Ex Parte Richmond

Patent Trial and Appeal Board

Feb 17, 2017

12687060 (P.T.A.B. Feb. 17, 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.
12/687,060 01/13/2010 Gregory Richmond 20090387-01 1796
7590
Agilent Technologies, Inc. in care of:
CPA Global
P. O. Box 52050
Minneapolis, MN 55402
EXAMINER
CHUNDURU, SURYAPRABHA
ART UNIT PAPER NUMBER
1637
NOTIFICATION DATE DELIVERY MODE
02/22/2017 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):
IPOPS .LEGAL @ agilent.com
Agilentdocketing@cpaglobal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GREGORY RICHMOND
Appeal 2016-000141
Application 12/687,0601
Technology Center 1600
Before ELIZABETH A. LaVIER, RICHARD J. SMITH, and
DEVON ZASTROW NEWMAN, Administrative Patent Judges.
LaVIER, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant seeks review of the
Examiner’s rejection of claims 1—6 and 11—16. We have jurisdiction under
35 U.S.C. § 6(b). For the reasons set forth below, we REVERSE.
BACKGROUND
The Specification relates to methods for identifying nucleic acids in a
sample. Spec. 1:14—15. Claim 1 is illustrative:
1. A method of sample analysis comprising:
1 Appellant states the real party in interest is Agilent Technologies, Inc.
Appeal Br. 3.
Appeal 2016-000141
Application 12/687,060
a) contacting a nucleic acid sample with a first primer
and a second primer under PCR conditions to produce a double
stranded product, wherein said second primer comprises a first
label and is 5' blocked;
b) contacting said double stranded product with an
exonuclease to degrade one strand of said double-stranded
product to produce a single-stranded product, wherein said the
strand that is degraded is an extension product of the first
primer;
c) contacting the single-stranded product with a third
primer under primer extension conditions, wherein said third
primer comprises a second label and wherein said contacting
results in hybridization of the third primer to the single stranded
product and extension thereof using said single stranded
product as a template to produce a partial duplex that comprises
a single stranded portion and a double stranded portion; and
d) detecting the first and second labels of said partial
duplex.
Appeal Br. 12 (Claims Appendix).
REJECTION MAINTAINED ON APPEAL
Claims 1—6 and 11—16 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Barany.2 Ans. 2.
DISCUSSION
In rejecting claim 1, the Examiner relies largely on Figures 61 and
62A-B of Barany, along with supporting text. See Non-Final Action 2—3.
Appellant argues, inter alia, that Figures 61 and 62 are not part of the same
embodiment, but rather alternative approaches for detecting ligase detection
reaction products. Appeal Br. 8—9. We agree. Barany introduces “two sets
2 Barany et al., US 2003/0190634 Al, published Oct. 9, 2003.
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Appeal 2016-000141
Application 12/687,060
of alternative dual labeling strategies,” with the first set shown beginning
with Figure 57, and the “second and preferred set, shown in FIG. 62.”
Barany 1443. The discussion and illustration of the first strategy appears to
end with Figure 61, which provides an “alternative option” involving
“put[ting] a 5' fluorescent group on one probe, and a phosphate group on the
5' end of the other probe,” then using an exonuclease to destroy the strand
with the 5' phosphate. Id. at 1451 (discussing Figure 61). Finally, Barany
cautions that “[i]t may be difficult to quantify subtle differences of allele
imbalance” with this strategy. Id. at 1452. In contrast, Barany subsequently
introduces Figure 62 as “present[ing] the second set of dual label strategies.”
Id. at 1453. Barany explains that the strategy shown in Figure 62 can be
used “to determine relative percent mutation or allelic imbalance” {id.), in
apparent contrast to the first strategy (as illustrated in various forms in
Figures 57—61).
The Examiner maintains that “Fig. 61 and 62, page 45—46, para 0447—
0457 teach the method,” Ans. 4, but does not respond to Appellant’s point
that Barany expressly contemplates that Figure 62 represents a “second,”
and different, strategy from the foregoing figures. Thus, we find that the
Examiner has not established that Barany discloses “all elements of a
claimed invention arranged as in the claim,” SynQor, Inc. v. Artesyn Techs.,
Inc., 709 F.3d 1365, 1375 (Fed. Cir. 2013) (quoting Connell v. Sears,
Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)), as is required for a
rejection under § 102. See In reArkley, 455 F.2d 586, 587—88 (CCPA 1972)
(explaining that “picking and choosing . . . has no place in the making of a
102, anticipation rejection”).
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Appeal 2016-000141
Application 12/687,060
CONCLUSION
The rejection of claims 1—6 and 11—16 is reversed.
REVERSED
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