Ex Parte Rothberg et alDownload PDFPatent Trial and Appeal BoardSep 15, 201613019422 (P.T.A.B. Sep. 15, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/019,422 02/02/2011 52059 7590 09/19/2016 LIFE TECHNOLOGIES CORPORATION Attn: IP Department 5823 Newton Drive Carlsbad, CA 92008 FIRST NAMED INVENTOR Jonathan M. Rothberg 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 ATTORNEY DOCKET NO. CONFIRMATION NO. LT00325.5 CON 1447 EXAMINER CROW, ROBERT THOMAS ART UNIT PAPER NUMBER 1634 NOTIFICATION DATE DELIVERY MODE 09/19/2016 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): LifetechDocket@system.foundationip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JONATHAN M. ROTHBERG, WOLFGANG HINZ, KIM L. JOHNSON, and JAMES BUSTILLO Appeal2014-003702 Application 13/019,422 Technology Center 1600 Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and JAMES C. HOUSEL, Administrative Patent Judges. HANLON, Administrative Patent Judge. DECISION ON APPEAL A. STATEMENT OF THE CASE The Appellants filed an appeal under 35 U.S.C. § 134 from a final rejection of claims 107-116, 118-120, 122-128, and 132-135. 1 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Claim 131 was cancelled in an Amendment dated August 23, 2013. According to the Examiner, "the second after-final amendment filed 23 August 2013 is entered" and "reflects the status of the claims presented in the Brief." Examiner's Answer dated October 31, 2013 ("Ans."), at 2. Appeal2014-003702 Application 13/019,422 The only claim at issue on appeal is claim 107 which stands rejected under 35 U.S.C. § 103(a) as unpatentable over Koo et al. 2 in view ofYazawa et al. 3 and Hafeman et al. 4' 5 Claim 107 is reproduced below from the Claims Appendix of the Appeal Brief dated August 19, 2013 ("Br."). The limitation at issue is italicized. 107. A method of sequencing a plurality of template nucleic acids, the method comprising: disposing a plurality of template nucleic acids in a reaction chamber associated with a sensor, the sensor comprising a field effect transistor to produce an output signal responsive to an ion concentration in the reaction chamber; introducing a first solution with a known ion concentration into the reaction chamber and adjusting a bias voltage applied to a reference electrode to determine an operating voltage; introducing a second solution into the reaction chamber and applying the operating voltage to the reference electrode in communication with the second solution, the second solution including a known nucleotide; and measuring the output signal to detect ions generated through incorporation of the known nucleotide into one or more primers that are hybridized to at least one of the plurality of template nucleic acids. Br. 29 (emphasis added). 2 US 2006/0199193 Al, published September 7, 2006 ("Koo"). 3 US 2005/0156207 Al, published July 21, 2005 ("Yazawa"). 4 US 5, 164,319, issued November 17, 1992 ("Hafeman"). 5 Claims 108, 112, 122-124, 126-128, 132, 134, and 135 also stand rejected under 35 U.S.C. § 103(a) as unpatentable over Koo in view ofYazawa and Hafeman. The remaining claims on appeal stand rejected under 35 U.S.C. § 103(a) as unpatentable over Koo in view of Y azawa and Hafeman, and further in view of additional prior art identified on pages 9-19 of the Examiner's Answer. The rejection of claims 107-116, 118-120, 122-128, and 131-135 under 35 U.S.C. § 112, first paragraph, based on the written description requirement, was withdrawn in the Examiner's Answer. Ans. 19. 2 Appeal2014-003702 Application 13/019,422 B. DISCUSSION The Examiner finds, and the Appellants do not dispute, that Koo discloses a method of sequencing a plurality of nucleic acids comprising the step of disposing a plurality of template nucleic acids in a reaction chamber associated with a field effect transistor (PET) sensor wherein a PET output signal is detected based on the change in ion concentration resulting from incorporation of a known nucleotide into a primer. Ans. 4. The Examiner finds Koo does not teach using a bias voltage with a reference electrode as recited in claim 107. Nonetheless, the Examiner finds, and the Appellants do not dispute, that Y azawa teaches the known technique of using a bias voltage with a reference electrode. Ans. 4; see also Br. 24 ("Yazawa et al. describes that a predetermined bias potential is supplied to a reference electrode 173 within the sample solution, in order to enhance the sensitivity of the IS PET [ion sensitive field effect transistor] 184."). The Examiner concludes, and the Appellants do not dispute, that it would have been obvious to one of ordinary skill in the art to modify the method of Koo to include the step of "predetermining and applying an operating voltage via use of a bias voltage with a reference electrode in accordance with the teachings ofYazawa." Ans. 4. The Examiner finds "[ w ]hile Yazawa et al teach the operating voltage predetermined from the bias voltage (i.e., potential; paragraph 0038), neither Koo et al nor Y azawa et al specifically teach the operating voltage is predetermined from a first solution with a known ion concentration" as recited in claim 107. Ans. 5; see Br. 24 ("Yazawa et al. does not describe the manner in which the bias potential of the reference electrode 173 is selected."). Turning to Hafeman, the Examiner finds: 3 Appeal2014-003702 Application 13/019,422 Hafeman et al teach a method wherein a bias voltage (i.e., potential) of known magnitude is determined via use of a first solution of known concentration of an analyte whose concentration will change during measurement, based on standards of known concentrations of the analyte (i.e., including a first solution), which has the added advantage of calibrating the sensor (i.e., circuit; column 9, lines 40-50). Ans. 5; see also Final 28-29 ("Hafeman et al specifically teach determination of the operating voltage from a first solution with a known ion concentration (i.e., a standard concentration of the analyte )"). The Examiner concludes that it would have been obvious to one of ordinary skill in the art to modify the method of Koo in view of Y azawa "to further comprise predetermining the operating voltage via use of a first solution of known analyte (i.e., ion) concentration in accordance with the teachings of Hafeman." Ans. 5. The Examiner finds one of ordinary skill in the art would have been motivated to make the proposed modification "because said modification would have resulted in a method having the added advantage of calibrating the sensor as explicitly taught by Hafeman." Ans. 6 (citing Hafeman, col. 9, 11. 40-50). The Appellants do not dispute that Hafeman calibrates the disclosed device using known concentrations of analyte. See Br. 25-26. Rather, the Appellants argue that "the [Examiner's] rationale suggesting that one of ordinary skill would seek to use the calibration step of the electrode-based device of Hafeman ... to determine the bias potential applied to the reference electrode 173 of the ISFET- based device [ofYazawa] ... does not make sense." Br. 27. The fact that the devices disclosed in Y azawa and Hafeman may be different does not weigh against the Examiner's conclusion of obviousness. As discussed above, there is no dispute on this record that a predetermined bias potential is applied to the reference electrode in Y azawa to determine an operating voltage as 4 Appeal2014-003702 Application 13/019,422 claimed. The Examiner merely relies on Hafeman to show that calibrating a device using a solution of known ion concentration was known in the art at the time of the Appellants' invention. See Ans. 23. The Appellants do not direct us to any credible evidence or provide any technical reasoning showing that one of ordinary skill in the art could not have used a solution, as disclosed in Hafeman, to calibrate or determine the operating voltage ofYazawa's ISFET-based device. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) ("The combination of familiar elements according to known methods is likely to be obvious when it does not more than yield predictable results."). Therefore, the Appellants' argument is not persuasive of reversible error. For the reasons set forth above and reasons provided in the Examiner's Answer, the§ 103(a) rejection of claim 107 is sustained. The Appellants do not present arguments in support of the separate patentability of any of the remaining claims on appeal. Therefore, the § 103 (a) rejections of claims 108-116, 118-120, 122-128, and 132-135 are also sustained. C. 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)(l). AFFIRMED 5 Copy with citationCopy as parenthetical citation