Ex parte Robinson et al.

Board of Patent Appeals and Interferences

Oct 22, 1998

07779704 (B.P.A.I. Oct. 22, 1998)

Application for patent filed October 21, 1991.1
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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journal and (2) is not binding precedent of the Board.
Paper No. 29
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte JOHN M. ROBINSON, TAMI J. PILOT-MATIAS
and JEFFREY C. HUNT
________________
Appeal No. 95-1463
Application No. 07/779,7041
________________
ON BRIEF
________________
Before WINTERS and GRON, Administrative Patent Judges, and
McKELVEY, Senior Administrative Patent Judge.
WINTERS, Administrative Patent Judge.
DECISION ON APPEAL
This appeal was taken from the examiner's decision
rejecting claims 5 through 10, 39, and 41 through 49. Claims
11 through 38 and 40, which are the only other claims
Appeal No. 95-1463
Application No. 07/779,704
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remaining in the application, stand withdrawn from further
consideration by the examiner as directed to a non-elected
invention.
Initially, we note that appellants have withdrawn the
appeal of claims 41 through 43 (Appeal Brief, paragraph
bridging pages 1 and 2). Accordingly, with respect to claims
41 through 43, the appeal is dismissed. We also note that the
examiner entered a new ground of rejection of claims 5 through
8, 39, and 44 through 49 under 35 U.S.C. § 112, second
paragraph (Examiner's Answer, section (10) entitled "New
Ground of Rejection"). In the Answer, page 9, the examiner
states as follows:
In view of the new ground of rejection,
Appellants are given a period of TWO MONTHS from the
mailing date of this examiner's answer within which
to file a reply to any new ground of rejection.
Such reply may include any amendment or material
appropriate to the new ground of rejection.
Prosecution otherwise remains closed. Failure to
respond to the new ground of rejection will result
in dismissal of the appeal of the claims so
rejected.
Appeal No. 95-1463
Application No. 07/779,704
On July 21, 1998, Pamela S. Bennett, paralegal with the2
Board of Patent Appeals and Interferences, spoke on the
telephone with Cheryl L. Becker, Registration No. 35,441,
counsel for appellants. In that telephone conversation,
counsel indicated that no Reply Brief was filed in response to
the new ground of rejection and that claims 9 and 10 are the
only claims remaining on appeal.
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Appellants failed to respond to the new ground of rejection
and, accordingly, the appeal with respect to claims 5 through
8, 39, and 44 through 49 is also dismissed.2
Claims 9 and 10 read as follows:
9. Recombinant fusion protein p776.
10. Recombinant fusion protein p410.
The references relied on by the examiner are:
J. Sambrook et al. (Sambrook), Molecular Cloning: A
Laboratory Manual, pp. 17.2-17.9 (2d ed., Cold Spring Harbor
Laboratory Press 1989)
Gabriele S. Gassmann et al. (Gassmann), "Analysis of the
Borrelia burgdorferi GeHo fla Gene and Antigenic
Characterization of Its Gene Product," 173 Journal of
Bacteriology no. 4, 1452-59 (Feb. 1991)
The issue presented for review is whether the examiner
erred in rejecting claims 9 and 10 under 35 U.S.C. § 103 as
unpatentable over the combined disclosures of Gassmann and
Sambrook.
DISCUSSION
Appeal No. 95-1463
Application No. 07/779,704
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Gassmann discloses a series of overlapping octapeptides
representing the entire sequence of Borrelia burgdorferi
flagellin protein. In Figure 7 and in the accompanying text
at page 1458, column 1, first full paragraph, Gassmann focuses
attention on amino acids 180-260 in the sequence. At best,
Gassmann constitutes an invitation for a person having
ordinary skill to explore "this region," defined by amino
acids 180-260, in search of a suitable diagnostic
oligopeptide. Note these statements in Gassmann: (1) "This
region could constitute a candidate antigen for more specific
and sensitive serodiagnosis of Lyme borreliosis" (Gassmann,
abstract, last sentence, emphasis added); and (2) "this region
might therefore be suitable for synthesis of a longer,
diagnostic oligopeptide" (Gassmann, page 1458, column 1, first
full paragraph, emphasis added).
In our judgment, the Gassmann reference constitutes
insufficient evidence to support a conclusion of obviousness
of claim 9, drawn to recombinant fusion protein p776, or claim
10, drawn to recombinant fusion protein p410. The proteins
p410 and p776 represent amino acids 137-262 and 64-311 of the
Borrelia burgdorferi sequence, respectively (specification,
Appeal No. 95-1463
Application No. 07/779,704
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page 7, first full paragraph). As correctly pointed out by
appellants, the claimed proteins include a number of amino
acids outside the region of interest postulated by Gassmann,
namely, amino acids 180-260 (Appeal Brief, paragraph bridging
pages 6 and 7). On these facts, we find that Gassmann would
not have led a person having ordinary skill in the art from
"here to there," i.e., from the region of interest identified
by Gassmann (page 1458, column 1, first full paragraph) to the
claimed proteins. Nor does Sambrook cure the above-noted
deficiency in Gassmann. Accordingly, the examiner's decision
rejecting claims 9 and 10 under 35 U.S.C. § 103 as
unpatentable over the combined disclosures of Gassmann and
Sambrook is reversed.
The appeal with respect to claims 5 through 8, 39, and 41
through 49 is dismissed. The examiner's decision rejecting
claims 9 and 10 under 35 U.S.C. § 103 is reversed.
REVERSED
SHERMAN D. WINTERS )
Administrative Patent Judge )
)
)
)
)
Appeal No. 95-1463
Application No. 07/779,704
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TEDDY S. GRON ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
)
FRED E. McKELVEY )
Senior Administrative Patent Judge )
clm
Appeal No. 95-1463
Application No. 07/779,704
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Edward H. Gorman, Jr.
Abbott Laboratories
D-377/AP6D-2
One Abbott Park Rd.
Abbott Park, IL 60064-3500