Ex Parte San et al

Patent Trial and Appeal Board

Aug 15, 2016

12439504 (P.T.A.B. Aug. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
12/439,504
11132 7590
Boulware & Valoir
FILING DATE
0212712009
08/17/2016
Three Riverway, Suite 950
Houston, TX 77056
FIRST NAMED INVENTOR
Ka-Yiu San
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.
Rice:26079-03US 4504
EXAMINER
PAK, YONGD
ART UNIT PAPER NUMBER
1652
NOTIFICATION DATE DELIVERY MODE
08/17/2016 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):
patent@boulwarevaloir.com
nseigel@boulwarevaloir.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte KA-YIU SAN and GEORGE BENNETT 1
Appeal2013-005194
Application 12/439,504
Technology Center 1600
Before DONALD E. ADAMS, ERIC B. GRIMES, and
JACQUELINE T. HARLOW, Administrative Patent Judges.
HARLOW, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to an
engineered bacterial cell. We have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
1 According to Appellants, the Real Party in Interest is William Marsh Rice
University (App. Br. 3).
Appeal2013-005194
Application 12/439,504
STATEMENT OF THE CASE
The present invention "relates to increased production of products by
engineered bacteria by limiting respiration, thus conserving carbon for
production even in the presence of excess oxygen. Specifically, the
invention relates to a !iubiCA bacteria and its uses" (Spec. i-f 4).
Claims 1-3 and 17 are on appeal. 2 Claim 1 is illustrative and reads as
follows (emphasis added):
1. An engineered bacterial cell comprising:
a) a disruption in the ubiCA operon, and
b) a vector comprising controlled expression of an
exogenous ubiCA gene.
Independent claim 1 7 similarly requires "a vector allowing
controllable expression of an added exogenous ubiCA gene."
Claims 1-3 and 17 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Becker, 3 Yang, 4 Soballe, 5 and Kwon. 6
DISCUSSION
Issue
The Examiner concludes that the combination of Becker, Yang,
Soballe, and Kwon renders obvious claims 1-3 and 17. We focus our
discussion on independent claims 1 and 1 7.
2 Appellants state that claims 4, 6, and 18 have been withdrawn as being
drawn to a non-elected invention (App. Br. 5). Appellants indicate that
rejoinder will be sought in the event claims 1 and 17 are allowed (id.).
3 Becker et al., 168 ARCH MICROBIOLOGY 290-296 (1997).
4 Yang et al., 65 BIOTECH. & BIOENGINEERING 291-297 (1999).
5 Soballe et al., 144 MICROBIOLOGY 361-373 (1998).
6 Kwon et al., 50 CURRENT MICROBIOLOGY 180-189 (2005).
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Appeal2013-005194
Application 12/439,504
Of particular relevance to this appeal, the Examiner finds that the
disclosure by Kwon of a vector comprising a truncated ubiCA operon
"expressed due to the native promoter" satisfies the claim 1 requirement for
"a vector comprising controlled expression of an exogenous ubiCA gene," as
well as the claim 17 requirement for "a vector allowing controllable
expression of an added exogenous ubiCA gene" (Ans. 8).
The issue presented is whether the combination of Becker, Yang,
Soballe, and Kwon renders obvious claims 1 and 1 7.
Analysis
Claim Interpretation
We begin with claim interpretation, because until a claim is properly
interpreted, its scope cannot be compared to the prior art. Claim 1 requires
"controlled expression of an exogenous ubiCA gene." Claim 17 similarly
requires "controllable expression of an added exogenous ubiCA gene."
We agree with Appellants that the Examiner erred in interpreting
these claim phrases to encompass expression of an exogenous ubiCA operon
by its native promoter, or a portion thereof (see Reply Br. 5-7). In
particular, we agree with Appellants that the claim phrases "controlled
expression of an exogenous ubiCA gene" and "controllable expression of an
added exogenous ubiCA gene" have a well-understood meaning in the art
(Reply Br. 6). Namely, these claim phrases indicate that the level of gene
expression can be "controlled," i.e., by an inducible promoter, as opposed to
a native, or non-inducible promoter (App. Br. 12; Reply Br. 6; 4/27 /12
Bennett Deel. i-f 4).
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Appeal2013-005194
Application 12/439,504
Obviousness
The Examiner relies on Kwon as disclosing "a bacterial cell
comprising a vector comprising controlled expression of an exogenous
ubiCA' gene" (Ans. 8). The Examiner acknowledges, however, that the
vector of Kwon "comprises the ubiCA' gene which is expressed due to the
native promoter" (id.). The Examiner does not make any finding that the
native ubiCA promoter is inducible.
The Examiner additionally remarks that "control of gene expression in
bacterial cell is routine in the art, via the lac operon" (id.), but does not rely
on the lac operon, or any other inducible promoter in rejecting the claims on
appeal. Neither does the Examiner explain how the lac operon, which
Appellants posit would render Kwon unsatisfactory for its intended purpose
of studying gene regulation (Reply Br. 6), would function in the system
disclosed by Kwon.
Accordingly, applying the broadest reasonable interpretation of the
phrases "controlled expression of an exogenous ubiCA gene" and
"controllable expression of an added exogenous ubiCA gene," as set forth
above, we agree with Appellants that the Examiner erred in finding that the
cited combination renders claims 1 and 17 obvious.
Conclusion of Law
A preponderance of the evidence of record does not support the
Examiner's conclusion that the combination of Becker, Yang, Soballe, and
Kwon renders claims 1 and 17 obvious. Because they depend from claim 1,
the rejection of claims 2 and 3 is also reversed.
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Appeal2013-005194
Application 12/439,504
SUMMARY
We reverse the rejection of claims 1-3 and 17 under 35 U.S.C.
§ 103(a) based on Becker, Yang, Soballe, and Kwon.
REVERSED
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