, and
suitable choices will be apparent to one skilled in the art.
Without limitation, the following may be mentioned as
examples: solid, liquid, gel or gaseous material including but
not limited to ink or toner which can be activated magnetically,
electrically, chemically or by sound, light (visible, infrared
and/or ultraviolet), irradiation, temperature change, or other
energy, including microwaves, X-rays and electromagnetic
vibration, electroplating ink, mixtures, compounds, colloids,
aggregates, polymers including polypyrrole and polyanaline,
monomers, plastic, metal, alloys, ceramic, magnetic particles,
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enzymes, proteins, doping agents, organic material, biological
material, resins, dielectric material, metalised ink, reflective ink
(which may permit focussing of energy), particles or arrays
which are photoelectric, photovoltaic, photoemitting,
luminescent or radioactive. . . . Super-cooled helium which
may be printed on a substrate of mesoporous silica, for
instance, is another example.
Id. at 9:15-33.
While this disclosure broadly describes materials, states of matter, and
methods of activation (including “temperature change”) which could be used
to print on the substrate to produce the three-dimensional object’s outline
and subsequently weaken the outline, the disclosure does not disclose the
claimed step of “changing the transport units from a solid state of
aggregation to a liquid state of aggregation thereby mobilizing the
monomers and diffusing the monomers within the transport units” nor does
the Examiner explain how it reasonably suggests it. The Examiner states
that it “would be obvious to a person of ordinary skill in the art to develop
the method of combinatorial synthesis using particles that change physical
states based on temperature, as taught by Fodor” (Ans.13), but did not direct
us to adequate support in Fodor for this teaching.
In addition to this disclosure, we observe that Raffaele teaches various
ways of creating the outline on the substrate, and then weakening it,
including using gas-borne deposition of a suitable material. Raffaele 16:8—
13. However, we have not been directed to disclosure in Raffaele of
changing a solvent from a solid to a liquid state to release a monomer. The
Examiner found that Raffaele discloses super-cooled helium to print on a
silica substrate {id. at 9:31—33), but did not explain how this meets or
suggests the claim limitations (Ans. 13).
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Moreover, Raffaele is utilizing its printing step to produce a cross-
sectional outline. Raffaele, Abstract. We have not been directed by the
Examiner to where deposition is accomplished by Raffaele of a monomer.
The Examiner did not adequately explain how Raffaele’s very different
purpose of printing an outline on a substrate would be found pertinent by
one of ordinary skill in the art to Fodor’s method producing arrays of
molecules.
For the foregoing reasons, we reverse all the rejections of independent
claims 75 and 87 because the Examiner did not establish that the cited
combination of Fodor and Raffaele teach a step of mobilizing monomers by
changing a solid state of aggregation to a liquid state of aggregation.
Dependent claims 78, 79, 84, 86, 88, 89, and 92—99 are reversed for the
same reasons.
REVERSED
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